google adwords and meta-tag litigation

Len Mancini June 2015

Use of TM’s Online

Use of TM’s Online• The use of TM’s in keywords

and metatags/HTML has been particularly controversial since 1999.

• First time in 11 years that Google is not a party to a suit in this area.


Are PANADOL’s trade marks being infringed by the chemist

or the brand owner placed adjacent to the Panadol?

No


Are PANADOL’s trade marks being infringed by the chemist that purchased the PANADOL

keyword or alternatively is Google liable for infringement ?


Should there be any difference between the outcome of the

bricks and mortar example and the online example?

Brookfield Communications v West Coast Entertainment

CorpMetatags Case


CorpMetatags Case

Respondent WCE used “MOVIEBUFF” in its invisible HTML code

Judge considered whether this could amount to TM infringement.


CorpMetatags CaseHeld that search engine might read the code and put the website in the list of results for searches conducted with the word in question.

But does that amount to actionable infringement?


CorpThe judge said:

West Coast's use of "moviebuff.com" in metatags will still result in what is known as initial interest confusion. Web surfers looking for Brookfield's "MovieBuff" products who are taken by a search engine to "westcoastvideo.com" will find a database similar enough to "MovieBuff" such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead. Although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using "moviebuff.com" or "moviebuff" to divert people looking for "MovieBuff" to its web site, West Coast improperly benefits from the goodwill that Brookfield developed in its mark.


CorpWest Coast Video Store

Exit 7


CorpBLOCKBUSTER VIDEO

STORE


Corp• This decision resulted in some pretty ordinary jurisprudence.

• Why? because Brookfield bypassed the well regarded multi factor Sleekcraft test for confusion used widely in US TM law and replaced it with a missapropriation of goodwill test.

• Successive Judges tried to harmonise the initial interest confusion test with existing multi factor Sleekcraft test used widely in US TM law – and failed.

Playboy v Netscape 2004

Playboy v Netscape 2004• Did not appreciate

Netscape providing searchers with alternative adult entertainment options

• Netscape received advertising fees from the alternative content providers.

• Content providers did not however select the keyword, Netscape did.

Playboy v Netscape 2004• The decision was, like Brookfield, not a final decision.

• The majority affirmed Brookfield and that initial interest confusion doctrine was available for Playboy.

• Court held that Playboy may also be able to establish regular infringement where there was no source of identification on the banner ad and where the confusion may persist more than just initially.

• Pointed to an expert report that found that a majority of consumers thought the sponsored ads were from Playboy or was otherwise associated with their owners.

The Early Google Adwords Cases

1-800 Contacts, Inc. v. WhenU.com and Vision Direct,

Inc. 2005

keyword


Inc. 2005• Recognised the real world equivalent examples:

Indeed, it is routine for vendors to seek specific "product placement" in retail stores precisely to capitalize on their competitors' name recognition. For example, a drug store typically places its own store-brand generic products next to the trademarked products they emulate in order to induce a customer who has specifically sought out the trademarked product to consider the store's less-expensive alternative. WhenU employs this same marketing strategy by informing C-users who have sought out a specific trademarked product about available coupons, discounts, or alternative products that may be of interest to them.


Inc. 2005• This was a pinnacle case that put the

requirement for trade mark use as a threshold matter and not to be overlooked or overshadowed by any initial confusion:

“Not only are "use," "in commerce," and "likelihood of confusion" three distinct elements of a trademark infringement claim, but "use" must be decided as a threshold matter because, while any number of activities may be "in commerce" or create a likelihood of confusion, no such activity is actionable under the Lanham Act absent the "use" of a trademark. 15 U.S.C.”


Inc. 2005• S&L Vitamins v Australian Gold Inc (USA)

2007 & Designer skin llc v S&L Vitamins Inc, et al. (USA) 2008 were two such cases in which the 1-800 decision stood for the proposition that:

“there is no trademark “use” where a defendant does not place the trademark on any product, good or service and where it is not used in a way that would indicate source or origin.

Position in USA as at 2008• The S&L Vitamins cases showed that you can use TM as

keyword triggers for sponsored links that triggers ads for websites that sell TM owner product or competitor product together with TM owner’s product.

• In Hazmik it was found the ads triggered were infringing as they incorporated the TM in the ad copy. Still, case stands for the proposition that using the TM as a keyword not in and of itself infringing.

• The courts were edging their way towards full acceptance of the practice. This did not come for some time.

• In the meantime….

Can we allow Google to come to

France and engorge itself on advertising fees

that diminish French profits and steals their hard

earned reputation

NON!

