Cyber Law Germany

Update 61: February 10, 2009

1. Germany: German Federal Court decisions on AdWords

The German Federal court (BGH) has asked the European Court of Justice (ECJ) to decide whether or not the use of a trademark as a Google adword is considered use as a trademark.

At the end of January, the BGH has published its opinion on three appeals.

In the first case a company objected against the use of its trademark "bananabay" as a keyword by one of its competitors. Because German trademark law is based on EU law (First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks), the BGH could not decide on its own, especially as the ECJ has already been asked to consider the same issue by a French an a Austrían court (see: European Court of Justice will hear Google Adwords lawsuit!). It is expected that it will take the ECJ about two years to decide the issue. But the French case, brought by Louis Vuitton, is already pending for eight months. So my guess is, we can expect the final word on adwords at the beginning of 2009. The decision will be crucial for Google and for the keyword advertising business in Europe.

In the second case before the BGH, the plaintiff, PCB Pool, objected against the use of pcb as adword. But according to the BGH there was no trademark infringement. PCB is an acronym of printed circuit board and the keyword used, descriptive. So the BGH overturned a lower court's ruling.

The finding in the third case could be the most interesting one. Beta Layout had complained about the use of its company name as keyword. The protection of company names does not have its roots in EU law, so the BGH could decide the case. According to the press release he found that there was no trademark violation because internet users are capable of distinguishing between ads and normal search results.

Press release of the court (German)

2. USA: Google Not Liable for Fraudulent Ads

In the Goddard v. Google case (see Update 57 for details), District Court Judge Jeremy Fogel in San Jose ruled that the federal Communications Decency Act immunizes Google from liability for allegedly displaying fraudulent ringtone ads created through the AdWords platform. Goddard had claimed that she was billed for a ringtone subscription after entering her cell phone number at a fraudulent web site that she found via an AdWords ad. She sought to hold Google responsible. But the court found that the Federal Communications Act protects Google from any liability for the ads, noting in the written decision, "Providing third parties with neutral tools to create Web content is considered to be squarely within the protections of (the law). Even if a service provider knows that third parties are using such tools to create illegal content, the service's provider's failure to intervene is immunized" so long as it does not encourage or require their users to post actionable information online. Fogel dismissed the case without prejudice, effectively allowing Goddard to file an amended complaint at a later date. Goddard can only win the lawsuit by establishing Google's involvement in creating or developing the AdWords.

Goddard v. Google, Inc., 2008 WL 5245490 (N.D. Cal. Dec. 17, 2008).

For more information see Goldman, Eric, Lawsuit Over Google Ads for Mobile Services Dismissed Per 230--Goddard v. Google, Technology & Marketing Law Blog

3. GateHouse Media Lawsuit: Don't aggregate our headlines and post snippets of our stories

In a lawsuit filed in U.S. District Court in Boston, GateHouse Media Inc. asked a judge to stop the New York Times Co. from linking to GateHouse articles on Boston.com’s new local advertising-supported “Your Town” sites, claiming its new practice of grabbing headlines from GateHouse Web sites constitutes copyright infringement. Boston.com publishes headlines, the first sentences of many stories and deep links to GateHouse Media articles. GateHouse claims its sites are losing money because people are visiting the individual story pages instead of the home pages of its sites. It wants to block the Times Co. from aggregating its content, receive compensation for losses, punitive damages and reimbursement for legal fees.

While GateHouse might have a point accusing the Times Co. of copyright infringement by reproducing sentences of their articles, some statements in the complaint about the practice of deep linking are pretty much nonsense, e.g. "The user receives no warning or notification that it has been transported to an unaffiliated third-party website, thus exacerbating the potential for confusion as to the source of origin of the repotage and information displayed on the infringing website."

In its response, the NY Times mentions emails from GateHouse officials pointing out that identical activities are clearly fair use. Howard Owens, GateHouse’s director of digital publishing, wrote (page 19): "Also note that headline, a few graphs and a link back to our site isn’t a Creative Commons issue, but a fair use issue, and they would probably win on that one."

So here is a deep link to a web site that hosts the complaint: Deep Link to Techdirt! Please note: I'm not affiliated with Techdirt. There will be no further warning that you will leave my web site by clicking on the link. You are all on your own! And please also visit the homepage of Techdirt.

A lawsuit by Agence France Presse (AP) against Google News for aggregating headlines and posting excerpts of news articles posed similar questions, but that case settled before trial. Google also struck a licensing agreement with The Associated Press (AP).

In short

The Consumer Watchdog group asked Google to give users the ability to opt out of leaving personal data, such as IP addresses, on Google's servers. Ask.com already provides a service called "AskEraser" that allows users to delete their personal information from the company's systems. (Consumer Watchdog)
Yahoo announced that it would retain user search data for three months (down from currently 13 months!), thus exceeding recommendations that have been made by the European Union's Article 29 Data Protection Working Party. In April 2008 the group said that it did not see any reason for storing non-anonymized user data for more than six months. Storing data for more than six months could be a violation of the EU Data Protection Directive (95/46/EC).
Ixquick metasearch engine (www.ixquick.com) announced that it has taken a pioneering step and will permanently delete all personal search details gleaned from its users from the log files.
According to the U.S. District Court for the Western District of Washington using a competitor's mark in metadata likely confused consumers in violation of the Lanham Act. The "funny thing" about the lawsuit: A disclaimer on the web site of the defandant made clear that the was not affiliated with the mark owner. But: As a result of the disclaimer, a Google search for the trademark caused his site to appear on the first page.This was enough to establish initial interest confusion, the court said. Suarez Corporation Industries v. Earthwise Technologies Inc., W.D.Wash., No. C07-5577, 11/14/08

New in Legal Resources

Wäßle, Florian, Rechtliche Zulässigkeit von Bilder-Suchmaschinen im Internet, K&R 2008, 729-731
Kramarsky, Stephen / Siegel, Kara, Examining Online Advertising: Search Engine Keywords and Trademark Use, Journal of Internet Law, 10/2008, 1, 16-24
Deva, Surya, Yahoo! for Good and the right to privacy of internet users, Journal of Internet Law, 3/2008, 3-9
Hogertz, Alexander, Internet image ruling interpreted, Copyright World, issue 186, 10-11
Shemtov, Noam, Searching for the right balance: Google, keywords advertising and trademark use, E.I.P.R. 2008, 470-474