Letter from AmeriKat I - Google AdWords saga takes a turn

Last week the AmeriKat was on her way back from the City donning her apropos snazzy (pin)stripes , when instead of taking the normal route home she decided to take an entirely different route. Prowling through the deserted streets of the City and finally meandering down to Embankment, the AmeriKat soon found herself lapping up a tea at Starbucks gazing out at the passing world. Her decision to walk a different path that evening greeted her with unexpected surprises - commencing with a nearby friend coincidentally joining her for tea and ending with her devouring an entire plate of incredible smoked salmon crudités and truffles. Not bad for deciding to take a different path.

(image upper left - the AmeriKat comes face to face with her soon-to-be crudité)

AdWords saga takes a new turn

Last week computer repair company Rescuecom also decided to take a different route after deciding to abandon their trade mark infringement law suit against Google. Rescuecom had claimed that Google infringed their trade mark by permitting competitors to purchase its trade mark as a keyword as part of the Google AdWord program. In 2006, a New York court ruled that the activity was not illegal because trade mark law only controlled the use of a mark "in trade" - such use, said the court, was not present here. However, last April the US Circuit Court of Appeals vacated this earlier ruling due to a misapplication of the ratio in 1-800 Contacts v WhenU and reinstated the case. The only issue to be decided at the re-instated trial was identical to the issue in the upcoming Rosetta Stone claim: whether there exists confusion on the part of consumers by Google’s use of the complainant’s marks. However, it will now be the Rosetta Stone case that will have to answer this question (the case is scheduled for a six day trial set to commence on 3 May 2010).

So why have Rescuecom dropped the suit now? Although Rescuecom stated that they "can declare victory" in the Google dispute (despite withdrawing the case and therefore not being awarded any relief), some commentators suggest that the timing is all telling. A few weeks ago Rescuecom became further involved in another keyword legal dispute, but this time as a defendant. Best Buy, a US speciality retailer of electronics (who own 50% of the UK's Carphone Warehouse), commenced proceedings against Rescuecom for their use of the ad keyword "geek squad" - the trade mark of Best Buy's Geek Squad. Now that the AdWord shoe is on the other foot, Rescuecom is of course arguing that the use of Geek Squad "did not give rise to a likelihood of confusion." Prior to this, Rescuecom had made an application for declaratory judgment that their use of "geek squad" was permitted for the purpose of comparing Geek Squad's repair service to that offered by Rescuecom. David Millman, Rescuecom's CEO, stated that

"If you actually look at our ads in the Best Buy case, they're very, very clear. We're drawing a distinction. No reasonable person could ever think that our ad is for that company."

By abandoning its claim against Google, Rescuecom will no longer be placed in a tense position

of having to advance arguments of confusion in one claim and advancing a defence centered on the absence of confusion in another case. The AmeriKat is amused that Rescuecom now finds itself fighting alongside Google in the AdWords litigation. According to this post from Eric Goldman, there are at least eight pending AdWord cases in the U.S., including the anticipated Rosetta Stone case.

Last week, a Californian federal judge dismissed parts of a trade mark infringement, false advertising and other claims brought by entrepreneur Daniel Jurin against Google last year over the the AdWords program. US District Court Judge Morrison England ("Great name!", says AmeriKat) dismissed several of Jurin's claims, including the allegation that Google confused consumers to the origin of the producer of StyroTrim, the building material made by Jurin, by displaying links to other companies when the term "StyroTrim" was searched. Judge England stated that Google "does not provide the content of the 'Sponsored Link' advertisements. It provides a space and a service and thereafter charges for its service. . .", i.e., Google sells ad space, not keywords. Judge England also stated that

"even if one accepts as true the allegation that a 'Sponsored link' might confuse a consumer, it is hardly likely that with several different sponsored links appearing on a page that a consumer might believe each one is the true 'producer' or 'origin' of the Styrotrim product"

The only case to go to trial in the States over the AdWords issue was the 2004 Geico v Google case brought in Virginia which resulted in a victory for Google. Geico was unable to establish the requisite evidence that consumers were confused when they entered "Geico" into a search and were confronted with ads for other insurance providers.