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

There has been lots of controversy over privacy issues relating to various services offered by Google and many others. Those issues are often not easy to come to grips with because they are in the context of previously unknown territory. Speaking of unknown territory, The Onion has a parody news report entitled “New Google Service Lets Privacy Critics Opt-Out, Relocate to Remote Village“.

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??

Google recenty announced that they would use search requests to plot flu trends.  They claim they can show flu trends 2 weeks faster than traditional methods.  The trend data is anonymized so no one looking at the trends knows, for example, that I might have been one of the individuals who searched for “flu remedies”.

So where is the privacy issue?  Privacy is often about the details.  Critics say that the anonymization methods used by Google don’t go far enough, and that it is possible to put the details back together and actually identify the individuals. 

Striking the proper balance between usable data and privacy is an ongoing struggle.  Opinions on where the balance should lie vary greatly.   Factors include how long individual data should be kept, the purpose of the data, how sensitive it is, and what should be done to strip away the identity of individuals.  

For more detail about the privacy issues around Google Flu Trends, take a look at the article in this EPIC Alert.

David Fraser points out that Google has announced that they are reducing the time before they anonymize IP addresses on their server logs from 18 months to 9 months.   That’s in reponse to privacy regulators.

Google’s blog entry on the point is a good read as it discusses the trade-off’s between privacy and the advantages they see from keeping the info longer. 

It states in part:

After months of work our engineers developed methods for preserving more of the data’s utility while also anonymizing IP addresses sooner. We haven’t sorted out all of the implementation details, and we may not be able to use precisely the same methods for anonymizing as we do after 18 months, but we are committed to making it work.

While we’re glad that this will bring some additional improvement in privacy, we’re also concerned about the potential loss of security, quality, and innovation that may result from having less data. As the period prior to anonymization gets shorter, the added privacy benefits are less significant and the utility lost from the data grows. So, it’s difficult to find the perfect equilibrium between privacy on the one hand, and other factors, such as innovation and security, on the other. Technology will certainly evolve, and we will always be working on ways to improve privacy for our users, seeking new innovations, and also finding the right balance between the benefits of data and advancement of privacy.

Read David’s post

For the London Free Press – August 18, 2008

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In a decision that has been termed a “crucial victory” and a “knockout decision,” a New York District Judge ruled that EBay was not responsible for policing and enforcing trade-mark infringement of goods posted for sale on the website. That decision is a radical departure from recent European decisions in France and Germany. The District Court Judge ruled that plaintiff Tiffany & Co. was responsible for policing and protecting its own trademark.

Therefore, host sites such as EBay are not responsible to police and review all goods placed for sale on its site.

As recently as June of this year, European courts have ruled in a drastically different way. In France, a French Tribunal ruled that EBay failed to effectively protect trade-marks such as Dior and Louis Vuitton, proved by the existence of numerous counterfeit items on EBay’s French website. In this case, EBay was ordered to pay an astounding US$61 million in damages.

In April, a German court set the European precedent when it ruled that EBay must protect against the sale of fake Rolex watches posted for sale on its website. The prevailing European attitude seems then to be that EBay must take responsibility for protecting trade-marked products and effectively stomp out the sale of counterfeit goods.

The New York District Court however did not agree with that logic. Although EBay does remove counterfeit items once it is notified by Tiffany & Co. that trade-mark infringement has occurred, the U.S. District Judge ruled:

“. . . the law is clear: it is the trade-mark owner’s burden to police its mark, and companies like EBay cannot be held liable for trade-mark infringement based solely on their generalized knowledge that trade-mark infringement might be occurring on their websites.”

Therefore, in the U.S., EBay cannot be held “pre-emptively” responsible for trade-mark infringement just because some of its sellers are advertising and selling fake goods. Prevalent public policy in the U.S., now recognized by the courts, instead puts the responsibility onto the trade-mark owner, most often the giant manufacturers.

EBay was also found to have acted responsibly in the past when faced with issues of trade-mark infringement. When trade-mark owners had issued concerns about possible infringement, EBay took all possible steps to remove the goods from its site. It also provides trade-mark holders with the software tools to search for possible counterfeit items.

Although this is a step in the right direction for trade-mark law, in the closely related area of copyright law, the decision has yet to appear as bright-lined. In the on-going litigation surrounding the lawsuit of Google/YouTube by Viacom for copyright infringement, the courts have yet to reach a definitive answer.

The potential of host-site liability for copyright infringement is therefore still undecided.

Tiffany has announced that it will appeal this decision. Hopefully the appeal court will agree with the trial court.

And hopefully the court deciding the Google/YouTube copyright issue will look back to the reasoning in the EBay case and see that holding host-site responsible for copyright infringement review and enforcement makes as little sense as it did for trade-mark infringement.

For the London Free Press – August 11, 2008

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An American judge’s recent order requiring YouTube to release information to Viacom in a US$1-billion lawsuit had many privacy advocates in an uproar – and rightly so.

U.S. District Court Judge Louis Stanton recently ordered Google to hand over all YouTube viewership records.

Viacom sought this order to determine whether pirated content is more popular than non-pirated content, which would indicate that YouTube has a financial interest in allowing this practice and encouraging the violation of copyright laws.

YouTube is owned by Google. Viacom is suing Google for not protecting copyrighted materials. The lawsuit deals with copyright and materials published on YouTube, a controversial subject to begin with.

Many privacy advocates publicly displayed their rage and frustration against the order. In a July 3 commentary, the Washington Post’s Michael Arrington writes, “Judge Stanton is a moron. And Google simply cannot hand this data over without facing a class action lawsuit of staggering proportions.”

