United States: Perspective: Google Ducks A Legal Bullet

In the mostly uncharted territory of Internet jurisprudence, Google's policy of selling keywords has won a legal reprieve--at least for now.

A recent court ruling says Google is within its rights to include Internet links from competitors to a trademark holder when people search on the corporate name.

In a trademark lawsuit, computer franchiser Rescuecom had complained that when people typed its name into the Google search engine, the results would include URLs from competing Web sites. While U.S. District Court Judge Norman Mordue accepted as true the allegations in the trademark lawsuit Rescuecom filed against Google, he still dismissed the case.

In perhaps a first-of-a-kind trademark decision, Judge Mordue accepted all of Rescuecom's alleged facts as true and yet still found that none of these alleged facts established trademark use by Google.

In 1998, "Rescuecom" was registered as a trademark with the U.S. Patent and Trademark Office. The company asserts that it has since become well known and that its trademark is a valuable business asset.

All this was put in jeopardy because of Google's proprietary software, which lists Web sites in order of relevance as to search terms of Internet users, according to Rescuecom's lawsuit.

The complaint specifically focused on one of the programs Google offers in which it allows advertisers to bid on keywords an Internet user might enter as a search term. Google then links the advertisement and the sponsored link to the keyword purchased by the advertiser. Rescuecom alleged that Google does not always identify sponsored links as advertisements. Accordingly, it asserted, Internet users may believe that a sponsored link is the most relevant Web site among search results.

Rescuecom contended that many of its rivals, which advertise their services on the Internet, actually have submitted the "Rescuecom" trademark to Google's AdWords program as a keyword. The upshot: Customers got diverted to competitors.

So why did the judge side with Google on the question of potential trademark infringement? In perhaps a first-of-a-kind trademark decision, the judge accepted all of Rescuecom's alleged facts as true and yet still found that none of these alleged facts established trademark use by Google. Therefore, he concluded, Google is not liable for trademark infringement.

The judge said he came to this conclusion, in part, because "there is no allegation that (Rescuecom's) trademark is displayed in any of the sponsored links about which (Rescuecom) is concerned."

What's more, he said an Internet user who enters Rescuecom into Google as a search term may still go to the company's Web site simply by clicking on the appropriate link on the search results page--"even though he or she may have other choices."

"There is no allegation that (Google) places (Rescuecom's) trademark on any goods, containers, displays or advertisements, or that its internal use is visible to the public," the judge concluded.

This is only one decision from just one federal trial judge. Unlike an appellate decision, this case is not binding on other trial judges as precedent. To be sure, this represents a clean win for Google and its current business model. But it is still possible that we have not heard the last of Rescuecom in the form of an appeal.

Eric J. Sinrod is a partner in the San Francisco office of Duane Morris. His focus includes information technology and intellectual property disputes. To receive his weekly columns, send an e-mail to ejsinrod@duanemorris.com with "Subscribe" in the subject line. The views expressed in this column do not necessarily reflect those of Sinrod's law firm or its individual partners.

This article is for general information and does not include full legal analysis of the matters presented. It should not be construed or relied upon as legal advice or legal opinion on any specific facts or circumstances. The description of the results of any specific case or transaction contained herein does not mean or suggest that similar results can or could be obtained in any other matter. Each legal matter should be considered to be unique and subject to varying results. The invitation to contact the authors or attorneys in our firm is not a solicitation to provide professional services and should not be construed as a statement as to any availability to perform legal services in any jurisdiction in which such attorney is not permitted to practice.

Duane Morris LLP, among the 100 largest law firms in the United States, is a full-service firm of more than 600 lawyers. In addition to legal services, Duane Morris has independent affiliates employing approximately 100 professionals engaged in other disciplines. With offices in major markets, and as part of an international network of independent law firms, Duane Morris represents clients across the nation and around the world.