Four years ago, American Blind & Wallpaper Factory asked Google to stop selling its trade marks as keywords designed to trigger sponsored links. In response, the search engine asked the US District Court in San Jose, California in November 2003 to declare that its adwords programme did not infringe American Blind’s trade mark rights.
American Blind filed a counterclaim and the case was set for trial in November this year.
Now American Blind has agreed to settle the litigation, a move that Google regards as a victory. In an emailed statement, a spokesperson for the search engine said:
“From the start, we've said that American Blind & Wallpaper Factory's claims were baseless, and that Google's trade mark policies are perfectly reasonable and lawful. Now, with trial approaching, American Blind decided to withdraw all of its claims. We are very pleased with this outcome and to note that Google has not paid and will not be paying any settlement fee, our trade mark policies remain unchanged, and we've made no special exceptions for American Blind.”
But in announcing that American Blind had agreed to end the litigation, a spokesman for the company revealed his frustration that other, bigger trade mark owners had not done more to help it in its fight against Google’s adword programme.
In an emailed statement he said: “What most people don't realize is that ABWF wasn't the party who chose this lengthy litigation battle with Google – Google chose ABWF. Regardless, ABWF has had to bear the economic hardship of this lawsuit by itself, while other, far larger, entities with brand names also at stake, have waited to see what would happen at trial and hopefully reap the benefits of ABWF's investment.”
He went on to say that the company has decided to focus its efforts on its business, rather than completing the case, adding that American Airlines decision to file the same claims against Google earlier this month “made the decision by our company that much easier”.
“We still believe that what Google does is wrong but this is no longer our fight. Our competitors should know that our settlement agreement with Google in no way limits our ability to object and seek legal relief if they continue to buy our trade marks as keywords from any search engine, including Google. We have always diligently protected our marks from this conduct and will continue to do so.”
Many trade mark owners are angry about the way that search engines sell trade marked terms to their rivals to trigger their own internet adverts, describing such use as infringement. But without a clear court ruling or specific legislation, the issue remains a grey legal area.
At a session at INTA’s annual meeting in May, Lauren Fisher, assistant general counsel for IP at AOL, said that the area of adwords remains murky because there is no legal consensus as to what constitutes the concept of “use” of trade marks on the internet. “In the US, the laws in the Second Circuit are completely different from the laws in the Ninth Circuit,” she said.
Rose Hagan, senior trade mark counsel for Google, told the audience: “At Google, we sell ad space, not trade marks.” She added that, in Google's view, advertisers should be responsible for their choice of ad text and keyword triggers, and that the onus should not be placed on the search engines.
