District Court dismisses trademark infringement claim against Google based on forum non conveniens doctrine
In Dead Sea Premier Cosmetic Laboratories Ltd v Google Inc (CC (TA Distr) 20588-08-13, October 12 2015), the Tel Aviv District Court (Justice Zfat) has dismissed a claim brought by an Israel-based cosmetic company with a multinational presence, Dead Sea Premier Cosmetic Laboratories Ltd, against Google Inc, Google Ireland and several Israeli defendants for trademark infringement committed via Google AdWords and Google Shopping. The court held that, although the defendants could not expect not to conduct litigation in countries where they do business, Israel was a forum non conveniens, and the action should be brought in the United States because, among other things:
- the relevant trademarks had expired in Israel but remained registered in the United States; and
- the plaintiff had failed to demonstrate that the Google platforms could be used for purchases in Israel and that advertising on Google platforms was liable to affect Israeli consumers.
Dead Sea Premier is an Israeli manufacturer of cosmetic products based on Dead Sea minerals, which it markets and sells in Israel and abroad under the names Dead Sea by Premier and Premier Dead Sea. Premier brought suit against two foreign companies, Google Inc and Google Ireland Ltd (together 'Google'), as well as against an Israeli advertiser, for infringement of the plaintiff’s name, trademarks and copyrighted photographs, on Google AdWords and Google Shopping.
Google Inc was sued as the operator of the Google AdWords platform, which is used to display third-party sponsored ads, and of the Google Shopping service (in England and Ireland), which enables vendors to advertise and offer their goods for sale; Google Ireland Ltd was sued as the operator of Google Shopping in the United States and Canada. The third defendant, an Israeli entity advertising on Google, was, according to the plaintiff, one of many similar infringers advertising via Google AdWords and Google Shopping in violation of Premier’s IP rights. The plaintiff thus requested that the court order Google to remove such advertising and prevent it in the future. The plaintiff sought an order against Google to cease displaying, without the plaintiff’s authorisation, third-party advertising containing its name, trademarks (including, specifically, PREMIER DEAD SEA, DEAD SEA PREMIER and DEAD SEA BY PREMIER) and product pictures in which the plaintiff had rights via Google AdWords, Google Shopping or other platforms. The plaintiff also sought IS500,000 in damages and an order for accounting.
The defendants moved to strike the suit in limine on the ground of forum non conveniens, arguing, among other things, that the criteria for applying the doctrine (ie, most of the links connecting the dispute to a different jurisdiction, the defendants’ reasonable expectation not to litigate the dispute in Israel and public policy considerations) tilted the balance in favour of the United States as the appropriate forum. Specifically, the defendants argued that the plaintiff’s claim was largely based on the infringement of a US registered trademark, whereas the plaintiff’s Israeli trademark registrations had mostly expired or lost effect, and the only remaining Israeli registration was irrelevant as it offered limited protection to a specific stylised design of the mark.
The district court dismissed the claim based on the forum non conveniens doctrine. The court reiterated that the applicability of the forum non conveniens doctrine must be examined in accordance with three criteria:
- which forum had a real and substantial connection to the dispute and which jurisdiction had most of the relevant links to the dispute in the circumstances;
- the parties’ reasonable expectation as to the place of litigation; and
- public policy considerations, in particular which forum had a real interest in hearing the dispute.
It noted that, while technological advances in communications and transportation diminished the status of the forum non conveniens doctrine, it was still good law.
In this case, it held that, while some of the links connected the claim to Israel (eg, the plaintiff and some of the defendants were Israeli), the fact that the majority of the links had a real and substantive connection to the claim, along with public policy considerations, tilted the balance in favour of the US forum.
Thus, the plaintiff, due to its international operation, was viewed as a multinational company; the focus of the claim was directed against Google, a foreign defendant, for making its platform available, without due examination, to dozens of infringing advertisers such as the one actually sued (the court held that it was impracticable to separate the claim against the Israeli defendant).
As to the place where the torts had been committed and the public they targeted, the court rejected the defendants’ argument that advertising using 'foreign' domain names (English-language websites hosted at '.com' and 'co.uk' domain names, rather than Hebrew-language websites hosted at '.co.il' domain names) prevented Israeli consumers from using such websites. However, the plaintiff failed to raise (or substantiate) in a timely manner, in its statement of claim, an allegation that the Google platforms in question permitted Israeli consumers to order products (only raising this as a supplemental argument), so that the statement of claim related to foreign markets and to foreign consumers. As to the causes of action, the fact that the only remaining trademark registration was the US trademark (and thus US law applied) strengthened the connection to the US forum.
Public policy considerations, as viewed by the court, suggested that the US legal system had a significant interest in examining an alleged infringement of a trademark registered in the United States, whereas the Israeli legal system had no obvious interest in expending its resources to do so, especially in light of the territoriality of IP rights. Observing that it was likely that the plaintiff would have difficulties establishing that the alleged infringement of US law also constituted infringement of Israeli law, the court appeared not to have addressed the other causes of action invoked by the plaintiff in addition to trademark infringement.
Addressing the parties’ expectations as to the place of litigation, the court held that Google, as a multinational company, could not expect not to conduct litigation in countries where it does business, while Dead Sea Premier, which does business on an international scale, should also expect to have to litigate abroad.
Attorney fees of IS7,000 were ordered against Dead Sea Premier.
David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv
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