It's getting a bit tiresome to see these types of lawsuits, but Eric Goldman notes that this appears to be the ninth such lawsuit against Google, claiming trademark violations for allowing people to buy AdWords on trademarked terms (or suggesting them as keywords). This time the company suing is Rosetta Stone, but the complaint is basically the same. In fact, it uses the same lawyers and apparently the same boilerplate language as some previous lawsuits (wonder if they charge full price for reusing the same text?). The problem is the same, however. It's a general misunderstanding of the purpose of trademark law, which does not give the trademark holder full control over the trademark, but merely is designed as consumer protection to stop confusion among buyers or, possibly, dilution of the trademark. But that does not prevent the use in competitive advertisements. And, even if it did the liability would be on the advertising party, and not Google. But Google has the cash, so everyone sues Google.

I was quite surprised last week to find out that Google has changed its rules on trademarks and AdWords in many countries around the world. In the past, it had limited the use of trademarks both in the ads and (more importantly) as keyword triggers. In the US it had allowed trademarks as keyword triggers (in most cases), but in other countries, where the laws and the courts more heavily favored trademark holders, the company had been much more strict.

Now, I think Google is absolutely right to take this stance, as I don't see why it should be a problem at all to advertise on trademarked keywords, so long as the ads aren't confusing to the users. Trademark is not about ultimate control over the mark, but has always been designed for the sake of consumer protection, to avoid having someone buying Bob's Cola thinking it's Coca-Cola. It was never designed to give total control to one company and allow them to prevent anyone else from making use of the trademark. Yet, over the years, trademark law has drifted further and further from those origins, and today many people falsely believe that it's just like a patent or a copyright.

And, of course, even if you grant the (false) premise that trademarked terms shouldn't be used as keywords to trigger advertising, it's doubly ridiculous that Google should be liable. Google is just the platform provider, and if there needs to be any liability, then it should be on the advertiser, not Google itself.

So while I'm quite happy that Google is taking this stance, I'm really surprised (and somewhat confused) as to why it's doing so. It will almost certainly lead to a lot of expensive lawsuits around the globe -- and given how some other countries interpret trademark law these days, Google stands a decent chance of losing in some of those locations. Even in the US, the issue still comes up quite often... and, in fact, just as this change was being announced, a class action lawsuit was filed against the company in the US over the issue. Hopefully this case goes nowhere fast, because it seems to be repeating all the mistakes of earlier cases, misunderstanding the purpose of trademarks and falsely blaming Google rather than the actual advertisers. However, it's noteworthy in that it's the first class action suit of this nature, rather than just a single company. That means there will likely be more such suits on the way... and we'll start to see them internationally as well, thanks to the policy change.

In a NY Times article about both the change and the lawsuit, a representative from Google is quoted as saying:

"I think that there will be trademark owners that do not like this policy," said Terri Chen, senior trademark counsel at Google. "But trademark law allows for that. It is a pretty well-established principle in the offline world and in the online world."

Again, while I agree, I find Google's somewhat cavalier attitude towards the lawsuits that are certainly on the way surprising. It's not just that trademark owners won't like the policy. Many of them are going to sue -- and trademark law around the world (unfortunately) is not as "well-established" as Chen seems to make out. All in all, it seems a bit surprising that Google would go out of its way to attract new lawsuits. Could it be that the company is back to fighting certain lawsuits for principle? This was something the company had done years ago, but had largely abandoned of late. Or is there some other reason? Some might argue that it's a pure money grab, as this will allow more (and potentially more lucrative) advertising to run on the site, but the cost of lawsuits and the uncertainty of those lawsuits could be quite expensive.

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.

