Another Judge Says There's No Trademark Violation In Selling Ads On Trademarked Keywords
from the understanding-trademark-law dept
It seems that companies never stop suing over this particular issue. Despite numerous cases before it, including from Geico and American Blinds, yet another company has sued Google because the company’s competitors bought ads on the keyword of their company name, Rescuecom. Of course, this should not be a violation of trademark law. Trademark law is mostly about avoiding confusion for the sake of consumer protection. It’s not about giving the trademark owner full rights over the trademark (similar to copyrights or patents). There is also the secondary issue, over whether this is even a Google issue. If it were a trademark violation, then it should be on the company who bought the ad, not Google, who is simply acting as the platform.
The good news is that in this case, the judge has come out and said clearly that there is no trademark violation in selling ads on trademarked keywords. Unlike in some of the other cases, the judge didn’t punt on the issue and very clearly said there is no trademark issue here. Of course, Rescuecom is not happy with the decision and will probably appeal. It has made a statement on the matter that is worth quoting just for the level of hyperbole: “A dangerous precedent has been set that allows a behemoth to pit smaller competitors against one another, while it rakes in the additional revenue. The immense power enjoyed by Google will be compounded by this ugly tactic as advertisers clamor to reach critical online audiences. Rescuecom will not be the last company hurt by this scheme.” Of course, much of that statement is wrong. This really is no different than earlier cases, and it is consistent with the purpose of trademark law. It has nothing to do with allowing a behemoth to do anything, and whether or not Google makes money has no real bearing on whether it’s a problem for Rescuecom. Furthermore, it’s not clear how Rescuecom is “hurt” by this. If it’s true that they’re hurt by someone else’s ad, then it would seem that any competitor’s advertisement is hurting them as well — but last we checked, advertising against your competitors is perfectly legal. Update: Lawyer Eric Goldman has a great summary of the details in the decision. As noted here, unlike previous cases, this judge didn’t punt on the issue, but clearly said that search engines selling ads on trademarks are not violating trademark law. However, the News.com article was a little confusing, and may have missed the bigger point. In this case, the judge was more focused on that “second” issue I described above: Google’s liability. That’s what the decision was based on, saying that a search engine selling keywords is not “using the trademark in commerce” and therefore there’s no misuse. So, the decision is a big deal, because it highlights that search engines selling ads on trademarks are not actually using the mark in commerce, and therefore, not liable for its misuse (though, the advertisers who buy the ads still could be, depending on how it’s used). Update 2: It turns out that the company thought this lawsuit would make for a good publicity stunt. Nice of them to abuse the legal systems for the sake of PR.