Feeling sick and tired? Why not try some spam!

tytoc collie's reaction to spam was dramatic,
if predictable (photo of Elvis, courtesy of
Ignacio Marques, Baker & McKenzie)

Every so often tytoc collie gets an email which makes him chuckle. Usually they offer him a chance to get rich quick, quantities of "herbal viagra" (sic), replica Rolexes [Merpel wonders, if the plural of "index" is "indices", shouldn't the plural of Rolex be Rolices?], doctoral degrees from "prestigious unaccredited universities" and dodgy offers from the heirs of cash-rich cancer-ridden villains.  The email below wasn't even sent to him, being forwarded by a reader.  It goes like this:

"----- Original Message -----
From: "Alan Albright"
To:
Sent: Wednesday, February 02, 2011 1:48 PM
Subject: PatentDrafting.co.uk

Would you like to secure hundreds of extra orders every month at zero ongoing cost? [This Kat is content with his humble crust, but might just be tempted ...]

The domain PatentDrafting.co.uk that we have for sale is ready to drive substantial traffic and new business to you that would have cost you tens of thousands of pounds a year to replace by instead purchasing expensive Google AdWords.[but how much would it cost to get a descriptive term like 'patent drafting' to the top of the "organic" hit list via search engine optimisation, particularly when patentdrafting.com is already in pole position?]

Most of our clients (who include Microsoft, HM Government, American Express, the Royal Bank of Scotland, Renault UK and Deutsche Telekom) are now finding that prime keyword domains pay for themselves within weeks rather than months by virtue of the extra business that they drive to their websites by means of type in traffic and greatly enhanced search engine positions. [The imagine of a Renault driving through the traffic flashes into the mind ..]

Please feel free to get in touch if you’re sick and tired of getting fleeced by greedy Google! [The Kat has heard this sentiment over recent months and years, though the signatory of this email is the first person who seems to be addressing it, alas] Why pay through the nose for traffic that you can now have for free? [... assuming that people really still use domain name type-ins rather than finding the sites they want in less than a second via ... Google]

Best regards,

Alan Albright
eBarclays.com [not to be confused with Barclays, of course]"

Thanks, Sang Nkhwazi (Mancunium IP) for forwarding this.

After Google France: OLG Braunschweig decides in AdWord case

Keyword advertising (in particular Google AdWords) and trade marks is an ‘evergreen’ topic and one of this Kat’s guilty trade mark pleasures. While we are still awaiting the ECJ decision in the Interflora case, we recently had the first German decision from the Higher Regional Court of Braunschweig (Oberlandesgericht Braunschweig, case reference: 2 U 113/08 of 24 November 2010) after the ECJ’s cluster of AdWord related decisions of spring 2010.

In Google France (and in Die BergSpechte, Portakabin, Eis.de (also known as bananabay)) the ECJ had provided guidance to the national courts, inter alia, holding that booking of a third party trade mark as a keyword did not affect the ”advertising function” of that trade mark. As regards to the “origin function”, the ECJ had found that an adverse affect - and consequently trade mark infringement - would have to be assumed in two circumstances:
(i) where a third party’s ad suggests that there is an economic link between that third party and the trade mark proprietor; or
(ii) where an ad is so vague concerning the origin of the goods or services that a normally informed and reasonably attentive internet user is unable to determine, on the basis of the advertising link and the commercial message attached to it, whether the advertiser is an unrelated third party or economically linked to that trade mark proprietor.

In its decision of 24 November 2010, the OLG Braunschweig again had to assess the lawfulness of using a competitor’s trade mark as an AdWord. The claimant was selling confectionery, including chocolate and pralines, via its website www. mostshop.com and derived rights in the word/device trade mark "MOST" via a licensing agreement. The defendant was also selling chocolate products and pralines via its websites at www.selection-exquisit.de and www.feinkost-geschenke.de. In 2007, the defendant decided to book an ad via Google AdWords and chose the generic term "Pralinen" (pralines) as a keyword using the "broad match" function ("weitgehend passende Keywords"). Google’s "broad match" function then added the keyword "Most Pralinen" (Most pralines). The consequence of this was that the defendant’s ad was displayed whenever internet users searched for the claimant’s products "Most-Pralinen". The defendant’s ad (which was displayed) looked as follows (translated by tytoc collie):

“pralines
wines, pralines, delicatessen, presents
enjoy and make a gift!
http://www.defendantswebsite.de/“

IPKat comment: with “broad match”, the AdWords system automatically runs ads on relevant variations of the selected keywords, even if these terms are not included in the advertiser’s keyword lists. Keyword variations can include synonyms, singular/plural forms, and what Google calls “… relevant variants of [the selected] keywords, and phrases containing [the selected] keywords” (see here for more information).

The claimant was not impressed and took the matter to court, winning at first instance before the Regional Court of Braunschweig. On appeal, the Higher Regional Court of Braunschweig confirmed this decision and held that internet users who enter a trade mark as a search term into an internet search engine (as opposed to querying generic terms) will assume that the ads that are displayed as a result of this search query are “somehow be economically connected” to the search term they have entered. Thus, even though the defendant’s ad did not include the claimant’s trade mark and despite the fact that the ad pointed to the defendant’s website, the judges nonetheless took the view that the ad was too “vague” since it did not include a clarification that defendant and claimant were not economically linked. The court supported its finding with an analogy: it compared this kind of use of an internet search engine (that is typing a trade mark into the search engine as a search query) to asking a salesperson for a specific trade marked product. Hence, the consumer had the expectation that the ad displayed will then also originate to the trade marked product. Consequently, with the ad being too “vague”, the court held that the defendant was liable for trade mark infringement. The court further found that the defendant was liable under the principle of disturbance liability and had a duty to check whether the “broad match” function had included a third party trade mark to the list of keywords. The court appears to have limited this duty to the point of the selection of the keywords (ex ante) and expressly based it on the assumption that the claimant can check what keywords had been added via the broad match function at this point. In the absence of a Bundesgerichtshof decision on AdWord/trade marks, the OLG Braunschweig allowed an appeal to this decision.

