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Take Away

2. Internet Advertising

Audrey
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Take Away

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    1. 1 “Take Away” Bizarre exceptions to “trademark use” have, hopefully, been curtailed Brookfield is not a magic carpet to a finding of infringement Surveys are important

    2. 2 Internet Advertising – It’s Back! Internet ad revenue hit $2.2 billion in the 4th quarter of 2003, 38% higher than the 4th quarter of 2002 (PWC estimate) For the second quarter of 2004 that number grew to $2.37 billion

    3. 3 What Is Targeted/Conceptual Advertising? Matching advertisements on a web page to the contents displayed on that page Accomplished through “keyword advertising” (which includes “sponsored results”) and software designed to “match” advertisements to content (i.e., Claria (f/k/a Gator) and WhenU.Com, Inc.)

    4. 4 “Key” Definitions “Keying allows advertisers to target individuals with certain interests by linking advertisements to pre-identified terms.” Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1022 (9th Cir. 2004). “Keywords” are those pre-identified terms.

    5. 5 Advertisements In Issue

    6. 6

    7. 7

    8. 8

    9. 9 Pop Up

    10. 10 Everyone Hates Pop-Ups!

    11. 11 How Consumers Perceive Pop-Up Ads Consumer surveys indicate that consumers believe pop-up ads are generated by underlying website 66% (WashingtonPost.Newsweek Interactive v. Gator, 6/02) 63.4% (UPS v. Gator, 9/02) 60% (1-800 Contacts v. WhenU, 10/02) 52.6% (Lending Tree v. Gator, 12/02) 46.1% (Six Continents v. Gator, 12/03) 56.4% (Gator MDL, 12/03) 61.3% (Wells Fargo v. WhenU, 5/04) 55.8% (WeightWatchers v. E-Diets, 5/04) 26% - 57% (Claria’s own survey in Gator MDL, 3/04)

    12. 12 How Consumers Feel About Pop-Up Ads Many consumers don’t intentionally load the software applications on their PCs that cause the ads 20.7% (UPS v. Gator, 9/02) 57% (1-800 Contacts v. WhenU, 10/02) 46% (Lending Tree v. Gator, 12/02) 25% (Six Continents v. Gator, 12/03) 63.7% (MDL Gator Litigation, 12/03)

    13. 13 How Consumers Feel About Pop-Up Ads (Cont’d) Consumers have negative impressions of pop-up ads and website bears brunt of that anger 47.8% (UPS v. Gator, 9/02) 46.2% (Lending Tree v. Gator, 12/02) 37% (Six Continents v. Gator, 12/03) 44.3% (MDL Gator Litigation, 12/03) 30.7% (Wells Fargo v. WhenU, 5/04) 31.3% (WeightWatchers v. E-Diets, 5/04)

    14. 14 Sponsored Results

    15. 15

    16. 16 Copyright Infringement and Contributory Infringement Copyright Infringement "To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."  Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).   Contributory Infringement Customarily, "one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a 'contributory' infringer."  A&M Records v. Napster, Inc., 239 F.3d 1004, 1019 (9th Cir. Cal. 2001) (quoting Gershwin Publ'g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)). "Put differently, liability exists if the defendant engages in 'personal conduct that encourages or assists the infringement.'"  Id. at 1019 (quoting Matthew Bender & Co. v. West Publ'g Co., 158 F.3d 693, 706 (2d Cir. 1998)).

    17. 17 Copyright Fair Use In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include— the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107.

    18. 18 Limitations of Copyright Protection ... original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. § 102.

    19. 19 Derivative Works … a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a `derivative work’. 17 U.S.C. § 101 (emphasis added).

    20. 20 Copyright Claims Not Successful User doesn’t exceed license through software that enables “pop-up” Pop-ups are not “fixed” in a tangible medium Pop-ups do not “change” the underlying website 1-800 Contacts, Inc. v. WhenU.com, 309 F. Supp. 2d 467, 485-88 (S.D.N.Y. 2003).

    21. 21 Trademark Infringement Test Is the defendant, in connection with any goods or services, using in commerce plaintiff’s marks in a manner likely to cause confusion as to origin, sponsorship or affiliation? Lanham Act §32, 15 USC §1114 and Lanham Act §43, 15 USC §1125 Is there a fair use or other defense?

