PlexLex: The Law of Google

Senate Committee Examines Online Behavioral Advertising

The New York Times covers the recent hearing of the Senate Committee on Commerce, Science, and Transportation on the privacy implications of online advertising.  At the hearing, Google and Microsoft advocated for an online privacy law, and the FTC opposed those efforts.  The Committee's website had billed the hearing as follows:

Individuals and businesses are becoming increasingly dependent upon the Internet for social, entertainment, research and business activities. This has created the incentive and opportunity for companies to collect, use, and disseminate data regarding online users. There is concern, however, that tracking individuals’ Internet activity and gathering information from online users violates their expectations of privacy. Individuals often are unaware what information is being collected about them, how it is being used and to whom it is disseminated. In this hearing, the Committee will consider the current state of the online advertising industry and that market’s impact on users’ privacy. Witnesses are expected to focus on the key factors driving online behavioral advertising, the methods of online behavioral advertising employed by industry, and the protections the Federal Trade Commission (FTC) and the Federal Communications Commission (FCC) should adopt to protect consumers from unwanted or unnecessary invasions of their privacy.

Majority Statements: Sen. Daniel K. Inouye Minority Statements: Sen. Ted Stevens Testimony of Witnesses: Federal Trade Commission Microsoft Corp. NebuAd Inc. Center for Democracy and Technology Google Inc. Competitive Enterprise Institute Facebook Inc.

Use of Competitor's Mark as Metatag Doesn't Confuse Consumers: Syncsort v. Innovative Routines International

Syncsort Inc. v. Innovative Routines International, Inc., 04-cv-3623, 2008 WL 1925304 (D.N.J. April 30, 2008). 

Plaintiff Syncsort and defendant IRI both sell sorting software.  IRI also sells conversion software that is specially made to allow users of Syncsort's software to switch to using IRI's software.  IRI put the word "syncsort" into the metadata of one of its webpages, so Syncsort sued IRI, claiming that this metatag constituted trademark infringement.  IRI moved for summary judgment.

The Court began its analysis by quoting a dictionary definition of "metatag" that makes a sweeping claim about the effect of metatags:

A metatag is “[a]n HTML tag that contains descriptive information about a webpage and does not appear when the webpage is displayed in a browser. A word that is in a metatag of a webpage will cause that webpage to turn up as a result of a search engine's search on that word, even if that word is not found in the webpage as viewed in a browser.”  The American Heritage Science Dictionary.

As the Eastern District of Wisconsin recently recognized, that definition goes too far, as search engines don't necessarily base their search results on metatags.  However, the defendant here survived in spite of such a broad presumption.

Syncsort argued "that the relationship between the two products is confused when a user searches for 'syncsort' and is provided a list of search results which includes the IRI website."  Unlike some other courts that have reflexively found that use of a competitor's trademark in a megatag equals skewed search results equals infringement (such as the Eleventh Circuit in its recent decision in North American Medical Corp. v. Axiom Worldwide, Inc.), the Court here found this argument unpersuasive. To reach its decision, the Court quoted J.G. Wentworth, S.S.C. L.P v. Settlement Funding LLC, 06-cv-597, 2007 WL 30115, *7-8 (E.D.Pa. Jan.4, 2007), stating:

At no point are potential consumers ‘taken by a search engine’ to defendant's website due to defendant's use of plaintiff's marks in meta tags. Rather ... a link to the defendant's website appears on the search results pages as one of the many choices for the potential consumer to investigate.... links to defendant's website always appear as independent and distinct links on the search result page.... Due to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant's services, goods, advertisements, links or websites for those of the plaintiff. Therefore, I find that initial interest protection does not apply here. Because no reasonable factfinder could find a likelihood of confusion under the set of facts alleged by the plaintiff, I will grant defendant's motion to dismiss.

The Court granted summary judgment to IRI on the trademark claim, finding that its use of Syncsort's mark was a fair use.

Court Bars Cybersquatter From Using Disclaimers & Comparative Advertising

Ticketmaster Corp. v. DeVane, 7:07-CV-196-F, 2008 WL 2073914 (E.D.N.C., May 14, 2008).

