Legal Issues in SearchEurope and America

David Mirchin

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Overview

1. The Issue2. US Experience3. EU Experience4. Practical Tips

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Keywords?

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The Issue

This issue has been considered

by the Courts in

America and the EU (and also Israel)

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Purchase and Use of Trademark Protected KEYWORDS?

LiveU: Portable video transmissions

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ORGANIC RESULTS and ADVERTISEMENTS

When you Google “buy liveu” or just “liveu” in the sponsor link on the right you will have an ad of TVU

Ad

Organic results

Who Faces Liability?

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Search Engine Providers ?

– e.g.:

Advertisers ?

USA

Search Engine Provider

GEICO v GoogleGovernment Employees Insurance Co. v Google, Inc., No. 1:04cv507 (E.D. Va. Aug. 8, 2005)

•not liable for trademark infringement for making available registered trademarks as keywords•does not cause likelihood of confusion

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Wentworth CaseJ.G. Wentworth v. Settlement Funding (E.D. Pa. 2007)

Wentworth and Settlement Fundingare competitors Finance Companies Settlement Funding Bought “Wentworth” Keyword

Standard: To win a Trademark Infringement Claim in US:

(1) Use of Trademark in Commerce(2) Creates Likelihood of Confusion10

USA

Wentworth cont…

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HOLDING:

Using trademark-protected words to trigger internet advertising does not violate trademark law

PRACTICAL RULE:

Use of keyword-triggered ads will not confuse consumers if the resulting ads do not display the plaintiff's trademarks

Rosetta Stone v. Google

EU

EU

EU

Search Engine Provider

Google France v Louis Vuitton CaseEuropean Court of Justice (2010)

Background:

Competitors Buy “Louis Vuitton” Keyword from Google

Can Louis Vuitton Stop Google or their Competitors?

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Not liable for trademark infringement. Why? Because offering registered

trademarks as keywords is not “use in the course of trade” But not a complete win for Google:

could still be liable for contributory infringement under national law

Competitors?

Their use of Keywords IS a “use in the course of trade”.

Huh? Key: Ad Text. Liable if:

– Use Louis Vuitton in the Text of Sponsored Ad, or– “Normally informed and reasonably attentive

internet users” cannot tell from the Ad Textwhether Louis Vuitton and the competitor are economically linked

– Vague as to the origin of the goods

Interflora v. Marks & Spencer CaseEuropean Court of Justice (September 2011)

EU

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Marks & Spencer cont…

EU Court of Justice = guidance

National Courts determine issues on facts of each case

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Practical Tips

Summary of US and EU standard:

No liability provided that users are not confused by the text of the sponsored ad.

Recommendations:

1. Do not use 3rd party trade marks in the ad text

2. Do not mislead users from ad text

3. Do not imply you are connected to the trademark owner (whose keyword you purchased)

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Remember the Standard:

Thank youDavid Mirchin

dmirchin@meitar.com