Google Defeats Trademark Challenge to Its AdWords Service–Jurin v. Google (Forbes Cross-Post)

By Eric Goldman

Jurin v. Google, Inc., 2012 WL 5011007 (E.D. Cal. October 17, 2012).

Google ($GOOG) makes billions of dollars a year selling AdWords ads triggered by third party trademarks.  Over the past decade, trademark owners have brought about 20 lawsuits against Google challenging these ad sales.  These lawsuits have ranged from high-stakes class action lawsuits (the FPX lawsuit) to well-funded challenges by big  trademark owners (e.g., the Rosetta Stone ($RST) and American Airlines lawsuits) to poorly funded lawsuits by no-name trademark owners like the case I discuss in this post.  In a remarkable litigation tour-de-force, Google has never definitively lost any of these cases in court (though it has occasionally lost intermediate rulings).  At the same time, Google hasn’t definitively won any of its cases in court either.  This makes Google’s recent wi in an AdWords trademark case noteworthy.

Daniel Jurin owns the trademark “Styrotrim” for building materials.  The first time he sued Google, he lost his lawyer and voluntarily dismissed the lawsuit, which led to a $6,000 sanction against him.  Jurin found a new attorney and tried again, and even got a surprising intermediate win on his “false association” claim.  However, Jurin lost his second lawyer–and his litigation mojo.  As a result, Jurin didn’t contest Google’s summary judgment motion, giving Google an easy courtroom win.  With minimal analysis, the court says that Jurin didn’t provide any evidence of actionable consumer confusion, false advertising or sufficient fame to support a trademark dilution claim.

It’s hard to get too excited about a Google win where the opponent stopped showing up.  Still, for Google, this is a rare final ruling in its favor.  Google got a partial win in the GEICO case in 2005, leading to a settlement.  Google also got a complete win in the Rosetta Stone case at the district court, but the appellate court reversed that win.  Assuming Jurin won’t appeal this ruling (after all, he effectively abandoned the case), this may be the first time Google won an final judicial decision upholding the legitimacy of its AdWords trademarked keyword ads sales.

Jurin’s fizzling out also reminds us that suing Google for trademark infringement remains a bad business decision.  Google will spend whatever it takes to defend its cash cow–far more than it’s worth to any individual trademark owner, especially a small player like Styrotrim, to sue Google.  Recently, we’ve seen a couple of ill-advised new trademark lawsuits by other small-time players (CYBERsitter and Home Decor Center).  Google will win those cases, probably because those plaintiffs will give up–just like many other trademark owners (including American Blinds, AscentiveEzzoRescuecom, Parts GeekSoaring Helmet and others) have voluntarily done after tangling with Google.

The most dangerous pending AdWords-related trademark lawsuit is the Rosetta Stone case.  Despite the Fourth Circuit’s revitalization of the case, I believe Google will win that lawsuit (or settle on favorable terms).  As a result, I predict that Google will soon finish the job of establishing a clean bill-of-health on the legitimacy of selling third party trademarks to trigger keyword advertisements.  Microsoft ($MSFT), Yahoo ($YHOO) and other sellers of trademark-keyed ads (such as Twitter) should all benefit from that outcome too.

For more on the policy considerations underlying trademark challenges to AdWords, see my papers Deregulating Relevancy in Internet Trademark Law and Brand Spillovers.  Also see my recent Forbes post, Newly Released Consumer Survey Indicates that Legal Concerns About Competitive Keyword Advertising Are Overblown.