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Contributory Infringement 211
Google refuses to block the use of the trademarked term preemptively by anyone but
the owner of the mark. Your predecessor was very clear on this point. “The ability to
buy competitors’ trademarks as AdWords is a feature, not a bug!” In addition, Google
will not comply with takedown requests on advertisements that are not claiming to sell
the trademarked goods in question. For example, when Coach bags are listed in the
Louis Vuitton advertisements, because Coach has purchased “Louis Vuitton” as an
AdWord, Google refused to remove the advertisement even when Vuitton complained.
“They aren’t selling Vuitton, they are selling Coach! It says that right in the ad,” said
your pugnacious predecessor. Only if a reseller claims to be selling exactly the
trademarked goods in question, referred to by a letter for letter identical trademark
name, will Google take the word of the trademark owner that the goods are counterfeit
and thus remove the listing. You have noticed that new “resale” postings immediately
crop up after every takedown and you assume some of them must be genuine; indeed,
Google receives some complaints from sellers who claim that their legitimate secondhand
sale has been blocked by an overly zealous rights holder.
As part of your welcome to the job, your bosses have asked you to take a look at the
problem above because they think “there might be a couple of Lanham Act issues.”
1.) Is AdWords using the marks of others in commerce? Is Clustersearch? Why?
2.) Does Google violate registered trademarks by creating a likelihood of
consumer confusion through the AdWords program? Through Clustersearch?
Why or why not? What are Google’s best defenses?
3.) May Google use the company logos to facilitate search in the way shown in
Figure 1?
4.) Is Google Store guilty of contributory trademark infringement?