Another Bad French Ruling Against Google Over Trademarked Adwords

from the this-again? dept

Thu, Feb 5th 2009 10:48pm — Mike Masnick

It's amazing that after all these years, we're still seeing these types of lawsuits -- with these types of results. It involves the question of whether or not a company can buy an AdWords advertisement on Google using keywords that are trademarked by a competitor -- and then, secondarily, if this is trademark infringement, whether or not Google is liable. I have trouble seeing how the answer to the first question is even a yes, but French courts have repeatedly said yes not just to the first one, but to the second question as well. This time Google is being fined hundreds of thousands of euros for allowing certain trademarked words to have advertisements run against them.

It's hard to see how this makes any sense at all. First, unless the ads are designed to confuse someone, there should be no question that ads against a competitor's keywords are perfectly legal. There's no customer confusion (the point of trademark law). It's no different than having your product placed on the grocery store shelf next to competing products, or (as is quite common in supermarkets these days) having a coupon print out for your product when you buy a competing one. Claiming this is trademark infringement is just a weak attempt to stifle competition by brands that don't want to compete.

That said, even if you somehow think that this is trademark infringement, it's an even bigger stretch to then pin the liability on Google. The actual party doing the "infringing" would be whoever bought and created the advertisement. Going after Google is a Steve Dallas defense: going after the biggest company that, tangentially, is involved just because it has the biggest bank account. Sure, Google makes money from the ads, but that shouldn't create liability any more than the guy who sells the paints that are used to paint a trademark-infringing billboard is liable for what's painted. Like the paint seller, Google is just a tool provider and has nothing to do with the content. Unfortunately, this bit of common sense still hasn't made it into the French court system.

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Filed Under: adwords, france, trademarks
Companies: google

22 Comments

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phil (profile), 5 Feb 2009 @ 10:58pm

French law
"There's no customer confusion (the point of trademark law)"

I assume this is the law in the USA, but is it the law in France or Europe?

If the law is different, no matter what the opinions are, the judges have to rule on the law.

Voilà
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Frosty840, 5 Feb 2009 @ 11:44pm

Heck, my main worry with google's sponsored links is the fact that a whole bunch of them just lead directly to malware sites.

Searches for winzip and winrar have sponsored links which direct to malware, as do searches for a large number of popular applications.

Maybe if this frivilous money-grab by the EU were to solve that problem, the fine would have some reason behind it.
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inc, 5 Feb 2009 @ 11:59pm

American and French Perspectives on Trademark Keying
This sample shows some of the differences. I personally don't agree with the French system. Google should charge more for these keywords and pay out less for hits on them to offset the legal fees. I'm sure there is some EU regulation against that as well.

http://www.lctjournal.washington.edu/Vol2/a014Keenan.html

Despite the similarities between American and French law, there is a crucial distinction. The French Intellectual Property Code, Article L. 713-2, also provides that a trademark is infringed, even where there is no likelihood of confusion,40 when: (1) defendant reproduces the characteristic elements of the mark,41 or (2) defendant uses the mark in any act of commercial competition conducted with a counterfeit mark.42 This infringement provision reflects France’s view that trademark rights are akin to property rights. French trademark law is concerned with “protectible” features of trademarks such as their owners’ goodwill and reputations, which require investment of financial and intellectual resources.43 These rights are established over time and may be subject to infringement even in the absence of likelihood of confusion.
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Why not, 6 Feb 2009 @ 1:48am

just
block the french... Amazon should do the same... just block them.. they don't like the outside world anyway and shun most things 'non-french' ... let's shun them right back let them sink back into the stone age..
Once the people get pissed enough.. I'm sure we'll see changes come about.. heads may even roll.. literally.. ....

... if they don't surrender first...
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uhmno, 6 Feb 2009 @ 2:02am

Re: just
You should never ever leave the US, it's because of people like you that the rest of the world thinks all Americans are assholes.
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just, 6 Feb 2009 @ 2:23am

why not
A) I'm not American
B) I've had the misfortune of dealing with french people on their home ground
c) Lovely country, shame about the protectionist attitude of the government and a lot of the people.
d) Why an asshole? They've made it clear that they will continually mess with international services in their country. Blocking them is rather obvious, and extreme.. but still obvious... the only thing remotely 'asshole'ish' was the JOKE at the end.. 'if they don't surrender first' ..

Geez.. next you're gonna say that you're going to sue me... because you don't like what I'm saying..
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mcvooty, 6 Feb 2009 @ 4:32am

Re: American and French Perspectives on Trademark Keying
The German Supreme Court has now referred the question of whether trademark keywords is an infringement to the European Court of Justice. The ECJ also has pending trademark keywords referrals from Dutch and French courts. So the ECJ will rule on the issue and settle the matter for the entire EU, although we shouldn't expect a decision this year.
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Jon, 6 Feb 2009 @ 4:36am

Europe is stupid
Europe loves to sue big American companies for nothing. Cough Cough Microsoft... How are you going to get on the web in the first place without a browser pre-installed on your computer? Go out and buy one?
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Peet McKimmie (profile), 6 Feb 2009 @ 4:58am

Huh?
the question of whether or not a company can buy an AdWords advertisement on Google using keywords that are trademarked by a competitor -- and then, secondarily, if this is trademark infringement, whether or not Google is liable. I have trouble seeing how the answer to the first question is even a yes, but French courts have repeatedly said yes not just to the first one, but to the second question as well.

