Why Google Shouldn't Be Liable For Suggesting Trademarked Terms In AdWords

from the it's-not-actual-use-in-commerce dept

Canadian lawyer David Canton (who I recently had the pleasure of meeting) has written up an excellent analysis why the recent ruling about Google's potential liability for suggesting trademarked keywords doesn't make much sense. His key point is a good one:
Perhaps Google did suggest a competitor's mark -- but trade-mark infringement only occurs when there is "use" in conjunction with similar products or services. How is Google supposed to know whether my use will infringe, or be perfectly lawful? A ruling that Google can never suggest keywords that happen to be trade-marked does not make sense to me.

For example, the word "Canton" has been trade-marked for various things by various companies in the U.S. and Canada, including speakers, liqueur, and soup. So if I wanted "David Canton" as a keyword, why would it be a problem for Google to suggest "Canton" as a possible keyword? Surely it's my responsibility to use that keyword for my own purposes to promote my legal services -- and not use it to sell my own line of speakers, liqueur or soup.

Google should have a role to play if I do that -- but the role should be to forward complaints or put the complainant in touch with me -- not to be liable itself for my infringement.
Indeed. Yet another reason for why the Second Circuit's ruling is so troubling.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
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    Anonymous Coward, Apr 14th, 2009 @ 7:09am

    Indeed. Yet another reason for why the Second Circuit's ruling is so troubling.

    It was noted before, and it is worth noting again. One is well advised to read a judicial decision before opining about "why it is so troubling". The decision can be found at:

    http://www.ca2.uscourts.gov/decisions/isysquery/3655e4ac-c860-4bc2-8c61-68a117af23ee/1/do c/06-4881-cv_opn.pdf#xml=http://www.ca2.uscourts.gov/decisions/isysquery/3655e4ac-c860-4bc2-8c61-68a 117af23ee/1/hilite/

     

    reply to this | link to this | view in thread ]

  2.  
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    Mark, Apr 14th, 2009 @ 8:24am

    This is why trademark law also looks at a mark's uniqueness. "Canton" is not a very unique mark, but marks such Pepsi, Hertz, and intel are. It's a fact based question, and the 2nd Circuit's decision is on a motion to dismiss not a motion for summary judgment.

     

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  3.  
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    Mark, Apr 14th, 2009 @ 8:27am

    Case Link

    AC's link is down so here is another case link: http://www.scribd.com/doc/13927222/Rescuecom-v-Google-040309

     

    reply to this | link to this | view in thread ]

  4.  
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    Anonymous Coward, Apr 14th, 2009 @ 9:37am

    Re: Case Link

    I am a bit surprised that the link directly to the 2nd Circuit website is not working.

    Of course, and as you note, the decision was not on the merits, but on a procedural matter. Unfortunately, this important distinction is passed by as bloggers proclaim "the sky is falling".

     

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  5.  
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    Anonymous Coward, Apr 14th, 2009 @ 12:30pm

    Assuming t is accurate to say "...trade-mark infringement only occurs when there is "use" in conjunction with similar products or services" then you really need to consider why Google makes a suggestion about the use of a particular keyword - if the suggestion is inspired by the knowledge of a related product or service then things are going to get grey quickly.

     

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  6.  
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    takis, Apr 25th, 2009 @ 7:13pm

    mark pepsi in greek means digestion

    why should i not be able to use it? think about that for a sec

     

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  7.  
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    Mark, May 3rd, 2009 @ 12:28pm

    Re: mark pepsi in greek means digestion

    That may be true... and if you were using it in Greece, a Greek community, or any other number of relevant places that would be a great argument.... but it is still a fact based argument. In this particular case, however, we would be looking to see if Google was recommending a greek digestive aid or a cola -- based off the keyword "Pepsi" -- in the case of a Greek digestive aid, Google should probably win because it will be tough to prove confusion(although even that is questionalbe as I don't know how much market saturation Pepsi Cola has in Greece). The law (at least as written -- if not always applied) has more than enough pragmatism built in to handle word use in multiple languages -- but the point is, such arguments are almost always going to be fact based -- not law based.

     

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  8.  
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    George Galustian, Feb 9th, 2010 @ 7:22am

    Trademark infringement can create mail fraud

    Company A has a trade mark that is in area a with an address
    A : PO BOX 12345
    Google advertises A AS B through its several different techniques
    Company B Receives all the inquiries that are meant for company A
    Google will be receiving funds to do this legally this will be classified as
    aiding and betting A federal Crime Google as well as the company B will be liable for mail theft the intention of weather the company made money from this action or not will be decided by a Federal judge
    http://criminal-law.freeadvice.com/criminal-law/mail-fraud.htm

     

    reply to this | link to this | view in thread ]


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