    22. 22 The Second Circuit Test for Likelihood of Confusion The Polaroid Factors The strength of the plaintiff’s mark The degree of similarity between the marks The proximity of the products The likelihood that the prior owner will bridge the gap Actual confusion The reciprocal of defendant’s good faith in adopting its own mark The quality of the defendant’s product The sophistication of the buyer Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961).

    23. 23 The Ninth Circuit Test for Likelihood of Confusion The “Sleekcraft Factors” Strength of marks (arbitrary or fanciful, suggestive, descriptive or generic) Relatedness of goods Similarity of marks Actual Confusion Marketing channels used Degree of care Intent Intent relates to why mark was adopted. Intent to infringe is not necessary for a finding of infringement. Brookfield Communications, Inc. v. West Coast Entm’t, 174 F.3d 1036, 1061-62 at n.23 (9th Cir. 1999). Expansion of product line AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

    24. 24 Fair Use Defenses Classic, descriptive or paradigmatic fair use (15 USC § 1115(b)(4)) Defendant’s use of the term is not as a trademark or service mark Defendant uses the term “fairly and in good faith” Defendant uses the term “only to describe” its goods or services

    25. 25 Fair Use Defenses (Cont’d) Nominative (New Kids) Fair Use Product or service must not be readily identifiable without the use of the trademark Only so much of the mark may be used as is reasonably necessary to identify the product or service The user must do nothing that would suggest sponsorship or endorsement The New Kids on the Block v. News America Publ’g, Inc. v. Gannett Satellite Info. Network, Inc., d/b/a/ USA Today, Inc., 971 F.2d 302 (9th Cir. 1992).

    26. 26 Contributory Infringement Inwood Labs. v. Ives Labs., 456 U.S. 844 (1982) (intentionally inducing another to infringe or continuing to supply a product knowing recipient is using it to infringe constitutes contributory infringement). Lockheed Martin Co. v. Network Solutions, 194 F.3d 980 (9th Circuit 1999) (direct control over infringer’s activity necessary prerequisite to contributory infringement).

    27. 27 Dilution The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the famous mark. 15 U.S.C. § 1125(c)(1). The term “dilution” means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of - 1) competition between the owner of the famous mark and other parties, or 2) likelihood of confusion, mistake, or deception. 15 U.S.C. § 1127.

    28. 28 Dilution (Con’t) Blurring Dupont Shoes Buick Aspirin Kodak Pianos Tarnishment

    29. 29 Fame for Purposes of Dilution 15 U.S.C. § 1125(c)(1) The degree of inherent or acquired distinctiveness of the mark; The duration and extent of use of the mark in connection with the goods or services with which the mark is used; The duration and extent of advertising and publicity of the mark; The geographical extent of the trading area in which the mark is used; The channels of trade for the goods or services with which the mark is used; The degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought; The nature and extent of the same or similar marks by third parties; and Whether the mark was registered under the Act of 1881, or the Act of 1905, or on the principal register.

    30. 30 What Is Famous? Marks Held Famous – McCarthy §24:92.1 AOL Arthur the Aardvark cartoon character Barbie doll Budweiser beer Candyland children’s game Don’t Leave Home Without Us slogan for traveler’s checks and credit cards Etch-A-Sketch for drawing toys fish-shaped Goldfish brand crackers The Greatest Show on Earth slogan for circus Hotmail e-mail service Intermatic electrical products James Bond movie character Jews For Jesus religious organization Lexington investment advice services Nailtiques fingernail care products National Basketball Association logo Panavision movie and TV cameras Polo wearing apparel Porsche autos Prozac anti-depression drug Toys ‘R Us toy stores WAWA chain of 500 convenience stores in five eastern states, in use for ninety years

    31. 31 Dilution v. Likelihood of Dilution Supreme Court has set actual dilution as the standard Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003).

