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Special Coverage : Trademark protected terms as keywords / AdWords Lawsuits Worldwide - Google Print

 

 

Update 67: December 13, 2009

1. Google Book settlement: The new version
Google, the Authors Guild and the Association of American Publishers submited a newer version of their settlement (Amended Settlement Agreement, ASA). The Notice of Motion for Preliminary Approval of Amended Settlement Agreement provides a good overview over the modifications. The most important points are:
  • A work is now included in the settlement only if, by January 5, 2009, it has been registered with the United States Copyright Office, or published in Canada, the United Kingdom, or Australia. This addresses concerns expressed e.g. by the French and German government.
  • As in the original Settlement Agreement, the ASA provides that Google may make Display Uses of Books that are Commercially Available only after the Rightsholders affirmatively authorize Google to do so. Although Google is authorized by default to make Display Uses of Books that are not Commercially Available, the Rightsholder can turn those uses off at any time.
    The ASA clarifies the definition of “Commercially Available.” Under the amended definition, a Book is categorized as Commercially Available, and thus will not be displayed without explicit permission, if new copies are available for purchase by consumers in the United States, Canada, the United Kingdom, or Australia from sellers anywhere in the world.
  • Google has agreed to give the Book Rights Registry (the “Registry”) sixty days’ notice after Google classifies a Book as not Commercially Available before it makes any Display Uses of that Book.
  • The parties deleted Section 3.8(a), which provided “Most Favored Nation” status to Google.
  • The proposed Final Judgment and Order of Dismissal provides that the Court’s approval of the settlement does not provide any immunity from the antitrust laws, such as via the Noerr-Pennington Doctrine. This might enable the District Judge and the DOJ to not address the antitrust concerns at this point, but instead wait how the market develops and act later (see Picker, Accessing Competition Issues in the Amended Google Book Search Settlement).
  • The ASA now provides that the Registry’s Charter will ensure that an independent fiduciary will be delegated the responsibility to represent the interests of the Rightsholders of unclaimed Books and Inserts with respect to the exploitation of their works under the ASA.
  • The ASA also changes the provisions relating to the use and disposition of funds generated by a Book whose Rightsholder has not made a claim. Now, the Registry will hold these funds, for the benefit of that Rightsholder, for at least ten years (extended from five years under the original Settlement Agreement). ASA § 6.3(a)(i)(1). Beginning five years after the Effective Date, subject to the approval of the fiduciary, the Registry may use 25% of all funds earned in any one year that have remained unclaimed for at least five years for the sole purpose of locating the Rightsholders of unclaimed works. ASA § 6.2(a)(i)(2).
 The Registry still has not the power to grant a similar license to any other company that might want to make the same kinds of uses that Google will be allowed to make under the settlement.
U.S. District Judge Denny Chin granted preliminary approval for the agreement and ordered that groups will have until Jan. 28 to file objections with the court. The fairness hearing will  be held on Feb. 18, 2010.

For more information see:

 

2. USA: Google's impact on a jury verdict
The South Dakota Supreme Court upheld a trial court's decision that granted a motion for a new trial alleging jury misconduct.
The plaintiff had claimed that the seat belts unlatched during a deadly accident because they were negligently designed. He brought suit against the manufacturer Takata Corporation and its American Subsidiary, TK Holdings, Inc. Prior to the trial the then prospective juror Flynn conducted two quick Google searches, one for Takata, one for TK Holdings. It was revealed to him that Takata is a seat belt and airbag manufacturer and that TK Holdings is the American subsidiary of Takata.
During the trial evidence was presented that Takata had notice its seat belts were defective. At least four drivers claimed their seatbelts had come unbuckled during accidents. Ten other lawsuits had been filed against Takata.
During deliberation, juror Flynn told another juror about his web search. He said he did not find any information on other lawsuits during his search. Three other jurors heard the exchange. The jury finally reached its verdict for the defense.

Following a motion by the plaintiff, the trial court set aside the verdict on finding that one juror had introduced extrinsic evidence into deliberation that prejudiced the jury and swayed the outcome. Extrinsic evidence includes "knowledge relevant to the facts in issue not obtained through the introduction of evidence but acquired prior to trial."

The Supreme court agreed, but did not announce a "hard and fast rule that all such types of internet research by a juror prior to trial without notice to the court and counsel automatically doom a jury's verdict. Rather, as we do in such cases, we give deference to the trial court, which had the distinct advantage of being present throughout the nineteen-day trial."
 
For more information see: Jensen, Gary, How the Internet is impacting our legal system, KOTA Territory News
 
3. Switzerland: Lawsuit against Google Street View
Hanspeter Thür, the federal data protection and information commissioner, brought suit against Google over an alleged failure to protect people's privacy on its Street View website. In a statement he said: "Numerous faces and vehicle number plates are not made sufficiently unrecognizable from the point of view of data protection, especially where the persons concerned are shown in sensitive locations, e.g. outside hospitals, prisons or schools... The height from which the camera on top of the Google vehicle films is also problematic. It provides a view over fences, hedges and walls, with the result that people see more on Street View than can been seen by a normal passer-by in the street."
Prior to taking Google to the country's Federal Administrative Court Thür had asked Google to take various measures, but the company had not complied with the request. Thür inter alia demanded that Google develop a better system for blurring faces and licence plate numbers to guarantee privacy protection.

 

For more information see: Claburn, Thomas, Google Fights Street View Ban in Switzerland, InformationWeek
 
4. USA: "Expert witness": Keyword metatag matters
We have seen several keyword metatag cases in the last years, way too many, considering that Google never used the information provided in the keyword metatag for ranking its search results. Nethertheless companies sued competitors for using their mark as metatag. Untill recently, they could at least claim that Google did not publically talk about it. But a few months ago, Google confirmed what was known for years in a video.
Ling Chai, the CEO of the software company Jenzabar sued the makers of a documentary, because they had used "Jenzabar" as metatag, which Jenzabar believes violates its trademark. And the company succeeded in finding an expert witness, who claims that the keyword metatag does in fact influence Google's search results! It is not clear from his statement how he has expertise in this field. We'll see if the court finds that Google is lying about his algorithm. I very much doubt it. Pretty much everyone in the search optimizing field knows that the keyword metatag does not matter to Google. And when you look at the statement of the witness, he always mentions the importance of the keyword metatag and the title of the web site. He shoud have left out the metatag and he would be right. See e.g. Nr. 26: "....it is my professional opinion that LB's incorporation of Jenzabar's registered marks, as both keyword meta-tags in the source code for pages on LB's website, together with "JENZABAR" as the title tag, is a primary reason for why Web search engines, including Google, Bing, and others rank LB's website so high on a search of the term "jenzabar".
 
5. Germany: A new neighboring right for publishers?
The German government has announced plans to create a new kind of copyright to protect online journalism and to help major media companies to build a succesfull business model on the internet. Although it is not at all clear how a new neighboring right might look like, newspaper and magazine publishers in Germany welcomed the proposal. In my view this looks very much like an attempt to hurt Google News and to protect dinosaur businesses that are not able to adapt to the online world. One can only speculate about what the government has in mind. One possibility would be to require a license for any commercial use of published material. That might even include linking to it. But where does the commercial use of an article start? Would a blogger, who takes part in the Google AdSense programm, be required to ask for permission to link to articles? And what about Google? In Germany, there are no ads on their News web site. And even if the new right would be tailored to stop services like Google News. Isn't it likely, Google would pay no money to index the news web sites. Instead, I would expect Google to just remove the sites of companies from the index, who insist on a compensation. Google does not depend on the media websites, while they receive up to half of their visitors from Google. So they might experience a significant loss of money from advertising on their web sites (According to Cashmore, the Wall Street Journal alone could face an estimated 15 million US Dollar decline in revenue). As long as there is no united front against Google, I see no danger to the search giant.

Also important in this context: Last month, Murdoch announced he will block Google from indexing News Corps materials and do a deal with Microsoft, so consumers will have to use the Bing search engine to find Murdoch owned content. The frightening aspect of this: If content provider begin striking deals with search engines, we'll no longer have a "single index of the entire web". Want to find articles of newspaper A und B, then Google them, want to find articles of newspaper C and D: You have to Bing them ...

Jeff Jarvis, author of the book "What Would Google does" comments Murdoch's move on his blog as follows:

News Corp. leaving Google would be a mosquito bite on an elephant’s ass, unnoticed by Google or by the audience. For there will always be – as Murdoch laments – free competitors: the BBC and Australian Broadcasting Corp, which he and his son complain about, not to mention the Guardian, the Telegraph, NPR, CBC and any sensible news organization worldwide.

This silliness is emblematic of the end of the Gutenberg age, the industrial age, the age of control, the age of centralization, Murdoch’s age. The problem here is that Google-virgin Murdoch simply does not understand the dynamics of the link economy. He roars against them. Google et al do not take his content, they send it audience and value. It is up to him to exploit that. The business failure here is Murdoch’s, not Google’s.

 

For more information see: Pfanner, Eric, Germany look at ways to protect online journalism, New York Times
 
 
6. UK: Interflora v. Marks & Spencer: The questions!
 
As I have mentioned here earlier, the Adword case between Interflora and Mark & Spencer has been referred to the European Court of Justice (ECJ). It took Mr. Justice Arnold some time to formulate the exact questions, but finally here they are:

 

Questions referred
Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website (i) selects a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with the trade mark as a keyword for a search engine operator's sponsored link service, (ii) nominates the sign as a keyword, (iii) associates the sign with the URL of its website, (iv) sets the cost per click that it will pay in relation to that keyword, (v) schedules the timing of the display of the sponsored link and (vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the competitor within the meaning of Article 5(l)(a) of First Council Directive 89/104/EEC1 of 21 December 1988 ("the Trade Marks Directive") and Article 9(l)(a) of Council Regulation 40/942 of 20 December 1993 on the Community trade mark ("the CTM Regulation")?
Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?
 
Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?
 
Does it make any difference to the answer to question 3 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State of the Community to block the selection of signs identical to their trade marks as keywords by other parties?

 

Where the search engine operator (i) presents a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with a registered trade mark to a user within search bars located at the top and bottom of search pages that contain a sponsored link to the website of the competitor referred to in question 1 above, (ii) presents the sign to the user within the summary of the search results, (iii) presents the sign to the user by way of an alternative suggestion when the user has entered a similar sign in the search engine, (iv) presents a search results page to the user containing the competitor's sponsored link in response to the entering by the user of the sign and (v) adopts the user's use of the sign by presenting the user with search results pages containing the competitor's sponsored link, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the search engine operator within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?

 

Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?

 

Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?

 

Does it make any difference to the answer to question 7 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State to block the selection of signs identical to their trade marks as keywords by other parties?

 

If any such use does fall within the scope of either or both of Article 5(l)(a) of the Trade Marks Directive/Article 9(l)(a) of the CTM Regulation and Article 5(2) of the Trade Marks Directive/Article 9(l)(c) of the CTM Regulation:
(a) does such use consist of or include "the transmission in a communication network of information provided by a receipt of the service", and if so does the search engine operator "select or modify the information", within the meaning of Article 12(1) of European Parliament and Council Directive 2000/31/EC3 of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ("the E-commerce Directive")?

 

(b) does such use consist of or include "the automatic, intermediate and temporary storage of information, performed for the sole purpose of making more efficient the information's onward transmission to other recipients of the service upon their request" within the meaning of Article 13(1) of the E-commerce Directive?
(c) does such use consist of or include "the storage of information provided by a recipient of the service" within the meaning of Article 14(1) of the E-commerce Directive?
(d) if the use does not consist exclusively of activities falling within the scope of one or more of Article 12(1), 13(1) and 14(1) of the E-Commerce Directive, but includes such activities, is the search engine operator exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?

 

If the answer to question 9 above is that the use does not consist exclusively of activities falling within the scope of one or more of Articles 12-14 of the Ecommerce Directive, may the competitor be held jointly liable for the acts of infringement of the search engine operator by virtue of national law on accessory liability?

____________

1 - First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks OJ L 40, p. 1

2 - OJ L 11, p. 1

3 - OJ L 178, p. 1

 
There are currently seven cases pending at the ECJ (see this overview). The Advocate General's Opinion on the French cases was published on 22 September 2009 (for more information click here).
 
7. Germany: Criminal Investigation against Google
A criminal investigation has been launched against Google in Hamburg, Germany, because of its YouTube web site. Jens Schippmann, attorney of a group of several German independent labels, publishers and artists has filed claims with the public prosecutor's office. He alleges that Google didn't respond to requests to take down more than 8000 infringing videos and that users would utilize YouTube as a kind of "covert file-sharing platform".
It is still unclear if the ongoing investigation will ever lead to a court case.
 
For more information see: Spahr, Wolfgang, German Indies, Artists, File against YouTube/Google, Billboard.biz

 

8. USA: Google sues over alleged work-at-home scams

Google is suing Pacific WebWorks over the creation of scam ads ("Use Google to Make 1000s of Dollars!" or "Easy Cash with Google: You Could be Making up to $978 a Day Working from Home!") that have fooled thousands of job hunters into thinking they were applying for work with the internet giant. Because the logo is displayed prominently on the ads, Google claims the unaffiliated websites are misusing its trademark to deceive unsuspecting consumers, many of whom have turned to Google to lodge complaints and ask for refunds. According to Google,  consumers who sign up for these products either receive nothing except fraudulent credit card charges, or DVDs with computer viruses.

See: Fighting fraud online: taking "Google Money" scammers to court, Official Google Blog

 

9. In short 

 

10. New in Legal Resources

  • Cornthwaite, Jonathan, AdWords or Bad Words? A UK Perspective and Trademark Infringement, E.I.P.R. 2009, 347-352
  • Wieduwilt, Hendrik, Warnschuss für Web 2.0-Juristen, Anmerkung zu LG Hamburg - Google AGB, K&R 2009, 741-742
  • Shoemaker, Don't Blame Google: Allowing Trademark Infringement Actions Against Competitors Who Purchase Sponsored Links on Internet Search Engines under the Initial Interest Confusion Doctrine, Catholic University Law Review, v58 no2 p535-66 Wint 2009
  • Laidlaw, Private Power, Public Interest: An Examination of Search Engine Accountability, International Journal of Law & Information Technology v17 no1 p113-45 Spr 2009
  • Ott, Stephan, EuGH: Schlussanträge in den AdWords-Verfahren - Konsequenzen für die Anbieterhaftung in Deutschland, MMR-Aktuell 11/2009, S. V-VI
  • Dreier, Thomas, Thumbnails als Zitate?, in: Festschrift für Achim Krämer, 2009, S. 225-239
  • Jahn, David / Striezel, Julia, Google Street View is watching you, K&R 2009, 753-758
  • Heymann, Britta / Nolte, Georg, Blockiert das Urheberrecht sinnvolle Informationsdienste?, K&R 2009, 759-765

 

 

Update 66: October 19, 2009

1. ECJ: Advocate General says use of trademarks as keywords is ok!

Google is before the European Court of Justice (ECJ) in connection with a French case in which a number of companies, including Louis Vuitton complained that Google had infringed their trademark rights by allowing advertisers to use company trademarks as keywords. The winner in the latest round: Google. An adviser to Europe’s highest court said that Google’s controversial practice was not illegal under European law. Google mays allow advertisers to select the keywords and also display ads for searches involving the keywords.

The opinion contains some interesting statements on the questions whether there is a likelihood of confusion or not:

"86.      By comparing ads with natural results, the parties assume that natural results are a proxy for ‘true’ results – that is to say, that they originate from the trade mark proprietors themselves. But they do not. Like the ads displayed, natural results are just information that Google, on the basis of certain criteria, displays in response to the keywords. Many of the sites displayed do not in fact correspond to the sites of the trade mark proprietors.

87.      The parties are influenced by the belief to which I referred at the outset – that if an internet user seeks something in Google’s search engine, the internet user will find it. However, that is not a blind belief; internet users are aware that they will have to sift through the natural results of their searches, which often reach large numbers. They may expect that some of those natural results will correspond to the site of the trade mark proprietor (or an economically linked undertaking), but they will certainly not believe this of all natural results. Moreover, sometimes they may not even be looking for the site of the trade mark proprietor, but for other sites related to the goods or services sold under the trade mark: for example, they might not be interested in purchasing the trade mark proprietor’s goods but only in having access to sites reviewing those goods.

88.      Google’s search engine provides help in sifting through natural results by ranking them according to their relevance to the keywords used. There may be an expectation on the part of internet users, based on their assessment of the quality of Google’s search engine, that the more relevant results will include the site of the trade mark proprietor or whatever site they are looking for. However, this is nothing more than an expectation. Confirmation only comes when the site’s link appears, its description is read, and the link is clicked on. Often the expectation will be disappointed, and internet users will go back and try out the next relevant result."

Trade marks which have a reputation enjoy special protection as compared with ordinary trade marks: their use can be prevented not only in relation to identical or similar goods or services, but also in relation to any good or service that takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. This special protection for trade marks which have a reputation does not depend on there being a risk of confusion on the part of consumers. But still, no trademark violation by Google, because:

In my opinion, it's too early for Google to celebrate. The Advocate General's opinion definitely is a huge victory, but the European Court of Justice still has to follow it. It often does, but e.g. last year in another internet law case, where it had to decide whether a service provider operating exclusively on the Internet is under an obligation to communicate its telephone number to clients prior to the conclusion of a contract, it did not (http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:62007J0298:EN:HTML). The discussion about the use of trademarks as keywords has been going on for nearly a decade now, it has produced more than 100 judgements world-wide and uncountable articles on the subject and still, the Advocate General came up with some new legal considerations. I would expect some further surprises in the European Court of Justice judgement, although I find it likely that Google will win again.

So let's assume Google is not infringing trademark rights by allowing advertisers to buy keywords: In June 2009, Google has liberalized its trademark policy in 190 countries to conform it to its policy in the US, Canada, Ireland and the UK. Google does not block the sales of trademarked keywords in these countries. It is very likely that following a victory in the Adword lawsuit Google will liberalize its trademark policy in the EU member states, too. Maybe with one - at first sight surprising - exemption: France. No court there sided with Google in the AdWords lawsuits, although some found that Google did not commit a trademark violation. Instead they based Google's liability on the common civil principle of fault (Section 1382 of the Civil Code, which provides that "Any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it.") So French courts might still find a way around a Google friendly decision by the European Court of Justice and there might be one more battle ahead for Google in France.

There is one more important point of the Advocate General's opinion, that is hidden in Footnote 72: We have an ongoing discussion in many EU member states about the liability of search engines for search results that lead to infringing content. The Advocate General says, that in his opinion a search engine may fall under the liability exemption provided in respect of "caching" in Article 13 of the E-Commerce-Directive 2000/31. That would pretty much exempt search engines from liability. If the European Court of Justice would side with this opinion, this would be another  important victory for search engines. But this point has no importance for the outcome of the AdWords lawsuits, so it remains to be seen if the ECJ makes some obiter dictum statements.

