This June, Google will expand advertiser’s ability to bid on trademarked keywords worldwide in over 200 countries despite a class action lawsuit filed in Texas. The plan to do so illustrates Google’s confidence that trademark bidding is not a violation of trademark laws—apparently anywhere.
Despite search rivals Yahoo and MSN banning the practice, Google continued to allow advertisers to bid on rival trademark keywords in the US and Canada so long as the rival trademark didn’t appear in the search ad itself. Google extended the policy to the United Kingdom and Ireland last year.
The most famous example when this first issue popped up involved Mazda and Pontiac. When General Motors instructed TV viewers to google the Pontiac brand name, Mazda launched a keyword counterattack, targeting Pontiac keywords to promote its chief Pontiac Solstice rival, the MX-5 Miata.
And so the debate began at large: Is a tactic like this a violation of trademark law? Does it constitute use in commerce?
Google has been pretty successful defending itself in court against some rather small time players in the US, and has won similar cases in Germany. Moet, Hennessey, and Louis Vuitton, however, took it to Google in France, a ruling Google is appealing.
Back in the US, lawyers out of Marshall, Texas, a district better known for a deluge of bogus class-action patent infringement lawsuits, have filed for class action status regarding the trademark keyword issue.
While that sounds like a bad thing, Eric Goldman, Associate Professor of Law at Santa Clara University School of Law, suggests Google may actually benefit from a class-action suit so the issue can be settled once and for all, at least in the US.
“If the class forms,” writes Goldman, “then Google can either (a) make its stand in a single case, fight to the death and try to win the lawsuit outright, effectively eliminating further challenges, or (b) more likely, settle up by paying an amount that represents a pinprick to its financial well-being but makes a few lawyers in Marshall, Texas rich enough to buy more cow pasture than they can shake a rattlesnake at. The settlement would then bind all trademark owners governed by the class, eliminating their right to sue. This could be cheap one-stop shopping for Google.”
Goldman doubts, though, the judge in the case will actually grant class action status to the case, though.
While Google clearly believes the company is on firm legal footing in the US, the legal team there apparently also believes they are on firm legal footing on the issue in about 200 countries worldwide.