    32. 32 Statutory Defenses to Dilution 15 U.S.C. §1125(c)(4): The following shall not be actionable under this section: Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark Noncommercial use of a mark All forms of news reporting and news commentary

    33. 33 Playboy v. Netscape: Banners in Issue

    34. 34 Playboy1

    35. 35

    36. 36

    37. 37 Playboy v. Netscape: Essential Facts

    38. 38 Playboy v. Netscape: Essential Facts (Cont’d)

    39. 39 Ninth Circuit Announces its Decision in Brookfield “…it is difficult to say that a consumer is likely to be confused about whose site he has reached or to think that Brookfield somehow sponsors West Coast’s web site. Nevertheless, 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.” Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999).

    40. 40 Roots Are in the Real, Not Virtual World Grotrian v. Steinway & Son, 523 F.2d 133 (2d Cir. 1975) (claim is not actual confusion but attracting potential customers on hearing name “Grotrian-Steinweg”). Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) (“Potential purchasers would be misled into an initial interest in Pegasus Petroleum.”).

    41. 41 Does Placement of a Naked Trademark in Buried Code Constitute “Trademark Use”? Yes Brookfield Communications, Inc. v. West Coast Entm’t, 174 F.3d 1036, 1061-62 & n.23 (9th Cir. 1999) (proscriptions on use not limited to metatags; all “HTML code generally” is included). Playboy Enters. v. Asiafocus Int’l, No. 97-734-A, 1998 U.S. Dist. LEXIS 10359 (E.D. Va. Feb. 2, 1998). Playboy Enters. v. Calvin Designer Label, 985 F. Supp. 1220 (N.D. Cal. 1997).

    42. 42 Real World Origins of Finding The Use of a Mark By Itself In Code Can Be a Trademark Use Boston Prof’l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010-11 (5th Cir. 1975). Rejected by Int’l Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980). Adopted by Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).

    43. 43 Does It Matter That a Third Party, i.e., a Search Engine or a Third Party’s Software, Is Causing The Activity Claimed To Be Infringing? Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 (9th Cir. 1982) (a restaurant’s practice of providing Pepsi-Cola in response to requests for Coca-Cola constituted trademark infringement by the restaurant). Estee Lauder, Inc. v. Watsky, 323 F. Supp 1064 (S.D.N.Y. 1970) (seller of counterfeit goods infringed even though it didn’t know goods were counterfeit).

    44. 44 Preliminary Injunction Denied

    45. 45 Summary Judgment Granted Dismissing Complaint No trademark use because Excite does not use Playboy’s marks to identify Excite’s services. 2000 U.S. Dist. LEXIS 13418, at *2-3 (C.D. Cal. Sept. 14, 2000), rev’d, 354 F.3d 1020 (9th Cir. 2004). No infringement because there was no evidence that consumers confuse Playboy’s products with Excite’s services. Id. at *3. No dilution (“blurring”) because Excite does not use Playboy’s marks on Excite’s products. Id. at *2-3.

    46. 46 Oral Argument of the Appeal – September 11, 2001 Transcript contained infra.

    47. 47 The Ninth Circuit Decision A “tricky” question as to whether direct or contributory liability applies Concludes that defendants are either directly or contributorily liable The Court found that “[n]o dispute exists” that “defendants used the marks in commerce,” stating in a footnote that the basis of federal jurisdiction of trademark disputes, the Commerce Clause, “sweeps as broadly as possible.” 354 F.3d 1020, 1024 & n.11 (9th Cir. 2004).

    48. 48 The Ninth Circuit Decision (Cont’d) The Court also pointed out that, at oral argument, the defendants conceded that they were using Playboy’s marks for their secondary meaning, and that, to argue otherwise (e.g., that “playmate” was being used for its dictionary definition of “a companion, especially of a child, in games and play”) would be “absurd.” 354 F.3d at 1027-28 & n.32 (internal citations omitted).

    49. 49 The Ninth Circuit Decision (Cont’d) Playboy’s strongest argument is for initial interest confusion. “Although dispelled before an actual sale occurs, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement.” 354 F.3d at 1025. With respect to initial interest confusion, the Court ruled that, as in Brookfield, confusion could be dispelled before an actual sale, but that the diversion could be actionable. Id. at 1025-26. HOWEVER, the Circuit went on to write that “[a]lthough analogies to Brookfield suggest that [Playboy] will be able to show a likelihood of confusion sufficient to defeat summary judgment, we must test [Playboy’s] theory using this circuit’s well-established eight-factor test for the likelihood of confusion to be certain.” Id. at 1026 (emphasis supplied) (citing AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)).