After finding that defendant Daniel DeVane was liable to plaintiff TicketMaster for cybersquatting under 15 U.S.C. Sec. 1125(d), the Court barred him from maintaining his registration of the domain name ticketmasterevents.com and from "using any names, words, designations or symbols consisting of, incorporating in whole or part, or otherwise similar to the TICKETMASTER mark or any other Ticketmaster trademark in any buried code, metatags, search terms, keywords, key terms, hits generating pages, or any other devices used, intended, or likely to cause any web site or web sites of DeVane to be listed by any Internet search engines in response to any searches that include any terms identical with or confusingly similar to the TICKETMASTER mark or any other Ticketmaster trademarks."

That means DeVane can't make statements on his website like "Better than TicketMaster", as webpages containing such statements could be listed in response to Google searches for "TicketMaster".  A page containing that particular statement is even more likely to be prominently listed in response to Google searches for "Better than TicketMaster", yet the injunction prohibits DeVane from making that statement even though TicketMaster has no reasonable interest in preventing DeVane's website from appearing in search results generated by Internet users who are clearly looking for an alternative to TicketMaster. 

As another example of how far-reaching the injunction is, consider the website to which DeVane's website appears to send visitors via an affiliate program: www.soldouttickets.com.  As of this writing, it contains the following disclaimer:

We are a privately owned ticket agency and in no way affiliated with ticketmaster, ticketron, or any box office. We sell tickets to otherwise "sold out" concerts and sports events and premium tickets to other popular events.

As the injunction applies not only to DeVane but also to "his agents ... and all others in active concert or participation with him," one might argue that it prohibits mention of TicketMaster in the disclaimer, which is a somewhat odd result, given that courts often require trademark infringers to issue disclaimers or corrective advertising. 

DeVane did not argue for a narrower injunction that would have allowed use of such comparative or disclaiming language, but attorneys defending clients in similar situations ought to consider doing so.

Court: No Trademark Liability for Use of Competitor's Mark in Meta Tags

Standard Process, Inc. v. Banks, No. 06-C-843, 2008 WL 1805374 (E.D. Wis., April 18, 2008). 

In trademark meta tag litigation, it's good to see judicial interest in whether search engines actually pay attention to meta tags.  This decision is one example of such interest.  However, litigators should not rely on mere citation to this decision; they should make a fresh inquiry into what a particular search engine does with the meta tags at issue in their case, as the answer changes over time.  It's not true that all search engines ignore them, as one might conclude after reading this decision.  For example, Google offers advice to webmasters on proper use of meta tags, indicating that Google is paying attention.

Key language from the Standard Process decision:

Standard Process ... alleges that Dr. Banks is liable for trademark infringement because of “initial interest confusion.” See Promatek Indus., LTD v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir.2002). “Initial interest confusion” occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated. Id. For example, in Promatek, the plaintiff used a direct competitor's trademark in its metatags. A metatag is HTML (Hyper Text Markup Language) code that describes the content of a website, and search engines used to use them to identifying the content of a website. The Seventh Circuit found that the use of the competitor's trademark in the plaintiff's metatags diverted customers to the plaintiff's website and likely caused customer confusion. Id.

... Dr. Banks used Standard Process trademarks in the metatags of his website. However, today “modern search engines make little if any use of metatags.” 4 J. Thomas McCarthy on Trademarks and Unfair Competition § 25:69 (4th ed.2003). As more and more webmasters “manipulated their keyword metatags to provide suboptimal keyword associations, search engines progressively realized that keyword metatags were a poor indicator of relevancy.”  Accordingly, search engines today primarily use algorithms that rank a website by the number of other sites that link or point to it. See 4 McCarthy on Trademarks § 25:69.

In any event, even if search engines still made significant use of metatags, this case is different than Promatek. Consumers who enter “Standard Process” in a search engine may be diverted to Dr. Banks's website where, unlike the plaintiff's site in Promatek, it actually provides an opportunity to purchase the trademark holder's goods. Dr. Banks is not a direct competitor to Standard Process. Consumers will still be able to purchase unaltered SP Products on his site, so the likelihood of consumer confusion is not present here like it was in Promatek.

