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.
Hide this

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team


Reader Comments

Subscribe: RSS

View by: Time | Thread


  • identicon
    ulle, 29 Sep 2006 @ 9:56pm

    trademarks

    sooooo, your company is not making money liked you thought it would,,, what to do,,, heck sue someone like google after all it can not be your companys fault it is doing terrible, it has to someone elses fault

    link to this | view in chronology ]

  • identicon
    Steve E, 30 Sep 2006 @ 3:19am

    This has confused me a little. I thought Google didn't allow anyone but the trademark owners to bid on brand terms (company names etc).

    Does this mean if I owned an online store selling holidays I could bid on the keyword Expedia on Adwords or not??

    link to this | view in chronology ]

  • identicon
    Me, 30 Sep 2006 @ 3:27am

    Bummer

    I use adwords , and at some point I wanted to promote an Ipod related product , and in order to describe the product , I could not use the word Ipod .
    I just couldn't use the word , in any context . Google forbids using the term Ipod for describing related products ..

    link to this | view in chronology ]

  • identicon
    Jimmy Bear Pearson, 30 Sep 2006 @ 6:17am

    Re: Steve

    IANAL, but yes, that seems to be the idea behind the judgement.

    link to this | view in chronology ]

  • identicon
    Scott Lawton, 30 Sep 2006 @ 9:18am

    the issue seems more complex

    I'm NOT an expert on this issue, and at first glance I'm in favor of allowing ads against TMs (pending a definitive legal analysis). But, a bit of research suggests that you may not be reporting the past cases accurately. For example, the Tech & Law blog says "based on the four on-point precedents that all went against search engines, I would have predicted a Google loss", Read the whole post at http://blog.ericgoldman.org/archives/2006/09/google_wins_key.htm -- there are further interesting details. I don't know whether Goldman is correct, but he seems like a credible source. (The usual disclaimers: I don't know him, am not involved in the case, etc.)

    link to this | view in chronology ]

    • icon
      Mike (profile), 30 Sep 2006 @ 10:39am

      Re: the issue seems more complex

      I'm NOT an expert on this issue, and at first glance I'm in favor of allowing ads against TMs (pending a definitive legal analysis). But, a bit of research suggests that you may not be reporting the past cases accurately.

      Scott, that's a good link (and I've added it to the story above). I think part of the confusion was in the way that the News.com article reports the story, so I apologize. However, I don't think it really disagrees with what I'm saying -- though perhaps to a degree it does. It's true that in the previous cases the judges basically punted on the liability issue -- so I'm not sure it was that obvious that a judge would side against Google. However, what the Goldman post does do is show that the case was focused more on the overall liability of search engines, rather than the question of confusion -- and that's a useful precedent to set.

      I do think that this decision is very much in line with how trademark law is supposed to be used, however.

      link to this | view in chronology ]

  • identicon
    Ryan, 30 Sep 2006 @ 12:34pm

    How is this still a good thing?

    My company for example.. if you type in our URL.. 3 ads show up above it with the title of nothing but our URL..

    when you go to the site, they again use our terms on teh site.

    As a visitor, I'd actually believe that the other site is our URL....


    If I opened up a resaturant in the real world, and called it McDonalds... and advertised it as McDonalds, I'd be sued.

    How come I'm not liable online?

    link to this | view in chronology ]

    • icon
      Mike (profile), 30 Sep 2006 @ 12:59pm

      Re:

      My company for example.. if you type in our URL.. 3 ads show up above it with the title of nothing but our URL..

      when you go to the site, they again use our terms on teh site.


      That's a different situation. If the ads are confusing, then it is a trademark violation... but only for those taking out the ads.

      You have to separate out a few issues. Is it a violation to simply advertise when people are looking for your competitors? No.

      Is it a violation to make ads that will confuse people into believing your site is a competitor's? Yes.

      Is it Google's fault if someone makes an ad that will confuse people into believing your site is a competitor's? No.

      So, in your case, there was confusion, so the company who took out the ad is probably violating your trademark (assuming you have a trademark on it). However, Google is not violating it. At the same time, if someone had an ad that wasn't confusing people, but simply pointed to the competition, that's perfectly legal. It's called competing.

      link to this | view in chronology ]

  • identicon
    Jo Mamma, 1 Oct 2006 @ 1:16am

    A bit off topic, but...

