Google Shedding AdWords Liability
Suing Google for allowing your competitors to bid on your trademarked terms is so 2010.
Although most courts have held that using a trademarked term to trigger an paid search advertisement is a “use in commerce” – the first step to a trademark infringement claim – Google still seems to be prevailing at the courthouse.
The most recent win came from a court’s refusal to certify a class action law suit against Google. In laymen’s terms, the court ruled that each trademark owner would have to sue Google individually rather than allowing hundreds or even hundreds of thousands of trademark owners to join one big suit. It does not mean Google has been absolved of the practice, but for practical purposes, it is a major victory.
If your lost sales from this practice are not substantial, would you go after Google and its behemoth legal budget? I didn’t think so. Equally pragmatic, would a lawyer take on your case on a contingency fee for 1/3 of just your damages or 1/3 of millions and millions of dollars? I’ll answer that one for you — no.
Professor Goldman in his Technology and Marketing Law Blog breaks down the case, provides a link to the opinion and updates Google’s winning trends.
In a simplification of the decision, the court determined the suit was not appropriate for class action status because:
(i) the consumer confusion caused by the Sponsored Links is different for each customer;
(ii) the strength of each trademark is different (hello American Blinds);
(iii) affirmative defenses apply uniquely to each plaintiff such as whether any of the plaintiffs bid on their competitor’s marks too; and
(iv) causing Google to disgorge all of their profits would be problematic.
Now, if Google can just shake the lawsuits from people claiming Google Maps caused them to get in accidents as discussed by colleagues Cleve Clinton and Jamie Ribman in their Tilting the Scales Blog, they could focus on convincing me why to focus my limited social media energy of G