Interflora sues Marks & Spencer over Google ad links

[directmarketingadvice]

I think you are confusing things. We are not talking about 'pages' here. We are talking about that pale pink highlighted bit at the top of the page.

No, I don't think I'm the one that's confused.

Unless you think the law should only apply to parts of web pages that have pinkish backgrounds?

The lines you're drawing are, as far as I can tell, utterly arbitrary. I've offered you a chance to explain why they should affect Google and not other publishers and not advertisers on other domains. So far, you've come up with nothing.

Which is, I suspect, a pretty good reflection of the substance of this court case.

Steve

 

[Deleted member 59730]

"The lines you're drawing are, as far as I can tell, utterly arbitrary. I've offered you a chance to explain why they should affect Google and not other publishers and not advertisers on other domains. So far, you've come up with nothing."

I'm not drawing any lines, you are.

Have you actually read the original story? More here..........

http://www.theregister.co.uk/2008/12/04/interflora_google_keywords/

 

[UKSBD]

I've offered you a chance to explain why they should affect Google and not other publishers and not advertisers on other domains. So far, you've come up with nothing.
Steve

What has it got to do with Google or other domains, I thought it was between M & S and Interflora?

Does it not all rest on the question, are M & S using the trademark Interflora?

If someone at M & S typed the word inerflora in to their Adwords set up (or even clicked on the word to add it to their list of keywords) I would think Interflora can argue the trademark has been used.

If it is appearing there without them typing the word or clicking to add to their keyword list, I doubt they have an argument.

Would you agree, If they added the word to their list that they have used it?

 

[directmarketingadvice]

Would you agree, If they added the word to their list that they have used it?

Yes. And you and I have used it in this thread. And?

Both of us have commercial sig links on this page. I can see ads to the right of the screen.

Surely it could be argued that we - and the advertisers - are all deriving some benefit from being on this page that happens to mention interflora.

Where do you draw the lines? When does a page mentioning that company become unacceptable?

When it has advertising? When it has advertising from a flower company? When it's google?

Draw away... and explain your reasoning.

Steve

 

[directmarketingadvice]

I'm not drawing any lines, you are.

Have you actually read the original story? More here..........

http://www.theregister.co.uk/2008/12/04/interflora_google_keywords/

Yes, I've read about this story on a news site. Now do you want to try to answer my questions?

I'd particularly like you to answer the one about the cowboys and scammers destroying all legitimate businesses:

If Interflora lose this case it opens up the opportunity for every cowboy, counterfeiter, scammer and crook to destroy all legitimate businesses.

Steve

 

[directmarketingadvice]

BTW, if anyone wants to check out the legal history of the "people bidding on trademarks as keywords", check out:

Google cleared in keyword suit

where Google's lawyers successfully argued that

the company was simply acting as a publisher by allowing competitors' ads to appear on the same screen when the names of their rivals are typed in.

i.e. That they're a publisher of content, just like other publishers of online content and should have the same right as every other website to monetise their business with advertising.

Steve

 

[Deleted member 59730]

"I'd particularly like you to answer the one about the cowboys and scammers destroying all legitimate businesses:"

Imagine a scenario where copycats or crooks can buy their way next to a legitimate company. Suppose they get 1% of people getting confused by the tactic. Doesn't matter much does it? Now lets suppose 99 copycats do it and each gets only 1% of the hits. That adds up to 99% and leaves the original, old established and reputable company with 1%.

 

Interesting that Interflora being a US company seem to have not felt like taking on Walmart for the same alleged offence.:|

Earl

 

[Deleted member 59730]

"BTW, if anyone wants to check out the legal history of the "people bidding on trademarks as keywords", check out:

Google cleared in keyword suit "

US law is different from UK or EU law. THat was back in 2004.

Geico won in the end. There are no ads on Google when you type in Geico

 

[directmarketingadvice]

Geico won in the end.

Link to this court case?

No?

Steve

 

[David Warrilow]

Firstly, M&S using adwords should be no different to any other advertiser using any other form of paid online advertising. Disagree? Feel free to explain why.

....

What you seem to believe is that, while advertising can be sold legally, it should be illegal to buy it.

Surely that makes no sense?

Steve

I'm not saying that M&S's use should be the same as or different to anything else. We're talking about adwords. Every circumstance is clearly different.

Many things can be legally sold, but the way in which they are used can break the law.

And actually we can talk about libel here.

I could buy a full page ad in a newspaper saying 'So and so did whatnot and is a such and such' and make a list of unpleasant libellous statements.

Have a review of some of the comparative advertising cases for real-life examples.

