Tuesday March 9th 2010, by Piers Strickland
Our new address is:
Unit 9, First Floor, Universal House, 88-94 Wentworth Street, London E1 7SA.
Trade Mark Law Update – European decision on Google keywords case
Thursday October 8th 2009, by Piers Strickland
EXECUTIVE SUMMARY: The Advocate General to the European Court of Justice (ECJ) has held that using registered trade marks in the Google Adwords Service, in this instance, did not constitute trade mark infringement. While the official and binding ruling from the ECJ has yet to be handed down, the ECJ does usually follow the advice of the Advocate General in most cases.
FACTS: This case emanated from three references from the French Cour de cassation, all dealing with Google’s advertisement system, “AdWords”. In order to assist the ECJ with its final decision, the Advocate General (AG) has recently published his decision.
There were various key aspects of trade mark law at issue in this case. The trade mark proprietors who were complaining about Google AdWords, such as Louis Vuitton, had to prove various elements, namely:
Article 5(1) of Directive 89/104/EEC
(1) That “use” of their marks was “in the course of trade”. The AG took the view that Google AdWords is clearly a commercial enterprise with a view to a gain and so the condition “in the course of trade” was satisfied. This hardly seems surprising.
However, the AG seemed to miss a potential argument raised by the English Court in the case of Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159. In the Reed case, the Court of Appeal held that the use of metatags was invisible to members of the public and thus use of trade marks in metatags may well not count as “trade mark use” in the course of trade. Of course, metatags and AdWords are different situations, but both involve essentially invisible processes in terms of their public facing aspects. In any event, the AG did not raise this issue. Instead, he took a slightly more tortuous route to finding non-infringement….
(2) Whether use is made in relation to goods or services which are identical or similar to those covered by the trade marks – the AG held that Google AdWords was not identical or similar to any of the goods or services covered by the trade mark registrations, so this condition was not satisfied.
(3) Whether the use affects or is liable to affect the essential function of the trade mark, by reason of a likelihood of confusion on the part of the public – in this respect the AG held as follows:
“As with natural results, internet users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed in response to keywords corresponding to trade marks. The risk of confusion lies in the ad and in the advertised sites, but, as has already been pointed out, the Court is not being asked about such uses by third parties: it is being asked only about the use by Google of keywords which correspond to trade marks.
It must be concluded, therefore, that neither the display of ads nor the display of natural results in response to keywords which correspond to trade marks leads to a risk of confusion as to the origin of goods and services. Accordingly, neither AdWords nor Google’s search engine affects or is in danger of affecting the essential function of the trade mark.”
Article 5(2) of Directive 89/104/EEC
(1) Whether Google’s uses of keywords which correspond to trade marks affect other functions of the trade mark besides its essential function, in particular, whether they take unfair advantage of, or are detrimental to, the distinctive character or the repute of the trade marks – this was a difficult issue for the AG. Clearly, the AG felt uncomfortable that if he held in favour of the trade mark owners, this would have a detrimental effect on the efficient running of the Internet:
“The internet operates without any central control, and that is perhaps the key to its growth and success…Keywords are one of the instruments – if not the main instrument – by means of which this information is organised and made accessible to internet users. Keywords are therefore, in themselves, content‑neutral: they enable internet users to reach sites associated with such words. Many of these sites will be perfectly legitimate and lawful even if they are not the sites of the trade mark proprietor.
Accordingly, the access of internet users to information concerning the trade mark should not be limited to or by the trade mark proprietor.”
Accordingly, the AG stated in his Opinion that trade mark proprietors were not able to prevent use of their trade mark registrations via Google AdWords, pursuant to Article 5(1) or 5(2) of Directive 89/104/EEC.
In his Opinion, the AG also made some interesting comments about other aspects of trade mark law, and, in particular, the E-Commerce Directive (i.e. that Google could claim immunity for trade mark infringement in respect of AdWords for merely “hosting”).
CONCLUSION – this decision will worry trade mark owners, who see use of their trade marks by competitors through / on Google Adwords as unfairly free-riding on the goodwill and reputation they have developed (at great cost) over the years.
On the other side of the debate, some people consider that Google AdWords in its current form offers an extremely valuable method for injecting competition into the market. The AG was clearly worried about the implications of ruling in favour of the trade mark owners, which he thought might result in a too a sanitised and easily controlled (by trade mark owners) list of results on search pages (both in terms of advertisements and organic results).