    50. 50 The Ninth Circuit Decision (Cont’d) In finding initial interest confusion, the Brookfield Court did not go through the Sleekcraft analysis, thereby suggesting that the analysis was inapplicable where the claim was for initial interest confusion. The Playboy Court, in expressly finding that Playboy’s theory of initial interest confusion must be tested by the eight factor analysis, made clear that the Sleekcraft factors apply equally to the “bricks and mortar” world and the Internet, regardless of whether the claim is for confusion or initial interest confusion.

    51. 51 The Ninth Circuit Decision (Cont’d) The Playboy Court found the fourth factor, evidence of actual confusion, to be key in deciding to reverse summary judgment. This evidence was in the form of a survey showing that a substantial number of survey participants were confused into thinking that the banner advertisements at issue were sponsored by Playboy (29% for the term playboy and 22% for the term playmate).

    52. 52 The Ninth Circuit Decision (Cont’d) With respect to the other factors the court found: (1) strength of the mark: strong secondary meaning exists; (2) proximity of the goods: the “goods” are the links and the proximity of the goods is the reason Excite used Playboy and Playmate as keys; (3) similarity of the marks: identical except for font and the plural form for Playmate; (5) marketing channels used: identical, the Internet; (6) degree of consumer care: low, favors Playboy; (7) Excite’s intent: defendants do nothing to prevent click through resulting from confusion, in fact they monitor click through and benefit therefrom; Excite also refused to allow an advertiser to remove Playmate from the keyword package; (8) likelihood of expansion of product lines: found irrelevant.

    53. 53 The Ninth Circuit Decision (Cont’d) The Court also made quick work of Excite’s fair use defenses, having found (as discussed supra), that the terms were clearly being used in their trademark sense and that there was no need for Excite to use playboy and playmate to trigger adult advertisements, particularly as the “key-word package” included 448 other words. The Court was not impressed with Excite’s “functional fair use” argument.

    54. 54 The Ninth Circuit Decision (Cont’d) Of perhaps broader import is the Circuit’s careful exposition of what was not before it: “Before we apply this test to the facts at hand, we would like to emphasize what facts are not at hand. We note that defendants’ use of [Playboy’s] marks to trigger the listing of [Playboy] sites, and other sites that legitimately use [Playboy’s] marks, is not at issue here. In addition, we note that we are not addressing a situation in which a banner advertisement clearly identifies its source with its sponsor’s name, or in which a search engine clearly identifies a banner advertisement’s source. We are also not addressing a situation in which advertisers or defendants overtly compare [Playboy’s] products to a competitor’s – saying, for example ‘if you are interested in Playboy, you may also be interested in the following message from [a different, named company].’ Rather, we are evaluating a situation in which defendants display competitors’ unlabeled banner advertisements, with no label or overt comparison to [Playboy], after Internet users type in [Playboy’s] trademarks.” 354 F.2d at 1030 (footnotes omitted).

    55. 55 The Ninth Circuit Decision (Cont’d) Indeed, in a footnote the Circuit wrote that the clear identification in the banner advertisement of its source “might eliminate the likelihood of initial interest confusion.” 354 F.2d at 1030 n.44.

    56. 56 The Ninth Circuit Decision (Cont’d) Judge Berzon authored a concurring opinion, expressing concern that “Brookfield might suggest that there could be a Lanham Act violation even if the banner advertisements were clearly labeled, either by the advertiser or by the search engine.” 354 F.3d at 1034-35. However, as real as that concern might have been, the decision in Playboy, finding that the Sleekcraft factors were applicable to Internet cases involving initial interest confusion, seems to have put that concern to bed.

    57. 57 Dilution The Ninth Circuit found that Playboy had shown “likelihood of dilution,” but sent the case back for further discovery regarding “actual dilution.” The case settled shortly thereafter on confidential terms.

