1. Legal Issues in Search
Europe and America
David Mirchin

2. 2

3. Overview
1. The Issue
2. US Experience
3. EU Experience
4. Practical Tips
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4. Keywords?
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5. The Issue
Purchase and Use of Trademark
Protected KEYWORDS?
This issue has been considered
by the Courts in
America and the EU (and also Israel)
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6. LiveU: Portable video
transmissions

7. ORGANIC RESULTS and ADVERTISEMENTS
 When you Google “buy liveu” or just “liveu” in the sponsor link on
the right you will have an ad of TVU
Ad
Organic results
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8. Who Faces Liability?
 Search Engine Providers ?
– e.g.:
 Advertisers ?
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9. USA
Search Engine Provider
GEICO v Google
Government Employees Insurance Co. v Google, Inc., No. 1:04cv507 (E.D. Va. Aug. 8, 2005)
•not liable for trademark infringement for
making available registered trademarks as
keywords
•does not cause likelihood of confusion
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10. USA
Wentworth Case
J.G. Wentworth v. Settlement Funding (E.D. Pa. 2007)
 Wentworth and Settlement Funding
are competitors
 Finance Companies
 Settlement Funding Bought “Wentworth” Keyword
 Standard: To win a Trademark Infringement Claim
in US:
(1) Use of Trademark in Commerce
(2) Creates Likelihood of Confusion
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11. Wentworth cont…
HOLDING:
Using trademark-protected words to trigger internet
advertising does not violate trademark law
PRACTICAL RULE:
Use of keyword-triggered ads will not confuse
consumers if the resulting ads do not display the
plaintiff's trademarks
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12. Rosetta Stone v.
Google

14. EU

15. EU

16. EU
Search Engine Provider
Google France v Louis Vuitton Case
European Court of Justice (2010)
Background:
Competitors Buy “Louis Vuitton” Keyword from Google
Can Louis Vuitton Stop Google or their Competitors?
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18.  Not liable for trademark infringement.
 Why? Because offering registered
trademarks as keywords is not “use in
the course of trade”
 But not a complete win for Google:
could still be liable for contributory
infringement under national law

19. Competitors?
 Their use of Keywords IS a “use in the
course of trade”.
 Huh?
 Key: Ad Text.
 Liable if:
– Use Louis Vuitton in the Text of Sponsored Ad, or
– “Normally informed and reasonably attentive
internet users” cannot tell from the Ad Text
whether Louis Vuitton and the competitor are
economically linked
– Vague as to the origin of the goods

20. EU
Interflora v. Marks & Spencer Case
European Court of Justice (September 2011)
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21. Marks & Spencer cont…
EU Court of Justice = guidance
National Courts determine issues on facts of each case
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22. Practical Tips
Summary of US and EU standard:
No liability provided that users are not confused by the text
of the sponsored ad.
Recommendations:
1. Do not use 3rd party trade marks in the ad text
2. Do not mislead users from ad text
3. Do not imply you are connected to the trademark owner
(whose keyword you purchased)
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23. Remember the
Standard:

24. Thank you
David Mirchin
dmirchin@meitar.com