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Google Ruled a Trademark Infringer
Stephan writes "Google lost a trademark-infringement case in France.
News.com is reporting that a Paris District Court ruled
yesterday against Google in a
lawsuit filed by high-end fashion designer Louis Vuitton. The company
is suing Google for allowing its competitors to buy targeted ads on the
search engine's search results pages that use or are associated with the Vuitton
trademark. The court charged Google with trademark counterfeiting, unfair
competition and misleading advertising. Google was ordered to pay $257,430
(200,000 euros). Google is facing
similar lawsuits in different countries. In the United States, the company
recently
won a favorable ruling in a similar case brought by GEICO, the car insurance
company."
I mean, why should competitors be allowed to use a trademark in advertisements. That is copyright infringment no matter what way you look at it, and google should know better than to allow it. Would it be okay if a TV station let an advertiser infringe upon a trademark?
http://edition.cnn.com/2002/US/09/30/sproject.irq. regime.change/
If I have a Mazda to sell, I can mention the Mazda trademark in ads.
I think you're misleading people. It's more the case of (to use your example) Ford outbidding Mazda for the advertising space on their name. You search for Mazda and up comes Ford.
You might not care much about Ford vs. Mazda. Suppose it were Microsoft buying up all the ad-space for Red Hat, or Walmart buying up the ads for $SMALL_CHAIN.
If they want to bid on a type of item, say car, well that's one thing. But should they be able to out-bid you on your own name? One to think about more carefully.
Aide-toi, le Ciel t'aidera - Jeanne D'Arc.
comparative advertising being one of them
every day http://en.wikipedia.org/wiki/Special:Random
Actually, they do. The same goes for off-the-shelf products you buy at places such well known computer stores. Did you ever wonder why some companies seem to get better spots for their products than others?
In the early 90's, we (a small startup company...now defunct) were going to bring a product to market for sale in a large computer store. At the time, to get our shrink-wrapped product into consumer's hands, the only place to sell it was in the large computer store chains - the internet was just starting to take off and most people didn't buy online.
The price at the time was about $250,000 year for a decent spot on the shelf - more if we wanted a highly visible end spot. Our business plan had us breaking even around year 5. You do the math. For a small, 2 man startup, that was some serious cash even before we factored in paying ourselves and making a living.
Perhaps, today, the prices have gone down due to competition from online stores. But, at the time, it was THE only way to go.
RD
What is different about this is that this is a european ruling. In Europe nobody is allowed to use his/hers competiotor's trademarks in commercials or any aother communication. You will never see or hear (eg.) "McDonalds" in a Burger King commercial.
it's the for profit advertising that violates french law.
In france, where they have an office.
every day http://en.wikipedia.org/wiki/Special:Random
I guess you don't understand what the lawsuit was about.
The problem is that competitors of Louis Vuitton bought adwords that were trademarked by Louis Vuitton. So for example, you type "Louis vuitton" in google search, and instead of seeing ads for Louis vuitton website, you see ads for Channel or Versace website... (Not saying it was Channel or Versace, I don't know who the competitors were, just using them as an example.)
Bottom line is it's just like typing "microsoft" and getting apple.com showing up... Or "ford" and getting Toyota...
Further the problem isn't that competitors do this, the problem is that Google refused to remove those ads AFTER Louis Vuitton asked Google to remove them AND provided proof of trademark infringement.
This has happened to the company I work for as well. While all the other major search engines remove infringing ads immediately, Google asks for the trademark information, and then once google receives it does nothing about it...
A survey found that only 1 in 6 people could tell the difference between unbiased search results and bought ads.
Trademark law is all about consumer confusion, if the results end up misleading/confusing the customer then there are problems.
In the US you can still compare products under the "fair use" doctrine. The problem here is that sometimes it's hard for the end user to distinguish the results, imagine if you typed in "Playboy" and got an unnamed banner ad (actual case), how would you know that that banner ad wasn't "Playboy"'s? So the question gets a little fuzzier when things are clearly marked, but a recent survey http://abcnews.go.com/Business/wireStory?id=437251 found that only 1 in 6 people can distinguish between regular results and the ads. That means people are buying use of your protected trademark and directing users to their own sites.
barely legal.
" The comparative advertising is rarely used in France because its conditions are very strict and the limit with the unfair and denigrating advertising is quickly passed over."
http://www.chaillot.com/En/pages/p9.html
so, google crossed the line.
every day http://en.wikipedia.org/wiki/Special:Random
Imagine the stores creating an Isle named Coke. The store advertises the isle as coke, plasters it all over the entrance to the isle. Then offers the isle up for sale. That's what's at issue here, the fact that Google offered up the trademarked name Louis Vitton for sale to the highest bidder.
