… and Europe Strikes Back: Google Loss Upheld by French Court
A friend painfully close to the case forwarded this link reporting that Google has lost its appeal of a judgment for “trademark counterfeiting” against the French travel companies Luteciel and Viaticum:
GOOGLE LOSES FRENCH TRADEMARK APPEAL
A French appeals court upheld a ruling against Google’s advertising policy in a decision published Wednesday, ordering the Internet search engine to pay 75,000 euros in damages to two companies whose trademarks it infringed.
The court found that Google was guilty [sic] of “trademark counterfeiting” and ordered it to pay the damages originally awarded to French travel companies Luteciel and Viaticum, as well as costs.
(Why “sic“? Because in civil cases, there is no such thing as “guilt” — only findings of liability or non-liability. Even in Europe. Even in France. I felt you should know that.)
Here are some key points in the decision, translated rather clumsily on the site linked to above:
- “[I]t is necessary to point out that its liability is only sought with regards to the second capacity and this capacity alone” In other words, this is solely an issue of secondary, i.e., contributory, trademark infringement.
- “Considering that no circumstances of force majeure existed that may exempt it from liability, where and insofar as it is proved that two other service providers in the field of paid positioning, the companies OVERTURE and ESPOTTING were faced with the same problem and managed to resolve it promptly and that GOOGLE FRANCE also managed to do so, although with some delay” This again goes to the killer point that middleman-type providers have here: The claim that “we can’t police the whole world” is (a) not credible when others do and when (b) you manage to do it when you really, really, really have to and (c) you’re making a mint.
- “Considering that . . . GOOGLE FRANCE, even if it had legitimately not been aware that the companies were the holders of the contentious marks, could not offer the purchase of the words ‘bourse aux voyages’ or ‘bourse de voyages’ or even ‘bdv com’ in its keyword suggestion tool, on the pretext that they were high among the most often requested key words, without carrying out a serious study of the potential rights of third parties over these words ” It’s not only a matter of what the U.S. courts call “willfull blindness” (which can result in a third party such as an auction site or a flea market being held contributorily liable for infringement) — there’s evidently an affirmative duty on the part of providers of services such as Google to inquire, at least under certain facts, if there are trademark issues.
No, this is not the applicable law in the U.S., but it matters for a few reasons. One is that the factual findings here will undoubtedly influence Google’s posture in future U.S. litigation. Another is that Google will have to make changes in the way it does business — which it already has begun to do, anyway — and this will affect both its overall service platform and its ability to say what it can, can’t, will and won’t do in the U.S. And the other is that, as is well known, there’s really no such thing as U.S. law, anyway. (And in a Googled-up, wired-up, hyperlinked world, isn’t that really what we all want?)
Okay, that might be bit much. But then, evidently, was Google’s share price in early February. Buying opportunity tomorrow, gang! I’m riding the stock all the way — when you got a position like I do (ten shares), you don’t want to go and panic the market…
UPDATE: From Reuters “news” service, March 2010:
The European Court of Justice (ECJ) said on Tuesday advertisers were free to buy keywords identical to trademarks of rivals as long as consumers were not confused on the provenance of goods and services by the way ads were displayed online.
The court said that in cases where ads could confuse consumers, brand owners should invoke their rights against the advertisers concerned, not against Google — unless Google failed to act on a complaint or actively manipulated keywords.