Georgia Supreme Court Blesses Google’s Keyword Ad Sales–Edible IP v. Google

February 16, 2022 · by Eric Goldman · in Marketing, Search Engines, Trademark, Trespass to Chattels

Edible Arrangements objected to Google selling its trademark to trigger keyword ads. They filed a trademark lawsuit in 2018 but abandoned the suit when it got sent to arbitration. However, they didn’t give up! The Edible team had the brilliant idea of suing Google for “theft of personal property” and “conversion,” where the stolen/converted asset was the trademark. They then streamlined the case by saying they didn’t seek “any other relief for any consumer confusion.” In other words, they sought to establish (using centuries-old chattel-based theft doctrines rather than trademark law) that a trademark owner has the unrestricted right to shut down anyone using their trademarks, even if no consumers are harmed. This legal theory would turn trademarks into absolute property rights and remove any elements of consumer protection from trademark law, which would basically override the past 100+ years of trademark law. Even though this is an obviously stupid legal theory that wasn’t worth anyone’s time or money, Edible turned to an Atlanta litigation boutique (shoutout to Bondurant Mixson & Elmore LLP!!!) to see if it could find some soft spot in Georgia state law. They could not. Edible lost at the lower court, the appeals court, and now the Georgia Supreme Court–in a unanimous decision.

Civil Theft of Personal Property

The court correctly says that Edible IP can have a property interest in the “Edible Arrangements” name and associated goodwill, and state trademark law statutorily protects those property interests. However, Edible invoked theft law and disavowed consumer confusion. The court says that trademark law:

permits the use of trade names as long as referencing other brand names does not confuse consumers and is not deceptive. Indeed, if liability for using a trademark or trade name could be imposed without the “likelihood of confusion” test, as Edible IP urges, then “over 100 years of trademark law would be discarded.” [cite to McCarthy]…We see no reason to extend civil theft in Georgia to encompass the mere use of a trade name, without implicating consumer confusion, when doing so would subvert Georgia trademark law, federal trademark law, and the common law of trademark infringement.

The court seemingly leaves the door open for a theft claim if Edible had alleged consumer confusion, but why? In that circumstance, courts should still reject a “theft of personal property” claim that doesn’t satisfy all of the elements of trademark law, which balances the respective interests of producers and consumers in ways that “theft” does not.

Conversion

“Although Georgia law may provide relief for the conversion of certain intangible property, we have never extended that tort to claims based on the mere use of a trademark or on trade name infringement, and we decline to do so now.” This is good, but skepticism towards the application of chattel-based conversion law to intangibles generally would have been better.

Implications

In light of its unanimous affirmance, I’m puzzled why the Georgia Supreme Court granted certiorari in this case. It could have simply let the appellate court ruling stand and not wasted everyone’s time and money. I guess Edible’s cert brief was more persuasive than I thought…?

I have a long-standing personal policy not to give my consumer dollars to any entity that I mock on the blog for IP overreaches. Companies on my shitlist include: 1-800 Contacts, Overstock…and now Edible Arrangements.

Case Citation: Edible IP, LLC v. Google, LLC, 2022 WL 451876 (Ga. Sup. Ct. Feb. 15, 2022)

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Georgia Supreme Court Blesses Google’s Keyword Ad Sales–Edible IP v. Google

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