Google's US trade mark policy is "manifestly deficient" and its sale of keywords helps other companies to mislead consumers and harm the business of American Airlines, according to a lawsuit filed in a Texas court by the US carrier.
American Airlines is the latest in a series of brand holders to sue over Google’s AdWords system.
Registered marks including American Airlines, American Eagle, AA and AA.com are being sponsored as keywords by other companies to trigger adverts when internet users search on the terms. That is trade mark infringement, the lawsuit says. It complains that Google has different policies for different parts of the world: trade mark rights in the US and Canada are afforded less protection by Google than rights held elsewhere, it notes.
The airline giant wants a jury trial and an award of punitive damages “in an amount sufficient to deter other and future similar conduct by Google and others,” it says.
"The dispute is centred on Google's process of allowing other companies to purchase the right to use American Airlines trademarks for internet search," said an American Airlines statement.
"American Airlines wants to make it clear that its dispute does not seek to prevent the display of search results that reflect consumers' interests or choices. American Airlines is only asking Google to stop selling our trademarks to others who are purchasing them and related terms to confuse and/or divert consumers searching for AA.com or American's products," it said.
"The fundamental purpose of trade mark law, in the bricks-and-mortar world and the internet, is to protect consumers from being confused as to the source or affiliation of the products or services that they seek to buy," said the American Airlines suit.
"Unfortunately some individuals and entities attempt to take advantage of consumers by marketing their products or services using the brands of others," said the suit. "In effect, they seek a free ride on the reputation and goodwill of another's brand. Because of the ease and low cost of setting up a website and the speed with which internet transactions occur, this has become a particular and growing problem in connection with consumer purchases of goods and services on the internet."
"This lawsuit involves exactly such a situation – efforts by certain companies to free ride on American Airlines' brands through use of Google's technology," it said.
Under Google’s trade mark policy for the US and Canada, Google will handle complaints from brand holders about the text of a third party advert, but not complaints about the keywords that trigger the ads.
Google’s policy for the US and Canada states:
When we receive a complaint from a trademark owner, we only investigate the use of the trademark in ad text. If the advertiser is using the trademark in ad text, we will require the advertiser to remove the trademark and prevent them from using it in ad text in the future. Please note that we will not disable keywords in response to a trademark complaint.
Its policy for trade mark rights outside the US and Canada extends to the text of ads and the keywords. It states:
When we receive a complaint from a trademark owner, our review is limited to ensuring that the advertisements at issue are not using a term corresponding to the trademarked term in the ad text or as a keyword trigger. If they are, we will require the advertiser to remove the trademarked term from the ad text or keyword list and will prevent the advertiser from using the trademarked term in the future.
The lawsuit states: “Google appears to have the ability to structure and configure its programming to stop this misuse of the Amercian Airlines Marks because it has already implemented procedures with respect to European Internet users that prevent the misuse of trademarks. Google, however, has chosen not to implement these procedures for Internet users in the United States to the detriment of consumers and American Airlines."
Even Google’s policy of checking the text of ads in the US in response to a complaint falls short of an affirmative commitment to prevent such infringement, says the lawsuit. Google says its willingness to investigate exists only “as a courtesy” and not as a matter of binding policy. American Airlines says it is unfair to put the onus on the trade mark owner to identify and complain about each infringing use; Google’s content changes too fast, it says.
American Airlines is also complaining about the text that appears in ads. It argues, “Google’s programming is not preventing all advertisers from posting advertisements that make use of terms that are confusingly similar to the marks of others, or are otherwise formatted in a way that is likely to cause consumer confusion.”
The suit also accuses Google of double-standards. It quotes Google’s policy on the use of Google’s own marks. “Google, in its own words, instructs the world not to ‘mess around with our marks. Only we get to do that’”, notes the lawsuit. “Google does not, however, treat the marks of other companies with such respect,” observes American Airlines.
Until April 2004, Google respected requests from companies that asked it to prevent their marks from being available for sponsorship, though Google has always allowed trade mark holders to request that their marks do not appear in the text of ads. The US and Canada policy change, allowing a trade marked term to trigger a third party ad, provoked litigation. The highest profile case was brought by car insurance firm GEICO.
Google won a significant victory in that case in December 2004, though the written opinion only followed many months later. A Virginia court ruled that Google’s sale of GEICO trade marks as keywords was not unlawful because there was insufficient evidence of consumer confusion.
There was, however, evidence for a likelihood of confusion with regard to those sponsored links that used GEICO’s trade marks in their headings and text, said the judge. Google may have been liable for such uses, she said, for the period before it blocked such ads or where its blocking attempts failed. The case was settled by GEICO and Google before the remaining question of whether Google or its advertisers should be liable for such uses was resolved.
In April 2007, a California court refused Google’s request to dismiss another similar lawsuit. That case, brought by the American Blind & Wallpaper Factory, is now scheduled for a jury trial. Judge Jeremy Fogel said: "The large number of businesses and users affected by Google's AdWords program indicates that a significant public interest exists in determining whether the AdWords program violates trademark law.”