Rescuecom Corp. v. Google Inc.
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OR:

''Rescuecom Corp. v. Google Inc.'' 562 F.3d 123 (2nd Cir. 2009), was a
United States Court of Appeals for the Second Circuit The United States Court of Appeals for the Second Circuit (in case citations, 2d Cir.) is one of the thirteen United States Courts of Appeals. Its territory comprises the states of Connecticut, New York and Vermont. The court has appellate juri ...
case in which the court held that recommending a
trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
for
keyword advertising Keyword advertising is a form of online advertising in which an advertiser pays to have an advertisement appear in the results listing when a person uses a particular phrase to search the Web, typically by employing a search engine. The particular ...
was a commercial use of the trademark, and could constitute
trademark infringement Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may o ...
.


Background

AdWords Google Ads (formerly Google AdWords) is an online advertising platform developed by Google, where advertisers bid to display brief advertisements, service offerings, product listings, or videos to web users. It can place ads both in the result ...
is a system used by Google through which advertisers can purchase keywords. When a user searches for a purchased keyword, Google displays advertisements from the purchasing firm. Google also provides its advertising customers with a "Keyword Suggestion Tool", which recommends additional keywords for the customer to purchase. Rescuecom, a computer repair and service firm, discovered that Google had used its name during this process, and recommended it to it AdWords customers. The "rescuecom" keyword had been
trademarked A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. ...
by the company of that name. The company further found that Google had recommended its name for purchase by some of Rescuecom's own competitors. Rescuecom therefore filed suit against Google claiming violations of the
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
, including
trademark infringement Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may o ...
,
trademark dilution Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of anoth ...
, false designation of origin, and
tortious interference Tortious interference, also known as intentional interference with contractual relations, in the common law of torts, occurs when one person intentionally damages someone else's contractual or business relationships with a third party, causing e ...
in business relations with an intent to gain economic advantage.


District court proceedings

The case was first heard by the
United States District Court for the Northern District of New York The United States District Court for the Northern District of New York (in case citations, N.D.N.Y.) serves one of the 94 judicial districts in the United States and one of four in the state of New York. Appeals from the Northern District of New ...
in 2006. The district court drew heavily on the Second Circuit precedent '' 1-800 CONTACTS, INC. v. WhenU. com, Inc.,'' concerning the use of software that generated
pop-up ad Pop-up ads or pop-ups are forms of online advertising on the World Wide Web. A pop-up is a graphical user interface (GUI) display area, usually a small window, that suddenly appears ("pops up") in the foreground of the visual interface. The pop-u ...
vertisements based on a computer user's actions, with the ads being generated from a database of company
domain names A domain name is a string that identifies a realm of administrative autonomy, authority or control within the Internet. Domain names are often used to identify services provided through the Internet, such as websites, email services and more. As ...
. In that precedent, the court held that the usage of a trademarked domain name in an "unpublished directory of terms" and the appearance of "separate, branded ads" triggered by a trademark do not constitute "use" of the trademark under the Lanham Act. In its ruling for the Rescuecom case, the district court held that, per the ''WhenU'' precedent, Rescuecom had "prove no facts in support of its claim... ftrademark use". Given that a trademark "use" is required under the Lanham Act for infringement to occur, the district court dismissed Rescuecom's complaint. Rescuecom appealed this ruling to the
Second Circuit Court of Appeals The United States Court of Appeals for the Second Circuit (in case citations, 2d Cir.) is one of the thirteen United States Courts of Appeals. Its territory comprises the states of Connecticut, New York and Vermont. The court has appellate juris ...
.


Circuit court opinion

The Second Circuit
vacated A vacated judgment (also known as vacatur relief) makes a previous legal judgment legally void. A vacated judgment is usually the result of the judgment of an appellate court, which overturns, reverses, or sets aside the judgment of a lower court. ...
the district court's decision in 2009, holding that Google's use of the "Rescuecom" trademark constituted a "use in commerce" under the Lanham Act, even when recommending it for purchase by its own advertising customers. The vacate order ultimately resulted in the case being remanded to the district court for another hearing. The circuit court held that the lower court had interpreted the ''WhenU'' precedent incorrectly, because Google's process of selling keywords for its AdWorks service was a different type of business practice. The court rejected Google's argument that the inclusion of a trademarked term in an internal computer directory does not constitute "use" of that trademark under the Lanham Act. Instead, the court held that "Google’s recommendation and sale of Rescuecom’s mark to its advertising customers are not internal uses" and were a full business transaction. If the court were to accept Google's argument, "the operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion. This is surely neither within the intention nor the letter of the Lanham Act." In another departure from the matters discussed in the ''WhenU'' precedent, the circuit court accepted Rescuecom's assertion that Google's placement of "sponsored links" purchased by its AdWords customers, above organic search results at the google.com page, could lead consumers to conclude that such ads were associated with Rescuecom. As a result, Google's argument that a sponsored link is analogous to placement of a
generic brand Generic brands of consumer products (often supermarket goods) are distinguished by the absence of a brand name, instead identified solely by product characteristics and identified by plain, usually black-and-white packaging. Generally they imitat ...
next to a trademarked brand was rejected by the circuit court. The Second Circuit thus
vacated A vacated judgment (also known as vacatur relief) makes a previous legal judgment legally void. A vacated judgment is usually the result of the judgment of an appellate court, which overturns, reverses, or sets aside the judgment of a lower court. ...
the district court decision, ruling that Google's actions constituted commercial use and that Rescuecom's claims of trademark infringement, trademark dilution, and related claims could not be immediately dismissed as Google requested. The case was sent back to the district court for reconsideration of possible financial damages to be paid to Rescuecom.


Impact and subsequent developments

In 2010, Rescuecom moved to drop the proceedings against Google and issued a press release declaring victory in the case. However, Google apparently made no new concessions to Rescuecom to get it to drop the lawsuit; instead, the changes that Rescuecom claimed as victory had been made by Google five years earlier. Thus it was unclear if Google had adjusted its AdWords recommendation process based on the circuit court ruling, or if Rescuecom had realized any rewards. Meanwhile, the original district court ruling was criticized for confusing the matter of "commercial use" of trademarked terms on the Internet for advertising practices that would be permitted for traditional advertising, though the Second Circuit ruling on appeal has been cited as an important if uncertain precedent in the law of Internet advertising.


References

* {{Google litigation United States Court of Appeals for the Second Circuit cases United States Internet case law United States trademark case law 2009 in United States case law Google litigation Online advertising