On the 19th of November the Paris Civil Court of Second instance found that Google AdWords in Google France v Syndicat français de la literie has not infringed TM-rights and was furthermore as a (hosting) provider exempted from liability.This comes as a big surprise, taking into account the traditionally very trademark-owner approach of French courts. This case is however NOT ONE OF THE CASE which was REFERRED TO THE ECJ.
Questions remaining after Google France:
When discussing the issue AdWords and liability there are three aspects that need to be addressed separately:
- The liability of Google AdWords for (direct) trademark infringement is the first issue. However this issue was one of the very few things the ECJ in Google really made clear in it’s Google France decision. In the view of the ECJ Google does not infringe third party TM as Google doesn’t use the TM in the course of trade (para 55). Thus, following the ECJ’s Google France decisions it will be very hard to a court to rule that Google infringed third party TM rights.
- The second issue is the liability of individual advertisers for trademark infringements. The ECJ’s answer to this question was very vague and is currently the most important question in regards to keyword advertising.
- The third issue concerns the indirect liability of Google as it a (hosting) provider, allowing advertisers to book keywords and to draft the text of ads. The ECJ was again very vague when it came to answering this question, and left practitioners, lawyers and judges with the smart formula that Google might only be exempted from liability for the TM-infringements of its clients if Google remained ‘neutral‘. Needless to say that the ECJ didn’t really specify what it meant by ‘neutral‘.
This is the background against which the most recent post-Google-France decision on Google France was delivered in the case “Google France / Syndicat français de la literie” by the Cour d’appel de Paris on the 19th of November 2010.
Facts of the case:
In this case the owners of a trademark with a reputation (‘Belle Literie‘) were litigating against Google but didn’t succeed. According to leading German IT/IP-website Links&Law the court revoked the decision of the court of first instance from 2007 and found, based on the ECJ’s Google France decision, that Google had not infringed trademark rights and that Google was exempted from liability as a provider (Art 14 2000/31/EC). The court however ruled that the liability exemption might become invalid if the provider fails, to expeditiously remove or disable access to information which caused the infringement. In the respective case the notification of the trademark owner however was found by the court to have been too vague.
No (direct) TM-infringement by Google:
One can only but agree with Dr. Ott that the fact that court found no direct TM-infringement does not come as a big surprise.
Google acting as a neutral hosting provider:
What however came indeed as a big surprise is the fact that the court also ruled that Google was exempted from liability as a provider. In fact this means that the court is of the opinion that Google AdWords stayed “neutral“. In this context the court explicitly mentioned that it is the advertiser who chooses the keywords and that Google even warns the advertiser about possible TM-infringements also in respect to the “broad match function“.
Translation by Google Translate: “That with respect to keywords, it is undisputed that Google warns that advertisers on the consequences of their choices and the possible presence in the list of terms suggested by the generator (which operates automatically from queries the most frequent users), signs covered by an exclusive right, otherwise not involved in this election nor in the one made by advertisers of the “broad match” […] That the choice of keywords is thus the result of the advertiser […] There is no evidence that Google has control over such a choice;
Authentic French text: “Que s’agissant des mots clés, il n’est pas contesté que Google qui met en garde les annonceurs sur les conséquences de leur choix et sur la présence possible dans la liste des termes suggérés par le générateur (qui opère de façon automatique à partir des requêtes les plus fréquentes des internautes), de signes couverts par un droit exclusif, n’intervient pas autrement dans ce choix ni dans celui effectué par les annonceurs de l’option “requête large” […] Que le choix des mots clés est ainsi le fait de l’annonceur […] Qu’il n’est pas établi que Google exerce un contrôle sur un tel choix “
In the light of a long history of French court finding Google liable and guilty pretty much on all legal grounds one can think of; this is indeed a very interesting development.
Notice being to vague:
A second very interesting aspect of this case lies in the fact that the court apparently found the notice in which Google got informed about the alleged TM-violation to “vague“. The reason therefore was the claimant back in 2005 sent an old-fashioned (registered) letter which only contained the information that Google used the TM as a keyword but did not further specify the infringement.
Translation by Google Translate: “Rapid investigations have indeed found that your company uses this brand as ‘keyword’
Authentic French text: “Rapid investigations m have indeed found that your company uses this brand as ‘keyword’).
The decision it seems to be clear victory for Google as the French court did not only correctly apply (something previously mainly the Germans but for sure not the English were famous for) the ECJ’s Google France decision is respect to the direct TM-infringement but also ruled that AdWords stayed “neutral” and thus should benefit from the hosting liability exemption.
For more information please wait for a member of the IPKats team who can actually speak French to write a more detailed and profound analysis of the decision😉