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Update 70: July 18, 2010

 

1. IFPI to Google: Stop linking to The Pirate Bay!

The IFPI sent a DMCA takedown notice to Google demanding that the company not only stop linking to URLs specified in the notice, but to block any link to The Pirate Bay!

"In light of the serious violations of copyright facilitated by The Pirate Bay service, and in accordance with Google's policies (see http://www.google.com/dmca.html andhttps://www.google.com/support/websearch/bin/answer.py?answer=58&ctx=sibling) we are asking for your immediate assistance in removing from your index, or otherwise disabling access to via your search engine, URLs linking to the website for The Pirate Bay including but not limited to the URLs specified in the attachment to this notice."

The notice also said, that the IFPI is not responsible for detecting infringing material, thus insinuating that this is Google’s job!

 

 

2. Germany: Lex Google Street View?

The justice ministers of Germany's 16 states have agreed to support a legal initiative to extend laws protecting Germans' right to privacy to cover use of their own image and that of their homes in online street panoramas. The proposed German law is directly aimed at services like Google Street View and would amend Germany's Federal Data Protection Act to make it illegal to publish databases of street images linked to their geographic coordinates without first blurring faces and car registration plates in the images. It would also make it illegal to store the raw, unblurred image data for more than a month after first publication.

 

For more information see: Sayer, German Regulators Welcome Street Panorama Privacy Law Draft

 

3. USA: Google sued for click fraud

In the first click fraud lawsuit to be filed against Google since 2006, 123 Lock and Key has claimed the search giant charged it for paid-search clicks allegedly made by a competitor.123 Lock says in its court papers that it began advertising with Google October 12, 2009. From October 2009 to March 2010 it received around 15 clicks a day.  Around 80% of the people who clicked through followed up with a phone call, according to the lawsuit. In March 2010, 123 started getting charged for at least 100 to 150 clicks a day. The clicks never converted into phone calls. 123 claims it has provided Google with irrefutable evidence about the click fraud. Google refused to recognize the evidence.

 

4. Google hit with several class-action lawsuits over WiFi snooping

In June 2010, Google admitted that the cars it uses to gather Street View pictures have collected private information from unencrypted wireless networks for years, including passwords and extracts of the content of email messages. Google asserts that the collection was inadvertent.  Pablo Chavez, Google's director of public policy, explained in a June 9 letter to Congress that the Street View vehicles gather network information such as wireless addresses broadcast by WiFi routers "to improve the accuracy of the location-based services, such as Google Maps or driving directions."

Van Valin was the first, but not the last to file a class action complaint accusing Google of privacy invasion. Lots and lots of lawyers are trying to jump into the game. At least 7 class action lawsuits have been filed:

The big question in all these lawsuits: How can the plaintiff show that any of its specific data was recorded by Google, and that any harm came to him because of it.

Google filed a motion June 9 to consolidate all U.S. suits and move them to federal court in San Francisco.

 

5. ECJ ruling Primakabin / Portakabin

The Court of Justice has issued its fourth decision about the Google Adwords system (case C-558/08). The request originated this time from the Netherlands.

 

The ruling was given in a case pertaining to temporary cabin maker Portakabin and its competitor Primakabin. Primakabin chose the keywords 'portakabin', 'portacabin', 'portokabin' and 'portocabin' as its search terms for Google Adwords.

The ruling of the ECJ: The court reiterates its position from the previous AdWords cases that a trade mark proprietor can oppose to the use of a keyword, identical with its mark, if that use is liable to cause detriment to any of the functions of that mark (L’Oréal and Others, paragraph 60, and Google France and Google, paragraph 76). Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (‘the function of indicating origin’), but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising (L’Oréal and Others, paragraph 58, and Google France and Google, paragraph 77). As regards the function of indicating origin, the Court has held that the question whether that function is adversely affected when internet users are shown a third party’s ad, on the basis of a keyword identical with a mark, will depend in particular on the manner in which that ad is presented. The function of indicating the origin of the mark will be adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically linked to it or, on the contrary, originate from a third party (Google France and Google, paragraphs 83 and 84, and BergSpechte, paragraph 35).

As for the keywords that reproduce the trademark but contain spelling errors, the national court must assess whether: a) the relevant signs are identical with the trade mark because they contain differences which are so insignificant that they may go unnoticed by an average consumer (making them fall within the scope of Article 5(1)(a) of the Directive), or whether b) the relevant signs are not identical to that trade mark, but are similar to it within the meaning of Article 5(1)(b) of the Directive.