    58. 58 Dilution (Cont’d) Genuine issue as to famousness regarding the nature and extent of use of the same marks by third parties Excite showed third party use; Playboy showed that the list was duplicative and included infringers and companies that had not received marks Clearly commercial use of marks (as contrasted to 1st Amendment speech, here commercial speech was involved) Likelihood of dilution because of showing of viewers’ assumption of sponsorship of ads (blurring) Expert report showed individuals assume Playboy’s publications are of higher quality (tarnishment) Excite impliedly labels the goods of Playboy’s competitors with its marks

    59. 59 Playboy is Setting the Standard “Of the two lines of cases cited by the parties [regarding commercial use], the Court finds that plaintiff’s authorities are better reasoned.” Gov’t Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 703 (E.D. Va. 2004).

    60. 60 Other SEM Cases Pending Novak d/b/a/ Pets Warehouse v. Overture Google v. American Blind & Wallpaper American Blind & Wallpaper v. Google, et al. Rescuecom v. Google French cases v. Google Metaspinner v. Google (Germany) JR Cigar v. Goto.com (Overture), et al. GEICO v. Google and Overture, et al.

    61. 61 Other SEM Cases Pending (Cont’d) Novak d/b/a/ Pets Warehouse v. Overture, Google, et al. (E.D.N.Y. complaint filed Sept. 2002) Pro se trademark infringement suit for sale of search terms including Pets Warehouse trademarks

    62. 62 Other SEM Cases Pending (Cont’d) Google v. American Blind & Wallpaper (N.D. Cal. complaint filed Nov. 26, 2003) Google seeks declaratory judgment: Search terms (american, blind, wallpaper) are descriptive Keyword triggered advertising doesn’t violate the Lanham Act

    63. 63 Other SEM Cases Pending (Cont’d) American Blind & Wallpaper v. Google, AOL, Netscape, Compuserve, Ask Jeeves & Earthlink (S.D.N.Y. complaint filed Jan. 27, 2004) American Blind claims sale of keywords identical or substantially similar to American Blind’s marks constitutes: Trademark infringement False designation of origin, false description and representation Federal trademark dilution State (New York) common law trademark infringement and dilution, unfair competition and tortious interference with prospective economic advantage American Blind seeks injunctive relief and damages Link to complaint: http://www.eff.org/IP/TM/Google_TM_Cases/20040127_abwf_complaint.pdfLink to complaint: http://www.eff.org/IP/TM/Google_TM_Cases/20040127_abwf_complaint.pdf

    64. 64 Other SEM Cases Pending (Cont’d) Rescuecom v. Google (N.D.N.Y. complaint filed Sept. 6, 2004) Sale of “rescuecom” search term to competitors is “use in commerce” Google’s use to generate sponsored links leading to competitors “causes at least initial interest confusion” “Keyword Suggestion Tool” is use by Google of Rescuecom mark and encouragement to others to use the mark Count I – Lanham Act, 15 U.S.C. 114(1) Count II – False Designation of Origin, 15 U.S.C. 1125(a) Count III – Federal Trademark Dilution Count IV – Common law trademark violation Count V – State (New York) trademark dilution Count VI – Tortious interference with prospective economic advantage Complaint: http://www.rescuecom.com/googlesuit.pdf Press Release: http://www.rescuecom.com/news_page.wcs?id=74 September 10, 2004 RESCUECOM® Sues Google Over Trademark Infringement Syracuse-based company questions use of its name in advertising sales SYRACUSE, NY - RESCUECOM, a Syracuse-based franchised computer services firm, has filed suit against the Internet search engine Google for allowing and advising computer service companies to use the word "RESCUECOM" in the list of terms used to generate their advertisements. In its lawsuit, RESCUECOM argues that such a practice is in violation of trademark law, and as a result leads to Google users contacting and utilizing rival companies who they think are associated with RESCUECOM. "It's a shame that Google has to exploit an explicitly trademarked name all for the sake of a few cents per click," said David A. Milman, CEO. "In this way, those companies willing to pay for the most advertising search words can conceivably trample upon and utilize competitors for their own gain - it's blatant trademark infringement." Until recently, RESCUECOM has gone straight to its competitors, sending "cease and desist" documentation threatening legal action if the usage of RESCUECOM's name was not discontinued. When one these companies wrote back saying that they did not choose their keywords and that Google provided them, RESCUECOM made the decision to sue Google over trademark infringement. In April of 2004, Google created a new policy stating that it would no longer disable advertisements which use trademarks without permission as "keyword triggers." Up until that point, Google willingly took down advertising links that misused trademarked names or phrases. "Google's change in policy has forced us to take legal action against it to protect our trademark," said Edmund Gegan, franchise legal counsel. "By hijacking our name for use in advertising search terms, Google is diluting the value of RESCUECOM for its own profit and for the benefit of our competitors." Headquartered in Syracuse, New York, RESCUECOM® is the premiere franchiser in the computer services industry that delivers business and sales resources from the industry's "best of the best" computer technicians and consultants. RESCUECOM's main product, One-Hour On-site Response, delivers a certified technician to the customer within one hour of request and is available nationwide. For more information on either the business or franchising opportunities, visit RESCUECOM's website at www.rescuecom.com. Count I – Lanham Act, 15 U.S.C. 114(1) Count II – False Designation of Origin, 15 U.S.C. 1125(a) Count III – Federal Trademark Dilution Count IV – Common law trademark violation Count V – State (New York) trademark dilution Count VI – Tortious interference with prospective economic advantage Complaint: http://www.rescuecom.com/googlesuit.pdf Press Release: http://www.rescuecom.com/news_page.wcs?id=74 September 10, 2004

