Publications
European IP Bulletin, Issue 30, March - Technology
Technology
9. Yahoo Search Marketing Stops Bid on Competitors' Trade Marked Keywords
On 1 March 2006, Yahoo Search Marketing modified its editorial guidelines regarding the use of keywords containing trade marks. Under the new policy, U.S. advertisers can no longer bid on competitors' trade marked keywords.
Previously, Yahoo allowed advertisers to bid on a trade marked search term in three different circumstances:
- if they are resellers of the trade marked product advertised;
- if they operate an informational site that does not compete with the trade mark owner's products or services; or
- if the advertiser's site offers detailed comparative information about the trade mark owner's products or services in comparison to the competitive products and services offered or promoted on the advertiser's site.
Now, the last condition is no longer considered by Yahoo as a valid excuse for using a trade marked keyword.
Yahoo has long been more restrictive than another internet search company, Google, in allowing this type of advertising, so this further restriction apparently offers Google an even bigger bite of the search engine marketing cake. It is unlikely that impetus behind this move came from legal setbacks, because Yahoo has not been the subject of major litigation on this issue. Taking into consideration Yahoo’s large-scale deals with major brands to advertise across its entire portal, the real reason may well be the desire to please brand-name advertisers who worry about being outbid for their trade marks by competing search advertisers.
Google, on the other hand, does not have a portal component and therefore does not have the same motivation as Yahoo to court big advertisers. It seems any policy change by Google is more likely to be motivated by an adverse legal ruling than by business pressures.
Google's practice has increasingly become the subject of much litigation. Last September, Google settled a trade mark lawsuit filed by insurance company GEICO because the court found that using the GEICO trade mark as a keyword was not going to confuse anyone. However, in France, a court ruled against Google in a lawsuit brought by Louis Vuitton. As a result, Google will not sell competitive trade marked keywords in Europe. In January 2006, CNG Financial Corporation filed suit against Google claiming that Google's sales of trade marked keywords harms its business by helping competitors poach customers. The issue remains far from resolved, though a recent court ruling suggests Google's approach may be lawful.
It seems that the courts are still trying to sort the issue out and trade mark issues on the internet are likely to continue to be decided on a case-by-base basis.
10. Google Image Search Thumbnails Breach Copyright
In a hearing before Judge A Howard Matz of the Central District of California, internet search engine Google was found to be breaching copyright laws with its Google Image Search as a result of thumbnail images displayed on search results being copied from adult website Perfect 10.
In a preliminary ruling, Judge Matz found that Perfect 10 would be likely to succeed on the issue of the display of thumbnails and that a preliminary injunction would be granted on this aspect of the case. However, he also found that Perfect 10 would be unlikely to succeed on a claim that Google was liable for providing links to websites that were using images that were copied without authorisation from Perfect 10’s website.
In an earlier case in 2002, Perfect 10 had been unsuccessful against a search engine when the court found that the thumbnails themselves did not infringe copyright and were “fair use” of the original pictures. This time Perfect 10 argued that the quality of the thumbnails was so high that they could be downloaded onto mobile phones and therefore were directly competing with download service, which was licensed by Perfect 10. Thus, instead of paying for a download service, users could get the same pictures free from Google. Furthermore, Google was in fact making advertising revenue by using thumbnails of their images with their AdSense service. Perfect 10 argued that Google’s position was similar to the original Napster service but the court found that the only resemblance to Napster was that Google facilitated searches but it only located information that was already publicly available. The court rejected the claim of secondary copyright infringement. Google did not have any control over those websites. Further, if Google removed the relevant links, it would be possible to access the infringing websites and pictures.
Judge Matz acknowledged the enormous public benefit that search engines such as Google provided and he was reluctant to issue a ruling that might impede the advance of internet technology. However, existing judicial precedents did not allow such considerations to overcome a reasoned analysis of the relevant fair use factors.
Although this decision is just a preliminary ruling, it may transpire that the most important factor in the decision not to consider Google’s use of the thumbnails as fair use was the high quality of the pictures and that they could be used as they were. Thus, there was an obvious competing use which directly affected the possibilities to generate further revenue by the website owner.
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