I tend to believe most of the lawsuits companies raise over the use of their trademarks as keywords or in ads on Google are bogus. They tend to stem from companies believing they own all rights to the trademark, rather than recognizing that a trademark is designed more to prevent customer confusion. Yet, a new case that is getting attention seems a bit different, and from the facts presented (admittedly from one side only), raises a lot of concerns. Jeremy Shoemaker, a somewhat well-known internet marketer (under the name Shoemoney), had gone through Google's regular procedure to register his trademarks to prevent other companies from showing those trademarks in an ad. Yet, he discovered recently that at least one advertiser was able to keep showing ads with "Shoemoney" in the ad -- and even using it as the sole "title" of the ad, which could certainly confuse people into believing the ad would lead to Shoemaker's own site.

The site that it did lead to was registered under a masked name, so he ended up getting a subpoena and uncovering the name of the individual who owned the site. And here's where it gets odd: there's a lot of evidence out there that the guy in question works for Google having something to do with AdWords. So, Shoemaker has sued the employee (not Google itself, though). There are a lot of questions raised about this, including why it appears a Google employee may have been able to bypass Google's own blocks on using trademarked terms to run these ads. There's also an accusation, though again from just one side, that the same guy appeared to be using the identical keywords that Shoemaker uses -- suggesting that he had access to Shoemaker's account.

The whole thing seems pretty questionable -- and Google's response so far (a big "no comment") isn't particularly reassuring.

One of our big complaints with the various lawsuits filed over companies buying ads in search engines based on trademarks of their competitors was the idea that somehow the search engines themselves were liable as infringers. That made little sense. The purpose of trademark law is to avoid consumer confusion, not give the mark holder total control over the mark. If the ad itself is confusing, then you could see a reason to sue the company that created the ad -- but it's ridiculous to blame Google or Yahoo, who had no part in actually creating the ad. A variety of lawsuits had agreed -- and, in fact, most of the recent lawsuits on this topic that we'd seen involved companies suing whoever took out the actual ad.

Unfortunately, it looks like that's about to change.

Eric Goldman has an analysis of a new Second Circuit ruling that found that Google is potentially liable for ads bought on trademarked terms, overturning a lower court ruling that made sense. Goldman points to some factual errors made by the court in making this decision, but the oddest bit of reasoning is that the court actually took on a point that we often raise here in discussing these types of cases: no one thinks there's any trademark infringement because a supermarket places multiple brands of soda in the same spot. The supermarket knows that people may be looking for Coca-Cola, but may be tempted to buy the off-brand cola that's on sale. That's not trademark infringement against Coca-Cola and certainly not the store's liability.... or is it. In this ruling, the court noted:

It is not by reason of absence of a use of a mark in commerce that benign product placement escapes liability; it escapes liability because it is a benign practice which does not cause a likelihood of consumer confusion. In contrast, if a retail seller were to be paid by an off-brand purveyor to arrange product display and delivery in such a way that customers seeking to purchase a famous brand would receive the off-brand, believing they had gotten the brand they were seeking, we see no reason to believe the practice would escape liability merely because it could claim the mantle of "product placement."

That implies that Google's placement of search ads somehow tricks users into believing when they click on, say, an ad for Avis, they're actually going to the Hertz website. Yet, there doesn't seem to be any evidence presented that users are regularly fooled by such ads. Most users recognize that ads are ads.

The ruling pins liability on Google because Google "suggests" terms that may be relevant, and since it suggests trademarked terms at times, that dumps the liability onto Google. But, again, that makes little sense. Nothing that Google does is specifically causing confusion. Simply suggesting a trademark isn't confusing anyone. Unfortunately, though, as the EFF points out in its analysis of the ruling, this is likely to lead to a lot of new bogus lawsuits against Google, and (most likely) Google scaling back some of its AdWords tools and programs, giving consumers less ability to find out about competitive offers when we search.

Late last year, we wrote about Psion's attempt to reclaim the word "netbook." Years back, the company had a marginally popular product with that name -- though it no longer offers such a product. The company was apparently upset at the commercial use of the word "netbook" which is commonly being used to describe cheap, small laptops like the EeePC. jkOnTheRun now has a story -- direct from Psion PR -- claiming that Google has agreed to block Google ads that use the term after recognizing that Psion has a trademark on the term.