ECJ

Google France Decision• The Google France Decision can be a reference to:• 22 September 2009 Opinion of the Advocate General of European Court of Justice in

three separate matters:

• Or the decision of the Grand Chamber of the European Court of Justice in respect of the same matters.

Google FranceGoogle Inc.vLouis Vuitton Malletier

Google FrancevViaticumLuteciel

Google FrancevCNRRHPierre‑Alexis ThonetBruno RaboinTiger, a franchisee of Unicis

Google France DecisionFacts: Google and Louis Vuitton Malletier SA

KEYWORDS ADVERTISMENTLouis Vuitton Contained references to TM andLouis Vuitton replica sites linked to have been Louis Vuitton imitation sources of counterfeit LVLouis Vuitton copy products

Google France DecisionFacts: Google and Bruno Rabon and Tiger SARL

KEYWORDS ADVERTISMENTEurochallenges TM not used in copy. Not noted but linked sites offered identical or similar products as those by the TM owners

Google France DecisionFacts: Google and Viaticum SA and Lutieciel SARL

KEYWORDS ADVERTISMENTBDV TM not used in copy but linkedBourse des vols sites offered identical or similarBourse de voyages products as those by the TM owners

Google France Decision• The Advocate General Said:• This question boils down to whether there is a use in the

course of trade. • ….the selection of the keywords is not a commercial

activity, but a private use …...• Again, it must be remembered that the advertisers’

selection in AdWords of keywords which correspond to trade marks can take place for many legitimate purposes (purely descriptive uses, comparative advertising, product reviews, and so on). The consequence of considering that such selection constitutes, in itself, a trade mark infringement would be to preclude all those legitimate uses. (75)

Google France Decision• Nor are trade mark proprietors left totally defenceless with

respect to the selection of keywords which correspond to their trade marks. They can intervene whenever the effects are truly harmful, that is to say, when the ads are displayed to internet users.

• Although the Court has not been asked about the use of the trade mark in the ads, it should be stated that trade mark proprietors can prevent such use if it involves a risk of confusion. Even if no such risk arises, that use can be prevented if it affects other functions of the trade mark, such as those related to the protection of innovation and investment.

• 154. As I have perhaps emphasised almost to exhaustion in this Opinion, it is important not to allow the legitimate purpose of preventing certain trade mark infringements to lead all trade mark uses to be prohibited in the context of cyberspace.

Google France Decision• Held/Concluded on the questions:

• 1. The selection of a TM keyword by an advertiser to trigger advertisements linking to a site operated by the advertiser for the purpose of offering for sale goods or services and which reproduces or imitates the TM covering similar or identical goods, without the authorisation of the TM owner does not constitute in itself an infringement of the TM owners exclusive rights.

• A TM owner may not prevent a Google type service making keywords available that reproduce or imitate the TM for advertising links to sides created and displayed on the basis of those keywords.

• In the event the TM have a reputation the TM owner cannot argue dilution.

Google France DecisionThe Court of the ECJ held:

Test: the proprietor of a trade mark is entitled to prohibit a third party from using a sign identical with that trade mark when

i)that use is in the course of trade, ii)is in relation to goods or services which are identical with, or similar to, those for which that trade mark is registered, and iii)affects, or is liable to affect, the functions of the trade mark.

Google France DecisionLeg 1. Use in the course of tradeApplied: The advertiser purchasing the referencing service and choosing as a keyword a sign identical with another’s trade mark, it must be held that that advertiser is using that sign. From the advertiser’s point of view, the selection of a keyword identical with a trade mark has the object and effect of displaying an advertising link to the site on which he offers his goods or services for sale. Since the sign selected as a keyword is the means used to trigger that ad display, it cannot be disputed that the advertiser indeed uses it in the context of commercial activity and not as a private matter. IS USE Although it is clear that Google operates ‘in the course of trade’ when it permits advertisers to select, as keywords, signs identical with trade marks, stores those signs and displays its clients’ ads on the basis thereof, it does not follow, however, from those factors that that service provider itself ‘uses’ those signs. NO USE – NOT LIABLE

Google France DecisionLeg 2 – In relation to goods and services•the Court held that the use made by the advertiser of a sign identical with the trade mark of a competitor in order that internet users become aware not only of the goods or services offered by that competitor but also of those of the advertiser constitutes a use in relation to the goods or services of that advertisement•even in cases in which the advertiser does not seek, by its use, as a keyword, of a sign identical with the trade mark, to present its goods or services to internet users as an alternative to the goods or services of the proprietor of the trade mark but, on the contrary, seeks to mislead internet users as to the origin of its goods or services by making them believe that they originate from the proprietor of the trade mark or from an undertaking economically connected to it, there is use ‘in relation to goods or services’.

