• by Wendy Davis  @wendyndavis, Yesterday

In a mixed decision, a federal judge threw out some claims against Google by textbook publishers who sued over online ads for pirated books, but said the tech company must face a claim that those ads infringed the publishers' trademarks.

The ruling, issued Wednesday by U.S. District Court Judge Jennifer Rochon in the Southern District of New York, came in a lawsuit brought last year by McGraw Hill, Macmillan, Elsevier and other publishers.

They alleged that Google “knowingly facilitated and reaped profits from the sale of infringing works through pirate websites that Google promotes.”

The publishers specifically sued over ads appearing on Google Shopping, alleging that those ads directed students to sites that sold pirated versions of textbooks.

“Without Google, the pirate websites it promotes would not be known to consumers (mainly students) looking to purchase the publishers’ works,” the publishers alleged.

“With one click, Google brings consumers directly to pirate websites where they download and purchase infringing copies of the publishers’ works, instead of purchasing the authentic works,” they added.

The publishers claimed that the ads infringed trademark because they incorporated images of textbook covers that included the  publishers' names, such as McGraw Hill and Elsevier.

“Google misleads consumers into believing they are getting a legitimate product at a bargain price, when they are in fact buying an illicit product,” the publishers contended.

Their complaint also included a claim that Google violated a New York consumer protection law, and two claims relating to copyright. One copyright claim was based on the theory that Google contributed to infringement by operators of the pirate sites -- meaning broadly that Google allegedly knew of the infringement and either induced or caused it. The other copyright claim accused Google of engaging in “vicarious” infringement -- meaning that it allegedly profited from the pirate sites' infringement, and had the ability to control such infringement.

Google sought a fast dismissal of the claims regarding trademark infringement, vicarious copyright liability and New York's consumer protection law. (The company hasn't yet asked Rochon to dismiss the claim that it contributed to infringement, but made clear in a written motion that it will fight that claim at a later date.)

Google had argued to Rochon that the trademark allegations in the complaint could only establish that the sellers provided images that were used in Shopping ads, and that the ads were generated automatically. Those allegations, according to Google, wouldn't warrant a finding of trademark infringement.

Rochon rejected that argument for now. She essentially said in her ruling that even if the ads were automatically generated, Google could potentially be liable for the same reason that phone book publishers faced possible liability for ads that infringed trademark.

“Google’s publication of Shopping Ads that contain infringing material is akin to a yellow book directory publishing an infringing ad designed by a business,” she wrote.

That ruling is only preliminary, and Rochon said in the decision that the extent to which Shopping ads are automated may be a factor in a more final decision regarding Google's legal responsibility for the alleged trademark infringement.

Google was more successful with its other arguments. The company contended that the claim regarding vicarious liability should be thrown out on the theory that the allegations, even if proven true, wouldn't show either that Google could control infringement by third parties, or that the company directly profited from it.

Rochon sided with Google on that claim, ruling that the allegations would not establish that Google either supervised or controlled the sellers of pirated books.

The judge also threw out the accusation that Google violated a New York state consumer protection law, ruling that the claim was overriden by federal copyright law.

The portions of the ruling in Google's favor narrowed the suit, but aren't necessarily a huge win for the company, according to internet law expert Eric Goldman, a professor at Santa Clara University.

Those ruling “just means Google has to invest its energy” in the remaining counts, he says.

He adds that Google could be subject to the same amount of copyright damages if found liable for contributory infringement as it would have faced for the claim that was dismissed.