The AG’s decision also seems like the path of the least resistance for the ECJ to follow. Ruling the other way, against Google, would really set the cat amongst the pigeons, in terms of the lucrative Internet search industry. Many EU bodies are also by their nature strongly pro-competitive (and some are openly anti-IP), so maintaining the status quo seems to be the most likely outcome. The AG’s decision has increased the chances of this end result coming to pass when the ECJ finally rules (probably early next year).
Copyright Law Update: Getty Images case – part 2
Thursday September 17th 2009, by Piers Strickland
In our post of yesterday, we reported on a copyright infringement case brought by Getty Images that has provoked debate from those who question whether Getty enforces its copyrights too vigorously, taking advantage of the fact that the legal system in this country (England and Wales) is set up to favour copyright owners.
A further point to be made in this respect is that it is not just big companies such as Getty Images that can benefit from the legal system governing copyright. Smaller companies and individual photographers can also benefit from the prevailing legal system governing copyright and use the way the system operates to their advantage in copyright disputes.
For further information about how to enforce your copyright interests, please contact us.
Copyright Law Update – Getty Images successfully recover damages for copyright infringement
Wednesday September 16th 2009, by Piers Strickland
In a case reported on Outlaw, Getty Images has managed to successfully recover damages for copyright infringement from a removals firm who copied a Getty controlled photograph and reproduced it on their website without authorisation. The removal firm in question, JA Coles, subsequently removed the photo, upon receipt of a complaint from Getty, but did not pay damages or indeed respond to Getty’s subsequent correspondence.
Outlaw reports that: “[JA Coles] has agreed to pay £1,953.31 in damages and interest over the use of the picture, plus Getty Images’ legal costs”.
COMMENT: Getty Images are well know for enforcing their rights pro-actively. Most, if not all, copyright lawyers in this country will have had at least one client contact them with a letter before action from Getty Images complaining about alleged copyright infringement.
It appears that Getty uses technological automated methods to spot infringements, so the chances of instances of copyright infringements of their photographs coming to light is perhaps quite high.
Judging from certain blogs and bulletin boards, many people are shocked that Getty would pursue an alleged infringer for damages after it has removed the image from its website. However, Getty will no doubt argue that the value of their business and future revenue streams very much depend on protecting their copyrights robustly.
One thing, however, is clear. If you have copied an image owned or controlled by a company such as Getty (without permission) and reproduced this image in some material form, then this is likely, in many circumstances, to constitute an act of copyright infringement. Normally, a company such as Getty would be entitled to damages or a notional licence fee (which I understand to be around the £2,000 mark for Getty’s business). Innocence is no defence to such an act of copyright infringement and simply removing an image after an act of copyright infringement has taken place does not expunge the original act of copyright infringement.
Furthermore, copyright infringement cases, even small ones, do not go onto the small claims track in the Courts. Instead, such cases are often issued in London’s High Court. In the High Court, the winning party can often recover their legal fees from the losing party. Companies such as Getty often retain very expensive lawyers. Therefore, a company who ignores a warning letter about copyright infringement could be faced with a very expensive legal case on its hands, even if it just emanated from a “minor” infringement.
Lesson: if you happen to receive a copyright infringement warning letter, don’t ignore it, as that it usually a recipe for even more pain. Seek professional advice.
Website Law – case confirms what charges suppliers can make under the Distance Selling Regulations
Friday September 11th 2009, by Piers Strickland
The German case of Pia Messner v Firma Stefan Krüger has clarified what charges UK suppliers can and can’t levy on customers who are returning goods.
FACTS: A German internet based business had terms in force on its website which stated, amongst other things, that a purchaser would be liable to pay compensation for any deterioration in the goods through use for their intended purpose. There was a German law which allowed suppliers to charge consumers generally for the use of goods they return. The German court asked the European Court of Justice (the “ECJ”) for a ruling whether this German law as compatible with the European Directive 97/7/EC on distance selling (the “Directive”).
DECISION: The ECJ held that:
- A provision that allows a seller to claim compensation from the consumer for the value of the use of the consumer goods, was not compatible with Articles 6(1) and 6(2) of the Directive.
- Articles 6(1) and 6(2) do not prevent a consumer from being required to pay compensation for the use of the goods if he has used the goods in a way which is incompatible with good faith or unjust enrichment.
COMMENT: This case is instructive for companies selling in the UK, as it confirms that the only charge a supplier can impose on a consumer cancelling a contract under the Directive is the direct costs of returning the goods to the supplier. Other fees such as administration or restocking fees are not permitted under the Directive.
The Directive is an important constituent of “Website Law” and needs to be carefully considered by those companies involved in “Distance Selling” over the internet.