 

2. Author's Guild v. Google - The latest developments

  • After the settlement in the class action lawsuit between Google and the Authors Guild and the Association of American Publishers was announced last October, nearly 400 parties have filed positions on the proposed settlement, with the majority of them opposing the deal. Amazon, Yahoo and Microsoft e.g. fear that the deal would give Google too much control over orphan works. Google co-founder Sergey Brin reacted to the critics of the settlement, saying that Google was the only company that has stepped up to scan the millions of out-of-print books and make them available to users. Companies that are complaining are doing nothing for them. (see Google Co-founder Sergey Brin Fires Back at Google Book Search Critics

  • The German Governement has lodged an objection to the deal between Google and the Authors Guild alleging that it would undermine the rights of German authors within the US. In its weekly podcast, German Chancellor Merkel said there are considerable dangers for copyright protection on the Internet. "That’s why we reject the scanning in of books without any copyright protection — like Google is doing. The government places a lot of weight on this position on copyrights to protect writers in Germany.

  • The European Commission has called for a "European solution" to book digitisation. But a cooperation with Google might be possible. "Digitisation of books is a task of Herculean proportions which the public sector needs to guide, but where it also needs private-sector support. It is therefore time to recognise that partnerships between public and private bodies can combine the potential of new technologies and private investments with the rich collections of public institutions built up over the centuries. If we are too slow to go digital, Europe's culture could suffer in the future," said a joint statement by Information Society Commissioner Viviane Reding and Internal Markets Commissioner Charlie McCreevy. Please note, there is already a digital library of scanned works in Europe, Europeana. See: EU calls for European solution to book digisation, Outlaw.

  • Google has agreed to change the proposed settlement after the Department of Justice said it opposed the deal: "A global disposition of the rights to millions of copyrighted works is typically the kind of policy change implemented through legislation, not through a private judicial settlement. If such a significant (and potentially beneficial) policy change is to be made through the mechanism of a class action settlement (as opposed to legislation), the United States respectfully submits that this Court should undertake a particularly searching analysis to ensure that the requirements of Federal Rule of Civil Procedure 23 ('Rule 23') are met and that the settlement is consistent with copyright law and antitrust law. As presently drafted, the Proposed Settlement does not meet the legal standards this Court must apply." But the DOJ also stressed the positive effects of the greement: "The Proposed Settlement has the potential to breathe life into millions of works that are now effectively off limits to the public. By allowing users to search the text of millions of books at no cost, the Proposed Settlement would open the door to new research opportunities."

  • The fairness hearing was postponed and New York District Judge Denny Chin ordered the parties to present the revamped deal to the court Nov. 9. The final hearing could happen as soon as late December or early January.

    Paul Aiken, executive director of the Authors Guild, said in an interview that “the core agreement is going to stay the same.

 It's my guess that the revised settlement agreement will

  • exclude foreign authors and publishers from the class so that the settlement has no impact on them. This would eliminate many objections raised by the German and French government. Let's be honest, Book Search is a service for people in the US. I think Google can live with excluding works from foreign authors, most of them probably not written in English. Google was criticised for not having translated the settlement agreement. Some authors saw a violation of an international treaty, the RBÜ. All these objections could easily be wiped away (but there would still be one problem: Google has already scanned many books of foreign author's. What would happen with them? Will Google only continue showing snippets, claiming this to be fair use?). 

  • explicitly give the book right's registry the right to licence orphan works to Google's competitors. Google might accept this as long as the registry is not allowed to give competitors a better deal than itself for the next 10 years.

Justia page

 

In short:

  • For a report about an AdWords related lawsuit in India, see PC World and for a metatag-case in Poland rychLicki.net.

  • The appeal court's decision in Person v. Google (see Update 45) is not very surprising. It took the Ninth Circuit only two pages to hold that Person has failed to plead sufficient facts to raise the allegations that Google engaged in exclusionary, anticompetitive, or predatory behavior beyond a speculative level.
    Person v. Google, 2009 WL 3059092 (9th Cir. Sept. 24, 2009); also see Goldman, Eric, Person v. Google Appeal Rejected, Technology & Marketing Law Blog

  • Tom Curley of AP and News Corp.'s Rupert Murdoch continue complaining about Google and Yahoo. The "evil search engines" link to their stories but don't pay the AP or News Corp. to do so! They described the likes of Google and Yahoo as "content kleptomaniacs" and promised to charge them for using their company's content. Well time to wake up and stop blaming others for your own failure to compete in a changing marketplace. How about robots.txt, or do you like the free service that drives users to your content? See Olesen, AP, News Corp bosses tell search engines to pay up

  • The British Columbia Court of Appeal has issued a judgment on the  issue of linking to a website wih defamatory statements. The appeals court confirmed the lower court's ruling (see Update 60) that hyperlinks will not in themselves implicate a website owner in publishing defamatory material found on the linked to site. But, if a Court finds that the person providing the hyperlink endorses or adopts the defamatory content, or explicitly encourages the reader to link to the offending material, then the hyperlinking website owner may be deemed to have participated in a republication of the offending material, and face liability and damages. See: p2pnet wins precedent-setting Crookes appeal

  • The homepage of Pirate Bay disappeared from Google's search results for a few days. In a first statement Google said that it received a take-down request that erroneously listed Thepiratebay.org and as a result, this URL was accidentally removed from the search index. Later, Google updated its statement: "The removal appears to be an internal error and not part of a DMCA request". See: Google: Pirate Bay booted off search by mistake, CNet 

 

New in legal resources

  • Peguera, Miquel, The DMCA Safe Harbors and Their European Counterparts: A Comparative Analysis of Some Common Problems (September 4, 2009). Columbia Journal of Law & the Arts, Forthcoming. Available at SSRN: http://ssrn.com/abstract=1468433

  • Hausman, Jerry A. and Sidak, J. Gregory,Google and the Proper Antitrust Scrutiny of Orphan Books (August 2009). Journal of Competition Law & Economics, Vol. 5, No. 3, p. 411, 2009. Available at SSRN: http://ssrn.com/abstract=1462282

  • Garon, Jon M.,Searching Inside Google: Cases, Controversies and the Future of the World’s Most Provocative Company (August 25, 2009). Available at SSRN: http://ssrn.com/abstract=1461463

 

Update 65: September 1, 2009

1. Search engine liability in the UK and elsewhere

According to a high court judge in London, Google is not the publisher of defamatory comments that appear in its search results.

The case has been brought by London based Metropolitan International Schools (MIS), which runs distance learning courses. The school argued that postings in the forum of the website Digital Trends were defamatory and that Google should be held liable because links to these postings appeared in its search results and the snippets also consisted out of these defamatory comments. MIS also asked the judge for an injunction, preventing the display of search results that suggest it is involved in scam, without the need to provide Google with the URL of the infringing content in the future.

The court did not agree: Google is merely a conduit to information, not a publisher in its own right: "When a snippet is thrown up on the user's screen in response to his search, it points him in the direction of an entry somewhere on the Web that corresponds, to a greater or lesser extent, to the search terms he has typed in. It is for him to access or not, as he chooses. It is fundamentally important to have in mind that the Third Defendant has no role to play in formulating the search terms. Accordingly, it could not prevent the snippet appearing in response to the user's request unless it has taken some positive step in advance. There being no input from the Third Defendant, therefore, on the scenario I have so far posited, it cannot be characterised as a publisher at common law. It has not authorised or caused the snippet to appear on the user's screen in any meaningful sense. It has merely, by the provision of its search service, played the role of a facilitator."

This is the first judicial analysis of search engine liability for defamation under UK law. Although the decision is brilliant for search engines and as a Google spokesman put it "reinforces the principle that search engines are not responsible for content that is published on third-party web sites", an important question remains unanswered:

In the MIS case, Google removed the links to the defamatory comments after notification. The judge hinted that there still is a responsibility of search engines to take down content after receiving a complaint about libellous material. He did not say how fast search engines must act and how effective the take down system must work: "There are some steps that the Third Defendant can take and they have been explored in evidence in the context of what has been described as its "take down" policy. There is a degree of international recognition that the operators of search engines should put in place such a system (which could obviously either be on a voluntary basis or put upon a statutory footing) to take account of legitimate complaints about legally objectionable material. It is by no means easy to arrive at an overall conclusion that is satisfactory from all points of view. In particular, the material may be objectionable under the domestic law of one jurisdiction while being regarded as legitimate in others. In this case, the evidence shows that Google has taken steps to ensure that certain identified URLs are blocked, in the sense that when web-crawling takes place, the content of such URLs will not be displayed in response to Google searches carried out on Google.co.uk. This has now happened in relation to the "scam" material on many occasions. But I am told that the Third Defendant needs to have specific URLs identified and is not in a position to put in place a more effective block on the specific words complained of without, at the same time, blocking a huge amount of other material which might contain some of the individual words comprising the offending snippet. It may well be that the Third Defendant's "notice and take down" procedure has not operated as rapidly as Mr Browne and his client would wish, but it does not follow as a matter of law that between notification and "take down" the Third Defendant becomes or remains liable as a publisher of the offending material. While efforts are being made to achieve a "take down" in relation a particular URL, it is hardly possible to fix the Third Defendant with liability on the basis of authorisation, approval or acquiescence."

