Googleville--with ads of course.

Googleville--with ads of course.

It seems like only yesterday when May flowers were still just blooming and your wild and magical night at the Stonehenge Summer Solstice was still to come in the glorious future, when we were discussing the fall-out from one class action lawsuit against Google and the subsequent class action settlement agreement. Now, might another one be on the way? According to esteemed colleagues in the media law blogosphere, Google currently has eight lawsuits pending against it for trademark infringement stemming from the use of its old-school bread and butter, Google AdWords. Google AdWords produces those “sponsored links” which always pop up to the right after any simple Google “organic” search or, for that matter, in your Gmail account during particular email discussions. If you happened to wonder why sometimes those sponsored links were slightly on-point with what you were looking for or talking about, but, at second glance, were a bit off-kilter, there’s a reason.

The way this ingenious money maker works is that advertisers pay Google and other search engines who have copied the idea to conjure up advertisements for their products whenever users enter certain search terms. Of course, this makes tons of sense and, dagnabit!, I wish I had thought of it first. However, a problem has arisen, at least according to some discerning lawyers. Apparently, advertisers can pick whichever words they want, including, for instance, their primary competitor’s trademarked brand name or any other entity’s trademarked brand name or, for instance, your name, if they were so inclined. Thus, theoretically, and by way of a pretty primitive example, a Google-user could search for “Coca-Cola” and ads for “Pepsi” would immediately pop up in the sponsored links. So…stop me if you’ve heard this story before: some folks started talking and decided that they might very well have a cause of action against the VERY big pockets of Google, Inc., that is, a trademark infringement claim for improper “use” of their trademark.

In one of the more prominent of these eight cases, Rescuecom Corp. v. Google, Inc., the Second Circuit recently overturned the granting of a 12(b)(6) motion to dismiss in Google’s favor and held that, although the trademark never appeared anywhere in the advertisement itself, Google did in fact “use” the trademark, a requirement under the Lanham Act: “[H]ere Google displays, offers, and sells Rescuecom’s mark to Google’s advertising customers when selling its advertising services.” Thus, although this battle is very far from over and will continue, probably 5-6 Stonehenge Summer Solstices into the future, the ruling did indeed make the claim slightly more legitimate, or else Google’s defense that they were not, in fact, “using” the trademark slightly less of a slam-dunk option for getting rid of this pesky litigation.

So, like to a celebrity’s darkest hour, lawsuits keep flooding in and some are wondering if the cases might soon be consolidated under one roof in front of a Multi-District Litigation panel. If that happens, who knows how many more will come in and Google’s lawyers might find themselves right back at it, crafting another class action settlement agreement. But, that’s probably not going to happen anytime soon, or not until, at the very least, a plaintiff can get way past the motion-to-dismiss stage.

— Stuart Burkhalter

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