So yes, it can be legal to sell advertising and simultaneously the use to which it is put can be illegal.

Your argument doesn't wash.

 

[David Warrilow]

If someone at M & S typed the word inerflora in to their Adwords set up (or even clicked on the word to add it to their list of keywords) I would think Interflora can argue the trademark has been used.

Would you agree, If they added the word to their list that they have used it?

Hi there

We don't need to even ask this quesiton. As I said above, it was decided in the Bergspechte case that use of a trademark to trigger a PPC ad is use in the course of trade. (Even if the trademark doesn't appear in the ad displayed).

David

 

[UKSBD]

Where do you draw the lines? When does a page mentioning that company become unacceptable?

Steve

I don't draw the line, whatever I think is irrelevant.

It is a judge who decides where the line is.

I would assume though that me mentioning a word in a discussion on a page where adverts are also displayed is a bit different to deliberatly using the word for commercial gain.

Other laws are the same, there are not clear yes or no answers, it is down to how the judges inerpret things.

I assume these will be the questions the judges consider (if it ever gets in front of them)

Are M & S deliberatly using the tradermark
Are they making commercial gain from using the trademark
Are they negatively effecting interflora by using the trademark

 

[directmarketingadvice]

I'm not saying that M&S's use should be the same as or different to anything else. We're talking about adwords.

Yes, but the fact that it's adwords shouldn't be relevant. It's an ad on a web page and, therefore, should be treated like an ad on a web page, not as though adwords has some sort of quality that makes it different.

M

any things can be legally sold, but the way in which they are used can break the law.

And actually we can talk about libel here.

I could buy a full page ad in a newspaper saying 'So and so did whatnot and is a such and such' and make a list of unpleasant libellous statements.

Yes, that's correct. But how would M&S have done that if the ad didn't even mention Interflora?

So, let's put aside libel and look at what was actually done.

So yes, it can be legal to sell advertising and simultaneously the use to which it is put can be illegal.

True, but there's no suggestion here that the wording of the M&S ad is any part of Interflora's case.

Your argument doesn't wash.

Really?

It seems that my argument is that "if it's legal to sell a hammer, it must be legal to buy a hammer, even though it's illegal to kill someone with that hammer" whilst yours is "it's possible to murder someone with a hammer, therefore someone should be allowed to sell a hammer, but no-one should be able buy one."

Your argument seems to be that M&S could have libelled Interflora in their ad text and the fact they didn't still means libel laws have been broken.... or might be broken one day...

That can't be the point you're trying to make. It makes no sense. But you keep trying to come back to libel - without suggesting there was actually any libel - rather than address the points I've made about publishers having the right to run ads.

Steve

 

[directmarketingadvice]

I don't draw the line, whatever I think is irrelevant.

Oh, you were taking sides on this so I assumed you had given it some thought.

I would assume though that me mentioning a word in a discussion on a page where adverts are also displayed is a bit different to deliberatly using the word for commercial gain.

Everything's "different". My question is where do you draw the line?

If you deliberately advertised on a page that was about Interflora and received search engine traffic, then the traffic would come, to some extent, thanks to the content on the page, so would that be using those words for commercial gain?

Are M & S deliberatly using the tradermark
Are they making commercial gain from using the trademark
Are they negatively effecting interflora by using the trademark

Q4: Does Interflora have the right to prevent a publisher showing ads on one of their own pages?

Apparently not:

In March 2008, the High Court dismissed a keyword advertising lawsuit against Yahoo!. It ruled that Yahoo! did not infringe a businessman's rights by displaying ads for Sainsbury's supermarket and others when they entered his trade mark as a search term. Victor Wilson argued that his mark 'Mr Spicy' was being infringed. But the court concluded that only the plain English word 'spicy' was being sponsored, not Wilson's trade mark.

Prior to Wilson's case, the only significant UK ruling of relevance involved a dispute between recruitment agency Reed Executive and publisher Reed Business Information.

Searches at Yahoo!'s search engine for the word 'Reed' triggered the display of a banner ad for totaljobs.com, operated by Reed Business Information, on the results page. Reed Executive sued the publisher alleging trade mark infringement.

That case was brought under section 10(2) of the Trade Marks Act 1994 which requires evidence of "a likelihood of confusion on the part of the public".

Lord Justice Jacobs ruled in the Court of Appeal in 2004 that the average consumer would not be confused into thinking that a banner ad carrying the brand totaljobs.com, with no reference to Reed, was in some way connected to Reed Executive.

http://www.theregister.co.uk/2008/12/04/interflora_google_keywords/

Steve

 

[David Warrilow]

Your argument seems to be that M&S could have libelled Interflora in their ad text and the fact they didn't still means libel laws have been broken.... or might be broken one day...

