As Goldman and Ott have already reported Google is doing well on US-soil lately. Right after Rescuecom has dropped its case against Google after 5 years of litigation (just to use Google’s arguments to defend itself against a competitor’s whose TMs Rescuecom had booked as keyword [!]) Google als got some of Jurin‘s claims dismissed as the District Court for the Eastern District of California court found that:a: Google is not creating any confusion as to the origin of goods sold in its ads. b: Google’s Keyword Suggestion Tool is a “neutral” toll that “merely helps” advertisers to deliver their message. c: Google’s Keyword suggestion Tool is also covered by provider liability protection.
a: The court found that Google has not confused users “as to the producers of the goods” (False Designation of Origin, 15 U.S.C § 1125(a) which reads as following:
… “any person who…uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designations of origin, false or misleading description of fact, or false or misleading representation of fact, which…is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods, services, or commercial activities by another person, or in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.”
[Jurin v. Google, Inc., 2010 U.S. Dist. LEXIS 18208 (E.D. Cal. March 1, 2010) p. 7]
The court however held that Google has not presented itself to be the producer or has facilitated confusion with others. The court in this respect cited the US Supreme Court, stating that “the use of the word “origin” refers to a false or misleading suggestion as to “the producer of the tangible goods that are offered for sale.” Dastar, 539 U.S. at 37“.
“… Here, Defendant [Google] has in no way directly represented that it is the producer of the […] product. To the extent Plaintiff [Jurin] may contend that Defendant has helped “facilitate” confusion of the product with others, such is a highly attenuated argument. Even if one accept as true the allegation that a “Sponsored link” might confuse a consumer, it is hardly likely that with several different sponsored links appearing on a page that a consumer might believe each one is the true “producer” or “origin” of the […] product.”
[Jurin v. Google, Inc., 2010 U.S. Dist. LEXIS 18208 (E.D. Cal. March 1, 2010) p. 8]
The words chosen by the court here (“highly attenuated argument”) closely remind me of the words used by the German BGH in Beta Layout (BGH, I ZR 30/07, Beta Layout, GRUR 2009, 500) when it found that
“…dass es eher fern [liegt] dass der Internetnutzer eine Verbindung zwischen der Werbung […] und dem eingegebenen Suchwort […] herstelle …”
Vaguely translated: “that it is a quite far guess to assume that users establish a connection between the advertisement and search terms entered”.
[BGH, I ZR 30/07, Beta Layout, GRUR 2009, 500]
Although the German BGH had brought this argument forward in connection to an alleged image transfer, I think that both courts agree on the issue that users only very seldom establish a mental connection between the search term entered and the ads displayed above or besides the (organic) search results. (For possible reasons why please see my previous post).
b: Concerning the extremely disputed Keyword Suggestion Tool he court stated that Google just provides “neutral tools” and “Defendant’s Adwords program simply allows competitors to post their digital fliers where they might be most readily received in the cyber-marketplace.“
c: Jurin also argued that Google actually created content through its keyword selection tool. The court rejects this, saying that Google is just a provider of advertising space and the keyword selection tool “merely helps third parties to refine their content“–and is thus protected as a provider (230).
Goldman heavily questions the last two arguments. Concerning the issue of protection under 230 Goldman appears sceptic especially as some judges interpret the Keyword Suggestion Tool as Google steering advertisers towards third party trademarks for its own profit. Goldman however openly disagrees with the court on b: as he states that it is correct that Google is (strictly) “technically” selling ad-space and not keywords, “but the reality is that Google takes money for keywords, and I think most judges would embrace substance over form“.
As for the confusion issue I personally agree with the court as I strongly doubt that users might establish a “mental link” between the search terms (TM) entered as a query and the AdWords subsequently displayed. Thus I think that the court was right in the Jurin case and for sure I see only a small possibility of an image transfer as the BGH stated.
As for the Keyword Tool it seems to me that the court in the case at hand has gone too far as I agree with Goldman that Google indeed has a vital interest especially to foster competition for keywords as this will make the prices go up and thus generate more profits for Google. It shall be said at this point however that AdWords has different TM-policies for different countries and that TM-holders in Europe can still complain against the use of their trademark as keyword.
Let’s see what the ECJ thinks about this topic!