    You know, reading this article reminded me of the now age old struggle between nissan motors and nissan computer.

    Basically, this (presumably) small business person with the last name of Nissan registered nissan.com in the early 90's (very smart)... and when Nissan motors finally woke up to the dot.com era, they decided to try and force him out of business by suing him for the domain name... and they've been suing him ever since (can you say evil?). I can't believe this guy has the resources to go against a major corporate legal offensive for this long.

    I saw this years ago and marveled at how badly this Nissan guy is getting screwed by Nissan motors... and they're still trying to get the domain name from him! Amazing.

    Well, ok I guess this was totally offtopic, but checkout nissan.com... I find it interesting. And I wish him the best of luck. Hopefully, he'll have his legal fees returned and maybe even end up selling the name when he retires.

    link to this | view in chronology ]

    • identicon
      biotunnel, 1 Oct 2006 @ 6:38am

      Re: A bit off topic, but...

      big companies have resources ... they have hired legal companies to fight each case with you ... it is not hard for them to battle with some guyfor 10 years ... Nissan Motors will probably never stop ...(until they really get the domain)

      link to this | view in chronology ]

  • identicon
    Skeptical, 1 Oct 2006 @ 11:08am

    Hard to believe

    I don't see what the problem is here.
    If a company is afraid of competetion then they are in the wrong buisness... maybe people should rely more on service and quality rather than suing everyone else that is (possibly) better than them.

    link to this | view in chronology ]

  • identicon
    rcanderson, 1 Oct 2006 @ 4:04pm

    stupid area 51

    Auroa is just the beginning.

    link to this | view in chronology ]

  • identicon
    craig, 1 Oct 2006 @ 9:59pm

    If I opened up a resaturant in the real world, and called it McDonalds... and advertised it as McDonalds, I'd be sued.

    This is not the same thing. This is more like opening a restaurant called "Rusty's Burger Bin."
    You then bid on the adword for McDonald's, and win, so now when someone types McDonald's into Google, up comes your ad which says "Come to Rusty's Burger Bin - We Bet You'll Love Our Burgers Better!"

    Not a trademark violation. And no way does Mcdonald's owning a trademark on its name mean that Google has to prevent any competitor's site coming up in its search results, even if they are paid ad search results.

    link to this | view in chronology ]

  • identicon
    Nick Iler, 2 Oct 2006 @ 12:52am

    Hell - I'll start a company suing other companies!

    Do I have any investors? I think this is going to do it. Oh, dammit! I forgot to get a patent.

    link to this | view in chronology ]

  • identicon
    RantMax, 2 Oct 2006 @ 6:27am

    Jesus f... Christ!!!

    Mike, dude, damn it.. !

    "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)."

    Aren't you sick in pasting this in EVERY SINGLE ARTICLE even remotely related to trademarks in some way?

    We get it, all right? I lose actual brain cells when I see you repeat the same 4-5 phrases in every post of yours.

    And I do *NOT* want to lose brain cells. Who would want to?

    link to this | view in chronology ]

  • identicon
    Khaliq Musa Hadji, 10 Oct 2007 @ 10:22am

    fs: Apple Iphone 4GB.....$250, Sony Ericsson P1...

    KHALIQ PHONES INC.
    We are specialised in all brand new mobile phones like Samsung , Nokia , Qtek , Imate , Palm Treo , Sony Ericsson , Sidekick , Nextel and many more, They are cheap and unlocked with 12 month international warranty.We sell them in Bulk and in Retails ,We shipped inconjunction with fedEx Express, they shipped within 48hrs to your door step. It is a Buy two and get one for free.