What also makes the decision a must read, is the mentioning of several other lawsuits about search engine liability in other countries, most of them even I had not heard about before:

Spain: decision of Mai 13, 2009, Palomo v. Google

"This was a recent case in the Court of First Instance in Madrid on 13 May 2009: Palomo v Google Inc. The complaint was in relation to search results providing hyperlinks to sites carrying defamatory content. The claim was rejected and the Third Defendant held not liable in law for disseminating third party content. Reference was made to European legislation moving towards the position that there should not be any obligation on Internet intermediaries to supervise such content. Where "actual knowledge" (in the sense defined above) has not been established, the law provides for "exoneration from responsibility" on the part of businesses offering intermediary services."

 

Laws on search engine liability in Bulgaria and Romania

"Bulgaria enacted an Electronic Commerce Act in December 2006 which provides that an automated search engine service shall not be liable for the contents of data obtained where it has not (i) initiated the transmission of the data, (ii) chosen the data recipient, or (iii) chosen or altered the data obtained. This corresponds to the provisions of the Austrian amendment, to which I have referred above.

Romania has also extended its law to provide express protection for search engine services in Article 15 of Law No 365 of 7 June 2002, dealing with Electronic Commerce. This provides for protection if the search engine service was not aware that the information in question was illegal, and not aware of any facts or circumstances showing that the information could prejudice the rights of a third party. If it is so aware, it may still be protected if it acts rapidly to eliminate the possibilities of access or to block its use. The search engine service is responsible for the information when a public authority has determined that it is illegal. There are similar limitations on liability to those I have identified with reference to the Spanish law."

 

France, decision from March 19, 2009, SARL Publison System v. Google France

"Another recent example was the French decision (Court of Appeal in Paris, 19 March 2009): SARL Publison System v SARL Google France. The claimant sued over a defamatory "snippet" raised by Google's search engine and a hyperlink to the primary site. It was held that a search engine was not under any duty to assess the lawfulness of the indexed website. To the extent that it involves an indexing robot, and neither creates nor hosts the disputed information, it was said that Google was not under any automatic obligation to carry out monitoring. Furthermore, in view of the considerable volume of information arriving each day on Internet sites, the operator of the search engine was unable to analyse the content made available to users via its indexes."

 

Netherlands: Decision of April 26, 2007, Jensen v. Google

"There was also a Dutch decision in the District Court of Amsterdam on 26 April 2007: Jensen v Google Netherlands. An attempt was made to obtain an injunction to prevent Google from displaying the search results displayed on a search of the claimant's name (since there were a number of sex websites). The court observed that:

"Google has made it sufficiently clear that it has no (preventive) involvement with or influence over the contents of the links to the websites and with or over the contents of the websites which are automatically obtained as search results after entering of, in the case in hand, the search term Jensen + Urmia + Brigitte."

Attention was drawn to the "technical, automatic and passive nature" of the technical processes involved (i.e. of crawling, index-linking and ranking). Google was not expected to accept responsibility for the outcome of a search instruction or the content of the search results. It is to be noted, however, that the court relied in part upon the lack of knowledge on the part of Google that the information was wrongful."

You can find the high court decision here!

 

2. The Hamburg declaration

Newspaper publishers have asked the European Commission to improve the copyright protection afforded to newspaper content. In June European Publishers' Council (EPC) and the World Association of Newspapers (WAN) gathered newspaper executives together and signed what they are calling the Hamburg declaration: "Numerous providers are using the work of authors, publishers and broadcasters without paying for it. Over the long term, this threatens the production of high-quality content and the existence of independent journalism. (Looks like they are blaming Google News and similar services ...). For this reason, we advocate strongly urgent improvements in the protection of intellectual property on the Internet (They don't offer specific proposals)...."

Full text of the declaration

And Google's reaction? See the official blog post, which pretty much says: Shut up or use robots.txt ...

Also see: Google to newspapers: Put up or shut up (L.A. Times) and Save journalism, online newspaper publishers beg EC (The Register)

 

3. Antitrust allegations against Google Italy

Italy's antitrust watchdog (Autorita Garante della Concorrenza e del Mercato) is investigating allegations by an Italian association of news publishers (Federazione Italiana Editori Giornali (FIEG)) that Google Italy is discriminating against newspapers that don't want their content linked on Google's news site by also dropping them from its search engine. The members of the association probably should have talked to an search engine optimizer first: They probably used robots.txt to get excluded from Google News. Because search engine spiders, including the Googlebots, don't distinguish between indexing for news and web search, that's the reason why the sites of the newspapers automatically also disappeared from the web search.

See: Debunking The Italian Newspapers’ Antitrust Allegations Against Google, Searchengineland

 

4. France: Lawsuits over Google Suggest

Google Suggest makes searches more convenient and efficient by auto-completing queries as users type them into the search box. In France, the two companies Direct Energie and CNFDI found out, that when people started searching on their company names, the first suggestion was their company name followed by the word "arnaque," which means "scam."  Google Suggest works by finding the most common searches, so this only means that most of the people searching for these companies did this in connection with the word arnaque. Nethertheless both sued Google.

Direct Energie won. The judge in this case probably did not understand, how Google Suggest works. He complained that the list offered by Google was neither alphabetically nor sorted accordingly to the highest number of results. So he ordered Google to change the results!

CNFDI lost. The judge in this case understood how Google's algorithm works and came to a reasonable decision. He found that the fact that many people were questioning whether CNFDI was a scam was potentially useful information, and thus not libelous by itself. Forcing Google to remove such a suggestion would be too big a burden on free speech.

For more information on these two cases see:  Techdirt, Two Separate Rulings In France Split Over Whether Google's Suggestion Algorithm Can Be Libelous
 

5. In short

 

New in legal resources

  • Schubert, Maximilian / Ott, Stephan, AdWords - Schutz für die Werbefunktion einer Marke, MarkenR 2009, 338-347

  • Engels, Gabriele, Keyword Advertising - Zwischen beschreibender, unsichtbarer und missbräuchlicher Verwendung, MarkenR 2009, 289-297

  • Well-Szönyi, Catherine, AdWords: Die Kontroverse um die Zulässigkeit der Verwendung fremder Marken als Schlüsselwort in der französischen Rechtsprechung, GRUR Int. 2009, 557-565

  • Ohly, Ansgar, Keyword-Advertising auf dem Weg von Karlsruhe nach Luxemburg, GRUR 2009, 709-717

  • Knaak, Keyword Advertising, GRUR Int. 2009, 551- 557
  • Hoeren, Thomas, Anmerkung zu BGH – Bananabay, MMR 2009, 328-329

  • Hoeren, Thomas, Anmerkung zu BGH – Beta-Layout, MMR 2009, 331

  • Hoeren, Thomas, Anmerkung zu BGH – PCB, MMR 2009, 333-334

  • Voigt, Paul, Datenschutz bei Google, MMR 2009, 377-382

  • Elhauge, Einer R.,Why the Google Books Settlement is Procompetitive(August 26, 2009). Harvard, John M. Olin Center for Law, Economics, and Business Discussion Paper No. 646. Available at SSRN: http://ssrn.com/abstract=1459028

  • Longdin, L. (2007). Hyperlinking and copyright infringement. New Zealand Business Law Quarterly, 13, 33-46

     

Update 64: July 13, 2009

1. The High Court in London refers questions on AdWords to the ECJ

Interflora launched proceedings against M&S in December 2008 to stop M&S bidding on its protected 'INTERFLORA' trade mark as an AdWord on the Google search engine. The High Court in London  has decided to refer certain questions to the European Court of Justice for determination. In his judgment, Mr Justice Arnold comments that Google's decision to operate a different policy in the UK and Ireland to that in the rest of Europe is "fairly remarkable given that the relevant law is, or should be, essentially the same throughout Europe.”

For more information see Outlaw, ECJ rulings on Google keywords might not resolve controversy, warns High Court

The Interflora/M&S ruling

A number of national courts around Europe have already requested preliminary rulings from the European Court of Justice on a number of the issues arising out of Google Adwords:

  • Case C-236/08 (Google France v Louis Vuitton Malletier), Reference from the Cour de Cassation:
    "(1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering infringing goods is using those trade marks in a manner which their proprietor is entitled to prevent?
    (2) In the event that the trade marks have a reputation, may the proprietor oppose such use under Article 5(2) of the directive and Article 9(1)(c) of the regulation?
    (3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or the regulation, may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, so that that provider cannot incur liability until it has been notified by the trade mark proprietor of the unlawful use of the sign by the advertiser?"
     

  • Case C-237/08 Google France v Viaticum, Luteciel, Reference from the Cour de Cassation:
    "(1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?
    (2) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or [Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark], may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?"
     

  • Case C-238/08 Google France v CNRRH, Reference from the Cour de Cassation:
    "(1) Does the reservation by an economic operator, by means of an agreement on paid Internet referencing, of a keyword triggering, in the case of a request using that word, the display of a link proposing connection to a site operated by that operator in order to offer for sale goods or services, and which reproduces or imitates a trade mark registered by a third party in order to designate identical or similar goods, without the authorisation of the proprietor of that trade mark, constitute in itself an infringement of the exclusive right guaranteed to the latter by Article 5 of First Council Directive 89/104/EEC of 21 December 1988?
    (2) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?
    (3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or [Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark], may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?"
     

  • Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and trekking.at Reisen GmbH, Reference from the Austrian OGH:
    "(1) Must Article 5(1) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ('Directive 89/104') be interpreted as meaning that a trade mark is used in a manner reserved for the proprietor of the trade mark if the trade mark or a sign similar to it (such as the word component of a word and figurative trade mark) is reserved as a keyword with a search engine operator and advertising for identical or similar goods or services therefore appears on the screen when the trade mark or the sign similar to it is entered as a search term?
    (2) If the answer to Question 1 is yes:    
    (a) Is the trade mark proprietor's exclusive right infringed by the utilisation of a search term identical with the trade mark for an advertisement for identical goods or services, regardless of whether the accessed advertisement appears in the list of hits or in a separate advertising block and whether it is marked as a 'sponsored link'?  
    (b) In respect of the utilisation of a sign identical with the trade mark for similar goods or services, or the utilisation of a sign similar to the trade mark for identical or similar goods or services, is the fact that the advertisement is marked as a 'sponsored link' and/or appears not in the list of hits but in a separate advertising block sufficient to exclude any likelihood of confusion?
     

  • Case C-558/08 Portakabin Ltd v Primakabin BV, Reference from the Hoge Raad der Nederlanden:
    "(1)(a) Where a trader in certain goods or services ('the advertiser') avails himself of the possibility of submitting to the provider of an internet search engine an adword [when advertising via the internet, it is possible to pay to use 'adwords' on search engines such as Google. When such an adword is keyed into the search engine, a reference to the advertiser's website appears either in the list of webpages found, or as an advertisement on the right-hand side of the page showing the results of the search, under the heading 'Sponsored links'] which is identical to a trade mark registered by another person ('the proprietor') in respect of similar goods or services, and the adword submitted - without this being visible to the search engine user - results in the internet user who enters that word finding a reference to the advertiser's website in the search engine provider's list of search results, is the advertiser 'using' the registered trade mark within the meaning of Article 5(1)(a) of Directive 89/104/EEC? 
    (1)(b) Does it make a difference in that regard whether the reference is displayed in the ordinary list of webpages found; or in an advertising section identified as such? 
    (1)(c) Does it make a difference in that regard whether, even within the reference notification on the search engine provider's webpage, the advertiser is actually offering goods or services that are identical to the goods or services covered by the registered trade mark; or whether the advertiser is in fact offering goods or services which are identical to the goods or services covered by the registered trade mark on a webpage of his own, which internet users (as referred to in Question 1(a)) can access via a hyperlink in the reference on the search engine provider's webpage? 
    (2) If and in so far as the answer to Question 1 is in the affirmative, can Article 6 of Directive 89/104, in particular Article 6(1)(b) and (c), result in the proprietor being precluded from prohibiting the use described in Question 1 and, if so, under what circumstances? 
    (3) In so far as the answer to Question 1 is in the affirmative, is Article 7 of Directive 89/104 applicable where an offer by the advertiser, as indicated in Question 1, relates to goods which have been marketed in the European Community under the proprietor's trade mark referred to in Question 1 or with his permission?
    (4) Do the answers to the foregoing questions apply also in the case of adwords, as referred to in Question 1, submitted by the advertiser, in which the trade mark is deliberately reproduced with minor spelling mistakes, making searches by the internet-using public more effective, assuming that the trade mark is reproduced correctly on the advertiser's website?  
    (5) If and in so far as the answers to the foregoing questions mean that the trade mark is not being used within the meaning of Article 5(1) of Directive 89/104, are the Member States entitled, in relation to the use of adwords such as those at issue in this case, simply to grant protection - under Article 5(5) of that directive, in accordance with provisions in force in those States relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services - against use of that sign which, in the opinion of the courts of those Member States, without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark, or do Community-law parameters associated with the answers to the foregoing questions apply to national courts?"
     

  • Case C-91/09 Eis.de GmbH v BBY Vertreibsgesellschaft mbH, Reference from the BGH:
    "Is there use for the purposes of Article 5(1)(a) of Directive 89/104/EEC where a third party provides as a keyword to a search engine operator a sign which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party's website advertising identical goods or services appears in an advertising block set apart from the list of search results, that link is marked as a sponsored link and the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale?"
     

  • The High Court in London has not issued its questions yet.

 

2. Microsoft files click-fraud complaint

Microsoft has filed a civil complaint in United States District Court in Seattle over click fraud and is seeking at least $750,000 in damages. The complaint alleges, that by engaging in a widespread scheme that generated invalid clicks on links to online ads that were displayed in response to search requests for the game World of Warcraft and auto insurances on Microsoft’s network, defendants disrupted the advertising campaigns of their competitors, obtained increased user traffic for their own ads at a much lower cost than they could have otherwise, and caused substantial damages to Microsoft, which has lost revenues and expended substantial money and resources to remedy the effects of defendant’s conduct. According to Microsoft, the company credited nearly 1,5 million US-dollar to auto insurance and WoW advertisers in direct response to the click fraud.

The complaint gives an example for click fraud: "An advertiser in a particular industry such as auto insurance that has a sponsored site appearing low on the result list could generate repeated clicks on the higher-ranked sponsored sites of its competitors to the point that the competitors’ advertising budgets were exhausted or the performance of their sponsored sites was dramatically lowered. This would cause the higher-ranking sponsored sites to drop off the results page or decrease in the ranking, and the perpetrator’s lower-ranking sponsored site to rise to a higher position in the sponsored site list."

  • Microsoft v. Lam, case number 09-cv-0815, complaint

Also see: The Register, Microsoft sues family over alleged click fraud

 

3. Inventor of vibrating toilet seat sues Google

Johnny I. Henry, an inventor of the vibrating toilet seat (which was featured on the Jay Leno show in November 2008), filed a lawsuit against Google, Inc. and AOL, claiming that search results delivered by Google and hosted by AOL are defamatory.  His photo was pictured on several web sites under the title "N-I-G-G-E-R invents vibrating toilet seat." The complaint says that due to the web sites listed on search engines, he will incurr psychological damage and will probably suffer financial loss once his invention comes to the market

In his pro se complaint, Henry states:

The extreme derogatory nature of these web sites have committed a gross and negligible offense, not only to myself but to our newly elected president and first lady, Mr. Barack Hussein Obama and Mrs. Michelle Obama.  I believe that without a shadow of a doubt that this type of racist negative behavior is directed at black people as a whole as well as all good hearted people that mean good throughout this country and world.

Section 230 of Title 47 of the United States Code exempts service providers like Google from liability for content posted by third parties. The lawsuit will almost certainly be dismissed on that basis.

 

4. Netherlands: Webmaster can be held liable for Google snippet

On his web site, Joris van Hoboken mentiones an interesting preliminary judgement of the court in Amsterdam. A snippet in the Google result list suggested that the plaintiff was bankrupt, resulting in telephone calls from several users and a regional newspaper. Usually one would expect a lawsuit against Google, but in this case, the plaintiff went after the web master, who had written a text that was completly legal and tried to hold him responsible for the misleading combination of the sentences by Google. The court agreed, because:

- plaintiff had suffered damages by the snippet

- plaintiff had informed the defendant about the problem and asked him to fix it

- defendant had optimized his web site for search engines

- defendant could easily have changed his web site so that the snippet would also have changed.

 

What about freedom of expession? If, at all, one can be held resonsible for the snippet, it is Google. The court can't punish a web master, only because he optimizes his web site and has some knowledge about the functioning of search engines. He has no direct influence on the wording of the snippet. Even if he had changed his web site, there is no guarantee that the snippet would have changed too. If he had written "unable to pay his bills" instead of "bankrupt", where would be the advantage in a snippet suggesting the plaintiff was unable to pay his bills. If the defendat had to name the plaintiff in his text (for what reason whatsoether), how can a judge say that this has to be changed because of the conduct of an unrelated company (Google)? The defendant has appealed the decision.

 

5. USA: Search Engines ordered to stop misleading mortgage relief ads

The Making Home Affordable Program aims at helping eligible home-owners to refinance or modify their mortgages, so that they can afford to stay in their homes. The official website (http://makinghomeaffordable.gov) provides information about the program. Starting in April 2009 misleading ads appeared on search engines. When consumers searched for "making home affordable", ads were shown that displayed the web address http://makinghomeaffordable.gov. But when they clicked on the ad, they were not directed to the government web site, but instead to another web site offering loan modification services for a fee. The FTC filed a lawsuit against unknown parties, because the defendants are not identified in the ads. At their request, the District Court for the District of Columbia issued a temporary restraining order that requires four search engine providers (among them Google and Yahoo) to identify those who placed the ads and to refuse ads containing http://makinghomeaffordable.gov or any other domain name containing .gov.

The documents related to the case can be found at: http://ftc.gov/os/caselist/0923147/index.shtm.

 

6. The Thumbnail Dilemma continues in Europe

 

In the article Green light for search engines to use thumbnail images? I have provided an overview over the legal situation concerning image search engines. I came to the conclusion that it is well established in the USA that the creation of thumbnails, small low resolution versions of the original, is fair use in the meaning of Section 107 of the U.S. Copyright Act. In Germany however, differing court opinions could not yet provide operators of picture search engines with the necessary legal certainty.

 

With this posting I want to summarize the further developments since the writing of the article in 2007.

 

1. USA

There have been no reports about new cases dealing with the thumbnail issue. But it's worth mentioning, that starting from the beginning of 2008, Google has been experimenting with the incorporation of graphical ads with image search results (See e.g. Google adding display ads to image search, http://news.cnet.com/8301-10784_3-9947326-7.html).

In determining what constitutes fair use a court has to consider inter alia the purpose of the use including whether it is commercial or not. So far this factor usually has not been interpreted against search engines, because they don't use the images in an aestethic manner. Instead they help index and improve access to images on the web thus providing a new and transformative use. The commercial nature of search engines so far did not warrant another result, but the legal position of Google might be weaker in possible future lawsuits with the ads beside the picture search results. But it's still unlikely that this will be enough to swift the balance of the fair use test in favor of the copyright owners.

