Google Loses a Trademark Case in France

Back in 2004, Louis Vuitton sued Google in France for improperly using its trademarks in advertising.

Recently, Google has lost its appeal in the case. The lawsuit claimed that Google's use of "Louis Vuitton" in its AdWords program (in which companies bid on keyword advertising on various websites) resulted in "trademark counterfeiting, unfair competition and misleading advertising."

Louis Vuitton applauded the ruling (of course). "It was absolutely unthinkable that a company like Google be authorized, in the scope of its advertising business, to sell the Louis Vuitton trademark to third parties, specifically to Web sites selling counterfeits," a company representative said in a statement. (Personally, I'm having a hard time substantiating Louis Vuitton's claim that Google WAS sending consumers to counterfeit goods. Any article talking about the suit seems to only say that was a fear of Louis Vuitton.)

Louis Vuitton should be glad they sued in a French court. Why? Google recently won a smiliar lawsuit in the U.S. brought by Geico.

Either way, Google seems to not care much, especially since their AdWords policies have changed to remove trademarks from the AdWords program.

This case brings us to a topic in American trademark law that can be overlooked. It's called "nominative (fair) use." There are times when it is permissible to use another mark. The purpose of the nominative fair use defense is to allow a third party fairly to describe another's product. If someone types "Louis Vuitton" into Google, shouldn't advertisers selling Louis Vuitton bags be shown, even if they are paid advertisements? How else can "Louis Vuitton" bags be described? "Overpriced fabric boxes that hold clothing that will be damaged on the flight to the vacation"?

Quick Hits

I hope that everyone had a happy Thanksgiving.

Here are some short items right now.

Other Law Blogs

You can read the New York Small Business Law blog of Imke Ratschko at http://www.newyorksmallbusinesslaw.com/.

MySpace

Universal Music Group has sued MySpace for copyright infringement. This is because users continuously post videos and songs on their profiles for everyone to listen and watch - for free.

How does this work? Briefly, §512 of the Copyright Act (more commonly known as the Digital Millennium Copyright Act of 1988) states that owners of copyrighted material must inform the owner of the website that its copyrights are being infringed when the website's material is generated by the users of the site. Then the website owner is to take down the offending material.

Poker

There is a lawsuit over the use of WSOP in the poker world. Does WSOP stand for the World Series of Poker - whith is owned by Harrah's (which bought it from Binion's - the casino host to the World Series of Poker) or does WSOP stand for the World's Standard of Online Poker, owned by Frederico Schiavo? WSOP.com owner, Schiavo, has updates on the case on the website.

I'd like to propose a settlement, which may or may not work here. Take a look at scrabble.com and see that Hasbro and Mattel have worked out their worldwide rights to the Scrabble trademark.

Silliness

Andy Griffith sues Andy Griffith. The star of the old "Andy Griffith Show" has sued a man who changed his name to Andrew Jackson Griffith. According to the article, "The lawsuit, filed Nov. 3 in U.S. District Court in Madison, alleges that William Harold Fenrick, 42, violated trademark and copyright laws, as well as the privacy of actor Andy Samuel Griffith, when he used his new name to promote his candidacy for sheriff in southwestern Wisconsin."

Once again - I ask if actors have any trademark rights in their name. The lawyers reading this can find my article at 14 Seton Hall J. Sports & Ent. L. 153 (2004) where I argue that actors don't necessarily have trademark rights in their names. After all, Andy Griffith played more than one role in his life. Trademark law looks for more specifics than just "acting," it looks for a quality of the goods or services as well.

Ack! It's not Coca-Cola! (Is that so bad?)

My coworker, Carolyn, picked up a red can with white lettering, which she assumed was Coke. As she's drinking it, she looks at the can and wonders what Berkley & Jensen is (at this point she still hasn't realized it's not Coca Cola). Even though the can was a lighter shade of red, and the white lettering says 'Cola Clasic' (classic is slightly smaller than Cola.) she said they fooled her-she thought it was real Coke she was drinking. The lettering isn't script, but Cola Classic is also in a lighter pink, and sprinkled over the can-sort of like somebody just dumped it on...(sorry I wish I could describe that better). I also wish I could find a picture of the can online (of course, if you're familiar with BJs wholesale foods, you might already know what it looks like.)

-Ella Shurr (Cleveland, OH)

Ella, you have stumbled upon what is called Trade Dress. It's not trademark law, but certainly a subset of it. Just like trademarks, the Trademark Act of 1946 (also called the Lanham Act) covers trade dress. The case that every law student who studies trademark law reads is Two Pesos, Inc. v. Taco Cabana, Inc. (91-971), 505 U.S. 763 (1992) (the link is to a summary of the case). As the previous link states "§ 43(a) of the Trademark Act of 1946[ ] provides that "[a]ny person who . . . use[s] in connection with any goods or services . . . any false description or representation . . . shall be liable to . . . any person . . . damaged by [such] use." The title of this section of the Act is called "False designations of origin and false descriptions forbidden."

What does this mean? It means that two different goods from two different sources cannot look alike, as if they come from the same source. (And here, "source" means "producer.") In the Two Pesos case, one Mexican restaurant was sued by another Mexican restaurant. Why? According to the published opinion, Taco Cabana opened a restaurant that had "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme." Two Pesos then opened a similar-looking Mexican restaurant.

(I don't know about you, but this description seems to fit many average-quality Mexican restuarants I've been in.)

To make a long story short (too late), the case restates that trade dress is important to mark goods and that you can sue for trade dress infringement. Of course, Two Pesos lost its suit, infringing on Taco Cabana's design.

Here is another example of trade dress: Adidas likes to put three stripes on all of the shirts and shorts it makes. So you know it's from Adidas, even if you can't see the mark, because the design is similar. (Many thanks to Paul Lukas and his Uni Watch Blog for the first couple links.)

There's your crash course in trade dress. I wish I could find a pic of BJ's Warehouse cola, just to compare it. But be on the lookout - it's not just the name, but it's also the packaging and design of the product that matters in trademark and trade dress.