Pattishall IP Blog

June 16, 2010

Google’s Alleged Licensing of Domain Names as Part of its AdSense Program may Subject it to Liability under the Anticybersquatting Consumer Protection Act

Filed under: Cybersquatting, Internet, Pattishall — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:29 pm

by Phillip Barengolts, Trademark Attorney

In a case that tests the limits of contributory liability under the Anticybersquatting Consumer Protection Act (ACPA), Judge Blanche Manning of the Northern District of Illinois denied defendant Google’s motion for summary judgment on the plaintiffs’ cybersquatting claim that Google should be held liable for servicing the parking pages of registrants’ allegedly cybersquatting domain names.[1] Vulcan Golf, LLC v. Google, Inc., No. 1:07‑cv-03371, slip op. (N.D. Ill. June 9, 2010) (Memorandum and Order).  Specifically, the court held that, where Google’s agreement with a third party contains a license permitting Google to use a parked domain name for purposes of placing Google’s advertising (sponsored links) on the web site displayed when an Internet user enters the domain name, Google may be held liable under plain language the ACPA as an “authorized licensee” of the registrant if the underlying domain name violates the ACPA.  Vulcan Golf, slip op. at 8.  See 15 U.S.C. § 1125(d)(1)(D). (more…)

March 24, 2010

European Court of Justice Rules on Google’s AdWords Program

Filed under: International, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:31 pm

By Andrew N. Downer, Trademark Attorney

On March 23, 2010, the European Court of Justice (“ECJ”) issued its long-awaited opinion in a series of cases dealing with Google’s liability for selling trademarks as keywords.  The ECJ limited its opinion to the specific questions posed to it by the referring court – the French Cour de Cassation.

Ruling on an issue that has dominated United States opinions in this space for the last several years, the ECJ held that Google (and other “referencing service providers”) does not use a mark in the course of trade when it sells a mark as a keyword, stores the mark on its servers, and displays advertisements on the basis thereof.  The ECJ noted that the “fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign.”  (more…)

June 3, 2009

Google Allows Sales of Trademarks as AdWords in 190 New Countries

Filed under: International, Internet — Tags: — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:06 pm

Google recently announced that it would no longer investigate complaints that advertisers used third-party trademarks as keywords for AdWords advertisements in 190 new countries. This shift in policy brings Google’s international advertising services inline with U.S. AdWords practices.

Google’s decision follows on the heels of a related shift in the Second Circuit. In Rescuecom Corp. v. Google Inc., the Second Circuit overturned earlier district court cases and ruled that trademark owners can bring claims against Google for trademark infringement, based on Google’s sale of their trademarks as keywords to trigger advertisements.

Pattishall trademark attorney Phil Barengolts recently posted his thoughts on the Rescuecom decision. Mr. Barengolts also addressed the Cyberlaw and Data Privacy Committee of the Chicago Bar Association on Sponsored Internet Advertisement in Light of Rescuecom: a Modern Notion of Trademark “Use”.

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May 7, 2009

How the recent Second Circuit decision about Google’s AdWords Service affects your company’s keyword advertising program

Filed under: Advertising, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:52 pm

Phillip Barengolts, Trademark attorney explains how the recent Second Circuit decision about Google’s AdWords service affects your company’s keyword advertising program.

In the Rescuecom Corp. v. Google, Inc. lawsuit, the Second Circuit decided that Google’s sale of a company’s trademark as a keyword through the AdWords advertising service is potentially actionable under federal trademark law – if it also is likely to cause confusion.

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