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Should Search Engines Begin to Worry? By Sophie Stalla-Bourdillon ince its creation in 2000, the advertising service run by the search engine Google,1 known under the name of Adwords, has fed the case law of several legal systems. One of the main issues is how “google’s law”2 interacts with national trademark laws. This issue is all the more crucial because national trademark laws are one of the few components of the legal net in which “intermediary Internet service providers”3 act within cyberspace. Besides, Google is not a second-rate online intermediary. “Google’s control over search results constitutes an awesome ability to set the course of human knowledge.”4 At the same time, other search engines use similar programs for advertising purposes. To quickly describe the way that the Adwords service functions, it allows Google to sell to its clients-advertisers the rights to link advertising to keywords entered into the search engine by Internet users. In some cases these keywords correspond to trademarks that are protected under national laws. Most of the time, no authorization is asked to trademark holders when the rights to link are sold. Yet, the practice of linking advertising to keywords corresponding to protected trademarks may reveal to be an unfair commercial practice prohibited by the law that can be considered as confusing customers.
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Sophie Stalla-Bourdillon is a lecturer in IT/IP law at the University of Southampton, UK. She was a researcher in the Law Department at the European University Institute, where she concentrated on Internet intermediaries’ liability. She taught contracts and securities at Panthéon-Sorbonne University from 2003 to 2005. She holds a Masters degree in English and North-American Business Law from Panthéon-Sorbonne University (Paris I) and an LLM degree from Cornell Law School.
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Indeed advertisers attract potential customers that may not have the intent of visiting their on-line shops. While it is more likely5 that Google’s clients using the Adwords service must be deemed as trademark infringers when they buy rights to link in order to attract customers of trademark holders and eventually sell their own goods or counterfeiting goods, the status of Google and similar search engines is still contentious. It is true nonetheless that two recent decisions rendered in the United States and Europe have tried to positively contribute to the tricky issue of the liability of providers of sponsored links. Judges and in particular European judges have engaged into an inter-normative dialogue comparing their positions to that of other legal systems. As the European directive on electronic commerce was already an answer to the adoption of the Digital Millennium Copyright Act in the United States, the judgment of the European Court of Justice has been rendered after a study of the state of the positive law in the US. The question is thus the following: should multi-national on-line intermediaries such as search engines fear the sword of national courts because of their advertising services? More specifically, has Europe gone in the same direction as that of the US if any? This paper thus seeks to determine and analyze the components of the legal framework confining the powers of search engines running advertising services and thereby to underline the ambiguities of search engines’ liability regimes as they derive from national case law. While the first part mainly focuses upon US law and the way the traditional distinction between primary and secondary trademark infringer is understood in cyberspace, the second part examines European law and the distinction drawn by the ECJ between trademark infringer and tortfeasor. Contrary to what is the ordinary presentation of both US law and European law and their recent evolution in the field of search engines’ liability,6 it is not clear whether European judges and in particular member states judges have gone further than US judges on the path of liability exemption. U S L AW Whereas the theory of contributory infringement could seem favorable to providers of sponsored links, 3
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this holds true as long as these providers are not ultimately considered as primary infringers. SEARCH ENGINES AS SECONDARY TRADEMARK INFRINGERS It is traditionally more difficult to hold defendants liable on the ground of theories of secondary liability in the field of trademark law than in the field of copyright law.7 Two theories of secondary liability have been used in trademark law as well as in the field of copyright law. To begin with the theory of vicarious liability, “[t]his theory of liability requires a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product.”8 This theory has rarely been useful for plaintiffs.9 Therefore, “[a]lthough both theories [the theories of contributory infringement and vicarious liability] have been applied in the trademark context, theories of contributory liability are more likely to be relevant to the question of liability for online providers who allegedly aid in the sale or trafficking of counterfeit goods.”10 As regards the theory of contributory infringement, the domain of the rules applicable in case of trademark infringement has been extended beyond those selling goods with the infringing trademark in order to include all those who knowingly contribute to the unlawful activities. Two hypotheses must be distinguished: either the defendant has induced the primary infringer to act, or it continues to supply its products to the primary infringer knowing or having reasons to know of the infringing activity. In the words of the Supreme Court: [a]s the lower courts correctly discerned, liability for trademark infringement can extend beyond those who actually mislabel goods with the mark of another. Even if a manufacturer does not directly control others in the chain of distribution, it can be held responsible for their infringing activities under certain circumstances. Thus, if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, 4
