1. USA: Suit over AdWords budget
limits ends with settlement
A class action law suit against Google will
only make lawyers rich and leave advertisers with advertising credit. Want proof?
Google has settled a lawsuit filed by advertisers (CLRB Hanson Industries of
Minnesota and Howard Stern of New Jersey) who claimed they were charged for more
ads through the AdWords system than they had agreed to pay. The lawsuit, filed
in 2005 in Santa Clara Superior Court in California, sought damages, restitution,
and injunctive relief to remedy Google’s practice of (1) charging its AdWords
advertisers up to 120% of their per day daily budget on any given day (Plaintiffs’
“120% claims”); and (2) charging AdWords customers who paused their campaigns
more than their per day Daily Budget times the number of days their campaigns
were not paused during the billing period.
Under the terms of the proposed Settlement
Agreement, Google has agreed to pay $20,000,000 in a combination of cash and
AdWords Credits. Both plaintiffs will receive $20,000; Google agreed to pay
their lawyers more than $5 million. Other affected advertisers will get AdWords
credits. Google argued that it had only overcharged advertisers to make up for
days when it under-delivered ads, but still chose to end the litigation with a
settlement. A spokesman said: “Google believes the claims are without merit, but
we are pleased to have the litigation behind us and to move forward with our
business objectives.”
CLRB Hanson Industries v. Google,
5:05-cv-03649-JW (settlement papers filed March 26, 2009).
In a long awaited
decision, the Second Circuit reversed a lower court’s
dismissal of a case brought by Rescuecom against Google.
Rescuecom alleged trademark violation, because Google -
through its Keyword Suggestion Tool - had recommended that a
Rescuecom competitor use Rescuecom’s trademark as a keyword.
The district court had dismissed the case, accepting
Google’s argument that its use of Rescuecom’s trademark was
internal and not an infringing “use in commerce.”
So far every single
district court outside of the 2nd Circuit found that the
purchasing of a competitor’s keyword to trigger ads at least
constitutes "use in commerce". Every district court in the
2nd Circuit found otherwise, believing this opinion was
compelled by the Second Circuits holding in 1-800 Contacts,
Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir.192005)
(“1-800”). But the 2nd Circuit found these cases to be
materially different. In 1-800, the search term that was
alleged to trigger the pop-up ad was the plaintiff’s website
address, not its mark. Also, the advertiser could not
purchase keywords to trigger their ads. Instead they could
only choose a category. Google on the contrary, had
recommended its advertisers the Rescuecom trademark through
its Keyword Suggestion Tool and sold it as a keyword.
The case is now
going back to the trial court. Rescuecom still has to prove
that Google's use of the trademark in its AdWords program
causes likelihood of confusion or mistake.
3. Google allows
companies to use a rival's trade mark as a keyword in 190
countries
Google has modified
its AdWords trademark policy to allow bidding on trademarked
terms in 190 new countries. The policy is in line with the
same trademark policy that applies in the United States,
Canada, United Kingdom and Ireland. As of June 4th, Google
will no longer investigate complaints relating to the use of
trademarks as keywords by AdWords advertisers. This means
that in the affected regions (a full list can be found
here), a company
advertising on Google will be able to select trademarked
terms as keywords, and a user searching with a trademarked
keyword may see a greater number of relevant ads in the
sponsored links section.
The countries that this trademark
policy does not apply to are
Australia, Cyprus, Hungary, New
Zealand, South Korea, Austria, Czech
Republic, Iceland, Norway, Spain,
Bahamas, Denmark, Italy, Poland,
Sweden, Belgium, Finland, Lithuania,
Portugal, Switzerland, Brazil,
France, Luxembourg, Romania, Taiwan,
Bulgaria, Germany, Macau, Slovakia,
China, Greece, Netherlands, and
Slovenia.
Starting June 15,
2009, Google will allow advertisers to use trademarks in
the ad text, even if they don't own that trademark or
have explicit approval from the trademark owner. But it
is necessary that they sell the brand. Comparative
advertising will still not be permissible. The change
will only apply in the U.S. See the
Google Blog and
Outlaw.
5. New AdWord and Metatag decisions
and cases in the USA and Germany
AdWords decision
in Germany: No trademark violation by booking two
generic words, which combined together in the right
order result in the claiment's trademark (District Court
of Munich, decision of April 10, 2008, Case Number 1 HK
O 5500/08). For more information see:
Posterlounge Case,
Austrotrabant’s Blog.
FXP filed a
class-action lawsuit against Google in federal court in
Texas for showing ads of competitors when someone
searched for its trademark "Firepond". FPX is suing as
lead plaintiff on behalf of all Texas trademark owners.
