Google is at the forefront of many legal battles these days, from data protection over antitrust to intellectual property (IP) litigation.
This article highlights some of the IP challenges that Google is currently facing in Europe. The outcome of these legal conflicts may shape e-commerce initiatives as well as prompt legislative changes in the near future.
Google v Copiepresse has been one of the most high-profile copyright sagas seen in Europe in recent years. Copiepresse is an association of several major Belgian newspaper publishers. Google included several of these publishers’ newspaper articles both on its ‘Google News’ page and in the cache of its search engine service. Whereas Google News only included the headlines and the first few sentences of these newspaper articles, the cache of Google’s search engine contained full reproductions of these articles.
On 13 February, 2007, the Brussels Court of First Instance (hearing an appeal against an earlier default judgment) found Google guilty of copyright infringement for the unauthorised reproduction of the newspaper articles and making them available to the public. Although Google had relatively few credible arguments to counter the allegation that the reproduction of entire articles in the cache of its search engine constituted a copyright infringement, it had stronger arguments concerning Google News.
First, Google asserted that the headlines and sentences reproduced on the Google News website did not constitute works enjoying copyright protection under the Belgian Copyright Act as they were insufficiently original. While the court did agree that some of the newspaper headlines did not pass the originality threshold, it decided that other titles were sufficiently original to be protected by copyright. In deciding this the court chose to apply a relatively low threshold for copyright protection, holding that the first two or three sentences of a newspaper article could very well constitute original works worthy of copyright protection.
Second, Google asserted that even if the court considered that the headlines and sentences constituted original works, Google could rely on an exception to the copyright holder’s exclusive rights provided in the Copyright Act: which states that citations from a work do not infringe the copyright if the citations were provided for review purposes. The court took a restrictive view of this exception and decided that the headlines on Google News did not constitute a ‘review’ but merely a simple juxtaposition of headlines without any additional comments whatsoever.
Therefore, the court issued a prohibitory injunction against Google, which was subsequently appealed by Google. This appeal is currently still pending.
Notwithstanding the pending appeal against the judgment of 13 February, 2007, Copiepresse decided not to await the outcome of this appeal and issued new proceedings against Google before the Brussels Court of First Instance.
Copiepresse chose this route because in the new proceedings it could request the court not only to issue a prohibitory injunction, but also to condemn the guilty party to pay damages.
As a result, Copiepresse requested the court to confirm its earlier decision of 13 February, 2007, and in addition, asked the court to condemn Google to pay damages of E49m. To determine the final amount, Copiepresse requested that the court appoint a judicial expert with the task of verifying the extent of the copyright violation and, more particularly, the number of articles reproduced on Google News and in the cache of Google’s search engine.
The first hearing in these new proceedings is scheduled to take place on 28 September, 2008. At that point, the court is expected to fix a time frame for the parties to exchange submissions. In view of the time required for a judicial expert to be appointed and for that judicial expert to verify the evidence, the final judgment may not be issued for quite some time.
Therefore, it is still possible that the parties may reach an amicable settlement prior to the final judgment. At the very least, the latest twist puts extra pressure on Google to consider its settlement options.
In May 2008, the highest French court asked the European Court of Justice to rule on the compliance of Google’s Adword program with trademark law. Google’s Adword system of keyword advertising allows paying advertisers to place sponsored links to their websites next to the ‘normal’ search results for a given term.
While some courts in Europe have allowed trademark owners to oppose the use of their trademark as keywords, others have considered this practice unactionable under trademark law.
It has to be said that keyword advertising can cover widely diverging situations, as illustrated by the following examples of keywords:
- l Volvo’ by a local Volvo dealer;
- 'Renault’ by an independent used car dealer;
- 'Lexus’ by a Mercedes dealer;
- ‘Levi Straus’ by a French retailer selling Levi Strauss jeans which he imported from the US;
- ‘Hilton’ by a hotel reservation website;
- ‘Louis Vuitton’ by the seller of counterfeit Louis Vuitton goods.
In this case, Louis Vuitton Malletier initiated proceedings against Google for allowing the keywords ‘Louis Vuitton’ to be linked to a website where counterfeit Louis Vuitton articles were offered for sale. Moreover, Louis Vuitton Malletier also opposed Google’s so-called ‘keyword generation engine’ which suggests alternative choices of keywords to advertisers searching for keywords to be used as triggers for its sponsored links. It appeared that when a potential advertiser typed in ‘Louis Vuitton’ as a possible keyword, Google’s keyword generation engine would suggest ‘Louis Vuitton copies’ or ‘Vuitton fakes’ as alternative choices.
The specific nature of the underlying case, namely the emphasis on the keyword generation engine and the fact that the keyword triggered ads linked to websites selling counterfeits is important, as the European Court of Justice may limit the scope of its interpretative judgment to these circumstances. The questions asked by the highest French court to the European Court of Justice are, however, sufficiently broad to allow the European Court of Justice to provide guidance on the legality of keyword advertising, as such, under trademark law, should it wish to do so.
In its defence against Louis Vuitton Malletier, Google argued that limited liability protection applies to hosting providers under the E-Commerce Directive 2000/31. The highest French court has now asked the European Court of Justice to also clarify whether this limited liability is available to providers of paid keyword advertising services. For Google, qualifying as a hosting provider would be of major importance as it would generally only oblige it to react a posteriori to complaints received from trademark owners.
The response of the European Court of Justice on this issue, however, may well be a nuanced one. There is indeed a growing recognition that nowadays many e-commerce intermediaries have a dual status, complementing their hosting services with other services, which do not fall under this limited liability regime.
As the Adword program is sometimes referred to as Google’s ‘cash cow’, the judgment of the European Court of Justice will most certainly be crucial for Google and the keyword advertising business in Europe.
Geert Glas is an IP partner and head of the global IP group and Peter Van Dyck is an IP associate at Allen & Overy in Brussels.