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the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit.11 While the main cases decided on the ground of the theory of contributory infringement involve manufacturers of infringing products, some courts have chosen to extend the domain of the theory of contributory infringement to those who knowingly play a significant role in order to achieve the unlawful objective foreseen, and in particular to service providers.12 In this case, the “supply its product” requirement becomes “exercise control over third party’s means of infringement” requirement.13 In spite of these extensions of the domain of the theory of contributory infringement, the test applied by the court has not necessarily been loosened.14 This can be explained by the limited scope of the right held by trademark holders in comparison with the right held by copyright holders. In the realm of cyberspace, it is the subjective element of the test of contributory infringement more than its objective element that has posed some problems to trademark holders. Truly, the first significant decision on this matter has been Lockheed Martin Corp. v. Network Solutions, Inc.15 In this case, the judges were faced with two issues as regards plaintiff’s cause of action for contributory infringement: (1) whether the defendant, a registrar of domain names who had refused to cease registering domain-name alleged to be unlawful by the plaintiff, had supplied a product to third parties and (2) whether it had actual or constructive knowledge of any infringement. The court of appeal affirmed the summary judgment without reaching the second issue. Indeed the registrar could not be deemed as controlling the activity of its clients who engaged in infringing activities when registering domain names. It held that: [a]s the district court correctly observed, “Where domain names are used to infringe, the infringement does not result from [the registrar]’s publication of the domain name list, but from the registrant’s use of the name on a web site or other Internet form of communication in connection with goods or services. . . . [The registrar]’s involvement with the use of domain names does not extend beyond registration.” 985 F. Supp. at 958. The “direct control
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and monitoring” rule established by Hard Rock and Fonovisa likewise fails to reach the instant situation. The district court correctly recognized that [the registrar]’s rote translation service does not entail the kind of direct control and monitoring required to justify an extension of the “supplies a product” requirement.” The court justified its position by noting that it was not reasonable to expect that a registrar monitor the Internet.16 Nonetheless, when other service providers17 have been sued such as providers of a platform for online auctioning or more generally electronic commerce, the “exercise control over third party’s means of infringement” requirement has been characterized without many difficulties. In the case Tiffany (NJ), Inc. v. eBay, Inc.,18 the court held that “in examining all of the facts that were proved at trial, the Court finds by a preponderance of the evidence that eBay exercises sufficient control and monitoring over its website such that it fits squarely within the Fonovisa and Hard Rock Cafe line of cases.”19 The court noted that the service provider exercised control over its users through the design of the architecture of its system and the terms and conditions of its service. As regards the subjective element of the test of contributory infringement, the court drew a distinction between generalized knowledge and specific knowledge20 so that only specific knowledge of infringing activities could meet the “knowledge or reason to know” prong of the test of contributory infringement. By specific knowledge one must understand that the service provider has received specific notice by the alleged victims. Because in the cases in which eBay remained passive it had only generalized knowledge of infringing activities it could not be held liable for trademark infringement.21 Indeed, the plaintiff had only made general allegations of counterfeiting. Such a solution is explained by the court with the following syllogism: because the rights of trademark holders are narrower than those of copyright holders and because “[u]nder copyright law, generalized knowledge that copyright infringement may take place in an Internet venue is insufficient to impose contributory liability,”22 under trademark law, generalized knowledge that trademark infringement may take place in an Internet venue is also insufficient to impose contributory liability.23
