In a case brought against Google by a number of claimants,
including Louis Vuitton, an
important advisory
Opinion was handed down at the
European Court
of Justice yesterday, 22 September 2009, in relation to the
sale by Google of keywords containing trade marks, write
Mark Owen and
Shireen Peermohamed from law firm Harbottle & Lewis
The crux of the case involves Google selling Adwords to
advertisers. Those
Adwords sometimes correspond to or contain trade marks owned by
other parties. By selling and then permitting the use of those
Adwords for sponsored listings on the Google search engine, is
Google itself liable for infringement of those trade marks?
The key findings were:
§ In offering Adwords to advertisers, Google was not using a
sign identical or similar to the trade mark registrations.
Accordingly, there was no trade mark infringement.
§ Displaying adverts for goods and services covered by the trade
mark registrations in response to keyword trade marks did not
amount to infringement by Google either, though it may do by the
advertisers.
The Opinion provides an interesting new spin on the debate over
liability for online services, which is that service providers who
seek to benefit from a liability exemption should remain neutral
with regard to the information they carry or host. This is in
keeping with the idea that there should be net neutrality,
currently a hot political potato.
If the Advocate General's Opinion is adopted in full by the ECJ,
this will be an extremely important case not only concerning the
liability for the use of trade marks on the Internet, but also in
respect of liability of service providers generally.
The Opinion is very much in favour of a "free" web environment,
where freedom of commerce and expression are important and are to
be balanced with intellectual property rights. It would seem that
if service providers can say that they are acting entirely
neutrally then they stand a much better chance of escaping
liability for what their service is used for.
The reasoning of the Advocate General is in many places
difficult to follow. In addition, many will consider his Opinion is
too much in favour of "freedom" on the web and the primacy of
technology. However, by his having looked so exhaustively at the
issues, the ECJ will have no excuse for now not bringing some long
overdue clarity to this important area.
Mark Owen and Shireen Peermohamed are Partners, Intellectual
Property, at Harbottle & Lewis.