Trademark issues

[Jon12345]

As I understand it, Google is suffering from an increasing number of lawsuits regarding trademark infringement.

How does this affect the independent webmaster?

If Company A sues Google for trademark infringement, does Google then sue Webmaster A who displayed the Adwords advert with the infringement?

Just wondering if this is a timebomb for some people.

Jon

[justshelley]

AdWords Trademark Policy - [adwords.google.com...]

AdWords Complaint Procedure - [google.com...]

Right now, Google's policy is to investigate the use of the trademarked term in ads only and if they discover a legitimate trademark infringement, they will disable those ads. Google will not disable keywords using a trademarked term but if you are the owner of the trademark, a simple letter from you or your attorney will usually take care of the issue with the trademarked keywords.

I don't think our legal system will pressure Google too much since Google has shown an attempt to work with trademark issues through their little pink messages that already pop up when you put potentially trademarked words into your ad text. They also have a solid, written trademark policy. Having been on both sides of the trademark issues with Google, I know they stick by their own policies.

[Steve6]

if you are the owner of the trademark, a simple letter from you or your attorney will usually take care of the issue with the trademarked keywords

That raises some questions:

• To whom do you or your attorney send the letter? To Google or the advertiser?
  
• What does "take care of" mean?
  
• How do you know when someone is using your trademark in a keyword? For instance if I own the keyword "widget" and and advertiser has bid on the phrase "blue widget"?
  
• Doesn't Google's victory in the Geico vs Google lawsuit mean that an advertiser can use anything he wants as a keyword?
  

[justshelley]

Most people will go to the offending website's contact page and send an email through there. There is no reason to send Google an email because Google will not take action unless a) there is an offending "ad" and b) you follow their trademark procedures to request an ad's removal.

Specific terms (company names, unique product names) are easier to keep up with. But one of the reasons that Google has the comment about search terms in their trademark policy is because it's virtually impossible for you to know if someone is bidding on a broad, phrase or exact version of your trademarked words when they are combined with other terms.

You can try doing a broad, phrase and exact search and see what ads come up. Sometimes that will give you a better idea of who is searching on your terms.

[StupidScript]

Doesn't Google's victory in the Geico vs Google lawsuit mean that an advertiser can use anything he wants as a keyword?

Trademark law is pretty complex, and there have been a number of victories/losses related to it during the life of the web (or at least since the early-mid 1990s when commercial activity was first allowed on the Internet).

The general idea is: if it creates confusion about a trademarked identity, it deserves a look. For example, in Geico v Google, Overture, et al., Geico was shot down because they wanted to ban all use of their trademarked name by web advertisers, particularly insurance companies. Not the right approach. They should have determined which advertisers were creating confusion about the trademarked identity (i.e. "Geico Insurance" ads from back-alley-insurance.com) and gone after them using established trademark law, rather than try to put a blanket over the whole thing (i.e. "Geico Stinks" ads from public-interest.org).

So ... follow the G trademark policy if you want to avoid violating it. Each SE has their own approach, but all are based on common trademark law practices.

[Jon12345]

Consider this case:

<link removed>

Google did not follow their own procedures. Does that mean Google is at fault and the advertiser is exonerated? Or does it mean the advertiser will be sued by both Google and JHT?

[edited by: eWhisper at 1:38 pm (utc) on May 24, 2005]
[edit reason] Please Don't Drop URLs Tos [webmasterworld.com] [/edit]

[aeclark]

I realise many readers here probably take a US-centric perspective, however some of you may be interested in what is happening in other countries :)

Here in Australia, the consumer regulator (the Australian Consumer and Competition Commission) announced today it has stopped a company using the trademark of another company in Adwords, arguing it contravened our Trade Practices Act.

This was the first time it had looked into the issue, so should make an interesting precendent, at least for companies operating in Australia, when it comes to adwords and trademark violations.

[cagey1]

Was the company using the trademark in their ad or were they just bidding on the keyword/keyword phrase that corresponded to the trademark?

[Eurydice]

A federal court decided this issue a few months ago and Google stands by that; companies can't force Google to remove trademarks used as keyword. Within the USA, you have the legal right to use any trademark term as a keyword.

Here's an article about the court's decision:
[news.zdnet.com...] "Judge Leonie Brinkema of the U.S. District Court for the Eastern District of Virginia granted Google's motion to dismiss a trademark-infringement complaint brought by Geico. The insurance company had charged Google with violating its trademarks by using the word "Geico" to trigger rival ads in sponsored search results. Geico claimed the practice diluted its trademarks and caused consumer confusion. The judge said that "as a matter
of law it is not trademark infringement to use trademarks as keywords to trigger advertising," said Michael Page, a partner at Keker & Van Nest, which represented Google."

Here is Google's position on trademarks
[google.com...]

The key phrase is: "Please note that we will not disable keywords in response to a trademark complaint." (Fourth paragraph from the top; starting "When we receive a complaint...")

If a company asks you to remove a keyword, send them
the previous two paragraphs. They have no legal basis for their demand.

[hyperkik]

A federal court decided this issue a few months ago and Google stands by that; companies can't force Google to remove trademarks used as keyword. Within the USA, you have the legal right to use any trademark term as a keyword.

United States federal courts have specific jurisdictions that they cover, and are hierarchical. While a District Court ruling will typically be abided within that District, it is not binding on other Districts within a Circuit - that takes a ruling by the Circuit's Court of Appeals. It is certainly not binding outside of the Circuit - that takes a ruling by the Supreme Court. There are some major legal issues, known mostly to lawyers, where there is a "split among the circuits", meaning that the same law is interpreted and applied differently in accord with judicial rulings within that Circuit, pending (possible) review by the Supreme Court to resolve the conflict. Which is a long-winded way of saying, although the judge's position may ultimately prove to be the dominant or exclusive position accepted by the nation's federal courts, unless you are one of the litigants you can't necessarily hang your hat on a ruling by a single federal trial court.