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To draw a parallel between the activity of providers of sponsored links and providers of a platform for electronic commerce, one could state the following: whereas providers of sponsored links should easily be considered as exercising a direct control over their users-advertisers as the notion of “direct control” is interpreted in the Tiffany case, the knowledge requirement implies that these providers should be notified of the presence of particular infringing activities precisely identified before having to react, so that they will not be forced to refuse to sell keywords to those who simply might infringe upon rights of trademark holders. As a result providers of sponsored links should hardly be held liable on the ground of the theory of contributory infringement, as it seems to be the case for providers of a platform for electronic commerce. But when search engines have been sued, the application of the theory of contributory infringement has not always appeared to be straightforward. SEARCH ENGINES AS PRIMARY INFRINGERS If one looks at the case law, few decisions have been rendered on the issue of the liability of providers of sponsored links. In these cases, judges have been faced with the question of determining whether these providers could be considered as secondary infringers rather than primary infringers.24 Despite the role of intermediary played by providers of sponsored links, which does not mean that the latter do not exercise any type of control over their users,25 the doctrine of contributory infringement has not always been deemed as the logical ground for evaluating the behavior of these providers. Going further, when the act of selling the rights to link advertising to trademarks of third-party right holders has been criticized in judicial proceedings because Internet users were ultimately confused by the practice of sponsored links, it is the use in commerce done by the provider of sponsored links that is most of the time considered to be at the origin of the confusion of Internet users. Yet, strictly speaking, the doctrine of trademark use should serve to comprehend the behavior of primary infringers.26 It is true that the ground of contributory infringement has not been set aside at law. In Playboy Enterprises, Inc. v. Netscape Communications Corp.,27 5
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the court did not decide the question of the nature of the role played by the service provider. It sufficed to note that “defendants are either directly or contributorily liable.”28 In Government Employees Ins. Co. v. Google, Inc.,29 the judges did not seem to exclude the theory of contributory infringement as a ground for holding the defendant liable.30 And in Google, Inc. v. American Blind and Wallpaper,31 the judges denied the motion brought by the defendant to dismiss the plaintiff’s claims of contributory trademark infringement and contributory dilution since it did not appear ““beyond doubt” that the plaintiff could prove no set of facts in support of its claims.” This being said, these courts have not excluded the possibility of holding providers of sponsored links liable as primary infringers. More precisely, the way the infringing acts of the service provider are described by the judges shows that these providers are in reality more often considered as primary infringers than secondary infringers. In the Playboy case, the court implicitly accepted that the defendant’s use of the plaintiff’s trademark may be at the origin of Internet users’ confusion since it held that some genuine issues of material fact existed with respect to defendants’ keying practices being itself likely to confuse Internet users.32 In Government Employees Ins. Co.v. Google, Inc.,33 the court stated: a fair reading of the complaint reveals that plaintiff alleges that defendants have unlawfully used its trademarks by allowing advertisers to bid on the trademarks and pay defendants to be linked to the trademarks. […] In other words, when defendants sell the rights to link advertising to plaintiff’s trademarks, defendants are using the trademarks in commerce in a way that may imply that defendants have permission from the trademark holder to do so.34 Furthermore, it is the very act of selling the rights to link that created the illusion of a commercial relationship between defendants and the trademark holder.35 More significantly,36 in Rescuecom Corp. v. Google, Inc.,37 the Second Circuit overruled the decision of the district court, which refused to consider that the defendant’s use of the trademark was a use in commerce because the latter was a mere internal use.38 Indeed: 6
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[t]he present case contrasts starkly with those important aspects of the 1-800 decision. First, in contrast to 1-800, where we emphasized that the defendant made no use whatsoever of the plaintiff’s trademark, here what Google is recommending and selling to its advertisers is Rescuecom’s trademark. Second, in contrast with the facts of 1-800 where the defendant did not “use or display,” much less sell, trademarks as search terms to its advertisers, here Google displays, offers, and sells Rescuecom’s mark to Google’s advertising customers when selling its advertising services. In addition, Google encourages the purchase of Rescuecom’s mark through its Keyword Suggestion Tool. Google’s utilization of Rescuecom’s mark fits literally within the terms specified by 15 U.S.C. § 1127. According to the Complaint, Google uses and sells Rescuecom’s mark “in the sale . . . of [Google’s advertising] services . . . rendered in commerce.39 It is thus the use of the provider of sponsored links that appears to be reprehensible and in particular the manner in which the service provider presented the results of users’ searches. It is true nonetheless that the court did not answer the question whether the service provider had actually done more than using another’s mark in commerce and thereby had likely confused its users.40 To sum up, assuming the theory of contributory infringement is deemed applicable, providers of sponsored links should be held liable only when they do not react upon detailed notification of trademark holders. This said, the specter of primary liability continues to persist. Therefore, stricter duties such as preventing trademark infringement in the absence of prior notification could ultimately be imposed upon providers of sponsored links,41 in particular when the sole use of selling the rights to link is deemed infringing. What about European law? Is the legal framework clearer? E U L AW While search engines can hardly be considered as trademark infringers when their activity of selling rights to link to keywords corresponding to protected trademarks is at issue, they still can be