Though other privacy advocates have not been as blunt, they have voiced their opinion in the media, including on YouTube’s website.

The reason for their frustration is that although Viacom is to use the information for the sole purpose of litigation, there is no assurance it would not use the information for other improper and unintended purposes.

The information to be handed over to Viacom included viewers’ login IDs and IP addresses, which could be used to identify those individuals, their searches and what they have viewed online.

Many advocates have suggested that there are other ways to satisfy the needs of the lawsuit without releasing the information and that those options should have been explored before the order was granted.

One option would have been to take information out of the data that could be used to identify YouTube users. The loud outcry by many privacy advocates may have had an influence on Google and Viacom’s decision to agree to this approach. In short, the agreement is that the information handed over to Viacom will not be usable to identify YouTube users either directly or by reverse-engineering.

Not everyone is of the view that the Google-Viacom agreement will resolve the privacy issues raised by the order. Some privacy advocates are still frustrated and believe the database cannot be made truly anonymous and that some private user information is bound to be released to Viacom.

Though Stanton’s order was granted in an American court, Canadian YouTube users are affected by this decision.

Ontario Information and Privacy Commissioner Ann Cavoukian publicly urged Google to appeal Stanton’s ruling. She is of the view that users cannot be fully protected from the improper use of the information.

“It is not acceptable to allow copyright enforcement to come at the expense of users’ privacy,” she said.

There are two important lessons here. First, litigators and courts need to consider privacy issues when dealing with third-party information and limit its use as much as possible. Second, businesses should keep as little personal information as possible for as short a time as possible.

The Google maps images for the London area are out of date and lo-res. Someone commented recently that Google finally added hi-res images. But it seems that while Google Earth images of London are hi-res, Google map images are not. They seem to be out of date as well. And the hi-res images stop at the London city limits.

So Google, if you are listening, we would like recent hi-res images on both earth and maps for London and surrounding area.

The globe and Mail had an article yesterday entitled Patriot Act haunts Google service that talked about a risk of using cloud based web tools. Google, and others, offer tools ranging from storage space to blogging tools to wikis to on-line word processing. The issue is that your data is then housed by that entity, and is thus subject to the local government’s rules. Specifically, the US Patriot Act, and other laws that allow government surveillance of the data.

That poses real issues when the entity using the service is subject to privacy obligations regarding the data – either at law, or because of promises they have made their customers.

So the Canadian business opportunity is to process and store that data here, by a Canadian operation, so it is under Canadian jurisdiction and subject to our privacy laws.

Read the Globe article

Digitization and the Internet continue to challenge business models, and as often happens with disruptive technology, it takes a long time for people to come to grips with all its ramifications.

Just over the past few days:

A Brussels Court ruled Google violated copyright laws by publishing links to Belgian newspapers without permission and ordered the company to remove them. Frankly, I don’t understand why a newspaper would not want a search engine to link to them. Don’t they want to be found?

Read more in the LawDay newsletter

Canadian Heritage (ie the Canadian government) released a report on the future of the Canadian music industry. It takes a candid tour of the history of music technology, and where it might be headed, and what models might work. DRM is not an option it supports.

Read Michael Geist’s summary and take a look at the report

Microsoft announced a new DRM for mobile devices called “PlayReady”

Read a TechTree article about PlayReady

The Canadian Private Copying Collective, which administers the private copying levy, has asked the Copyright Board to increase the levy on blank CDs and add levies to memory cards and digital audio players. If the proposal was adopted, it would add a substantial cost to MP3 palyers lke the iPod, and to the storage cards we buy for cameras and other devices.

Read part 1 of Michael Geist’s thoughts on this

Read part 2 of Michael Geist’s thoughts on this

David Canton – for the London Free Press – October 28, 2006

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How would you feel if an Internet search engine sold your trademark as a keyword in an online auction and you received nothing from the advertisements triggered from the keywords? What if the use of your trademark as a keyword triggered advertisements of a competitor?

When one does a Internet search, keywords are used to trigger the ads that appear along with the search results. For example, if you do a search on the word “computer,” sponsored links appear for various businesses selling computers. Those businesses pay the search engine owner for those to appear.

Many companies get upset when search engines sell keywords that are trademarks.

For example, computer repair and consulting business Rescuecom filed suit against search engine giant Google.

The controversy involves allegations Google violated U.S. trademark law by selling trademarks as an advertising keyword to competitors via an online advertising auction.

Google was recently granted a victory by a New York court.

Judge Norman Mordue of the Second Circuit ruled Google did not violate any federal laws when it sold trade-marks as ad words on an online advertising auction.

The judge granted Google’s motion to dismiss, which means there was no discovery or trial on the facts. Rescuecom is considering its appeal options.

The decision was based on the fact that a search engine selling keywords is not using the trademark in commerce, and consequently there is no misuse. Because Google does not place a trademark on any goods, containers, displays or advertisements, there is no violation of trademark law.

Even if Rescuecom proved, as it alleged, that Google capitalized on the goodwill and reputation of Rescucom’s trademark by marketing it to Rescucom’s competitors as a keyword in order to generate advertising revenues for Google, or that Rescuecom’s competitors believed Google is authorized to sell its trademark, or that Internet users viewing the sponsored links are confused as to whether the sponsored links belong to or emanate from Rescuecom — none of these facts, alone or together, establish trademark use.

This is a landmark decision for Google. While Google is the only search engine that has been given the nod by the courts, the decision paves the way for other search engines that wish to do the same thing.

The decision does not, however, give the green light to those that want to buy ad words using competitor’s trademarks. It in essence means that those who feel others are misusing their trademarks as ad words must go after the ad word buyers, and not the ad word seller.