That can't be the point you're trying to make. It makes no sense. But you keep trying to come back to libel - without suggesting there was actually any libel - rather than address the points I've made about publishers having the right to run ads.

Steve

I've only mentioned libel once to counter your suggestion that if selling an advertising space is legal then putting that advertising space to any use must be legal.

I don't think that M&S have done anything at all that is libellous.

I think they may have infringed the Interflora trademark.

 

[David Warrilow]

Steve

Your quoting of the Reed case is not directly relevant, as I said previously. In the Reed case the trademark in question was not identical. Thus they had to show a likelihood of confusion.

In the Reed case Jacob said that had the marks been identical then the claimant probably would have won.

In the present case M&S seems to have used an identical mark. Thus Interflora don't need to show a likelihood of confusion.

 

[directmarketingadvice]

I've only mentioned libel once to counter your suggestion that if selling an advertising space is legal then putting that advertising space to any use must be legal.

I didn't say "to any use".

I said "if it's legal to sell it, it must be legal to buy it". I didn't say "if it's legal to sell it, it must be legal to buy it and do anything you want with it".

Come on, David, you're a lawyer which means you're intelligent. And it means you know the difference between what I wrote and what you just claimed I wrote.

Please don't just make stuff up. It's unbecoming.

Steve

 

[directmarketingadvice]

In the present case M&S seems to have used an identical mark. Thus Interflora don't need to show a likelihood of confusion.

According to the article, both cases revolve around the use of trademarked keywords.

In the Reed case, there was a chance of confusion. In the Interflora case, there wasn't.

Seems to me that that means there's less of a case, not more.

Steve

 

[David Warrilow]

I didn't say "to any use".

I said "if it's legal to sell it, it must be legal to buy it". I didn't say "if it's legal to sell it, it must be legal to buy it and do anything you want with it".

Come on, David, you're a lawyer which means you're intelligent. And it means you know the difference between what I wrote and what you just claimed I wrote.

Please don't just make stuff up. It's unbecoming.

Steve

I'm not making stuff up.

Your implication is that as Google can legally allow people to use whatever keywords they want then it should be legal for people to use them.

The courts have indicated that it is not Google's responsibility to monitor what keywords are used. This doesn't mean that people can use whatever they want, as the onus is now on advertisers to choose legal keywords. (Just as it is an advertiser's responsibility not to run a libellous advertisement).

I apologise if my previous post was unclear.

 

[David Warrilow]

According to the article, both cases revolve around the use of trademarked keywords.

In the Reed case, there was a chance of confusion. In the Interflora case, there wasn't.

Seems to me that that means there's less of a case, not more.

Steve

In the Reed case the need to show a likelihood of confusion was an added burden on the claimant.

In an identical mark infringement action under s.10(1) it is easier to succeed as you don't need to show a likelihood of confusion.

Thus it is easier for Interflora to succeed than it was for the claimant in Reed.

 

So are we going to see M&S sue interflora and John Lewis.?

http://www.google.co.uk/search?hl=e...tnG=Search&aq=f&aqi=g1g-sx1&aql=&oq=&gs_rfai=

Earl

 

[David Warrilow]

So are we going to see M&S sue interflora and John Lewis.?

http://www.google.co.uk/search?hl=e...tnG=Search&aq=f&aqi=g1g-sx1&aql=&oq=&gs_rfai=

Earl

If Interflora and John Lewis are bidding on 'flowers' (which they presumably are) then there's no case there as 'flowers' is not and never will be a trademark registered in respect of floral goods/services.

If they were bidding on 'Marks & Spencer' then there would be a case just as valid as the action Interflora is bringing.

 

[KM-Tiger]

So are we going to see M&S sue interflora and John Lewis.?

And Ling suing Ford by looks of things. That would be interesting to see!

Perhaps we should all retrain as lawyers as it seems to me that if this case succeeds then everyone will be suing everyone else every time they do a Google search.

 

If Interflora and John Lewis are bidding on 'flowers' (which they presumably are) then there's no case there as 'flowers' is not and never will be a trademark registered in respect of floral goods/services.

If they were bidding on 'Marks & Spencer' then there would be a case just as valid as the action Interflora is bringing.

So how do you know they are not bidding on "Marks & Spencer".?

One assumes only google has that information and thats would not be for public disclosure.

Earl

 

[David Warrilow]

Well, one way to find out would be to put Marks and Spencer into the Google search and see if the Interflora ad comes up.