    if interested contact : khaliq900@inmail24.com

    Apple Iphone 4GB.....$250USD
    Apple Iphone 8GB.....$350USD

    PRICELIST FOR NOKIA PHONES IN STOCK :
    Nokia 6125 Bluetooth Quadband Unlocked GSM Phone....$150
    Nokia 6136 Bluetooth Quadband Unlocked GSM Phone....$160
    Nokia 6265i Unlocked GSM Cell Phone.....$140
    Nokia 6282 Unlocked GSM Smartphone......$170
    Nokia 8800 GSM Unlocked GSM 900/1800/1900 World Phone.....$175
    Nokia 770 Internet Tablet Support.....$165
    Nokia 8801 GSM Unlocked GSM 850/1800/1900.....$180
    Nokia E51 QuadBand Unlocked GSM Phone......$160
    Nokia E61 Smartphone Unlocked GSM Phone......$200
    Nokia E70 Unlocked GSM Smartphone.....$150
    Nokia N70 Unlocked GSM Smartphone.....$155
    Nokia N71 Unlocked GSM Smartphone.....$165
    Nokia N72 Unlocked GSM Phone Black....$175
    Nokia N81 8GB Quadband Unlocked GSM Smartphone Black.....$200
    Nokia 7900 Prism Unlocked GSM....$190
    Nokia N91 GSM Unlocked Phone.....$200
    Nokia N92 Unlocked GSM Smartphone....$220
    Nokia N93 Unlocked GSM Phone.....$220
    Nokia N93i Unlocked GSM Phone...$270
    Nokia N95 8GB Unlocked GSM Phone.....$300
    Nokia N75 Unlocked GSM Phones....$350
    Nokia 8800 Sirocco Edition ..$230

    PRICELIST FOR IMATE PHONES IN STOCK :
    I-Mate JAM 128MB Unlocked GSM Phone....$190
    I-Mate JAM GSM/GPRS Pocket PC Unlocked Phone....$180
    I-Mate JAMin GSM/GPRS Pocket PC Unlocked Quadband Phone....$200
    I-Mate JASJAR Quadband GSM Unlocked PDA Smartphone.....$300
    I-Mate K-Jam Quad Band Unlocked GSM Smartphone.....$210
    I-Mate Smartflip Unlocked Quadband Smartphone.....$220
    I-Mate SP5 Unlocked GSM Smartphone.....$130
    I-Mate SP5m Unlocked GSM Smartphone....$120

    PRICELIST FOR MOTOROLA PHONES IN STOCK :
    Motorola Mpx 300...........USD$300
    Motorola A1200 Unlocked Quadband Phone Black.....$170
    Motorola A910 Unlocked GSM Phone.....$130
    Motorola E1070 Unlocked GSM Phone.....$135
    Motorola L2 Candybar RAZR Unlocked GSM Phone....$110
    Motorola Q Unlocked GSM Phone.....$230
    Motorola Rokr E2 Unlocked GSM Triband Phone w/iTunes....$190
    Motorola V1050 Quad Band Unlocked GSM Phone.....$145
    Motorola V195 Unlocked GSM Phone.....$135
    Motorola V3 (Gold) Edition Unlocked GSM Phone....$130
    Motorola V3c RAZR for Verizon.....$135
    Motorola V3i Dolce & Gabbana Unlocked Quadband GSM Phone.....$165
    MOTOROLA V3x (PINK) Unlocked GSM Phone w/128 MB Card.....$140
    Motorola W220 GSM Unlocked Cell Phone.....$180
    Motorola Razr Maxx V6 Unlocked Cell Phone.....$220

    PRICELIST FOR SAMSUNG PHONES :
    Samsung P920 Unlocked GSM Cell Phone......$245
    Samsung I830 Smartphone Unlocked GSM Cell Phone....$220
    Samsung Serene SGH-E910 Unlocked GSM Phone.....$300
    Samsung S401i Unlocked Triband GSM Cell Phone....$180
    Samsung D870 Unlocked GSM Phone.....$200
    Samsung Z710 Unlocked GSM Mobile Cell Phone....$230
    Samsung p900 unlocked GSM Cell phone......$255
    Samsung p860 unlocked GSM Cell phone......$235

    AK Phones:
    AK Mobile AK-Mini....$160
    AK Mobile AK-S1....$170
    AK Mobile AK900.....$220
    AK Mobile DV2...$230

    O2 XdPhones
    O2 Xda Atom.............USD$300
    O2 Xda Atom Exec...USD$310
    O2 Xda Stealth..........USD$320

    GIGABYTE Phones:
    GIGABYTE G-Smart i350...USD$350
    GIGABYTE Doraemon....USD$300
    GIGABYTE g-Cam.......USD$180
    GIGABYTE Keroro......USD$210
    GIGABYTE Snoopy......USD$215