Of course, advertisers can still advertise using the keyword "netbooks" but are apparently barred from actually using the word in the advertisement itself. So a search on "netbooks" still shows ads -- just none of those ads say "netbooks" anywhere. Thus, if you look at the netbooks search, you see all the ads refer to things like "mini notebooks."

This seems pretty pointless all around. As much as Psion may wish it still holds onto the name of a product it stopped selling years ago, the term has become generically accepted as referring to this generation of small and cheap notebook computers. Psion has had nothing to do with the current value in the word, and its attempt to take back control over the word it abandoned years ago is not, at all, what trademark law was intended to allow.

It's amazing that after all these years, we're still seeing these types of lawsuits -- with these types of results. It involves the question of whether or not a company can buy an AdWords advertisement on Google using keywords that are trademarked by a competitor -- and then, secondarily, if this is trademark infringement, whether or not Google is liable. I have trouble seeing how the answer to the first question is even a yes, but French courts have repeatedly said yes not just to the first one, but to the second question as well. This time Google is being fined hundreds of thousands of euros for allowing certain trademarked words to have advertisements run against them.

It's hard to see how this makes any sense at all. First, unless the ads are designed to confuse someone, there should be no question that ads against a competitor's keywords are perfectly legal. There's no customer confusion (the point of trademark law). It's no different than having your product placed on the grocery store shelf next to competing products, or (as is quite common in supermarkets these days) having a coupon print out for your product when you buy a competing one. Claiming this is trademark infringement is just a weak attempt to stifle competition by brands that don't want to compete.

That said, even if you somehow think that this is trademark infringement, it's an even bigger stretch to then pin the liability on Google. The actual party doing the "infringing" would be whoever bought and created the advertisement. Going after Google is a Steve Dallas defense: going after the biggest company that, tangentially, is involved just because it has the biggest bank account. Sure, Google makes money from the ads, but that shouldn't create liability any more than the guy who sells the paints that are used to paint a trademark-infringing billboard is liable for what's painted. Like the paint seller, Google is just a tool provider and has nothing to do with the content. Unfortunately, this bit of common sense still hasn't made it into the French court system.

Every time you think someone has sued Google for every possible sin imaginable, someone pops up with yet another lawsuit. The latest is that Google is being sued by a lawyer (who, of course, is trying to turn it into a class action suit) complaining that the ads he bought on Google were shown on parked domains and error pages which resulted in bad clicks. There are a few separate issues here that all seem to get mixed up in the lawsuit. If the the ads were really shown in places where they weren't relevant, then it shouldn't be a huge problem, as you would expect that there wouldn't be many clicks (Google's ad system only costs money if someone clicks). And, indeed, there were only a few clicks -- and none of those clicks turned into real leads for the lawyer. So the real question might be whether or not those clicks were fraudulent clicks -- but that doesn't seem to be what the lawsuit claims. Instead, the guy is just upset that his ads were shown on such pages and claims that Google is guilty of "fraud, business code violations, and unjust enrichment" for showing the ads on such pages. This seems like a tough one to prove. Google shows ads in plenty of places. If the clicks were fraudulent, that's one thing. But just because the clicks on certain pages didn't turn into leads (and we're talking about a rather small sample size that the guy is basing this on) it doesn't mean that Google is guilty of "fraud."

Forget collective bargaining or a sitdown strike, it appears that Britain's largest private-sector union is engaging in... well... buying some Google ads in protest. The Times Online tries to make this out to be an alternative to a strike or a walkout, and even implies that buying a few Adwords on Google to show their displeasure with the retailer Marks & Spencer would have a similar impact. It's difficult to see why buying some ads on the Marks & Spencer ad is going to have much of an impact at all on any negotiations with the union. The article is actually fairly weak -- not explaining clearly that the union is just buying ads that anyone could buy. It makes it sound as if the union is doing something special to have its complaints seen on Google. It also doesn't mention that M&S could just outbid the union to get a higher ranking in the ads and to explain its side of the story. It is nice that the group is trying alternative means to get its point across, but it hardly seems worth comparing it to a strike, as the article implies.