Surely if the answer to the first part is "Yes" there's no problem? Do you ever read what you post?
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Jack Sombra, 6 Feb 2009 @ 5:24am

"Europe loves to sue big American companies for nothing. Cough Cough Microsoft... How are you going to get on the web in the first place without a browser pre-installed on your computer? Go out and buy one?"
Funny it was the Americans who sued MS for this first, not the Europeans

The difference was Americans let MS continue as normal after some nice payouts, europe is sticking to it's principals
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Reason, 6 Feb 2009 @ 7:09am

Re: why not
I agree with both of your posts. If the French don't like it, then cut them off. Google can't possibly miss the income from France, as it seems the costs of defending themselves there would exceed any profits made.

Cut off Italy, too.
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awa, 6 Feb 2009 @ 7:28am

There were similar differences at play with the eBay cases from last Summer. In the US, we have a principle of "nominative fair use" whereby one actor may make reference to the NAME of another actor, as long as he's not trying to say his product comes from the same source or origin. This principle was never discussed in the French case against eBay, but was featured heavily in the US case against eBay.

In the French case, there was no analysis of the circumstances or the manner in which the trademarked name was used. In the US case, Judge Sullivan (SDNY) went through painstaking analysis of the parties, their businesses, how they tried to work together, etc.

Someone said it above: the French courts are exceedingly deferential to their homegrown brands and can be narrow-minded in how they protect those brands. What enables this is also the fact that France is a civil law country, which means they operate off of a "rule book" that leaves relatively little room for nuance, as opposed to the US, which has a vast common law, built on the thousands of slightly different "snowflakes" of each preceding case.
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nasch, 6 Feb 2009 @ 9:29am

Re: Huh?
If the answer to the first question is yes, the answer to the second question should still be no.
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Anonymous Coward, 6 Feb 2009 @ 9:32am

French people are lame... Angry yellow bellied cowards.
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Azrael, 6 Feb 2009 @ 9:33am

Re: Re: just
Who are 200.000 guys walking in a field with their hands above their heads ?
The french army training for war.
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Azrael, 6 Feb 2009 @ 9:36am

Re: Europe is stupid
The way i did: buy an IT magazine which has a cd bundled, there you will surely find the installer for a much better browser - i installed Opera.
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Carl, 6 Feb 2009 @ 1:56pm

Google abandoning France would be foolish
The French have a long history of what are politely called "non-tariff barriers" that they use to protect their local industries while skirting free trade agreements*. This is how, for example, France had an indigenous computer industry long after its products had been hopelessly surpassed by those manufactured elsewhere.

These lawsuits against Google and other "anglo-saxon" (as the French like to say) companies are all about hobbling successful foreign companies while giving local french companies or, worse, government-sponsored research projects a chance to catch up. My prediction: once there is a french search engine capable of making money from keyword ad sales, this legal interpretation while quietly change.

*For example, during the time I worked there, they passed a law requiring all technology products to have instructions in French, rather than letting the buyer decide whether English instructions were acceptable and the maker decide whether translation was worth the cost.
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Anonymous Coward, 6 Feb 2009 @ 2:53pm

Re: Google abandoning France would be foolish
Simple solution: Don't do business in France, with France or with French companies or consumers. Let them make and eat their own shit. As stated earlier, Google should simply cut France off, as should every other website, just in case the French come up with some other bullshit (and trust me, they will).
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Mark, 6 Feb 2009 @ 10:48pm

Dont get you guys at all
I think you above are all missing the point. Whilst I agree with many critcisms of the French, I feel you dont understand what Google is doing. Imagine I create a brand of clothing called "X" for sake of argument. The brand does well people like it and I want to sell it more online... I buy trademark for X so nobody can copy me. Then a very big rich company called "Y" thinks, "hang on X is pretty popular I will pay google a lot of money so that anytime somebody types in X to the search engine they will see Y at the top of the results and X wont be anywhere to be seen". Of course your argument is "but Y cant be confused with X". Agreed, but if companies with lots of money push small companies out of google's top rankings using small co.s TM'd name, dont you consider that unfair competition? If people keep getting directed to Y they will give up on X and buy Y clothing - that is advertising for you. Google allows this bad practice and therefore should be punished (naughty naughty!) along with the company responsible. This would apply to any country not just France and is a problem in other countries too.
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cKarlGo, 9 Feb 2009 @ 5:57am

Invade!!!
Google should just invade France. God knows, they roll over and surrender quickly enough.
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Anonymous Coward, 9 Feb 2009 @ 1:29pm

Moron in a hurry.
So it appears that French courts generally assume that the population under their collective jurisdictions have less common sense that a moron in a hurry.

Curious.
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polo, 10 Feb 2009 @ 11:14am

racist
lots of racist comments here
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