Legal Threats Still Loom For Google
- by Wendy Davis @wendyndavis, January 3, 2005
"The fact that a search engine can make money from our trademark is fundamentally wrong," said Geico's general counsel, Charles Davies. "We continue to believe that the sale of our trademark is wrong, and we will continue to litigate this issue," he said.
A Google spokesman declined to respond to Davies' remarks.
At the trial, Geico unsuccessfully claimed that Google violated the Geico trademark by allowing other companies to pay to appear as "sponsored links" when consumers typed Geico's name into the query box. In mid-December, after a three-day trial, federal district judge Leonie Brinkema ruled that Geico did not prove that consumers were confused by the practice.
Brinkema held that Geico didn't show that "the mere use of its trademark by Google as a search word or keyword" violated its trademark. She added: "There's no evidence that that activity, standing alone, causes confusion."
In an e-mail, Google claimed that this portion of the ruling vindicated its keyword bidding policies: "This is a clear signal to other litigants that our keyword policy is lawful."
Brinkema also found in Geico's favor on a narrow point--that companies whose ads themselves contain the word "Geico" violate the Geico trademark. The case was adjourned until this month for a written decision and to give Google and Geico a chance to resolve that portion of the lawsuit. If they can't come to an agreement, the next phase of the trial will be to determine whether Google is liable for permitting those ads. Google did not argue that such ads were lawful--in fact, Google's stated policy was to disallow advertisers from using other companies' names in their own ads.
Still, while Brinkema's broader ruling went against Geico, she accepted Geico's theory that ads from rivals could in themselves violate a trademark. But, in this case, she found that Geico didn't present solid enough evidence that the ads confused consumers.
To prove confusion, Geico relied on a survey by Gary Ford--the same expert Playboy had tapped in a similar lawsuit against Netscape. (That case eventually settled before trial.) For the Geico lawsuit, Ford surveyed about 400 consumers. He showed half a results page for the query "Geico" that had sponsored listings from other companies selling insurance, such as www.netquote.com and www.InsureCom.com. For the other half--the control group-- he created a dummy results page, where the only sponsored listings were for companies that sold Nike athletic apparel, such as www.lowpriceshopper.com.
He then asked the group questions, such as: "If you wanted to purchase automobile insurance from Geico, where would you click first?" The survey showed that more people would click on a link such as insurecom.com than a company that sold Nike.
But Brinkema found the survey lacking, mainly because most of the Geico-sponsored links Ford tested contained the word "Geico." The netquote link, for instance, included text reading: "Geico Insurance Quote"--which was the very type of ad that Brinkema found violated Geico's trademark, but that Google said it no longer allowed.
As to the broader question--whether a rival's ad that didn't mention Geico violated trademark laws-- Brinkema held that Geico needed to use a broader control group than people exposed to Nike ads.
"The test--the control in this case used Nike, but what I don't feel was presented to the court, that needed to be presented to the court, [was] ads of insurance that did not have "Geico" in [them]," she said.
Brinkema is expected to explain her reasoning in greater detail in her written opinion--which could provide "a roadmap of how to do a survey," said Christopher Winters, one of Geico's lawyers. Such a roadmap could be crucial to American Blind, which also has sued Google for trademark infringement. Google has asked a federal judge in San Jose, Calif. to dismiss that case.