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held wrongdoers on the ground of general rules of civil liability. SEARCH ENGINES AS TRADEMARK INFRINGERS In Europe the refusal to consider that providers of sponsored links use trademarks in the course of trade could appear at first glance to be at the advantage of these service providers. Indeed, the ECJ has recently42 held that “[a]n internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.”43 The court considered that the use of a trademark in the course of trade can only occur “in the context of commercial activity with a view to economic advantage.”44 Whereas the advertiser choosing a keyword corresponding to a trademark of a third party in order to trigger a commercial link sending users to its websites clearly45 use the trademark “in the context of a commercial activity with a view to economic advantage,” the Internet referencing service provider intervenes in a different context. Although the latter is paid by its clients who use trademarks of third parties in the course of trade, and therefore carries out a commercial activity with a view to economic advantage, according to the court this does not mean that it uses these trademarks in the context of “its own commercial communication.”46 The narrowing down of the criterion of commercial activity to that of commercial communication is debatable. As the advocate general M.P. Maduro observed it, the problem lies more in the fact that the “use by Google consisting in allowing advertisers to select in AdWords keywords which correspond to trade marks, so that ads for their sites are presented as results for searches involving those keywords”47 is not made in relation to goods or services which are identical or similar to those covered by the trade marks rather than in the fact that it is not a use made in the course of trade. Besides, the advocate general expressly accepted that this use be made in the course of trade. If the ECJ refused to comprehend the behavior of Internet referencing providers on the ground of
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trademark law, this can be done on the ground of general rules of civil liability, which appear to be more adapted to the reality of cyberspace and the diversity of the activities carried out by its actors.48 On this point the court thus followed the opinion of the advocate general who noted that: Liability rules are more appropriate, since they do not fundamentally change the decentralised nature of the internet by giving trade mark proprietors general—and virtually absolute— control over the use in cyberspace of keywords which correspond to their trade marks. Instead of being able to prevent, through trade mark protection, any possible use—including, as has been observed, many lawful and even desirable uses—trade mark proprietors would have to point to specific instances giving rise to Google’s liability in the context of illegal damage to their trade marks.49 Still, by excluding the net of trademark law, one could think that the specter of strict liability seems to move away. The preference given to general rules of civil liability rather than trademark law was explained by the absence of theories of secondary liability in European law: “[t]he goal of trade mark proprietors is to extend the scope of trade mark protection to cover actions by a party that may contribute to a trade mark infringement by a third party. This is usually known in the United States as ‘contributory infringement’, but to my knowledge such an approach is foreign to trade mark protection in Europe, where the matter is normally addressed through the laws on liability.”50 Yet, “[t]he trade mark proprietors are urging the Court to go even further: to rule, in effect, that the mere possibility that a system—in the present cases, AdWords— may be used by a third party to infringe a trade mark means that such a system is, itself, in infringement.”51 Thus, one must find the way to limit the claims of trademark holders. It was therefore implied, at least by the advocate general, that the theory of contributory infringement is the natural ground for evaluating the behavior of Internet referencing service providers. However as the study of US law shows, such an affirmation does not go without saying. In any case, the danger of comprehending the behavior of providers of sponsored links on the 7
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ground of trademark law should nonetheless have been qualified given the domain of Article 14 of the Directive on electronic commerce. Indeed contrary to the provisions of the Digital Millennium Act of 1998, Article 14 (as well as Articles 12, 13, and 15 of the Directive on electronic commerce) has been conceived as setting down the bases for a horizontal liability regime. It should thus apply whatever the nature of the interests that are violated by the defendant is. In other words, the fact that the defendant is using the trademark without having previously asked for the authorization of the trademark holder should not prevent itself from asserting Article 14 as a defense. The way the Court of Cassation has drafted its preliminary questions seems however to imply the contrary.52 Going further, it is not sure that the exclusion of trademark law at the European level really prevents national judges from extending the “relative” monopoly of trademark holders within cyberspace. As the study of French law shows it, the ground for holding providers of sponsored links liable does not explain the more or less strictness of judges towards these providers. This