Wednesday, September 30, 2009

Google adwords v LVM registered trademarks

Google v LVM (Louis Vuitton) Trademarks BATTLE A legal opinion (not a decision) has recently issued on cases in Europe between Google and LVM, and others. LVM is owner of several luxury registered trademarks, including Louis Vuitton. Google has allowed competitors to use registered trademarks belonging to others in their search engines and adwords campaigns to attract business, in return for payment for clicks on the adwords that link to the competitors websites. Google has lost certain trademark infringement cases in France in relation to its Google adwords/trademarks policies, and has also lost appeals there. Google has blocked some of the trademarks for selection by advertisers in France. However, it has lodged appeals before the highest court in France (Cour de Cassation). The current opinion has been issued in relation to the French court actions over certain trademarks, Google adwords and hosting services. Key issues include: -
  • Are the rights of the registered trademark owner being abused?
  • Who benefits?
  • Is there commercial gain for Google and competitors?
  • Who suffers?
  • Is the property right in the registered trademark violated?
  • Is control of the registered trademark adversely affected in commerce?
  • Is the use of a brand name that is a registered trademark in a Google adwords campaign actually infringement of the registered trademark?
  • If the use of the registered trademark in a Google adword leads to the sale of counterfeit goods, what responsibility does Google carry in relation to assisting the counterfeitor?
  • Can Search Engines/ISP's ignore complaints of abuse from owners of registered trademarks?
  • Are the commercial interests of the Search Engines/ISP's aligned more with the competitors than with the owners of registered trademarks?
  • What remedies are available to owners of registered trademarks?
  • Do consumers of registered trademarks have any rights as to the origin of the goods over competitors?
  • Does the State, which grants the registered trademark rights, have any roles in protecting title, assuring consumers, or in permitting business to control the origin of goods/services under registered trademarks law?
  • Does the Google adwords policy usurp the laws affecting registered trademarks?
  • Should Google adwords change its policy on registered trademarks?
  • Is there a difference between hosting, searching and advertising in the case of registered trademarks?
  • Do web site hosting, search engines, adwords providers or ISP's have any exemption to liability for infringement of registered trademarks?
  • Should they hold any responsibilities legally in relation to registered trademarks?
  • Should they allow counterfeitors free reign on the internet, at the expense of consumers, and trademark owners?
We are reviewing the opinion.

Wednesday, September 2, 2009

Registered Trademarks Win Damages of over $30m Against ISPs

LOUIS VUITTON registered trademarks win over $30m v Internet Service Providers A jury held that the registered trademarks of Louis Vuitton Malletier, SA were infringed when counterfeit goods were marketed via web sites hosted by internet service providers. The jury in the Northern District Court of California awarded damages of around $30.5 million in favour of Louis Vuitton for infringement of its registered trademarks, and a further $0.9m in copyright infringement (August 2009). The case established that ISPs carry a considerable commercial responsibility and can be held liable for damages when they host websites involving sales or promotion of goods that abuse registered trademarks or that supply counterfeit goods. Further, the case is likely to have wider implications for search engines. Some search engines do not appropriately prevent or block advertising by copycats of goods/services protected by registered trademarks. It is now more probable rather than possible a jury would hold a search engine liable for damages for unauthorised/unlicensed advertisers or ads containing references to brands, that abuse or infringe registered trademarks owned by others.