Court refuses to take judicial notice of Google search results

Dorner v. Commercial Trade Bureau of Cal., No. CIV-F-08-0083, 2008 WL 1704137 (E.D.Cal., April 10, 2008)

Defendant Commercial Trade Bureau of California is a private company engaged in the business of debt collection.  Plaintiff filed suit alleging violations of the Fair Debt Collection Practices Act, 15 U.S.C. § 1692 et seq. (“FDCPA”), specifically 15 U.S.C. § 1692e(1), (9), and (10). In substance, Plaintiff argues Defendant's use of the name “Commercial Trade Bureau of California” gave the false impression that the debt collection company was in some way associated with the State of California.

Defendant filed a motion to dismiss for failure to state a claim.  Plaintiff asked the court to judicially notice “the fact an ordinary quick search of first page results on ‘Google’ for the phrase ‘California bureau’ shows a possible nine results, seven of which are government agencies.”   

On a motion to dismiss, a court may take judicial notice of facts outside the pleadings.  Mack v. South Bay Beer Distributors, 798 F.2d 1279, 1282 (9th Cir. 1986).  However, the Court declined to consider the Google search results, ruling as follows:

Results from a Google search do not meet the standard required as they are not “capable of accurate and ready determination by resort to sources whose accuracy cannot be reasonably be questioned.” Fed.R.Evid. 201(b). Google is continually updating its search system, and results for an identical search can vary from day to day. The Google search results are not considered in ruling on this motion.

Court: Use of competitor's trademarks in metatags causes likelihood of confusion due to Google results

North American Medical Corp. v. Axiom Worldwide, Inc., 2008 WL 918411 (11th Cir. April 7, 2008).

In a nutshell: "Because Axiom's use of NAM's trademarks as meta tags caused the Google search to suggest that Axiom's products and NAM's products had the same source, or that Axiom sold both lines, or that there was some other relationship between Axiom and NAM, Axiom's use of the meta tags caused a likelihood of actual source confusion."

Mr. & Mrs. Boring Sue Over Google Maps Image of Their Property; Moderate Excitement Ensues

Update at end of post with comment from Google spokesperson.

Boring v. Google.  A Pennsylvania coupled has sued Google, alleging that Google trespassed upon their property, took photographs of their property and then made them available online as part of the Street View function of Google Maps.  By filing their privacy claims, the Borings have made the allegedly private photos newsworthy, which arguably paves the way for others to report this story by reprinting those photos.

In their complaint, Aaron and Christine Boring of 1567 Oakridge Lane, Pittsburgh, PA 15237 allege invasion of privacy, trespass, negligence, and conversion ("The conduct of Defendant constitutes a conversion of value in Plaintiffs' property from Plaintiffs to Defendant.").

Google Street View images of the Borings' property, including of their swimming pool, are here and elsewhere throughout the Internet, thanks to public interest in this lawsuit.

The complaint alleges as follows:

The acts of Defendant Google constitute an intentional and/or grossly reckless invasion on Plaintiffs' seclusion in that Oakridge Lane is clearly marked with a "Private Road" sign.  To drive up Plaintiffs' driveway and stop in proximity to the residence, garage and swimming pool, Defendant significantly disregarded Plaintiffs' privacy interests.  The invasion on Plaintiffs' seclusion was substantial and highly offensive to a reasonable person. 
...
Defendants [sic] reckless conduct has exposed Plaintiffs' private information to the public at large with the commensurate risks that this is [sic] entails.  Punitive damages are warranted to deter Defendants from further invading on the privacy of Plaintiffs and others.