 

2. Germany

In 2007 the District Court of Erfurt (decision of March 15, 2007, Case No. 3 O 1108/05, full text (German) at http://www.linksandlaw.de/urteil171-bildersuche-thumbnails.htm) stressed the fact that the thumbnails cannot be enhanced into high quality images and that their depiction is beneficial to the copyright holder, because visual search engines help users locate his works on the internet. Thus the court assumed that there was an implied consent to the actions taken by search engines.

 

The plaintiff appealed the decision and the Thuringian Higher Regional Court (decision of February 27, 2008, Case No. 2 U 319/07, full text (German) at http://www.linksandlaw.de/urteil228-olg-thumbnails-urteil.htm) did not follow the reasoning of the district court. Google failed to convince the appeal court that the "implied consent" defense applies. In the eyes of the judges, the upload of a work on a web site is not enough to find that the copyright owner agrees to all search engine uses. So according to this opinion thumbnails used by picture search engines usually violate the German Copyright Act.

 

But then the court came up with a solution to dismiss this specific lawsuit. The plaintiff was engaged in search engine optimization. Under these circumstances, the court found that the plaintiff had attracted crawlers and was estopped from raising claims against search engines!

 

In my opinion this approach has some serious flaws: The plaintiff had used metatags. The decision only speaks of the keyword metatag, which is completely ignored by Google (see e.g. http://www.web-promotion-specialist.com/metatags.htm). Even under the assumption that the plaintiff had also used other metatags for search engine optimization, there is still the problem that metatags are used to increase the visibility of a web site within the (web) search results, not the (picture) search results. So the court could not offer a solution what the plaintiff should have done, if she wanted her web site to appear in the web search results, but not in the picture search results. If she had optimized the pictures for search engines (which is nearly impossible to prove), than the reasoning of the court would have been correct, but only then.

 

To sum up, it would have been better to consider the search engine optimization under the aspect of "implied consent". The use of metatags shows that the copyright owner wanted her works to be found. So it would be consequent to assume, she impliedly consented to the necessary copyright uses by search engines.

 

The case has been appealed to the German Federal Court of Justice (BGH). Even if Google wins there again, which is not unlikely given some statements of the BGH on implied consent in another context (decision of December 20, 2007, Case No. I ZR 94/05), picture search engines have one more problem to face. When an image has been uploaded on a web site without the copyright holder's permission, than there is no longer a basis for an implied consent. This problem has already become immanent. A photographer and an artist sued Google for copyright infringement and won. According to the Regional Court of Hamburg (decision of September 26, 2008, Case No. 308 O 42/06, full text (German) at http://www.linksandlaw.de/urteil247-vorschaubilder-rechtswidrig.htm),  Google infringes the making available right of the copyright owner, stipulated in section 19 a German Copyright Act. The court examined several exceptions to the copyright exclusivity, e.g. the right of citation, but found that no exception applies. The court then stressed the importance of search engines for the internet (although it mentioned that picture search is not as important as web site search), but it also said that it was not up to the court to invent new copyright exceptions. It saw no possibility to say that Google's actions are legal. The decision has also been appealed.

 

So to conclude, statutory limitations on copyright do not apply in the thumbnail context. Picture Search engines rely on the weak "implied consent" defense. The only Upper Court decision so far has rejected this argument and the regional court of Hamburg decision pointed to the even greater problem that occurs when the copyright owner did not grant any consent to the use of his picture on the web.

 

The German legislator alone can not solve the problem, because Art. 5 of the InfoSoc Directive prevents the instruction of further limitations aimed at allowing free digital usage (Directive 2001/29/EC of the European Parliament and the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, EC OJ (2001) L-167 p. 10). It is up to the EU legislator to find a reasonable solution to the thumbnail dilemma for all EU member states.

 

7. In short

  • No update without new AdWords lawsuits in the USA:
    Stratton Faxon v. Google, Inc. (New Haven Superior Ct.
    complaint filed May 27, 2009). For more information see: Goldman, Eric, Another Lawsuit Over Google AdWords--Stratton Faxon v. Google, Technology & Marketing Law Blog
    Soaring Helmet Corp. v. Bill Me Inc., 2:2009cv00789 (W.D. Wash
    . complaint filed June 9, 2009). The Justia page. For more information see: Goldman, Eric, Google Sued Again for Trademark Infringement--Soaring Helmet v. Leatherup.com, Technology & Marketing Law Blog
    Jurin v. Google, Inc., CV 09-03934 (C.D. Cal.
    complaint filed June 2, 2009). For more information see: Goldman, Eric, Seventh Lawsuit Over Google AdWords--Jurin v. Google, Technology & Marketing Law Blog
    Ascentive, LLC v. Google, Inc., 2:09-cv-02871-JS (E.D. Pa. complaint filed June 25, 2009). For more information see: Goldman, Eric, Sixth Lawsuit Filed Over Google AdWords, Plus an Assault on Google's Organic Search Results--Ascentive v. Google, Technology & Marketing Law Blog. Ascentive also claims that Google broke the law when, after a dispute, it refused to list its web site in the natural search listings any longer and did no longer allow Ascentive to participate in the AdWords program. Ascentive tried to persuade Google to revoke the decision, but did not succeed, not even in gaining the information why Google did this. Two emails from Google only stated: "Unfortunately, we will not be reversing our decision regarding the suspension of your account. Please respect our decision and as noted in our Terms and Conditions, Google reserves the right to terminate advertisements for any reason." and "As mentioned in our previous email, your Google AdWords account has been suspended due to multiple policy disapprovals. We are unable to revoke your account suspension, and we will not accept advertisements from you in the future. Please note that our support team is unable to help you with this issue, and we ask that you do not contact them about this matter."

  • An advert that appeared in search engine results to promote an IQ test has been banned by the UK's advertising watchdog, the Advertising Standards Authority (ASA), for failing to disclose in the text of the ad that participants would be charged to receive their results. See Outlaw, Search engine ad for IQ test banned over hidden cost / The adjudication
     

8. New in Legal Resources

  • Pordesch, Ulrich / Seitz, Katja / Steffan, Jan / Steidle, Roland, Chrome mit Kratzern, DuD 2009, 47-52

  • Backu, Frieder, Anmerkung zu BGH - AdWords, CR 2009, 326-328

  • Bohne, Michael / Krüger, Alexandra, Das "Settlement Agreement" zwischen Google und der Author's Guild als Leitbild einer europäischen Regelung, WRP 2009, 599-607

  • Ott, Stephan, Bildersuchmaschinen und Urheberrecht, ZUM 2009, 345-354

 

Update 63: May 29, 2009

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).

For more information see: Goldman, CLRB Hanson v. Google Preliminarily Settles for $20M, Technology & Marketing Law Blog

2. Second Circuit decision on "Use in Commerce"

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.

Also see:

 

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.

Also see: Google further liberalizes its Adwords’s Trademark policy in 190 countries, Austrotrabant’s Blog

 

4. Google allows trademarks in text of US ads

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

 

In short

  • 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
  • Klett,  Alexander, AdWord-Werbung unter Verwendung fremder Kennzeichen - markenrechtsverletzend?, K&R 2009, 317-320
  • Ott, Stephan, Datenschutzrechtliche Zulässigkeit von Webtracking?, K&R 2009, 308-313
  • Ott, Stephan, Die Entwicklung des Suchmaschinen- und Hyperlink-Rechts im Jahr 2008, WRP 2009, 351-372
  • Meyer, Sebastian, Aktuelle Rechtsentwicklungen bei Suchmaschinen im Jahre 2008, K&R 2009, 217-225
  • Dietrich, Florian, Anmerkung zu OLG Stuttgart - Snippets, CR 2009, 188-189
  • 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

     

Update 62: March 29, 2009

1. Google wins Street View case in Pennsylvania
A judge has dismissed a lawsuit filed by a Pennsylvania family against Google. Plaintiffs had alleged invasion of privacy, trespass and unjust enrichment, because Google had published photos of their residence in its Street View feature. The street, in which the home of the plaintiffs is located is marked as "Private Road". Aaron and Christine Boring sued for compensatory and punitive damages, seeking more than 17.000 $.

The judge dismissed the invasion of privacy claim, because he saw no facts that were sufficient to establish that the intrusion could be expected to cause "mental suffering, shame or humiliation to a person of ordinary sensibilities." "While it is easy to imagine that many whose property appears on Google's virtual maps resent the privacy implications, it is hard to believe that any – other than the most exquisitely sensitive – would suffer shame or humiliation", the judge said. He deemed the contended suffering to be less severe because plaintiffs had failed to take readily available measures to protect their own privacy. They could have used a procedure provided by Google to remove the images from Google Street View. Unfortuantely the judge did not tell, why the plaintiffs could be refered to use Google's opt-out system, if the defandant was in fact violating their privacy rights. Seems to me like a circular argument.

As for the other claims, plaintiffs failed to allege a duty of care, that Google could have violated. They also could not support their contention that their property decreased in value.

So, according to the judge, the plaintiffs have failed to state a claim under any count.

The couple already aksed the judge to reconsider their dismissed lawsuit. Some excerpts from their motion for reconsideration:

"This case is about every little guy, once again being trampled upon by the big shoe of big business. With nowhere to turn but the American Courts, he is cast away to endure the pinpricks of trespass that bleed our American liberty to death. Whether the trespass is by a foreign king, or the royalty of big business, does not matter. The Borings, such as our American forefathers in millennia past, are entitled to proclaim, 'Google, Don't Tread On Me.'"