    65. 65 Other SEM Cases Pending (Cont’d) AXA v. Google (France) (filed April 2004) Louis Vuitton v. Google (filed October 2003) Viaticum and Luteciel (travel agencies) sued Google for sale of adwords “bourse des vols” and “bourse des voyages” (“travel market” and “airflight market”) October 2003, Court awarded $70,000 euros to plaintiffs under French law that “prohibits, in the absence of authorization of its owner, the use of a trademark for products or services identical to those indicated in the recording” Judgment is on appeal Google's French woes--another trademark suit By Stefanie Olsen Staff Writer, CNET News.com http://news.com.com/Googles+French+woes--another+trademark+suit/2110-1038_3-5200193.html Story last modified April 26, 2004, 1:59 PM PDT Insurance conglomerate AXA has filed a lawsuit in Europe against Google over alleged trademark infringement related to advertisements sold by the popular search engine. Mountain View, Calif.-based Google confirmed the lawsuit Monday, but the company would not discuss details of the case. AXA, based in Paris, could not immediately be reached for comment. A preliminary hearing in the case is reportedly scheduled for May 10 in Paris. The suit comes as Google implements changes to its popular keyword ad program in the United States and Canada, allowing marketers to bid on trademark names such as "AXA" so that they can appear in related search results--a policy that is at the heart of AXA's and others' complaints. Previously, Google has limited the practice to avoid legal struggles, but now it plans to review trademark complaints that only relate to text appearing in ads on its site. Google's overseas trademark policy will remain unchanged. Louis Vuitton sues Google http://www.searchenginelowdown.com/2003/10/louis-vuitton-sues-google.html Obsiously still upset that they weren't able to prevent the U.S. from invading Iraq, the French have decided to take their revenge on American status symbol, Google. Since the recent trademark infringement ruling by the French courts, it appears that Google is fair game for anyone wishing to protect a trademarked term. This time, it's the turn of Louis Vuitton. Lawyers for Google and Vuitton, maker of handbags, shoes and other luxury goods, are to attend a preliminary hearing in Paris on November 3. Vuitton, a division of French luxury goods giant LVMH, filed its suit on August 6. Google plans to appeal a previous ruling that forced it to pay $89,000 in damages to Viaticum and Luteciel. Google France fined for trademark violation By Declan McCullagh Staff Writer, CNET News.com http://news.com.com/Google+France+fined+for+trademark+violation/2100-1028_3-5092320.html Story last modified October 16, 2003, 10:47 AM PDT A French court has ruled against Google France in an intellectual property dispute, saying the company must pay a fine for allowing advertisers to tie their text notices to trademarked search terms. The Lower Court of Nanterre required Google France to pay 70,000 euros (about $81,400) to two companies that owned the rights to certain words. Google France sold the use of these words to advertisers through its AdWords program. AdWords permits individuals and companies to place advertisements on the Google home page that appear when a specific search term is used. A spokesman for Google said Wednesday that the company would appeal. "As this is an ongoing legal matter, we cannot provide further comment," spokesman David Krane said. Travel agencies Luteciel and Viaticum sued Google in December 2002, after the search company refused to curb the use of disputed words in the AdWords program. Luteciel and Viaticum claimed intellectual property rights in "bourse des vols" and "bourse des voyages," which roughly translate to travel market and airflight market. The French court concluded that Google France violated the country's intellectual property code that, translated, "prohibits, in the absence of authorization of its owner, the use of a trademark for products or services identical to those indicated in the recording." Google's French woes--another trademark suit

