Intellectual Property Law

Well, the French seem to think so.  On Wednesday, a French court of appeals upheld a lower court ruling finding Google liable for trademark infringement for selling Louis Vuitton?s trademarks to competitors as keywords for advertising.  Previously, a French court had also ordered Google to stop selling the trademarks of Le Meridian Hotels and Resorts as keywords for advertising.

On the other hand, the courts in the United States who have ruled on the issue have, for the most part, found that the mere act of selling trademarked terms as keywords for advertising does not amount to trademark infringement.  However, as one of my colleagues blogged in April, by no means is this settled law.  In a case involving Geico, after previously ruling that the sale of keywords does not, as a matter of law, amount to trademark infringement, the federal court later suggested that allowing advertisers to purchase trademarks as keywords for advertising does constitute "use" of the trademarks by Google.  Use of a trademark is a required element of trademark infringement, and is the element the courts have struggled with most.  Another wrinkle in the Geico case is the court?s suggestion that Google might be liable for trademark infringement and resulting damages if the advertisements -- that are triggered when a user searches a trademarked term - contain the trademarks themselves.

Google?s position is, and its trademark policy states, that the advertisers are solely responsible for the keywords they choose and the content of their ads.  However, the policy does provide a trademark complaint procedure allowing trademark owners to notify Google of the use of trademarks in ad text (as opposed to keywords) and for Google to investigate and require the advertiser to remove ads containing the trademarks. 

Given the importance of search engine revenues attributable to selling keywords for advertising, there is a big incentive to fight these claims, and it remains to be seen where the courts will ultimately end up on these issues; except maybe in France.

Today's blogger:  David Stoll