I haven't done it, but I presume that it doesn't as it would be pretty hypocritical (and very foolish) of Interflora to bring an action against something they were doing.

 

[KM-Tiger]

Well, one way to find out would be to put Marks and Spencer into the Google search and see if the Interflora ad comes up.

It doesn't, but Waitrose does, so that'll be another court case.

 

And Ling suing Ford by looks of things. That would be interesting to see!

I kid you not.:|

I wonder how much Ford has in the piggy bank.

It may not be there now but when I first clicked it up came "Ford" in the PPC

http://www.google.co.uk/search?hl=e...earch&aq=f&aqi=g-c1g3g-c1g2&aql=&oq=&gs_rfai=

Earl

 

If Interflora lose this case it opens up the opportunity for every cowboy, counterfeiter, scammer and crook to destroy all legitimate businesses.

No hedge funds,banks,insurance companies,mortgage companies,stock brokers and existing financial services will continue to operate in the same way ,along with the pharmaceutical industry the arms industry IMHO.

Earl

 

[directmarketingadvice]

I'm not making stuff up.

Your implication is that as Google can legally allow people to use whatever keywords they want then it should be legal for people to use them.

Not really. Unfortunately - and I don't know if you're trying to score points or whether you just don't understand online advertising - you're simplifying what I'm saying to the point of making it too general.

So let me say it yet again: if the courts have decided that it's legal for Google to sell advertising on results pages for trademark keywords (which they have), it must be legal for people to buy that advertising.

The courts have indicated that it is not Google's responsibility to monitor what keywords are used. This doesn't mean that people can use whatever they want, as the onus is now on advertisers to choose legal keywords.

The courts have indicated that it's not illegal for Google to sell this advertising space. The implication is that the act of buying (and using) that ad space therefore isn't automatically an illegal act.

Anything else would be a nonsense.

So that leaves us with questions of libel and "confusion".

Libel is easy enough to dismiss as the ads don't mention the trademark or the trademarked company. And confusion is hard to argue because people know who Interflora are and who M&S are and they know they're not the same.

The one last argument is the argument by Interflora's lawyers that:

According to the lawsuit, "when a user enters the search term INTERFLORA or similar into the Google search engine, it is the intention of that user to look for [Interflora or its associates]."

http://www.theregister.co.uk/2008/12/04/interflora_google_keywords/

But that's easily beaten by the simple catch-22 argument that, if M&S are taking business away from Interflora by running these ads, then clearly the people clicking on those ads aren't only looking for Interflora and their associates.

If they're not taking business away, then why are Interflora seeking damages?

So that doesn't stand up, either.

Throw in the defence that Google should have the same rights as any other internet publisher and what's left of Interflora's case?

I'd suggest "nothing", which is why I expect Interflora to lose this.

But, who knows? Maybe the judge will be incapable of understanding the subject? Maybe the M&S lawyers will do a poor job. As I said, who knows?

Steve

 

[directmarketingadvice]

And Ling suing Ford by looks of things. That would be interesting to see!

Perhaps we should all retrain as lawyers as it seems to me that if this case succeeds then everyone will be suing everyone else every time they do a Google search.

And not just Google. After all, tehy can't seriously have one law for google and a totally different law for other publishers.

So any other page that has advertising and happens to mention a trademarked term would be fair game. Including, as I said, this forum.

It would be a mandate for big companies to bully small site owners.

Have a negative review of a big company on a page that shows ads? They can use this law to force you to remove it - even if there's nothing wrong with anything in the review.

Don't have the money to sue a big company? That just means they can bid on your name, but you can't bid on theirs.

(See sproston's post on p6.)

A win by Interflora would have serious implications for more than just people bidding on competitors' names.

Steve

 

[David Warrilow]

The courts have indicated that it's not illegal for Google to sell this advertising space. The implication is that the act of buying (and using) that ad space therefore isn't automatically an illegal act.

Anything else would be a nonsense.

So that leaves us with questions of libel and "confusion".

Libel is easy enough to dismiss as the ads don't mention the trademark or the trademarked company. And confusion is hard to argue because people know who Interflora are and who M&S are and they know they're not the same.

Steve

I think you don't understand what I've said. I'm not saying this for 'points scoring' but because I think the above shows you haven't understood the issues.

You say that 'The courts have indicated that it's not illegal for Google to sell this advertising space. The implication is that the act of buying (and using) that ad space therefore isn't automatically an illegal act.'

This is clearly false in light of the examples I have given above. Anyone can buy advertising space and use it for whatever puprose they like, whether that purpose is legal or illegal.

