July 13 2006
The number of legal actions against Google is growing not only in the United States, but also in France. While Google's AdWords service continues to be regularly challenged in France, lawsuits have also been brought against the Google Image service and, most recently, the Google Book programme.
This update reviews the current status of the Google saga.
In a decision dated June 28 2006(1) the Paris Court of Appeal upheld the judgment of the Paris Tribunal of First Instance of February 4 2005(2) against Google France and Google Inc. The tribunal had found that Google's AdWords service infringed Louis Vuitton's trademarks and constituted unfair competition (causing damage to Louis Vuitton's trademarks, commercial name and domain name) and misleading advertising.
The court of appeal prohibited Google from using Louis Vuitton's trademarks in the AdWords keyword generator on all Google websites accessible from France. The court also increased the damages awarded at first instance to Louis Vuitton from €200,000 to €300,000.
On the merits, the court of appeal found that, by using, imitating and reproducing the trademark LOUIS VUITTON in the AdWords keyword generator, Google infringed Louis Vuitton's trademarks, as such use and reproduction had a direct relation with the products registered under Louis Vuitton's trademarks. The court thus rejected Google's argument that its service could not be regarded as a use of Louis Vuitton's trademark insofar as the mark was not associated with any products and services.
In addition, the court of appeal upheld the trial-level court decision on Google's active role in infringing the trademarks. The court of appeal found that Google did not have a mere passive role in the drafting of the online advertisements since, as part of the AdWords service, Google offered assistance to advertisers to optimize the content of these advertisements.
With regard to Google's liability, the court of appeal went further than the first instance tribunal and found Google liable for not having implemented the relevant technical means before putting the advertising offers online in order to prevent the litigious acts. In order to demonstrate that Google had the technical ability to put such control tools in place, the court referred to Google China's decision to blacklist certain terms deemed politically incorrect by the Chinese authorities.
The appellate court's decision in the Louis Vuitton Case is consistent with a long series of decisions by trial and appellate courts,(3) including three recent decisions dated March 2006,(4) in which it was held that Google had committed a positive act of trademark infringement.
The Louis Vuitton appeal decision therefore contrasts with the recent Kertel Case,(5) in which the judges - departing from the previous line of case law on sponsored links - concluded that Google could not be held liable for trademark infringement.
In the Kertel Case the Paris Tribunal of First Instance adopted a different approach on what constitutes a positive act of infringement. In this case the tribunal ruled that, where a search engine proposed to an advertiser a keyword corresponding to a third party's trademark, there was no trademark infringement. The court relied on the principle of specialty, which characterizes a 'trademark infringement act' as the reproduction or use of a trademark for products or services which are identical or similar to those covered by the registered trademark. The court found that, as Google did not offer services which were identical or similar to those registered under Kertel's trademark (but rather offered advertising services), Google did not infringe Kertel's trademark.
Nevertheless, the court found that, by proposing to its clients a keyword protected by trademark and carrying out no prior screening to avoid infringement, Google had fostered infringement by its client and was thus liable under tort for the resulting harm.
However, the Kertel Case appears to be an isolated decision, as Google has now been found liable for trademark infringement by courts of appeal in two cases. In this context, the outcome of the appeal of the Viaticum and Luteciel Case before the Supreme Court is awaited with great interest.
Optician Alain Afflelou petitioned the Paris Tribunal of First Instance to order Google France to identify the author and editor of two fake pornographic advertisements that appeared on the results page when a search was run on the Google Image search engine using the key word 'Afflelou'.
In a summary order dated February 27 2006 the court rejected Afflelou's request. The court considered that, as the only purpose of the Google Image search service is automatically to reference and index images accessible on the Internet, Google was not to be regarded as an online communications provider within the meaning of the Law for the Confidence in the Digital Economy 2004. Therefore, the court held that Google was not subject to the provision of the law which requires online communications providers to hold and retain the data enabling the identification of the participants in the creation of content of the services supplied by these providers. The court thus concluded that Afflelou's request was not legally grounded.
French publisher La Martinière has recently brought the first legal challenge to the legality of Google's Book search programme in France. On June 6 2006 La Martinière filed suit against Google France and Google Inc at the Paris Tribunal of First Instance, alleging that Google had committed copyright infringement when it scanned over 100 books published by La Martinière and two of its subsidiaries and uploaded extracts of these books onto the publicly available Google sites.
In 2005 Google launched a large book-scanning programme: it scanned the collections of five university libraries, indexed the contents of these books and allowed users of the Google Book website to access the full text of books that are in the public domain or short excerpts of books that are protected by copyright. The main issue with this programme was that Google applied an opt-out approach to consent by copyright holders. Various US publishers and trade organizations filed suit against Google in the United States for copyright infringement. Google defended its programme as a fair use.
In France, La Martinière claimed that the opt-out approach is not sufficient under French law. It argued that Google was required to obtain its prior, explicit authorization before carrying out the reserved acts of reproduction and representation of books published by La Martinière and its two subsidiaries. As Google failed to do so, La Martinière sought damages of €1 million and a cease-and-desist order backed by penalties of €100,000 for each infraction and for each day's delay. This legal action could be particularly difficult for Google to defend as the fair use defence in US copyright law does not exist in French law.
For further information on this topic please contact Bradley L Joslove or Vanessa De Spiegeleer-Delort at Franklin by telephone (+33 1 45 02 79 00) or by fax (+33 1 45 02 79 03) or by email (firstname.lastname@example.org or email@example.com).
(3) See Viaticum and Luteciel v Google France, TGI Nanterre, October 13 2003 and Versailles Court of Appeal, March 10 2005; Hôtels Méridien v Google France, TGI Nanterre, December 16 2004; Accor v Overture, TGI Nanterre, January 17 2005; and Louis Vuitton Malletier v Google Inc, TGI Paris, February 4 2005.
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Bradley L Joslove
Vanessa De Spiegeleer-Delort