"The Borings should not need to post gates and guard dogs, nor should they need to institute batteries of cannons in their driveways. They should have the full power and authority of our American Courts at their defense. But, now, this Court has left the American right of private property helpless, injured, and without remedy."

"This Court tells Google that it is okay to enter onto a person's private property without permission. I would not teach that rule to my child. This Court's ruling makes our private property a Google Slave; our property is no longer our own: it is forced to work for another, against its will, without compensation, for the profit of another. The Federal Court should free slavery, not create it."

"Google's defense is that the grass will stand back up, and there was no gate or guard dog. Or, possibly, that you can pick the fruit off that poison tree by: a) stopping what you are doing; b) going to a computer, if you know how to use one; c) accessing a computer at the cost of doing so; d) accessing the Internet at the cost of doing so; e) researching and becoming familiar with the Google program by going onto their website properties; f) removing the pictures Google acquired while trespassing on your property; and g) not pursuing the happiness you might otherwise be finding. All while they directly and indirectly advertise to you. The more Google injures, the more money they make."

 

2. Jones Day, Blogshopper settlement

What was deemed a rather ridiculous lawsuit, Plaintiff Jones Day claimed that Blogshopper's use of the Jones Day Marks and the links to the web site create the false impression that Jones Day is affiliated with/or approves, sponsors or endorses Defendant's business, which it does not (see Update 60 for details). The parties have reached a settlement. Blockshopper can continue to link to Jones Day's site, but it must use the firm's Web address as the link. So great result for Jones Day: Instead of writing Daniel P. Malone Jr. is an associate in the Chicago office of Jones Day," BlockShopper must now write "Malone (www.jonesday.com/dpmalone) is an associate . . ."  Blockshopper had spent more than $100,000 defending itself against the lawsuit and was not afraid of loosing the lawsuit, but obviously couldn't afford to go on with the defense.

See: Jones Day settles lawsuit against small Internet site, defendants say, Cleveland.com

 

3. Does Google violate antitrust laws by eliminating competition?

Vertical search is an expanding market where a lot of money can be made. The term "vertical search" refers to more or less specialized search engines for specific topics, such as Google News for news or YouTube for videos. There are already more searches conducted at YouTube or eBay than at Yahoo in several countries. TradeComet also operates a specialized search engine for B2B goods and services. To promote its web site TradeComet used the Google AdWords program and was quite successful at the beginning. Officials even meet with Google to further increase the effectiveness of the ad campaigns. In December 2005 Google praised Trade Comet as "site of the week." In May 2006, however, Google raised the minimum bids for keywords on which TradeComet bid. Instead of 5-10 cents, several keywords were only available at a minimum price of 5-10 dollars. These ad rates were way too expensive for the plaintiff to continue promoting itself within Google's online marketing network. So this move strangled plaintiffs primary source of search traffic, resulting in substantial drops in traffic and revenue (about 90%). Google explained to TradeComet that the increase was due to its poor landing page quality.

TradeComet alleges that Google manipulates its auctions to favor certain advertisers like business.com over others. Google establishes minimum pricing thresholds that can differ by advertisers based on criteria , such as "Landing Page Quality", that is exclusively in Google's control. It is impossible to know how Google actually picks the winners and losers of its ad actions. In the eyes of TradeComet officials, Google learned that its search engine was a potential competitor. The lawyers stated that, “Google understood the threat that vertical search engines posed to its business mode.” Hence Google increased the bid rates for advertisement for the company by as much as 10,000 percent.

The suit could be a real danger to Google. So far, no court has said that Google has a monopoly. But the courts only considered an online, not a smaller search advertising market. After the aquisition of DoubleClick Google has strenghtened its position in the online advertising market and remarks by the Federal Trade Commission lead to the conclusion that the relevant market indeed is sponsored search advertising only. And on that market, Google probably has a monopoly share.

Also see: Goldman, Eric, TradeComet Sues Google for Antitrust Violations , Technology & Marketing Law Blog

TradeComet.com LLC v. Google, Inc., 09 CIV 1400 (SDNY complaint filed Feb. 17, 2009).

 

4. USA: Hyperlinks to Competing Products on web site with mark

The U.S. District Court for the Middle District of Pennsylvania held January 12, 2009 that an online company may have initially confused consumers by providing links to its products on a web site despite listing another company as a "featured brand" and denied a motion for summary judgement.

Babyage.com had created a Leachco "featured brand" webpage in 2007. It displayed the "Leachco" trademark and included a section of the page entitled "Pregnancy Pillows". In the text, "Today's Mom Cozy Comfort" and "Serenity Star," denoted
clickable hyperlinks that, when selected, took the viewer to webpages containing non-Leachco products, including BabyAge's Cozy Comfort pillow, a lower-priced competitor of Leachco's Back'n'Belly pillow. Leachco argues that this webpage content constitutes an unlawful "bait and switch" whereby prospective customers are "baited" by Leachco's brand into visiting the Leachco "featured brand" webpage on the BabyAge Website, baited into pursuing a Leachco pregnancy pillow, and then "switched" to non-Leachco pregnancy pillows by the above-mentioned hyperlinks provided on the webpage.

BabyAge.com Inc. v. Leachco Inc., M.D. Pa., No. 07-1600, 1/12/09

 

In short

California is the first state to consider imposing restrictions on internet mapping sites like Google Earth or Microsoft Virtual Earth. With reports in mind that online satellite images were used to plan the attack in Mumbai last year, an introduced bill would make it illegal to post closs-up images of "soft targets" like government buildings, churches, schools and hospitals. For more details see: California lawmaker targets Internet mapping sites, The Mercury News 

The Dutch Supreme Court sent an AdWords case to the European Court of Justice (ECJ). With more than 20 questions on the subject, the court wants to know everything from the ECJ he can possibly say about adwords. For an English translation of the questions see: Portakabin vs. Primakabin: Dutch Supreme Court sends Adword case to ECJ, Class 46

The New York Times and Gatehouse Media settled claims that the news aggregator web site infringes on copyrights by posting news headlines from other sources verbatim (see Update 61 and the settlement order)

The European Union's Article 29 Working Party welcomed calls for common industry standars on search engine data retention policies, that would include efficient anonymisation and a maximum retention period of six months. Currently Microsoft anonymizes data after 18 months, Google after nine and Yahoo after three months. Last year the Working Party issued its "Opinion on data protection issues related to search engines", see Update 56.

 

New in Legal Resources

  • Goldman, Eric,Brand Spillovers. Santa Clara Univ. Legal Studies Research Paper No. 09-01; Harvard Journal of Law and Technology, Vol. 22, 2008. Available at SSRN: http://ssrn.com/abstract=1324822
  • Csillag, Sandra, Der Google-Urheberrechtsvergleich: Wer hat Rechte am digitalen Content?, medien und recht 2009, 23-27
  • Ott, Stephan, Das Internet vergisst nicht - Rechtsschutz für Suchobjekte, MMR 2009, 158-163
  • Ott, Stephan, Die Entwicklung des Suchmaschinen- und Hyperlink-Rechts im Jahr 2008, WRP 2009, 351-372

 

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.

 

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

 

Update 60: December 14, 2008

1. Argentina: Google and Yahoo locked in legal battle with celebrities

Martin Leguizamon, 48, a Buenos Aires attorney, has taken on the local versions of Yahoo und Google on behalf of many of Argentina's best-known actors, models, sports personalities and judges. Initially he represented a group of about 70 fashion models and asked the search engines to block all search results with their names with the intent of blocking pornographic web sites that used the models' pictures. He succeeded in getting restraining orders. Yahoo and Google were ordered to censor search results from their Argentine sites for information about the plaintiffs. Then other public figures - including Maradona and the high-profile judge María Servini de Cubría - have sought out the same lawyer to successfully block search results about them as well. In some cases, the restraining orders require Yahoo and Google to censor results for certain URLs or keywords. In other instances they call for broad restrictions such as censorship of defamatory or scandalous material.

Yahoo first tried to satisfy the orders by blocking content on a site-by-site basis. But as the scope of the orders grew, the company couldn't satisfy the courts. The fines pilled up, and Yahoo has resorted to blocking almost all sites involving the celebrities in question. The only exceptions are hyperlinks to major news media sites. If a user enters the name Maradona e.g., he will see a disclaimer in Spanish stating: "Due to a court order requested by private parties, we find ourselves obliged to temporarily suspend all or some of the results related to this search."

So far, Google Argentina isn't filtering as extensively as Yahoo! and hopes for successful appeals and the legislator to change the law.

Also see: Argentine search engines told to block famous names, Outlaw

 

2. Germany: Thumbnail decision revisited

I already mentioned in the last update that the German photographer Michael Bernhard and the artist Thomas Horn have won lawsuits against Google for displaying thumbnails images of their works in picture search results.

I now have the court decision (German):

According to the Court Google infringes the making available right of the copyright owner. The court examines several exceptions to the copyright exclusivity, e.g. the right of citation, but finds that no exception applies.

Earlier court decisions on thumbnails in Germany discussed the possibility of an implied consent by the copyright holder. But this case was different: The picture, which Google used to create the thumbnail, had not been put on the web by the copyright owner and he had also not allowed the reproduction by a third party. So there was no basis for an implied consent.

 

The court then stressed the importance of search engines for the internet (although it said that picture search is not as important as web search), but it also said that it was not up to the court to invent new copyright exceptions. It saw no possibility to say that Google's actions are legal.