is all the more true that the ECJ has left a significant margin of leeway to national judges when interpreting the domain of Article 14 of the Directive on electronic commerce laying down the basic components of the liability regimes of hosting providers.53 SEARCH ENGINES AS WRONGDOERS ON THE GROUND OF GENERAL RULES OF CIVIL LIABILITY Taking the example of French law as it has evolved until the decision of 23 May 2010, it shows that even when judges choose the ground of trademark law to comprehend the behavior of providers of sponsored links they tend to engage into a subjective analysis of the defendant’ acts. As aforementioned, the provider of sponsored links’ use of the trademark when it sells the rights to link advertising to plaintiff’s trademarks is not made in relation to goods or services which are identical or similar to those covered by the trademarks. A strict application of the “specialty principle”54 should have amounted to refusing to characterize this provider as an infringer. This has not been the path followed by several courts like the Versailles court of Appeal 8
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in its decision of 23 March 2006.55 But even if the “specialty principle” is manhandled, the reasoning of French judges grounded on Article L.713-2 or L.713-3 of the Intellectual Property Code is not merely objective. More precisely, judges tend to characterize the wrong committed by the provider of sponsored links.56 While some judges content themselves with pointing at the commercial nature of the activity of the provider to exclude the application of Article 14, which is condemned by the ECJ in its decision of 23 March 2010, they underline either the modalities of the control exercised by the provider of sponsored links over its users or the knowledge of infringing activities on its services. Besides, the modalities of the control exercised over users of providers of sponsored links are primarily technological. In other words, the Internet service providers use the technological architecture of their services to exercise control over their users at least potentially. The fact that the service provider uses filtering measures to prevent the uses of the keywords corresponding to plaintiff’s trademarks by other advertisers explains that it be under the duty to prevent further infringements of plaintiff’s rights.57 Going further, the fact that the service provider uses a program to ease contacts between advertisers and Internet users, and in particular that it uses a program to suggest keywords to advertisers, justifies that it has to adopt precautionary measures not to facilitate infringing acts on its system.58 Above all when judges choose to ground their decisions on general rules of civil liability such as Articles 1382 and 1383 of the Civil Code, which sanction wrongdoers when they commit negligence, they do not necessarily find for providers of sponsored links. In most of the cases in which Articles 1382 and 1383 of the Civil Code have been preferred, the defendants have been held liable after having characterized their knowledge of the infringing acts or their capacities of controlling their users. This case law should not be put into question by the interpretation of Article 14 of the Directive on electronic commerce in the decision of 23 May 2010. As long as national judges characterize the control exercised by Internet referencing service providers over the information transmitted or their knowledge of the infringing activities, they can legitimately deny these providers the advantage of Article 14.59 Although it is not sufficient to note that the Internet referencing service providers offer a service
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subject to payment or that the keyword sold corresponds to search terms entered by Internet users, it should not be too difficult to establish the requirement of control, which is besides alternative to that of knowledge. This is true in particular if the plaintiff insists upon its role in the drafting of the advertising. In this regard, the ECJ explained that “in the context of the examination referred to in paragraph 114 of the present judgment, the role played by Google in the drafting of the commercial message which accompanies the advertising link or in the establishment or selection of keywords is relevant.”60 Indeed: [w]ith regard to the referencing service at issue in the cases in the main proceedings, it is apparent from the files and from the description in paragraph 23 et seq. of the present judgment that, with the help of software which it has developed, Google processes the data entered by advertisers and the resulting display of the ads is made under conditions which Google controls. Thus, Google determines the order of display according to, inter alia, the remuneration paid by the advertisers.61 The question remains to identify the cases in which the control requirement is met when the sole use of selling rights to link is at issue.62 CONCLUSION To conclude, the legal framework composed of special and general rules of civil liability aimed at regulating the behavior of on-line intermediaries such as providers of sponsored links is not clearly set yet, be it in the US or in Europe. Some doubts remain as regards the content of the duties imposed upon this category of intermediaries. Solving the problem of the ground for liability does not suffice to precisely delineate the legal regime under which the main actors of cyberspace can act. This said, in both legal systems when the first use is at issue, meaning “when [the provider] allows advertisers to select the keywords (. . .), so that ads for their sites are presented as results for searches involving those keywords,” it seems that at a minimum the provider is asked to terminate trademark infringements upon notice.
