Google wins partial victory in GEICO keying case

Google Inc has won a significant partial victory in the US District Court for the Eastern District of Virginia in a keying case against Government Employees Insurance Company (GEICO). In response to Google's motion for a judgment on partial findings, Judge Leonie M Brinkema ruled that GEICO had not presented sufficient evidence that Google's sale of GEICO's trademarks as keywords, triggering ads for competitors and others on the Google search results page, constituted trademark infringement (Case 1:04-CV-507 (ED Va December 15 2004)). The ruling is limited to situations where the marks only serve as mechanisms to trigger the ads (ie, the ads do not include the trademarks).

Brinkema also gave GEICO some comfort by stating that where a competitor's ads do display GEICO's trademarks in a manner that is likely to cause confusion, this constitutes trademark infringement (presumably by the advertiser).

Brinkema adjourned the trial, stating that she would issue an opinion and then resume the trial on GEICO's outstanding claim that when the ads do display its trademarks, Google should be held liable for:

• contributory trademark infringement;
  
  
• unfair competition; and
  
  
• trademark dilution.

If such liability is found, the court would then have to determine what remedies, if any, GEICO should be awarded. Google claims that, in such cases, it merely acts as a publisher and should not be responsible. The judge urged the parties to use the recess to try to settle the case.

Although it is unclear how far Brinkema's opinion will go, it will likely rely on the evidence (or lack thereof) that was presented in this particular case on the question of whether (i) the practice of keying constitutes trademark 'use' (she had ruled earlier that it does), and (ii) there is a likelihood of confusion stemming from this practice. It is possible that the judge may go a step further and hold that keying involving trademarks is not per se trademark infringement. However, GEICO had not requested a ruling on the practice per se.

This decision is not binding on other trial courts that are considering similar claims by other trademark owners against Google. Nevertheless, other courts may take this ruling into account (and Google will certainly urge them to do so). An appeal is also possible if the case is not settled.

Overture Services Inc, which was a co-defendant in the dispute, reached a confidential settlement agreement with GEICO at the end of November.

For background information on the case, see Virginia federal court to hear keying case against Google and Overture.

Sheldon H Klein and Jason J Mazur, Arent Fox PLLC, Washington DC