In the latter case, it will be for the national court to determine whether there is a likelihood of confusion. This should be assessed in the same way as the assessment of whether there is an adverse effect on the trade mark's function of indicating origin.

The ECJ then provided some - non exhaustive - guidance to the referring court on how to interpret the function of indication origin / to assess the likelihood of confusion:

  • It must be taken of the fact that the sale of second-hand goods under a trade mark is a well-established form of business, with which the average consumer will be familiar. Therefore, it cannot be held, merely on the basis of the fact that an advertiser uses another person’s trade mark with additional wording indicating that the relevant goods are being resold, such as ‘used’ or ‘second-hand’, that the ad creates the impression that the reseller and the trade mark proprietor are economically linked or that the ad is seriously detrimental to the reputation of that mark.

  • In those circumstances, in which a reseller specialises in the resale of goods under another person’s trade mark, the reseller cannot be prohibited from using that mark in order to advertise its resale activities which include – apart from the sale of second-hand goods under that mark – the sale of other second-hand goods, unless the resale of those other goods risks, in the light of their volume, their presentation or their poor quality, seriously damaging the image which the proprietor has succeeded in creating for its mark.

 

The exact answers of the ECJ:

1.      Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that a trade mark proprietor is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that mark, which that advertiser has selected for an internet referencing service without the consent of the proprietor, in relation to goods or services identical to those in respect of which the mark is registered, where that advertising does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party.

2.      Article 6 of Directive 89/104, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that, where use by advertisers of signs identical with, or similar to, trade marks as keywords for an internet referencing service is liable to be prohibited pursuant to Article 5 of that directive, those advertisers cannot, in general, rely on the exception provided for in Article 6(1) in order to avoid such a prohibition. It is, however, for the national court to determine, in the light of the particular circumstances of the case, whether or not there was, in fact, a use, within the terms of Article 6(1), which could be regarded as having been made in accordance with honest practices in industrial or commercial matters.

3.      Article 7 of Directive 89/104, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that a trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an internet referencing service without the consent of that proprietor – the resale of goods manufactured and placed on the market in the European Economic Area by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark.

The national court, which must assess whether or not there is such a legitimate reason in the case before it:

–      cannot find that the ad gives the impression that the reseller and the trade mark proprietor are economically linked, or that the ad is seriously detrimental to the reputation of that mark, merely on the basis that an advertiser uses another person’s trade mark with additional wording indicating that the goods in question are being resold, such as ‘used’ or ‘second-hand’;

–      is obliged to find that there is such a legitimate reason where the reseller, without the consent of the proprietor of the trade mark which it uses in the context of advertising for its resale activities, has removed reference to that trade mark from the goods, manufactured and placed on the market by that proprietor, and replaced it with a label bearing the reseller’s name, thereby concealing the trade mark; and

–      is obliged to find that a specialist reseller of second-hand goods under another person’s trade mark cannot be prohibited from using that mark to advertise to the public its resale activities which include, in addition to the sale of second-hand goods under that mark, the sale of other second-hand goods, unless the sale of those other goods, in the light of their volume, their presentation or their poor quality, risks seriously damaging the image which the proprietor has succeeded in creating for its mark.

 

6. French Supreme Court AdWords Case: Google v. Vuitton - Do we have a winner?

Following the ECJ March 23 decision (Vuillton v. Google), the Cour de Cassation canceled a June 2006 Court of Appeals decision condemning Google to a 300,000 € fine, and referred the case back to the appellate bench. Both sides welcomed the Supreme Court's referral of the case back to the appeals court. Louis Vuitton said the decision will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization.The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton.

Google denied this reading of the ruling, which it characterized as being in its favour: "The Cour de Cassation quashed the French Court of Appeal's original ruling that Google was guilty of trade mark infringement." See Google Claims Victory In French Supreme Court Keyword Trademark Case, Search Engine Land

 

 

7. In Short

  • The Article 29 Data Protection Working Party has written to Google, Yahoo and Microsoft, urging them to improve the protection of the online privacy of their users. The group has also written to the Federal Trade Commission, asking it to examine the compatibility of the search engines’ behaviour with Section 5 of the Federal Trade Commission Act. (The letters

  • Parts Geek dropped its AdWords lawsuit against Google, Parts Geek LLC v. U.S. Auto Parts Network, Inc., 5:10-cv-01713-JF (N.D. Cal. voluntary dismissal May 5, 2010).

  • Google dropped a lawsuit against record label, Blues Destiny, in which it sought a declaratory judgment that just linking to content is not infringing. Google withdrew after Blues Destiny promised it wasn't going to sue Google for infringement (Gardner, Google withdraws lawsuit against record label, THR).