The parent article is awfully misleading. Our legal systems differ on trademarks enforcement, and google fell in a trap it should have avoided by simply asking a competent local lawyer. Who's concerned ? google.FR ; why ? so-called anti-americanism ? Bullshit. We've got cases of the very same nature dating back to the 19th century between french firms. Google pobably thought they could come down there and do business as they see fit, but we're not a 3rd world country, and you can't bribe judges to twist the law. It has nothing to see with governement either.
So what's it all about ? Unfair competition. It has been ruled for over a 100 years that it is a civil wrong for a company to use the efforts made by another firm to promote its trademarks. Little example : A has a trademark 'a' ; B pays 'wall mart' for, whenever a consummer wants 'a' product, to give him a discount on 'b' product, or advertize 'b'. Why ? because B is in fact capitalizing on the money A spent to have 'a' trademark known to the public, without paying back A for this effort, thus 'stealing' it from A. 'wall mart' is wrongfully getting a profit out of it either.
The case of YP is different, because when one checks the YP, it looks for a type of good or service, and the YP comprehensively lists all the places you can find one, in alphabetical order, and no discrimination ; you can't check the YP for a trademark.
You may have a different opinion in the USoA, but know what ? We don't care.
Since most of the folks here are in America, they tend to respond with American ways of thinking. For the record, I'm a US citizen with 11 years of service in the US Navy and I am a disabled vet.
A good example of how France handled the case can be seen in how many cars are marketed in Europe. In the US, every vehicle is compared to the competition (ex: The Ford F250 has more towing power than a Chevy pickup, has more legroom than a Dodge pickup, and has better rims than the Toyota Tundra). This is not allowed in Europe. They can extoll the virtues of their own vehicles without dragging in other manufacturers products. To an informed consumer, both methods are silly, since they're all based on lies, damn lies and statistics.
Therefore, one is not allowed to use someone else's trademark in advertising in most European countries. This seems to be the spot where Google got in trouble. While it can be argued that Google was only the messenger, they actually made money from selling the key adwords that were trademarked. I think this is where they got hit, since they made a profit from the dealing. If they didn't charge for keywords, they probably would have avoided the fine. Perhaps if they change their adwords to kill trademarked names and separate the first and last names as different words, instead of the phrase "Louis V..." use "Louis" "Vuitton" "handbag", they could get away with it, but with this on the books I'd be extra cautious. As someone else pointed out, hire a lawyer and get legal in most of Europe - pay less than the 250K they were fined. Good insurance, IMHO.
"First things first, but not necessarily in that order."
- Doctor Who
Microsoft does this! It gets people mad, or they laugh at it, but nobody is trying to take them to court over this. That's because it is perfectly legal.
Their responsibility to shareholders also means they have to try to be on top of the search engine world. If they start removing certain terms at their whim, it means their search results may not be as complete as their comptetitors.
Besides, imagine the rioting in the streets if we took your post and replaced all instances of "Google" with "Microsoft."
Note that such commercials are not possible in many parts of the world. Here in NZ, you can't use comparative advertising like that. Of course they still try in more subtle ways, but you can't do it outright.
dominionrd.blogspot.com - Restaurants on
Maybe they should have given up more obscure search phrases. "louis vuiton" don't have trademark rights over that name, they have it over that name in the context of bags, fashion, perfume.
e.g. louis vuiton demands a block on use of their trademark, Google offers "louis vuiton bags", "louis vuiton fashion", "louis vuiton perfume" which more closely defines what their trademark actually covers.
When I search louis vuiton, am I looking for the brand the person or shops that stock louis vuiton brands? In other words the name alone isn't the trademark, it is the trademark in a context.
"Are you nuts? They have the trademark over the name. Period. In all uses."
Not at all, that seems to be a common misconception!
Apple (Jobs) owns the trademark in computers, but Apple (beatles) own the trademark in records. Even then there may be several owners of the trademark since different markets can have different owners.
The trademark protection is only for the market they are in and only for the product the mark covers.
I agree with the rest of your post though, Google still have to deliver the best result possible regardless of who they are pissed at.
Under normal circumstances, a trademark can coexist with another identical one if they are in different classes. A mark that is registered for bags and fashion and perfume would not be in conflict with the same mark for completely unrelated products, like cars or building materials or telecommunication services.
But if a mark is sufficiently well known, it gets a wider protection because it's "famous". The protection will then be extended to unrelated products as well.
There is nothing fishy about the fact that the really well known marks get this special treatment. It's called "Kodak protection" after a landmark case that is considered to have established the principle, and is completely above board.
Withoug being much of an expert on ladies' handbags, I assume that Louis Voiton would be considered "famous" by the court. They would then in fact have the trademark rights to the word in the context of any goods.
The same of course applies to Coca-Cola, which another poster mentioned.
IANATML, but I worked with computer programs for doing phonetic similarity searches on trademarks for 25 years, so I'm resonably familiar with the area.
Christian Engström, Former Member of the European Parliament 2009-2014 for The Pirate Party, Sweden