There is little doubt in this Kat’s mind that this particular decision will not hold upon further appeal to the Bundesgerichtshof. The OLG Braunschweig is 'tradtionally' known for being trade mark owner friendly, whereas the Bundesgerichtshof appears to follow a more liberal, advertiser-friendly approach when its comes to keyword advertising basing its decisions on a rather internet savvy consumer (PCB decision). The OLG Braunschweig's decision appears to be based on a more easily confused consumer. This Kat is further not completely convinced by the OLG Braunschweig’s shop assistant analogy: do we really regard search engine triggered ads as the “online version” of a real-life shop assistant pointing us to a specific product? Do we not usually expect to further refine a search result, separating natural search results from ads and sponsored links? As far as this Kat recalls (and please do feel free to correct me if I am wrong), the ECJ in Google France et al did not request a clarification within the ad text itself (like the OLG Braunschweig appears to do here), or discuss the “keyword selection tool” matter in any of its recent AdWords decisions.

Of course, the judges from the OLG Braunschweig will be fully aware of this and one has to admire their spirit in deciding differently. In the absence of a Bundesgerichtshof decision, however, this is decision feels like an invitation for German claimants to do some forum shopping.

Case reference: OLG Braunschweig, 2 U 113/08, of 24 November 2010. The OLG’s case database can be accessed here.

Angry cat praline here.

To read Austrian blogger austrotrabant’s critical review of this decision, particularly with regard to the "shop assistant" analogy, please click here. (Thanks also go to Max aka austrotrabant for sharing the text of the OLG original decision with this grateful Kat)

Trade marks, AdWords and the location of harmful events: some brain-teasers

Without the facts, tytoc collie isn't even sure
if this is the right Wintersteiger

Now here's a good IP question or two for the Court of Justice of the European Union -- it's coming up in Case C-523/10 Wintersteiger [courtesy of the UK Intellectual Property Office, here] and the questions run like this:

"1. In the case of an alleged infringement by a person established in another Member State of a trade mark granted in the State of the court seized through the use of a keyword (AdWord) identical to that trade mark in an internet search engine which offers its services under various country-specific top-level domains, is the phrase "the place where the harmful event occurred or may occur" in Article 5(3) of Regulation 44/2001 ("Brussels I") is to be interpreted as meaning that;

1.1. jurisdiction is established only if the keyword is used on the search engine website the opt-level domain of which is that of the State of the court seized;

1.2. jurisdiction is established only if the search engine website on which the keyword is used can be accessed in the State of the court seized;

1.3. jurisdiction is dependent on the satisfaction or other requirements additional to the accessibility of the website?

2. If Question1.3 is answered in the affirmative: Which criteria are to be used to determine whether jurisdiction under Article 5(3) of Brussels I is established where a trade mark granted in the State of the course seized is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seized?"

tytoc collie is surprised only that it has taken so long for these issues to reach Europe's highest court, given the high level of internet (and AdWord) use within a single market in which there are so many countries and jurisdictions.

If you would like to advise the UK Intellectual Property Office on these issues, thus enabling the UK government to decide whether to get involved or not, you can email your thoughts here.  As usual, the time for response is absurdly short, and is really an insult to the intellectual property community: you have to submit your comments by Tuesday 4 January 2011 -- and there aren't exactly many working days between now and then.   The deadline for the court to receive observations is 1 March 2011.

Merpel says, can any reader tell her what the underlying dispute is all about?

After Google France et al: when is an ad "vague"?

Some of our readers may know that this particular Kat has a particular interest in Keyword Advertising ("AdWords") related decisions of all shapes and sizes - a passion (or shall we say: an obsession) she shares with Austrian IP lawyer and academic Maximilian "Max" Schubert otherwise known as the blogger austrotrabant.

Max has conducted in-depth research in this field of trade mark law and prompted by Jeremy's report on Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch), decided by specialist IP judge Mr Justice Arnold (Chancery Division, England and Wales) on 20 October 2010 (see tytoc collie report here), has come up with an intriguing chart (below) that summarises the ECJ's recent guidance on AdWords as well as its potential application.

To provide some context and jog your memory: we have of course all read the ECJ's recent AdWords related decisions in Google France, Die BergSpechte, Portakabin, Eis.de and thus recall that in its guidance to the national courts provided in Google France, the ECJ set out that an adverse affect - and consequently trade mark infringement - would have to be assumed in two circumstances:

(i) where a third party’s ad suggests that there is an economic link between that third party and the trade mark proprietor; or

(ii) where an ad is so vague concerning the origin of the goods or services that a normally informed and reasonably attentive internet user is unable to determine, on the basis of the advertising link and the commercial message attached to it, whether the advertiser is an unrelated third party or economically linked to that trade mark proprietor.

Consequently, after Google France it was now for the national courts to determine their own case law based on the ECJ’s principles which could lead to very different interpretations from the various national courts when it comes to question whether an ad is “vague” or not.

Max and this Kat are now debating (see here) how all these cases fit together. While this all is admittedly a trifle geeky, this Kat would be very interested to know whether our readers agree or disagree with Max' conclusions.

Please post your comments below.

To have a look at Max' entertaining presentation on AdWords "It's the ad-text, stupid", please click here (German) and here (English).

Regarding "vagueness", see here