    Linx Phones:
    Linx M1168......USD$170
    Linx M2688........USD$175

    PRICELIST FOR SONY ERICSSON PHONES :
    Sony Ericsson K310 Unlocked GSM Phone....$125
    Sony Ericsson K510 Unlocked GSM PhonE....$135
    Sony Ericsson K610 Unlocked GSM Phone....$145
    Sony Ericsson K790 Unlocked GSM Phone....$180
    Sony Ericsson K800 Unlocked GSM Phone....$170
    Sony Ericsson M600 Unlocked GSM Phone....$155
    Sony Ericsson P990i GSM Unlocked.........$330
    Sony Ericsson W700i Unlocked GSM Phone...$130
    Sony Ericsson W810 MP3 Quadband GSM Unlocked Phone....$135
    Sony Ericsson W850 GSM Unlocked Cell Phone.....$220
    Sony Ericsson W900i Unlocked GSM Phone.....$230
    Sony Ericsson W950 Unlocked GSM Phone.....$240
    Sony Ericsson Z710 Quadband GSM Unlocked Cell Phone.....$240
    Sony Ericsson p910i unlocked GSM phone.....$165
    Sony Ericsson P1 unlocked GSM phone.........$250

    PRICELIST FOR PALM TREO PHONES :
    Handsping Treo 650 GSM Quadband Unlocked Smartphone PDA....$120
    Handsping Treo 700w GSM unlocked phone .....$140

    PRICELIST FOR SIDEKICKS:
    Sidekick ID......$140
    Sidekick 3......$140

    PRICELIST FOR NEXTEL
    Nextel i930..$140
    Nextel i830...$120

    PRICELIST FOR QTEK PHONES :
    Qtek 8100 Tri-Band Camera Music Unlocked GSM Phone White.....$110
    QTEK 8300 GSM MOBILE SMARTPHONE.....$120
    Qtek 8310 Unlocked Quadband GSM Phone....$130
    Qtek 8500 Unlocked SmartPhone.....$125
    Qtek 8600 Unlocked GSM SmartPhone....$200
    Qtek 9000 3G Pocket PC Unlocked GSM Phone.....$250
    Qtek 9100 Smartphone / Pocket PC Unlocked GSM Phone....$150
    Qtek 9600 Unlocked GSM SmartPhone.....$250
    Qtek G100 GPS PPC and Pharos Ostia GPS Software(US Maps)....$155
    QTEK S200 GSM/GPRS Pocket PC Unlocked Quadband Phone.....$165

    Apple MacBook Pro Intel Core Duo 1.83 GHz 15.4" Display Macintosh Notebook..$550
    Apple MacBook Pro Intel Core Duo 2 GHz ( Dual-Core ) 15.4" Display....$560
    Apple PowerBook G4 Motorola PowerPC G4 1 GHz 17" Display Macintosh Notebook..$350
    Apple PowerBook G4 PowerPC G4 1.33 GHz 17" Display Macintosh Notebook..$400
    Apple PowerBook G4 PowerPC G4 1.67 GHz 17" Display Macintosh Notebook...$530
    Apple PowerBook G4 PowerPC G4 1.67 GHz 15.2" Display Macintosh Notebook...$500
    Apple Pro 15 Intel Core Duo 2.16GHz 15.4" Display Macintosh Notebook...$600
    Apple Pro Intel Core 2 Duo T7600 2.33GHz Macintosh Notebook.....$640

    If interested contact : khaliq900@inmail24.com

    link to this | view in chronology ]

  • identicon
    mahmoud braim, 26 Mar 2010 @ 5:31am

    lobying

    is there a lobbying force for the common citezens to affect & interfer in the future of telecommunications and whatever results from semiconductor technology & other technology?

    Mind you theis idea and endevour could acquire amounts of money for whoever initiate and continue especily in democracy environement

    if this is bullshit, at least explain such issues in every language

    link to this | view in chronology ]


Follow Techdirt
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Discord

The latest chatter on the Techdirt Insider Discord channel...

Loading...
Recent Stories

This site, like most other sites on the web, uses cookies. For more information, see our privacy policy. Got it
Close

Email This

This feature is only available to registered users. Register or sign in to use it.