 

3. Spain: Google Cache is legal (the Megakini.com-case)

The plaintiff accused Google of copyright infringement by reproducing snippets from his web site in the results page and by making available cached copies of his web site.

As to the snippets, the court (Sentencia de la Audiencia Provincial de Barcelona (Section 15), of 17 September 17, 2008) concluded that they are too short and thus not infringing.

As to the cached copies the court examined the exceptions to the copyright holder's exclusivity. The court doubted that the exception of temporary reproduction (Art. 31 I of the Ley de Propiedad Intelectual / Art. 5 I of the EU Copyright Directive) applies, because the copies Google uses for its service exist for a longer time, even if the original web site has been removed or modified. But the court did not make a final decision on this subject. Instead it looked at the three step test (See e.g. Article 13 of TRIPs. It reads: "Members shall confine limitations and exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rights holder.") and the US fair use doctrine and found that these principles should also guide the interpretation of the scope of the protection of intellectual property rights in Spain in order to avoid absurd overextensions of the protection of copyright owners. The court than found that the Google Cache is a socially tolerated use and does not do any harm to the copyright holder. But Google has to comply with some basic requirements. Here the court refered to the caching safe harbor in Art. 13 of the E-Commerce Directive, (The caching safe harbor does not apply to the Google cache, but the court assumed that these requirements are also the limits that a cache provider must observe in order to respect the integrity of the work and the author’s right of making available the work). So there is no copyright infringement on the condition that

(a) the provider does not modify the information;

(b) the provider complies with conditions on access to the information;

(c) the provider complies with rules regarding the updating of the information, specified in a manner widely recognised and used by industry;

(d) the provider does not interfere with the lawful use of technology, widely recognised and used by industry, to obtain data on the use of the information; and

(e) the provider acts expeditiously to remove or to disable access to the information it has stored upon obtaining actual knowledge of the fact that the information at the initial source of the transmission has been removed from the network, or access to it has been disabled, or that a court or an administrative authority has ordered such removal or disablement.

Quite an interesting ruling. But I doubt that it will get much approval. While the Hamburg court in the thumbnail decision said that it is not the task of a court to invent new exceptions to the copyright holder's exclusivity, the Spanish appeal court did just that by combining fair use principles and requirements of the E-Commerce-Directive.

 

4. Canada: Linking to defamatory content - Crookes v. Wikimedia Foundation

In Crookes v. Wikimedia Foundation, Inc. (B.C. Sup. Ct. Aug. 29, 2008) the Supreme Court of British Columbia had to decide if under Canadian law linking to an article that contains statements alleged to be defamatory, does, by itself, constitute defamation. Liability could only exist if the link publisher made any statement relating to the defamatory material itself, the court said:

"[32] In the present case, although hyperlinks referred the reader to articles now claimed by the plaintiffs to be defamatory, the plaintiffs agree that the defendant did not publish any defamatory content on the p2pnet website itself. The defendant did not reproduce any of the disputed content from the linked articles on p2pnet and did not make any comment on the nature of the linked articles. In these circumstances, a reader of the p2pnet website who did not click on the hyperlinks provided would not have any knowledge of the allegedly defamatory content.

...

[34] I do not wish to be misunderstood. It is not my decision that hyperlinking can never make a person liable for the contents of the remote site. For example, if Mr. Newton had written "the truth about Wayne Crookes is found here" and "here" is hyperlinked to the specific defamatory words, this might lead to a different conclusion."

§      The ruling

Also see Neuburger, Canadian Court Rules Linking to Libel Isn't (Necessarily) Libel

 

5. USA: Google Book Search Settlement

Google and The Authors Guild, the Association of American Publishers said that they have settled a book scanning lawsuit for $125 million. The deal, which still needs approval from a federal court in New York, would clear the way for the company to provide easier online access to millions of copyrighted books.

Google began scanning and uploading books four years ago. However, unlike other countries where it only scanned books fallen out of copyright, in the USA it scanned books that were still copyright protected and made them available through its book search program - enraging publishers and authors. Three years ago, the Authors Guild and others filed a class action lawsuit against Google Book Search. As part of the agreement Google will compensate them at a minimum of $60 per work, costing it up to $90m of the $125m deal.

Google:

With this agreement, in-copyright, out-of-print books will now be available for readers in the U.S. to search, preview and buy online — something that was simply unavailable to date. Most of these books are difficult, if not impossible, to find. They are not sold through bookstores or held on most library shelves, yet they make up the vast majority of books in existence. Today, Google only shows snippets of text from the books where we don’t have copyright holder permission. This agreement enables people to preview up to 20% of the book.

What makes this settlement so powerful is that in addition to being able to find and preview books more easily, users will also be able to read them. And when people read them, authors and publishers of in-copyright works will be compensated. If a reader in the U.S. finds an in-copyright book through Google Book Search, he or she will be able to pay to see the entire book online. Also, academic, library, corporate and government organizations will be able to purchase institutional subscriptions to make these books available to their members. For out-of-print books that in most cases do not have a commercial market, this opens a new revenue opportunity that didn’t exist before.

For details of the agreement see the Google Press Release and The End of Snippet View: Google Settles Lawsuit with Book Publishers, New York Times. For German speaking readers see my post: Google Buchsuche - Überblick und erste Analyse des Vergleichs.

The agreement (141-page / 500KB PDF)

 

6. USA: Jones Day v. Blockshopper.com - Hyperlink creates false impression of affiliation?

Blockshopper.com provides information about property transactions. One of their reports state the facts of real estate transactions of Jones Day associates, displays their pictures, and states the associates work for Jones Day. In addition, the report includes links to information about these associates appearing within Jones Day's website. Jones Day sued Blockshopper and alleges trademark infringement! Plaintiff contends Defendant's use of the Jones Day Marks and the links to the web site create the false impression that Jones Day is affiliated with/or approves, sponsors or endorses Defendant's business, which it does not.

Sounds ridiculous! That's pretty much, what the Electronic Frontier Foundation (EFF) is saying about the lawsuit: "some of the most preposterous trademark claims we've ever seen... If Jones Day were correct, no news site or blog could use marks to identify markholders, or links to point to further information about the markholders, without risking a lawsuit. But that is not the law, and Jones Day should know it."

 

7. USA: Hyperlink, death threats and violation of the First Amendment

A complaint to the U.S. District Court for the Eastern District of Wisconsin says that the First Amendment permitted plaintiff, Ms. Reisinger, to include on her personal web site a link to the Sheboygan Police Department and that the city's insistance that she remove it was unconstitutional.

The case is quite curious:

Ms. Reisinger was involved in the creation of a web site devoted to recall efforts of Mayor Perez. The mayor noticed that Mr. Reisinger - on her own business homepage - had a link to the City of Sheboygan Police Department. He asked the City Attorney if the link was permissible. The attorney answered that anyone can create a link to someone else's website very easily without the knowledge or consent of the linked party. Nethertheless the assistent to the mayor, indicated the mayor wanted the attorney to issue a cease and desist letter regarding the link. So Ms. Reisinger received such a notice and severed the link. She found the request very silly, but said she wanted to follow the "wish". But then the story really started: The police began an official investigation relative to the linking. Other web sites and blogs started ridiculing Ms. Reisinger. She now retained counsel. As a result the City of Sheboygan indicated that they wanted her to continue to use the link to the Police Department. But now it was too late. Ms Reisinger had already received death threats (she had to install video cameras at home...) and suffered a significant decrease in income. She now sues for compensatory damages in sum of 250.000 dollar and punitive damages.

Reisinger v. Perez, E.D. Wis, No 08-cv-00708, complaint filed 8/20/08

 

In short:

 

 

New in legal resources

§      Fischman Afori, Orit, Implied License - An Emerging New Standard in Copyright Law (September 10, 2008). Santa Clara Computer and High Technology Law Journal, Vol. 25, 2008, available at SSRN: http://ssrn.com/abstract=1266083

§      Möller, Mirko, Die Nichtbenutzung einer nicht sichtbaren Marke, MarkenR 2008, 386

§      Schmelz, Christoph, Keyword-Advertising als Markenverletzung - Ende der Diskussion oder Diskussion ohne Ende?, MarkenR 2008, 196-199

§      Pollock, Rufus,Is Google the Next Microsoft? Competition, Welfare and Regulation in Internet Search (September 9, 2008). Available at SSRN: http://ssrn.com/abstract=1265521

§      Goryunov, Eugene, All Rights Reserved: Does Google's 'Image Search' Infringe Vested Exclusive Rights Granted Under the Copyright Law?(2008). John Marshall Law Review, Vol. 41, No. 2, 2008. Available at SSRN: http://ssrn.com/abstract=1268571

§      Munir, Abu Bakar / Teh, Tai Yong, Googling Data Protection: Don't be evil, C.T.L.R. 2008, 183-190

§      He, Huaiwen, Safe harbor provisions of Chinese law: How clear are search engines from liability?, Computer Law & Security Report 2008, 454-460

§      Peguera, Miquel, I just know that I (actually) know nothing: Actual knowledge and other problems in ISP liability case law in Spain, EIPR 2008, 280-285

Links & Law Regular's table in Munich

Thursday, Feb. 12, 2009 will see the third Links & Law regular's table in Munich. Everyone who wants to talk about internet law or search engines is welcome. If you want to attend, just drop me a line!

 

News

The Links & Law website is updated regularily, so  check back for updated information and resources about search engine and linking issues.
 

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