Google France DecisionLeg 3 – affects the functions of the trade mark• Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (‘the function of indicating origin’), but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising•The function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party•In the case where the ad, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trade mark.

Google France DecisionEnd Result in 2010: adwords OK in EU

•the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

•an internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign.

Cosmetic Warriors and Lush Limited v Amazon.co.uk


The TM: LUSH

The GOOGLE keywords:

Lush Soap at Amazon.co.ukwww.amazon.co.uk/lush+soapamazon.co.uk is rated *****

Low prices on Lush SoapFree UK Delivery on Amazon Orders

AND

Bomb Bath at Amazon.co.ukwww.amazon.co.uk/bomb+bath

amazon.co.uk is rated *****Low prices on Bomb Bath

Free UK Delivery on Amazon Orders.


Examined all three instances of keyword for infringement by looking for where the average consumer may erroneously think that the goods advertised emanate from the trade mark proprietor as such a finding would be a finding that the origin function of the trade mark has been diminished or affected.

According to the court decision handed down on 10 Feb 2014:

1.The Ad with LUSH in the copy would have led the average consumer to expect to find Lush soap available on the Amazon site and would expect to find it at a competitive price2.With respect to the Bath Bomb ad - The average consumer could not reasonably fail to appreciate that the Amazon ad was just another ad from a supplier offering similar products to those requested by the internet searcher.3.With respect to the Amazon site - where the consumer has been informed (from the drop down menu) that Lush Bath Bombs are available, I do not consider that the average consumer would ascertain without difficulty that the goods to which he was directed did not originate from Lush.

Interflora Inc v Marks & Spencer

Interflora Inc v Marks & Spencer

Arnold J of the High Court found on 21 May 2013:

theM&S advertisements did not enable reasonably well informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisement originated from the proprietor of the TM. Held that a significant proportion of the consumers were led to believe that the M&S service was part of the interflora network which in turn had an adverse effect on the origin function of the TM.

On 5 November 2014 – the appeal from this decision was handed down – The court the population has moved on and has become more sophisticated. Hardly anyone would not appreciate that sponsored links do not have any association with the TM owner. Given that the judge found a majority of consumers would appreciate that there was no association in any case, that would be enough to find non-infringement.

Said that there was nothing inherently objectionable about keyword advertising.

General Steel Domestic Sales LLC v Ethan Daniel Chumley and Atlantic Building Systems LLC

• TM: GENERAL STEEL• KEYWORD: GENERAL STEEL BUILDING• THE ADSGeneral Steel buildings –Steel framed buildings |Armstrong Steel.. Checkout various Armstrong

Steel buildings –Building frames for your general steel buildings like commercial steel buildings, industrial steel buildings. Www.armstrongsteelbuildings.com/steel-metal-building-frames.php

“General Steel Buildings www.ArmstrongSteelBuildings.com Price Your Building Online Or Let Us Do It. Guaranteed Lowest Prices!”

Don’t Buy General Steel Without Pricing Armstrong First. Price a Steel Building in Minutes! www.ArmstrongSteelBuildings.com,”“Before You Buy7General Price Armstrong Steel First Guaranteed LowerPrices!www.ArmstrongSteelBuildings.com

General Steel Armstrong www.ArmstrongSteelBuildings.com Don’tBuy a General Steel Building Without Pricing Armstrong First!”

http://www.armstrongsteelbuildings.com/steel-metal-building-frames.php

http://www.armstrongsteelbuildings.com/

General Steel Domestic Sales LLC v Ethan Daniel Chumley and Atlantic Building Systems LLC

• The Court held that the mere purchase of a keyword is not in and of itself sufficient to make a finding of TM infringement. The text of the ads needed to be looked at to see if they were misleading as to source or origin.

• The ads that said don’t buy General Steel buildings were helpful as they would not be thought to have originated with the TM owner.

• There were the other ads that just mentioned the words GENERAL STEEL. The court probably could have found such ads infringing but elected not to do this, saying that the language was puzzling, but would not confuse as to source.

EU AND US HARMONY

Australia and New Zealand

Cases involving keywords or invisible use of TM in HTML/tags have been heard in Australia and New Zealand

Complete Technology Integrations Pty Ltd v Green Energy Maanagement Solutions Pty Ltd 2011

• TM - CTI• Involved the use of (1) sponsored links in Bing that

triggered Respondents ads, (2) TM in the ad copy, (3) TM in the hidden HTML or metadata of the website.