Moreover, when the second use is also at issue, meaning “when [the provider] displays such ads, alongside the natural results displayed in response to those keywords,” the provider may be treated more strictly than when the first use is at issue, as long as maybe it does not take the initiative of suggesting unlawful uses of keywords. In any case even if the behavior of the provider is deemed to be infringing or more simply is considered to be wrongful, the main issue is that of determining the exact contours of the obligations imposed upon it. Is it sufficient to improve the presentation of sponsored links or is it necessary to take precautionary measures to prevent advertisers’ unlawful acts such as prohibiting the use of certain keywords? N OT E S 1. For a description of Google’s business model, see Greg Lastowka, “Google’s Law,” 73 Brooklyn L. Rev. 1327 (2008). 2. This expression is that of Greg Lastowka, id. at 1327. 3. For a definition of such a notion, see Sophie Stalla-Bourdillon, “Chilling ISPs . . . When Private Regulators Act without Adequate Public Framework,” 26 Computer Law and Security Review 290 (2010). 4. Lastowka, supra n.1 at 1327-1328. 5. At least in Europe. 6. See, e.g., David Franklyn, “The European Court of Justice Rules on Keywords Ads and Trademark Rights,” 14 Intellectual Property Law Bulletin 89, (2010). 7. “[T]he Supreme Court tells us that secondary liability for trademark infringement should, in any event, be more narrowly drawn than secondary liability for copyright infringement. Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 439 n.19, 104 S. Ct. 774, 787 n.19, 78 L. Ed. 2d 574 (1984) (citing “fundamental differences” between copyright and trademark law”). Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143, 1150 (7th Cir. 1992). 8. Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143, 1150 (7th Cir. 1992) (obiter dictum). See also SB Designs v. Reebok Intern., Ltd., 338 F. Supp. 2d 904, 909 (N.D. Ill. 2004). 9. See, e.g., American Tel. & Tel. Co. v. Winback & Conserve Program, 42 F.3d 1421, 1430-1431 (3d Cir. 1994) (“Thus, we hold that the district court properly held that agency principles apply to the instant dispute.” Id. at 1434.) See also Procter & Gamble Co. v. Haugen, 317 F.3d 1121 (10th Cir. 2003), later proceedings, 427 F.3d 727 (10th Cir. 2005). Nonetheless in this case, the defendant has not been held liable on the ground the theory of vicarious liability. 10. Deborah J. Peckham, “The Internet Auction House and Secondary Liability—Will eBay Have to Answer to Grokster?,” 95 The Trademark Reporter 977, (2005). 11. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854-855 (1982). 12. Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992) (“In the absence of any suggestion that a trademark violation should not be treated as a common law tort, we believe that the Inwood Labs. test for contributory liability applies.”) See also Polo Ralph Lauren Corp. v. Chinatown Gift Shop, 855 F. Supp. 648 (S.D.N.Y. 1994); Fonovisa, Inc. v. Cherry
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Auction, Inc., 76 F.3d 259, 265 (9th Cir. 1996) (“The Court in Inwood, however, laid down no limiting principle that would require defendant to be a manufacturer or distributor.”). 13. Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143, 1148-1149 (7th Cir. 1992); Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 265 (9th Cir.1996). 14. Mark Bartholomew Peckham & John Tehranian, “The Secret of Life of Legal Doctrine: The Divergent Evolution of Secondary Liability in Trademark and Copyright Law,” 21 Berkeley Technology Law Journal 1363 (2006). 15. 194 F.3d 980 (9th Cir. 1999). See also Academy of Motion Picture Arts & Sciences v. Network Solutions, Inc., 989 F. Supp. 1276 (C.D. Cal. 1997); Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002); American Girl, LLC v. Nameview, Inc., 381 F. Supp. 2d 876 (E.D. Wis. 2005). 16. Lockheed Martin Corp. v. Network Solutions, Inc. 985 F. Supp. 949, 962 (C.D. Cal. 1997). 17. Contrary to the registrar in the Lockheed case, these service providers are not in a situation of monopoly. 18. 576 F. Supp. 2d 463 (S.D.N.Y. 2008). 19. 576 F. Supp. 2d 463, 506 (S.D.N.Y. 2008). 20. 576 F. Supp. 2d 463, 507 (S.D.N.Y. 2008). 21. 576 F. Supp. 2d 463, 508 (S.D.N.Y. 2008). 22. 576 F. Supp. 2d 463, 510, n.37 (S.D.N.Y. 2008). The court quotes A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1027 (9th Cir.2001). 23. The court quoted Lockheed to justify its position. In this case, the judges refused to make the registrar generally decide upon the lawfulness of the uses of domain names. More precisely repeating the admonition of Justice White in the Inwood case, it stated that “the doctrine of contributory trademark infringement should not be used to require defendants to refuse to provide a product or service to those who merely might infringe the trademark.” Tiffany (NJ), Inc. v. eBay, Inc. 576 F. Supp. 2d 463, 509-510 (S.D.N.Y. 2008).