    66. 66 Other SEM Cases Pending (Cont’d) Metaspinner v. Google (Germany) Sought to stop sales of the term “preispiraten” (“price pirate”) May 2004, court granted injunction to plaintiff September 2004, court ruled in favor of Google Original URL: http://www.theregister.co.uk/2004/09/22/google_adwords_legal/ Google Germany wins Adwords trademark fight By John Oates (john.oates at theregister.co.uk)Published Wednesday 22nd September 2004 13:39 GMTGoogle has won the first stage of its legal battle to defend itself against accusations of trademark infringement. A court in Germany has ruled against Metaspinner Media, which was seeking to stop the search engine from selling adverts relating to its trademarks. Metaspinner Media started court action against Google Deutschland in May. Metaspinner accused Google of selling ads triggered by searches for its online price comparison software "Preispiraten" or price pirate. Google has already faced similar legal action in France and the US. Petra Bosback, Metaspinner Media's lawyer, told AP (http://seattlepi.nwsource.com/business/aptech_story.asp?category=1700&slug=Google%20Suit) her client had lost the case but refused further comment. She said it would take weeks to analyse the decision Forbes.com: http://www.forbes.com/2004/09/21/0921autofacescan05_print.html Doers and doings in business, entertainment and technology: Spared. A German court has just nixed a lawsuit against Google (nasdaq: GOOG - news - people ), the world's No. 1 Internet search engine. A state court in Hamburg this morning rejected Metaspinner Media's lawsuit against the U.S. company headed by Eric Schmidt over allegations that its search engine allows rival companies to purchase ads using trademarked terms. Upset that consumers searching for its "Price Pirate" software would be shown ads for rival products, Metaspinner took Google to court in May, arguing that the practice let competitors take advantage of the German company's brand name. Although the judge ruled today in favor of Google, the company is facing a string of other trademark lawsuits in Europe, including one from luxury goods firm Louis Vuitton of LVMH (otc: LVMUY - news - people ) and insurance group Axa (nyse: AXA - news - people ). In the U.S., home improvement company Wallpaper Factory and pet supplies outfit Pets Warehouse have also taken the search giant to court for alleged "trademark hijacking." More... Original URL: http://www.theregister.co.uk/2004/09/22/google_adwords_legal/ Google Germany wins Adwords trademark fight By John Oates (john.oates at theregister.co.uk)Published Wednesday 22nd September 2004 13:39 GMTGoogle has won the first stage of its legal battle to defend itself against accusations of trademark infringement. A court in Germany has ruled against Metaspinner Media, which was seeking to stop the search engine from selling adverts relating to its trademarks. Metaspinner Media started court action against Google Deutschland in May. Metaspinner accused Google of selling ads triggered by searches for its online price comparison software "Preispiraten" or price pirate. Google has already faced similar legal action in France and the US. Petra Bosback, Metaspinner Media's lawyer, told AP (http://seattlepi.nwsource.com/business/aptech_story.asp?category=1700&slug=Google%20Suit) her client had lost the case but refused further comment. She said it would take weeks to analyse the decision Forbes.com: http://www.forbes.com/2004/09/21/0921autofacescan05_print.html Doers and doings in business, entertainment and technology: Spared. A German court has just nixed a lawsuit against Google (nasdaq: GOOG - news - people ), the world's No. 1 Internet search engine. A state court in Hamburg this morning rejected Metaspinner Media's lawsuit against the U.S. company headed by Eric Schmidt over allegations that its search engine allows rival companies to purchase ads using trademarked terms. Upset that consumers searching for its "Price Pirate" software would be shown ads for rival products, Metaspinner took Google to court in May, arguing that the practice let competitors take advantage of the German company's brand name. Although the judge ruled today in favor of Google, the company is facing a string of other trademark lawsuits in Europe, including one from luxury goods firm Louis Vuitton of LVMH (otc: LVMUY - news - people ) and insurance group Axa (nyse: AXA - news - people ). In the U.S., home improvement company Wallpaper Factory and pet supplies outfit Pets Warehouse have also taken the search giant to court for alleged "trademark hijacking." More...