Libel is not at all an issue in the case as M&S haven't published anything libellous. I used libel in advertising as an analogy to show that not all advertising practices are legal.

Confusion isn't an issue as Interflora are running a case involving Section 10(1) and Section 10(3), not section 10(2).

Out of these only Section 10(2) requires proof of a likelihood of confusion.

If you'd like me to explain the law to you on the phone I'd be happy to. This might help us from retreading the same points.

 

[David Warrilow]

To reiterate a point you seem to be confused about, it is quite possible for someone to sell an advertising service legally, but for the person who buys that advertising service to put it to illegal use. (In this instance by entering another company's trademark as a keyword, and in other instances by publishing libellous comments).

Thus Google's sale of the adwords service need not be an infringement, but the use it is put to che purchaser an be (i.e. by using trademarked keywords).

Does this make sense? If not I might give up on the argument as we are never going to progress.

 

[David Warrilow]

And not just Google. After all, tehy can't seriously have one law for google and a totally different law for other publishers.

So any other page that has advertising and happens to mention a trademarked term would be fair game. Including, as I said, this forum.

It would be a mandate for big companies to bully small site owners.

Steve

I think this again shows you are ignoring my previous posts about 'use in the course of trade', an essential element of infringement. If the people using the trademark (perhaps in conversation) are not using it in the course of trade then there is no infringement.

If an advert to the side of this thread is to do with flowers then there will not be an infringement as we are not using the word Interflora in the course of trade. We are having a conversation.

This contrasts with the M&S use where they paid to use the trademark Interflora to promote their own flowers.

These are entirely different circumstances.

 

[David Warrilow]

To reiterate a point you seem to be confused about, it is quite possible for someone to sell an advertising service legally, but for the person who buys that advertising service to put it to illegal use. (In this instance by entering another company's trademark as a keyword, and in other instances by publishing libellous comments).

Thus Google's sale of the adwords service need not be an infringement, but the use it is put to che purchaser an be (i.e. by using trademarked keywords).

Does this make sense? If not I might give up on the argument as we are never going to progress.

Correction of awful typos:

Thus Google's sale of the adwords service need not be an infringement, but the use it is put to by purchaser can be (i.e. by using trademarked keywords).

 

[directmarketingadvice]

To reiterate a point you seem to be confused about, it is quite possible for someone to sell an advertising service legally, but for the person who buys that advertising service to put it to illegal use.

Yes I understand this.

Let me point out a word to you:

The courts have indicated that it's not illegal for Google to sell this advertising space. The implication is that the act of buying (and using) that ad space therefore isn't automatically an illegal act.

Now do you understand?

I've never said that anyone should be able to say anything in an ad. In fact, if you read the thread from the beginning, you'll see me saying the opposive.

(In reply to Redevo.)

Steve

 

[David Warrilow]

Hi Steve

I agree that there is no automatic infringement, but it is worth clarifying why Google has previously been found not to infringe.

In Google France the ECJ indicated that the sale of the adwords wasn't illegal as Google wasn't using a trademark in 'its own commercial communications' whereas the purchasers of the adwords had (and might therefore be liable for trademark infringement).

The ECJ went further, and said that Google's service might fall under Article 14 of the e-commerce directive:

Article 14
Hosting
1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:
(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or
(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.


Thus, if Google's role in providing the serrvice is 'neutral, in the sense that it's conduct is merely technical, automatic and passive' then it might be protected from any infringement action by Art.14. the ECJ said it was up to national courts to decide on this point.


Article 14 will not apply if Google is aware of an infringement and fails to act 'expeditiously' to remove the keywords. If Google did not act then they might be found to be an accessory to trademark infringement.


In the present case Google will again be exempt from infringement as they are not using an adword in the course of trade (in their own commercial communications); the same does not apply to M&S.



David

 

In the present case Google will again be exempt from infringement as they are not using an adword in the course of trade (in their own commercial communications); the same does not apply to M&S.



David

Can't see how that could apply as adwords is googles trade.?

Therefore there trade is increased by selling popular keywords.

Earl

 

[harryboon]

lol I knew this thread would get people talking ha ha - Cheers for everyone for joining in

 

[UKSBD]

In the present case Google will again be exempt from infringement as they are not using an adword in the course of trade (in their own commercial communications); the same does not apply to M&S.



David

Would it be different if Google suggested the Trademarked word?
Ie.
If when setting up an AdWord campaign for the phrase "flowers"
if Google suggested "Trademarked Word" as one in the "add from category"


question to Steve:
Do google include trademark words in the "add all from this category" feature if the trademark is not mentioned anywhere on the landing page?