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alleged facts sufficient to support their claims that advertisers make a “trademark use” of GEICO’s marks, and that defendants may be liable for such “trademark use.”” Government Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 704 (E.D. Va. 2004). 35. Government Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 704 (E.D. Va. 2004). 36. The court rendered its decision on a motion to dismiss. 37. 562 F.3d 123 (2d Cir. 2009). 38. The court distinguished the case at hand with that of 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005), which involved the proprietor of a software generating pop-up advertisements. In the 1-800 Contacts case, the use of the trademark was merely internal because “[t]he pop-up ad appeared in a separate browser window from the website the user accessed, and the defendant’s brand was displayed in the window frame surrounding the ad, so that there was no confusion as to the nature of the pop-up as an advertisement, nor as to the fact that the defendant, not the trademark owner, was responsible for displaying the ad, in response to the particular term searched.” Besides, “[a] key element of our court’s decision in 1-800 was that under the plaintiff’s allegations, the defendant did not use, reproduce, or display the plaintiff’s mark at all. The search term that was alleged to trigger the pop-up ad was the plaintiff’s website address.” Rescuecom Corp. v. Google, Inc. 562 F.3d 123, 128 (2d Cir. 2009). 39. Rescuecom Corp. v. Google, Inc. 562 F.3d 123, 129 (2d Cir. 2009). 40. In the words of the court: “We have no idea whether Rescuecom can prove that Google’s use of Rescuecom’s trademark in its AdWords program causes likelihood of confusion or mistake.” Rescuecom Corp. v. Google, Inc. 562 F.3d 123, 130 (2d Cir. 2009). 41. This corresponds to what S. L. Dougan calls “failure-to-police claims.” Stacey L. Dogan, “Trademark Remedies and Online Intermediaries,” 14 Lewis & Clark L. Rev. 467 (2010).
24. Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1024 (9th Cir.2004).
42. ECJ, 23 March 2010, joined cases Case C-236/08, Google France SARL, Google Inc. v. Louis Vuitton Malletier SA ; Case C-237/08, Google France SARL v. Viaticum SA, Luteciel SARL ; Case C238/08, Google France SARL v. Centre national de recherche en relations humaines (CNRRH) SARL, P.-A. Thonet, B. Raboin
25. It is actually just the contrary.
43. ECJ C-236/08, C-237/08, C-238/08, 23 March 2010, § 121.
26. Truly, there is no consensus on the appropriateness of the doctrine of trademark use. Compare Mark A. Lemley & Stacey L. Dogan, “Grounding Trademark Law Through Trademark Use,” 92 Iowa L. Rev. 1669 (2007), with Graeme B. Dinwoodie & Mark D. Janis, “Confusion Over Use: Contextualism in Trademark Law,” 92 Iowa L. Rev. 1597, (2007). See the appendix “On the Meaning of ‘Use in Commerce’ in Sections 32 and 43 of the Lanham Act” to the decision Rescuecom Corp. v. Google, Inc. 562 F.3d 123, 129 (2d Cir. 2009).
44. ECJ C-236/08, C-237/08, C-238/08, 23 March 2010, § 50.
27. 354 F.3d 1020 (9th Cir.2004). 28. 354 F.3d 1020, 1024 (9th Cir.2004). 29. 330 F. Supp. 2d 700, 703-704 (E.D. Va. 2004). 30. “The claim that [Defendant] monitors and controls the thirdparty advertisements is sufficient to plead the actual or constructive knowledge required to allege contributory infringement.” Government Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 704-705 (E.D. Va. 2004). 31. 2005 WL 832398 (N.D. Cal. 2005). 32. 354 F.3d 1020, 1024 (9th Cir. 2004). It is true that the way the intent of the defendant is analyzed remains equivocal. 33. 330 F. Supp. 2d 700 (E.D. Va. 2004). 34. Government Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 703-704 (E.D. Va. 2004). It is true that the court recognizes that “[a]ccepting as true the facts alleged by plaintiff regarding the inclusion of the marks in advertisements and defendants’ overall control of their advertising program, we find that plaintiffs have
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45. The use of the advertiser is clearly part of his advertising strategy. The explanation given by the ECJ is the following: “[f]rom the advertiser’s point of view, the selection of a keyword identical with a trade mark has the object and effect of displaying an advertising link to the site on which he offers his goods or services for sale. Since the sign selected as a keyword is the means used to trigger that ad display, it cannot be disputed that the advertiser indeed uses it in the context of commercial activity and not as a private matter.” See also ECJ, 25 March 2010, Case C-278/08, Die BergSpechte Outdor Reisen un Alpinschule Edi Koblmüller GmbH v. Günter Guni, trekking.at Reinsen GmbH §41. 46. In the words of the court: “In that regard, suffice it to note that the use, by a third party, of a sign identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs.” ECJ C-236/08, C-237/08, C-238/08, 23 March 2010, SA § 56. 47. Opinion of advocate general P. Maduro delivered on 22 September 2009 in the joined cases C-236/08, C-237/08, and C-238/08 § 50. The advocate general distinguished two different uses, the second being the more problematic in terms of liability: “[i]n reality, not one but two uses are involved: (a) when Google allows advertisers to select the keywords (this use being somewhat internal to the operation of AdWords), so that ads for their sites are presented as results for searches involving those keywords; and (b) when Google displays such ads, alongside the natural results displayed in response to those keywords.”
