In June of last year, Google and Louis Vuitton were engaged in battle before the Cour de Cassation (France). The French court requested the opinion of the European Court o justice (ECJ) on three matters. Today, the European Advocate General issued an opinion advising the ECJ regarding its anticipated ruling. The AG opinion available here (Opinion) included the following:
“The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under [the Directive]”
“Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation … 40/94 … must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.”
“In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under [the Directive].”
“The provider of the paid referencing service [Google] cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/… in particular electronic commerce, in the internal market (‘Directive on electronic commerce’)”
What could this mean for Domainers? As we know, domain names in PPC serve as keywords for PPC results. While some PPC providers allow owners to categorize domains or add additional keywords, Google and Yahoo require that the added words bear a contextual meaning to the actual domain name. In essence, domain names used in PPC serve the same function as Google’s keywords as used in advertising. LouisVuitton.com is thus served up as “louis + vuitton”. The PPC advertisement links appear because advertisers who have paid Google/Yahoo to have their advertisements appear on pages in the domain channel when such keywords are used in a search.
We must of course wait for the official decision of the ECJ but it is nice to see when people “get it”, particularly when they are in such authoritative positions.
So, one may ask….. How is the PPC system any different from what the European Attorney General sees as infringing activities? In a real sense of course there is no real difference other than one keyword is purchased from a list and the other is in the form of a registered domain name (and of course you are you and Google is king).
It will be interesting to see how this plays out in the various sectors of the Internet. Of course, UDRPs and the like are based on a different standard. However, even the panel decisions remain subject to court decisions. Now if only we could convince domainers to pursue legitimate claims in court, we might have something that would benefit everyone.
©Paul R. Keating, Barcelona 2009. Mr. Keating has been an attorney since 1983. He escaped the good life in San Francisco and now lives and works in Barcelona Spain. He specializes in domain name related matters including ownership structures, taxation, transactions and domain dispute resolution. Paul@law.es.