Google Loses First Round In Keyword Trademark Infringement Action

by Glen Shapiro, LawAndTax-News.com, New York

07 September 2004

Virginia District Court Judge Leonie Brinkema ruled last week that a trade mark infringement action brought against search engines Google and Overture by car insurance company Geico could go to trial, as it appeared that they had been making use of Geico’s trade marks in a way that could amount to infringement.

Car insurance company Geico sued the two companies in May over the sale of the terms “Geico” and “Geico Direct” in keyword advertising. Both of these terms are registered trade marks of the insurance firm. Keyword advertising is a major source of revenue for search engines, but has drawn fire from trade-mark owners.

Google has faced a number of lawsuits in different countries brought by aggrieved trademark owners. On the whole, Google has won when the keywords in question are generic, but has lost when they are clearly proprietary, although a French judgement - now under appeal - gave protection to a generic keyword.

The Virginia judgement appears to be in line with the general principle of protecting proprietary words.

Google's problems with keywords are not limited to trade-mark infringement. Google's co-defendant in the Geico case, Overture, has argued that with its AdWords service, Google is "willfully" and "directly" infringing on its patent for a "system and method for influencing a position on a search result list", which was granted on July 31, 2001.

Google has countered by arguing that Overture was employing the system for more than a year before it filed a patent application for it, a claim which if proven would automatically invalidate the patent.

However, experts have suggested that the breadth of Overture's patent claims to the online bidding system for advertising keywords could mean that its case against Google is not easy to dismiss.

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