Google has been hit with two new trademark infringement lawsuits over results in the search ads.
Both complaints, which were brought independently in the last several days, come from businesses that contend their names were used to trigger search results. In one case, the New York law firm Gorayeb & Associates alleges that its name was used by a legal referral service to trigger click-to-call ads in Google's search results. Those ads allegedly direct visitors to Accident Injury Law Center, a legal referral service based in Oklahoma.
In addition to Google, Gorayeb also sued the legal marketing agency Quintessa Marketing and the legal referral service -- both of which allegedly are owned by the same person.
The law firm alleges that in March of this year, people who conducted mobile Google searches for the phrase "Gorayeb and Associates" were shown a click-to-call ad for the Accident Injury Law Center. The text of that ad allegedly said, "Can Gorayeb And Associates Help You? Let Us Fight On Your Behalf!"
The phone number associated with the ad allegedly had a 646 area code, which is associated with New York.
"Potential clients viewing the 'Click to Call' Google advertisement for Law Center would likely be confused and deceived into believing that, when they clicked to call, they were contacting Gorayeb," the law firm says in a complaint filed in the Southern District of New York.
The law firm argues that its trademark was infringed by Google, which allegedly allowed the referral service "to mislead potential clients and other consumers and to benefit financially and to free ride on the good will and professional reputation of Gorayeb."
Google also was sued for trademark infringement by New York based fashion retailer Teri Jon Sports, which says Google is enabling an alleged counterfeiter to sell knock-offs.
The complaint, filed this week in U.S. District Court for the Southern District of New York, alleges that Google enables the Hong Kong company Readmob -- which allegedly sells counterfeits -- to use the term "Teri Jon" to trigger ads on Google's search results pages.
"Google offers search options that help lead consumers to the Readmob Websites’ fraudulent listings of Teri Jon Products," the complaint alleges.
Teri Jon's lawsuit also includes claims against Readmob and against payment companies PayPal, American Express, Visa and Mastercard, which allegedly "have been facilitating the financial transactions that allow Readmob to confuse the general public as to the the source, origin, or sponsorship of the fake products."
Google allows trademarks to trigger AdWords ads, and sometimes allows trademarked terms to appear in the ad copy itself. The company's policies have resulted in other litigation in the past, but Google either prevailed in all of the prior cases or settled them, according to Santa Clara University law professor Eric Goldman, who has closely followed the lawsuits.
Google's biggest courtroom defeat in the area occurred in 2012, when a federal appellate court ruled that a trial judge was too quick to dismiss a lawsuit alleging that Google violated Rosetta Stone's trademark by allowing it to trigger search ads for other companies. The 4th Circuit Court of Appeals said Rosetta Stone should have been able to proceed to trial against Google. The companies ultimately resolved that case on confidential terms, and also said in a joint statement that they planned to "meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet."
The question is amount of notice that Google has had and amount of control that they exercise (or should exercise) over use of third-party trademarks in ads. The first case (a law firm's trademark hijacked by a lawyer referral service for a click-to-call ad) is a textbook example of unsavory unfair competition tactics that trademark laws are designed to protect businesses from. I'd say, someone is definitely going to pay for that. Not sure it'd be Google. But the referral center and their advertising agency will probably be on the hook. Google will be on the hook if they were notified by the law firm and didn't do anything about it while the misleading click-to-call ads continued running. As for the second case (website selling Teri Jon knock-offs), again, the plaintiffs are suing the entire chain from the website operators to payment processing companies (PayPal, American Express, Visa and Mastercard) to Google. I don't think Teri Jon expects a monetary award from Google or Amex, but they may get a court order that would prevent payment processors from running transactions for the website operator, which would pretty much kill the counterfeit business.
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