U.S. District Judge Leonie Brinkema issued a written opinion last Aug. 8 that stated Google violated Geicos trademark rights, "solely with regard to those Sponsored Links that use Geicos trademarks in their headings or text."
Although this would appear to be a legal victory for Geico, Google litigation counsel Michael Kwun called the ruling "an extraordinary victory that makes clear that our policy is indeed lawful."
Back in December 2004, Judge Brinkema had dismissed Geicos claim that Google had undermined Geicos trademark or was misleading customers by allowing Geicos rivals to bid on the insurance companys trademark to trigger their own competing advertisements in the sponsored links that show up alongside the search results using its keyword.
According to Kwun, the keyword issue was the one people were watching. Moreover, Kwun contended, this latest ruling is moot because "what Geico is talking about already goes against our trademark policy," which states that Google will investigate complaints from trademark owners that find their trademarks have been used in the content of a competitors advertisement.
Nevertheless, Geico senior counsel Jonathan Shafner said that overall Geico was pleased with Judge Brinkemas ruling, even though the company did not get everything it had asked for.
"The bigger and broader issue is trademark infringement. Judge Brinkema didnt say we lost, just that we didnt meet our burden of proof. This is not a matter of law," Shafner said.
At issue was a survey Geico conducted that tried to prove that Googles allowance of Geicos name in sponsored ads led to "initial interest" confusion. Judge Brinkema wrote that Googles cross-examination of the professor conducting the survey "revealed a number of weaknesses in Geicos survey evidence," among them that the source of the test groups confusion was not effectively established.
"Our burden is to meet this threshold [of proof]—to go back and do that survey differently. [Judge Brinkema] basically said we didnt hit the nail on the head. But its still unsettled law, and there are cases pending in other jurisdictions—such as the one with American Blind [and Wallpaper Factory Inc.] that would support our claim," Shafner said.
Reactions to Judge Brinkemas ruling varied as well. For her part, Catherine Seda, president of Thousand Oaks, Calif.-based Internet marketing company Seda Communication Inc. and author of the book, Search Engine Advertising, applauded the ruling, adding that it was a happy day for trademark owners.
"I have no problem with competitors fighting it out over generic terms. Nobody owns the space "car insurance." But when somebodys doing a search for Geico, they expect to see a listing for Geico, not for other products, not other services, so it becomes more confusing because folks are actually looking for the trademark terms," Seda said.
Seda, who expressed disappointment at Judge Brinkemas dismissal of the keyword issue last December, also pointed out what she believes is Googles hypocrisy over this issue.
"Do a search for the word Google. Funny enough, there are no paid listings for Google. Now maybe truly nobodys actually advertised on that, but I think it would be interesting to point out, especially if Google is hiding behind the free speech amendment, that they wouldnt allow someone to market on their own trademark terms, at least the main one, Google," Seda said.
Meanwhile, Barry Felder, litigation partner at Brown, Raysman, Millstein, Felder & Steiner LLP, said that Geico achieved only limited success with this ruling.
"First, the Court did not buy into [Geicos] argument that, because Geico does not sell insurance through third parties, any third-party use of Geico as a keyword to trigger a paid search result would be improper. The court also found that, in most instances, Geicos survey expert had failed to show a likelihood of confusion resulting from such use," Felder said.
At the same time, Googles apparent victory over Geico regarding the keyword issue does not mean that Google has won this point across the board.
"The Courts decision in Geico underscores that each case needs to be decided on its own merits. It would be hard to extrapolate from this case to others," Felder said.