  • Microsoft has filed more click-fraud lawsuits, see The Seattle Times.

  • The Court of Appeal for England and Wales in L’Oréal SA & Others v Bellure NV & Others [2010] EWCA Civ 535 refered to the ECJ's interpretation of the advertising function of a trademark as conceptually vague and ill-defined. Exactly my opinion. See Schubert / Ott, Mehr Fragen als Antworten – die Google France Entscheidung des EuGH zum Keyword Advertising, JusIT 2010, 85-88.

  • Two decisions in Germany regarding Google's liability for snippets (KG, decision of November 3, 2009, Az. 9 W 196/09: Google held liable for defamation; The Upper Regional of Hamburg did not held Google liable, decision of  March 2, 2010, Az. 7 U 70/09; it is likely we will see a decision on this matter from the German Federal Supreme Court).

  • Check out a new blog dealing with the latest developments on internet intermediaries' liability in Spain: http://ispliability.wordpress.com/ (Miquel Peguera).

  • A court in Canada ruled that a Canadian college should be allowed to use another organisation's business name as a trigger for search engine adverts (Out-Law).

  • U.S. District Judge Louis Stanton has decided that YouTube is protected by the safe harbor of the Digital Millenium Copyright Act (DMCA) against claims of copyright infringement. Viacom had argued that Google had violated the copyright act by knowingly hosting copyright material. A key issue in the cas is what level of knowledge on the part of a website that it was hosting copyright material would destroy its "safe harbor" protection under the act. The case has always been about who bears the burden and who bears the cost of finding the infringing content. Viacom International, Inc., v. YouTube, Inc., 2010 WL 2532404 (SDNY June 23, 2010).

     

 

8. New in Legal Resources

  • Grimmelmann, James Taylor Lewis, Objections and Responses to the Google Books Settlement: A Report (May 13, 2010). Available at SSRN: http://ssrn.com/abstract=1607423

  • Sartor, Giovanni and Viola de Azevedo Cunha, Mario, The Italian Google-Case: Privacy, Freedom of Speech and Responsibility of Providers for User-Generated Contents (May 11, 2010). Available at SSRN: http://ssrn.com/abstract=1604411

  • Ling, Yutian, Note: Google Street View – Privacy Issues Down the Street, Across the Border, and Over the Seas (April 11, 2008). Boston University journal of Science and Technology Law, 2008. Available at SSRN: http://ssrn.com/abstract=1608130

  • Klett, Alexander / Apetz, Daja, Nochmals: AdWord-Werbung unter Verwendung fremder Kennzeichen –markenrechtsverletzend?, K&R 2010, 289-292

  • Ji, Yuan, Why the Google Book Settlement Should Be Approved: A Response to Antitrust Concerns and Suggestions for Regulation (June 9, 2010). Albany Law Journal of Science and Technology, Forthcoming. Available at SSRN: http://ssrn.com/abstract=1623009

  • Schirmbacher, Martin, Google AdWords – Wie geht es weiter für Werbetreibende nach den EuGH-Urteilen?, GRUR-Prax 2010, 165 ff.

  • Bullinger / Garbers-von Boehm, Google-Bildersuche – Schlichte Einwilligung des Urhebers als Lösung?, GRUR-Prax, Ausgabe 12/2010

  • Meyer, Sebastian, Aktuelle Rechtsentwicklungen bei Suchmaschinen im Jahr 2009, K&R 2010, 226-234

  • Walden, Ian, Mine host is searching for a "neutrality" principle!, Computer Law & Security Review, 2010, 203-209

  • Heidinger, Roman, Keyword-Advertising: Nutzung fremder Kennzeichen als Schlüsselwört, medien und recht 2010, 119-122 

  • Schubert / Ott, Stephan, Mehr Fragen als Antworten – die Google France Entscheidung des EuGH zum Keyword Advertising, JusIT 2010, 85-88

  • Ott, Stephan, Suchmaschinenrecht 2010 - Mehr Fragen als Antworten, NJW-aktuell, Heft 22/2010, S. 16-17

  • Haight, Geri / Peters, Carol, Considerations in Keyword Advertising: When Your Trademark Becomes The Key to Your Competitor's Ad, Electronic Commerce & Law Report 2010, 573-576

  • Anderl, EuGH zur Verantwortlichkeit bei Keyword-Advertising (II), ecolex 2010, 477-478

 

 

 

 

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Latest News - Update 62

Google wins Street View case in Pennsylvania

Jones Day, Blogshopper settlement

Does Google violate antitrust laws by eliminating competition?

USA: Hyperlinks to Competing Products on web site with mark

 

 

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