• Held• Re (3) Metatags are invisible to the ordinary internet user. The site they

take you too allegedly, is clearly not the site of the TM owner. It cannot, therefore, be said that the use in a metatag of CTI’s Registered Trade Marks is a use that indicates the origin of Green Energy’s services.

• Re (1/2) The use of CTI’s registered trade mark “CTI” in advertising on the Bing search engine was also use of the sign “CTI” as a trade mark since the use was as a “badge of origin”, which in the course of trade purported to connect the advertised services with a particular trade source. - Not clear whether use as a keyword alone would have been infringement.

Lift Shop Pty Ltd v Easy Living Home Elevators

• First instance decision at the Fed Ct 20 Sept 2013• use of a TM as a keyword and in ads was not in and

of itself TM infringement. • Decision concentrated mainly on the titles of the ads:

Easy Living Lifts | Home Elevators | Lift Shop – Home Elevators ...

www.easy-living.com.au/ ▼

AND

Easy Living Lifts | Home Elevators | Lift Shop – Lift Shop

www.easy-living.com.au• No separate examination of liability just for keyword trigger use of TM. • Upheld on appeal that the ads did not infringe the LIFT SHOP trade

mark.

http://www.easy-living.com.au/

Bob Jane Corporation Pty Ltd v ACN 149 801141 2013

• In this case a sign that was deceptively similar to the Registered TM was used in ads and on websites. The TM was used as a keyword to trigger the display of the ads that took you to the respondent’s website.

• Held “the use of marks in advertising on internet search engines will amount to use as a trade mark”

• Didn’t look specifically into the liability for keyword use however

Intercity Group (NZ) Limited v Nakedbus NZ Limited

• Decision handed down 12 February 2014.• “These authorities show that the essential function of a trade mark is to

guarantee to the consumer the identity of the origin of the trade marked goods or services by enabling that consumer to distinguish the goods or services from others which have a different origin. With this in mind, I turn to whether, in relation to the keyword “intercity” and variations, there has been a “use” in terms of s 89(2) by Nakedbus.

• The use of the keyword was by Nakedbus when it purchased that keyword prior to the placement of its advertisement, and then by Google when, through its search engine, it provided for the Nakedbus advertisement to appear when a consumer keyed “intercity” into a computer. In such a situation, the use of the keyword by Nakedbus and indeed Google was not seen by the consumer at all. As Mr Harris observed, these actions were invisible to everyone except Google and the advertiser. If the “use” could not be seen by the consumer it could not be “taken as” anything, let alone “taken as being used as a trade mark”.

• The court did ultimately hold, however that the triggered ads were in fact infringing.

Tasman Insulation New Zealand Ltd v Knauf

Insulation Ltd• Decided 12 May 2014. • Case involved a website being used in New Zealand• IN NZ TM for BATT for insulatuion batts (apparently not

descriptive in NZ). • One photo had the following invisible HTML code on the site:

“Batt%20MastaBag.jpg”• Held: I consider that it is proper to construe invisible use of a

registered trade mark by the use of a metatag, as occurred in the circumstances of the present case (where the mark can be accessed and viewed by an informed internet user), as use as a trade mark. Consequently I do not consider that what has been described as the invisible use in the HTML code has the consequence that the s 89(2) threshold is not crossed.

Tasman Insulation New Zealand Ltd v Knauf

Insulation Ltd• 95 No infringement for honest practices• A person does not infringe a registered trade mark if, in

accordance with honest practices in industrial or commercial matters, the person uses—

• (c) a sign to indicate—• (i) the kind, quality, quantity, intended purpose, value,

geographical origin, or other characteristic of goods or services; or

• HELD: To my mind the defendants’ use of those words is simply as identification of the product itself like, for example, “wine” or “car”. I do not consider that the defendants’ use of those words communicates any meaningful information about the “kind” of product or the “intended purpose” of the product.

POSITION IN AUSTRALIA• Country with the least well developed law of use of

a TM as a keyword would be Australia. • Both Lift Shop and Complete Technology cases

don’t deal with the issue of TK as Keyword as precisely as the other countries and cases discussed.

• However I suspect from reading Liftshop, Complete Technology and the Google v ACCC cases, as well as the Inter City case, that an Australian Court would find that the use of a TM as a keyword would not infringe the TM absent some other consideration.

Thank you• www.cullens.com.au

• Brisbane

• Gold Coast

• Townsville

google adwords and meta-tag litigation

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