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48. Such an approach is not possible under US law given the scope of the domain of the Communications Decency Act and its § 230. 49. Opinion of advocate general P. Maduro delivered on 22 September 2009 in the joined cases C-236/08, C-237/08, and C-238/08 § 123. 50. Id. 51. Id. 52. In addition this position seems to be the one of the advocate general as well. Opinion of advocate general P. Maduro delivered on 22 September 2009 in the joined cases C-236/08, C-237/08, and C- 238/08 § 52. The question raised by the court of cassation is the following: “In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under [Directive 89/104] or [Regulation No 40/94], may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of [Directive 2000/31], so that that provider cannot incur liability until it has been notified by the trade mark proprietor of the unlawful use of the sign by the advertiser?” 53. It must be remembered that the Directive on electronic commerce had been adopted to level the liability regimes of intermediary providers because of divergences existing among member states. 54. The “specialty principle” holds that the trademark is protected only in relation to the products and services designated within the act of registration. 55. CA Versailles, 23 March 2006, Société Google France v. S.A.R.L. CNRRH, www.gazettedunet.fr; TGI Nanterre, 2e ch., 14 December 2004, CNRRH, Pierre Alexis T. v. Google France et autres, www. legalis.net; CA Paris, 4e ch., A, 28 June 2006, Google France v. Louis Vuitton Malletier, www.legalis.net; CA Aix en Provence, 2e ch., 6 December 2007, TWD Industries v. Google France, Google Inc., www.juriscom.net; TGI Paris, 14 March 2008, Citadines v. Google Inc. et Google France, www.juriscom.net; CA Paris, 4e ch., B, 1er Février 2008, Gifam et a. v. Google France, www.legalis.net; CA Versailles, 12e ch., 1, 2 Novembre 2006, Overture v. Acor, www.legalis.net; TGI Nanterre, 1re ch., 2 March 2006, Hôtels Méridien v. Google France, www.legalis.net; TGI Nanterre, 2e ch., 13 October 2003, Société Viaticum, Société Luteciel v. Société Google France, www.legalis.net.
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56. When providers of sponsored links are held liable on the ground of misleading advertising some courts stick to an objective analysis whereas others adopt a subjective analysis. Compare CA Paris, 4e ch., B, 1 February 2008, Gifam et a. v. Google France, www.legalis. net; TGI de Paris, 14 March 2008, Citadines v. Google Inc. et Google France, www.juriscom.net; TGI Paris, 3e ch., 2e section, 4 February 2005, Louis Vuitton Malletier v. Google Inc. et Google France, Comm. Com. Electr. 2005, comm. 117, note Ph. StoffelMunck, www.legalis.net; T. com. Paris, 15e ch., 23 October 2008, Cobrason v. Google, Home Ciné Solutions, www.legalis.netwith TGI Nanterre, 2e ch., 17 January 2005, Accor v. Overture Services Inc., JCP E 2005, p. 921-923, note A. Singh, www.foruminternet. org; TGI Nanterre, 2e ch., 13 October 2003, Société Viaticum, Société Luteciel v. Société Google France, www.legalis.net. 57. TGI Paris, 3e section, 12 July 2006, Gifam et a. v. Google France, www.legalis.net. 58. TGI Paris, 3e ch., 3e section, 7 January 2009, Voyageurs du Monde, Terres d’Aventure v. Google et autres, www.legalis.net. See also TGI Paris, 3e section, 12 July 2006, Gifam et a. v. Google France, www. legalis.net. 59. The ECJ held that “Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.” ECJ C-236/08, C-237/08, C-238/08, 23 March 2010 § 121. 60. ECJ C-236/08, C-237/08, C-238/08, 23 March 2010, § 118. 61. ECJ C-236/08, C-237/08, C-238/08, 23 March 2010, § 115. 62. It seems easier to establish the knowledge requirement than the control requirement when the sole use of selling rights to link is at issue.
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