Out-law.com has an article entitled Google’s sale of trade mark as keyword may be ‘use in commerce’, says US Court of Appeals.   The use of the trade-marks of others for either keywords to trigger paid ads, or in the visible ads themselves has been controversial.   Courts have come to different conclusions in different countries.   The legal struggle is whether this amounts to “use” as defined under trade-mark law.  

The article points out that a U.S. appeal court has said that it might be infringement, and sent it back to the trial court for consideration.  This case seems to key in on Google’s tool that suggests adwords – suggesting that Google may have some responsibility because it suggested the adword that happened to be a trade-mark.

I’m not so sure that is the right analysis.   Perhaps Google did suggest a competitor’s mark – but trade-mark infringement only occurs when there is “use” in conjunction with similar products or services.   How is Google supposed to know whether my use will infringe, or be perfectly lawful?   A ruling that Google can never suggest keywords that happen to be trade-marked does not make sense to me.

For example, the word “Canton” has been trade-marked for various things by various companies in the U.S. and Canada, including speakers, liqueur, and soup.  So if I wanted “David Canton” as a keyword, why would it be a problem for Google to suggest “Canton” as a possible keyword?  Surely its my responsibility to use that keyword for my own purposes to promote my legal services – and not use it to sell my own line of speakers, liqueur or soup.

Google should have a role to play if I do that – but the role should be to forward complaints or put the complainant in touch with me – not to be liable itself for my infringement.

In my personal view it is, and should be, a trade-mark violation if my Google ad uses a competitor’s mark to promote my competing wares and services – no differently than if I used it that way in a print ad.   Its the concept of passing off my wares or services as my competitors, which essentially means misleading the buyer that my stuff is my competitor’s stuff, and trading on my competitor’s goodwill.

Arguably it is the same if I use that trade-mark as a keyword – even if it does not appear in my ad.  The theoretical legal issue is whether there is “use” when one types a trade-mark as a keyword search, and a competing user shows up in an ad.

But between my ability to use the trade-marks of others for non-competing stuff, or other lawful uses which might include – depending on the country and facts – the ability to compare products or comment or review them – why should Google be expected to behave as a court and figure all that out for any given use?  

Facilitate a communication between the parties, yes – but liability for it??

That’s the title of my Slaw post for today. It reads as follows:

I attended day 1 of the Mesh conference yesterday. (I had a conflict for today – but a colleague is going in my place.) Some video from the event is already on the Mesh site.

The highlight for me was the keynote by Mike Masnick of Techdirt. Anyone interested in changing business models and how to conduct business on the web should follow the Techdirt blog.

Microsoft had one of their Surface devices there. If you ever get a chance to play with one, you should. Multitouch technology will be included in Windows 7. That could lead to some interesting things – and may actually breathe life into tablet computers.

Many people in the audience for the keynote sessions sent their questions via Twitter rather than walking up to a microphone. One interesting result was that it enabled the moderator to combine the essence of more than 1 question together.

For the London Free Press – April 6, 2009

Read this on Canoe

SPIRITED ARGUMENT: Geographical indicators aim to protect certain regions’ wine and liquor from imitators

With barbecue season fast approaching, the most obvious topic of discussion is trade-marks and alcoholic beverages.

Provisions in the Trade-marks Act and food and drug regulations govern words associated with wine and spirits. The provisions stem from international agreements that let certain regions protect against suggestions a product has a certain origin, quality or association when it doesn’t.

For example, unless you make “sparkling white wine” in Champagne, about 160 kilometres east of Paris, you can’t use the word “Champagne” to describe your product.

There are similar restrictions on names from Chianti and Cognac, to Moselle and Scotch whisky.

Many people think these are types of wines or spirits, but they’re really geographical indications of the products’ origin.

Geographical indications can be given protection, similar to trademarks. The aim is to try to limit the tort of passing off, in which a person may try to pass off products as being associated with a region when they are not.

Most regions with geographical indications impose minimum standards on users to safeguard their area’s reputation.

A recent Federal Court of Appeal case, Glenora Distillers International vs the Scotch Whisky Association, illustrates this point.

Glenora, a Cape Breton, N.S., distiller, claimed its single malt whisky was distilled using the traditional Scottish method and that it had the taste, character and aroma of a Scotch whisky.

But Glenora can’t call it “Scotch” because “Scotch whisky” is a protected geographical indication that can only be used for whisky produced in Scotland that meets certain requirements.

The court also noted Glenora couldn’t call it “Canadian whisky,” either, because it didn’t have the “taste, character, and aroma associated with Canadian whisky.”

Glenora was allowed to use the trade-mark Glen Breton, despite the association’s argument that the name could be confused with famous trade-marks Glenfiddich, Glenmorangie and Glenlivet.

Geographical indications are not automatic. To register one must apply to the government to be listed as a recognized geographical indications. To qualify, the wine or spirit must come from a region of a World Trade Organization member where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographic origin.

With some geographical indications, such as Irish or Scotch whisky, Niagara-On-The-Lake, or Canadian rye whisky, it’s obvious where the wine or spirit originates. But others, such as Beaujolais or Valpolicella, are not so obvious if one is not familiar with the region.

The list of protected regions recognized in Canada is online at http://napoleon.ic.gc.ca/cipo/ listgiws.nsf/gitoc-e?OpenForm.

PCWorld.ca has a good article entitled People Search Engines: They Know Your Dark Secrets. . . And Tell Anyone. 

It talks about search engines meant to find information on people, such as www.pipl.com and http://www.spokeo.com/ .

They search various public sites to get the information, such as social networking sites, amazon wish lists, flickr, etc.

Put your own name in and see what comes up.

One issue is that the searches are imperfect.  They of course pick up information about others with similar names, or amke certain assumptions.  In my case, for example, it included as one of the several photos that purport to be me, a photograph of a fellow board member from a group photo I was in.

This also emphasizes that we all need to think about what we post online.  The safest approach is to only post information that you would be glad to share with the world.

That’s the title of my Slaw post for today.  It reads as follows:

Here are some things I would ban if I was in charge. (And no – while this is a bit facetious – its not an April fools joke.) What would you add to the list?

legal sized paper

fax machines

paper closing books

the phrase “but we’ve always done it that way”

any contract more than 20 pages long

any consumer contract more than 2 pages long

technology that doesn’t play nice with others (e.g. iTunes not seeing music stored on a server)

those small capacity memory cards that sometimes come with cameras

forms that can only be filled in by hand or typewriter

bills sent with a return envelope when you have paid online for years