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Google Can’t Be a Victor if it Had No Opponent
© Cheryl Hodgson 2007 | Posted on September 4, 2007
Google Can’t Be a Victor if it Had No Opponent—A Commentary on the Settlement of
Google, Inc., v. American Blinds & Wallpaper Factory, In.
Case No. 5:03-cv-05340-JF (N.D. Cal)
By Dana Arak for Hodgson Law Group
© 2007 Hodgson Law Group
Eric Goldman, an assistant professor of law at Santa Clara University, stated that the settlement of the Google, Inc., v. American Blinds & Wallpaper Factory, Inc. was a “stunning victory” for Google in his Technology & Marketing Law blog.1 Goldman goes so far as to declare that “it’s often irrational to bring lawsuits over keywords,” and that “keyword-related lawsuits can be a sucker’s bet.”2
However, Goldman neglects to attribute any weight to the fact that the lawsuit may have settled due to the fact that American Blinds could not prove they held an enforceable trademark in the marks “American Blind” or “American Blinds.”3 American Blinds did not register “American Blinds until after the commencement of the infringing use, and the lawsuit.4 Therefore, American Blinds would have to establish an enforceable common-law trademark, which it was unable to do.5 It also could not convince the court that “American Blinds” had obtained secondary meaning in order to rescue the mark from the defeating label of purely “descriptive.”6 This may be partly attributable to the fact that the mark “American Blinds” never appeared on “any actual products.”7
How is it a victory for Google to defeat a trademark claim that was never a trademark claim to begin with? Actually, Google never defeated American Blinds, American Blinds did it to itself. American Blinds settled most likely because the most important marks to them, “American Blind” and “American Blinds,” were declared unenforceable.8 It was probably unwilling to put more money and time into a lawsuit that lost all meaning. This does not negate the fact that the right plaintiff could procure a real victory for trademark owners. Of course, the right plaintiff would have to have enforceable rights in their trademarks.
It is important to realize that the court never granted summary judgment for the marks that were considered enforceable.9 Indeed, the court found that Google did use the marks in commerce.10 Hence, it denied Google’s motion for summary judgment to the “extent that it is brought on the basis of an asserted absence of trademark use.”11 That does not seem to be a victory for Google. Further, the court expressly states that American Blinds and Wallpaper Factory “ha[d] produced sufficient evidence of likelihood of confusion to withstand Google’s motion for summary judgment as to the [remaining] marks.” 12
The court recognized the importance of a definitive ruling: “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.”13
So, Goldman may be correct that this particular case was “ill-advised from the get-go.” The marks American Blinds were trying to protect were not protectable assets from the get-go.14 However, there is a need for a definitive ruling, and with the right plaintiff a case will go to trial, and potentially there could be a huge benefit for all trademark owners.
1 blog.ericgoldman.org.
2 Id.
3 Google, Inc., v. American Blinds., Slip Copy, 2007 WL 1159950 (N.D.Cal.2007), pg. 6-7.
4 Id.
5 Id.
6 See id.
7 Id. at 9.
8 Id. at 6-7.
9 Id. at 11.
10 Id. at 4.
11 Id. at 6.
12 Id. at 9.
13 Id. at 11.
14 blog.ericgoldman.org.
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