Court Backs GEICO On Google Searches

Carrier challenged search engine over use of its trademark byadvertisers

A federal judge ruled last week that Google activities undercertain circumstances violated U.S. trademark law by lettingadvertisers attach their ads onto Web searches for GEICO.

The ruling came from Judge Leonie Brinkema at the U.S. DistrictCourt for Virginia's Eastern District in Alexandria, who made herlong-delayed decision based on the evidence she heard during anon-jury trial in December. Google late last year had lost a motionfor summary judgment in the case.

Judge Brinkema's latest ruling found Washington, D.C.-basedGEICO had established "a likelihood of confusions, and therefore aviolation of the Lanham [trademark] Act, solely with regard tothose sponsored links that use GEICO's trademarks in their headingsor text."

Links that did not use the GEICO name would be legal.

The judge postponed the trial of the issue for 30 days while thetwo sides hold settlement talks.

If no agreement is reached between the two sides in the nextmonth, the trial will continue as to the amount of damages and onthe issue of who is liable–Google, or the advertisers onGoogle.

Jonathan Shafner, a senior counsel of GEICO, said the ruling,which gave something to each side, was a very "narrow holdinglimited to the facts in the case," adding that GEICO looks forwardto arguing the broader trademark issues in future cases.

Charles Davies, GEICO's general counsel, said in a statementthat in light of the decisions, "search engines and theiradvertisers should consider their potential liability if theyintend to use other companies' trademarks in paid searchadvertising."

GEICO's original trademark suit included Yahoo as a defendantwith Google. Yahoo, however, reached a settlement with the companyafter which searches for GEICO did not reveal rival insurercontent.

The original complaint said the two Internet search engine firmswere selling its trademarked GEICO and GEICO Direct names as searchterms or key words to advertisers.

It was alleged that GEICO trademarked names were being sold to"advertisers who have no connection to GEICO and who seek to driveInternet traffic to their own Web sites when consumers perform asearch using one of the famous GEICO Marks."

Google, in response, said that a GEICO survey of consumers aboutads placed with the keyword "GEICO" without the word "GEICO" in thetitle or text of the ad found that "not one of those consumers wasconfused" about the identity of the carrier.

The search engine firm, based in Mountain View, Calif.,contended that even if an advertiser was infringing on thecopyright, Google did not "induce that infringement. The advertiseris not writing its text at Google's urging, and it is not acting asGoogle's agent."

Google could not be reached for comment.

Mr. Davies promised that GEICO would "aggressively enforce itstrademark rights against purchasers of its trademarks on searchengines and against search engines that sell GEICO trademarks toadvertisers."

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Head: What's The Beef?

Text:

A federal district court issued a key decision on a trademarkchallenge to the use of an insurer's name by others as an onlinesearch term or key word. The key findings were that:

o Under certain circumstances, U.S. trademark laws were violatedby letting advertisers attach their ads onto Google Web searchesfor GEICO.

o Links that did not use the GEICO name would be legal.

o Left open the question of damages and who is liable–Google, orthe advertisers who used the GEICO trademark.

o Postponed a trial on damages and liability for 30 days whilethe two sides hold settlement talks.