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.