It is the first class action lawsuit against Google over
its AdWords trademark policy. But according to legal
experts (see e.g. Goldman,
Google Hit With Major Class Action Trademark Lawsuit
Over Trademarked Keyword Ad Sales--FPX v. Google,
Technology & Marketing Law Blog), it is unlikely the
court will certify the class.
FPX, LLC v. Google, Inc.,
2:2009cv00142 (E.D. Tex.
complaint filed May 11, 2009)
A few days later, the same
group of lawyers filed a second class action lawsuit
against Google, only this time alleging a class
comprised of all US trademark owners (See Goldman,
Firepond "Copycat" Lawsuit Filed Against Google--John
Beck Amazing Profits v. Google,
Technology & Marketing Law Blog).
John Beck Amazing Profits, LLC v. Google Inc.
2:2009cv00151 (E.D. Tex.
complaint filed May 14, 2009)
Hearts on Fire Co. v Blue Nile, Inc.,
2009 WL 794482 (D. Mass. March 27, 2009). The
court determined that the purchase of a trademark
constitutes a use in commerce under the Lanham Act and
created a multifactor test for assessing likelihood of
confusion in the context of sponsored ads: "In
addition to these familiar factors, under the
circumstances here, the likelihood of confusion will
ultimately turn on what the consumer saw on the screen
and reasonably believed,given the context. This content
and context includes: (1) the overall mechanics of
web-browsing and internet navigation, in which a
consumer can easily reverse course; (2) the mechanics of
the specific consumer search at issue; (3) the content
of the search results webpage that was displayed,
including the content of the sponsored link itself; (4)
downstream content on the Defendant's linked website
likely to compound any confusion; (5) the web-savvy and
sophistication of the Plaintiff's potential customers;
(6) the specific context of a consumer who has
deliberately searched for trademarked diamonds only to
find a sponsored link to a diamond retailer; and, in
light of the foregoing factors, (7) the duration of any
resulting confusion. This list is not exhaustive, but it
identifies what the Court views as the most relevant
elements to showing a likelihood of confusion in this
case."
For more information see: Goldman,
Catching Up on Three Keyword
Advertising Cases--Hearts on Fire, Romeo & Juliette, AAA,
Technology & Marketing Law Blog and Gile,
Massachusetts District Court Finds
Keyword Purchase Constitutes Trademark Use
Still no luck for the
Boring's against Google Street View. Their motion for
reconsideration has been denied (Boring v. Google Inc., 2009
WL 931181 (W.D. Pa. April 6, 2009)). See Goldman,
Boring v. Google Reconsideration Motion Denied,
Technology & Marketing Law Blog
According to a
complaint filed March 17, 2009 with the Federal Trade
Commission by the Electronic Privacy Information center
Google has not implemented adequate privacy and network
security protections for its cloud computer services
like Google Docs or GMail (complaint)
The US Department
of Justice has launched an inquiry into the deals that
Google set up with authors and publishers with its
Google Book Search and implications of antitrust.
Meanwhile, the US court overseeing that settlement has
extended the deadline for objections to the deal or for
authors to opt out of it on behalf of their works by
four months. The new deadline is September 4, 2009 and
the Fairness Hearing is scheduled for October 7, 2009.
See
Google's book deal faces competition law complaint,
Out-Law
New in Legal Resources
Hoofnagle, Chris
Jay, Beyond Google and Evil: How Policy Makers,
Journalists and Consumers Should Talk Differently About
Google and Privacy (April 6, 2009). First Monday, Vol.
14, No. 4-6, April 2009. Available at SSRN:
http://ssrn.com/abstract=1380702
Samuelson,
Pamela, Legally Speaking: The Dead Souls of the Google
Booksearch Settlement (April 16, 2009). Communications of
the ACM, Vol. 52, July 2009. Available at SSRN:
http://ssrn.com/abstract=1387782
Edwards,
Eli, Stepping Up to the Plate: The Google-Doubleclick
Merger and the Role of the Federal Trade Commission in
Protecting Online Data Privacy (April 25, 2008).
Available at SSRN:
http://ssrn.com/abstract=1370734
Jotzo, Florian,
Gilt deutsches Datenschutzrecht auch für Google,
Facebook & Co. bei grenzüberschreitendem Datenverkehr?,
MMR 2009, 232-237
Rath, Michael /
Swane, Torben, Google Buchsuche - digitale
Weltbibliothek und globale Buchhandlung, K&R 2009,
225-228
Viscounty, Perry
/ Barry, Jennifer / Olseon, Christopher, Trademark
as Keyword: It's use, but is it confusing?,
Electronic Commerce & Law Report 2009, 564-569
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