    67. 67 Other SEM Cases Pending (Cont’d) JR Cigar v. Goto.com (Overture) (D.N.J. complaint filed Oct. 2000) Complaint alleges sale of “jr cigar” (and related terms) as search terms constitutes: Trademark infringement Trademark dilution Unfair competition, consumer fraud and deceptive telemarketing Motions for summary judgment pending Note: Nothing on the docket in this case after settlement conference in January 2004 … Note: Nothing on the docket in this case after settlement conference in January 2004 …

    68. 68 Other SEM Cases Pending (Cont’d) GEICO v. Google and Overture (E.D. Va. Aug. 25, 2004) Search engine operators’ motion to dismiss denied: Allowing advertisers to bid on trademarked search terms and pay to be linked to those trademarks constitutes a “use” of the trademarks “in commerce” under the Lanham Act Use may imply that search engine operators have permission from the mark holders Claims of contributory and vicarious trademark infringement not dismissed; plaintiff alleged sufficient facts to support conclusion that search engine operators exercised “significant control” over content of advertising on their search results pages Geico gets green light to sue Google, Overture By Stefanie Olsen Staff Writer, CNET News.com http://news.com.com/Geico+gets+green+light+to+sue+Google%2C+Overture/2100-1024_3-5345484.html Insurance giant Geico can sue Google and Overture Services for allegedly selling advertisements linked to its trademarks, a federal judge has ruled, CNET News.com has learned. The unpublicized Aug. 25 decision by Judge Leonie Brinkema of the U.S. District Court for the Eastern District of Virginia delivered a blow to the two Internet search giants in their efforts to defend ad sales of trademarks as fair use. It could also ultimately threaten their livelihood: Google and Overture make money by selling ads linked to keyword-triggered search results, and many commercially driven searches are tied to trademarked brands such as Geico or Nike. If you were Sony, you wouldn't want Magnavox Consumer Electronics using your brand name as a search term. When a person searches for "Sony," you would want your Web site to be found, and nothing else--especially not your competitor's Web site (even if your site is at the top of the results). Can't blame them for trying, but hopefully, any judge would rule that this is not infringment but rather necessary and fair use to promote and preserve competition and the free market. --Anonymous Judge Brinkema denied Google and Overture's motion to dismiss six charges brought by Geico, which alleged that the search companies' use of its name to trigger search-related advertisements was trademark infringement, unfair competition and dilution of its marks under the Lanham Act. Writeup from the monthly Technology Law Update: Sale of Trademarked Search Terms Constitutes “Use In Commerce” Under the Lanham Act Allowing advertisers to bid on trademarked terms and pay search engine operators to be linked to those trademarks constitutes a “use” of those trademarks “in commerce” under the Lanham Act. Government Employees Insurance Co. v. Google, Inc., No. 1:04cv507 (E.D. Va. Aug. 25, 2004). The court declined to dismiss the trademark owner’s trademark infringement claims, concluding that when the search engine operators sold the rights to link advertising to the trademark terms, they were “using the trademarks in commerce in a way that may imply that defendants have permission from the trademark holder to do so.” The court also declined to dismiss claims of contributory and vicarious trademark infringement, finding that the trademark owner’ complaint alleged facts sufficient to support a conclusion that the search engine operators exercised “significant control” over the content of advertising appearing on their search results pages. The opinion is available at http://www.brownraysman.com/InternetLawUpdate/GEICOVGoogle.pdf Geico gets green light to sue Google, Overture By Stefanie Olsen Staff Writer, CNET News.comhttp://news.com.com/Geico+gets+green+light+to+sue+Google%2C+Overture/2100-1024_3-5345484.html

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