The upshot of this is that by filing the lawsuit, the Borings have rendered Google's images of their property newsworthy.  Accordingly, websites that report this story by reproducing Google's photos of the Borings' property are arguably more likely to be engaging in fair use under the Copyright Act, 17 U.S.C. Sec. 107.  Likewise, third parties are now arguably more free to publicize the photos under the very Pennsylvania common law upon which the Borings are suing Google. "Where the information that is reported pertains to the public interest as well as a party's private interest, there is a balance to be drawn between that individual's right of privacy and dissemination of information pertaining to the public interest." Pierog v. Morning Call, Inc., 1995 WL 813163, 2 (Pa.Com.Pl.,1995), citing Jenkins v. Bolla, 411 Pa. Super. 119, 126, 600 A.2d 1293, 1297 (1992).

It all brings to mind this video:

The WSJ Law Blog reports this statement from a Google spokesperson:

There is no merit to this action. It is unfortunate litigation was chosen to address the concern because we have visible tools, such as a YouTube video, to help people learn about imagery removal and an easy-to-use process to facilitate image removal.

As a matter of policy, imagery for Street View is taken in public streets and what any person can readily capture or see in the public domain. Street View is a popular, engaging feature that allows people to easily find, discover, and plan activities relevant to a location.

Google advertising on domain parking sites - policy change and decision in Vulcan Golf, LLC v. Google Inc.

Last July, Vulcan Golf sued Google and a handful of domain-name auction/parking services, including Sedo, essentially seeking damages for Google's AdSense advertising on webpages allegedlly acquired via typosquatting.  Vulcan runs a website at www.vulcangolf.com and alleges that Google's co-defendant Dotster registered and/or otherwise controls the similar name wwwvulcangolf.com (no period following "www").  According to Vulcan, Internet users who accidentally typed in Dotster's typosquatting variation of Vulcan's domain name arrived at a web page containing Google AdSense advertisements.  Google has a program dedicated to placing AdSense advertisements on such unused, or "parked" domains: Google AdSense for Domains.

Vulcan's complaint spends 91 pages alleging fourteen counts, including RICO, cybersquatting, trademark infringement, false designation of origin, dilution, contributory and vicarious trademark infringment, tortious interference with economic advantage, and civil conspiracy. 

Defendants moved to dismiss for failure to state a claim, and Google recently began to allow its advertisers to opt out of advertising on domain parking sites.  Now the Court has issued a lengthy decision mostly denying defendants' motions to dismiss.  Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. March 20, 2008).   Two holdings are of particular interest.

First, the judge denied Google's motion to dismiss the cybersquatting claim, finding that even though there was no allegation that Google had registered any of the domain names in question, Vulcan had adequately alleged that Google was "trafficking in" domain names within the meaning of the Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d), under which the term "refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration." The Court found the following allegations to be sufficient: "Google pays registrants for its use of the purportedly deceptive domain names, provides domain performance reporting, participates in the tasting of domain names, uses semantics technology to analyze the meaning of domain names and select revenue maximizing advertisements and controls and maintains that advertising."

Second, Google had argued that the false designation of origin claim under 15 U.S.C. 1125 should fail because the plaintiffs do not allege that Google uses the domain names “on or in connection with any goods or services”  The judge rejected Google's argument that Sec. 1125 only supplies a remedy for an unauthorized trademark use of the domain name.  The Court stated instead that any use will suffice and denied Google's request to dismiss the claim.  It will be interesting to see whether this has any effect on the pending Rescuecom v. Google appeal.

Additional case info, including access to docket.

Israel Adopts U.S. Copyright Fair Use Provisions Supported by Google

Israel recently adopted copyright fair use provisions modeled after those found in United States copyright law, broadening the protection for fair use.  Google joined Yahoo!, the American Library Association, and other entities in lobbying for the new law.  Professor Patry chronicles the international trade politics that led to this exciting development.

Judge Denies Viacom's Bid to Seek Punitive Copyright Damages Against Google

Said Judge Stanton in denying Viacom's motion to amend its complaint to add a request for punitive damages: "It is time to extinguish the ignis fatuus held out by Blanch [v. Koons, 329 F. Supp. 2d 568 (S.D.N.Y. 2004)].  Common-law punitive damages cannot be recovered under the Copyright Act."