Google continues to dodge trademark infringement bullets with its AdWords policy

Google AdWords enables organizations to promote their offerings on the web on a cost-per-click (CPC) basis. The advertiser specifies the keywords to be targeted and how much he or she is willing to pay for each click through. When searchers type in the targeted keyword, advertisers' ads appear dependent upon how much they are paying. Controversy arises when an advertiser picks a competitor’s trademark as a targeted keyword.

To be sure, Google has a policy that addresses this situation, for the most part placing the burden on the trademark owner to monitor their own trademark and taking the stand that use of another’s trademark in an AdWords ad is a matter between the advertiser and the trademark owner.

There have been several actions against Google claiming they facilitate trademark infringement, but none have prevailed. Eric Goldman in Forbes feels none of the cases against Google will amount to anything, mainly because the plaintiffs give up before incurring the expense of following the case through to conclusion, and Google is willing to go to the mat on these cases: “Google makes billions of dollars a year selling AdWords ads triggered by third party trademarks.”

Recently, Google’s attrition wins translated into a rare courtroom win, as Daniel Jurin, who owns the trademark “Styrotrim,” did not contest Google’s motion for summary judgment.

This ultimately may be the road traveled by CYBERsitter as well (CYBERsitter LLC v. Google, Inc., CV12-5293 (C.D. Cal. complaint filed June 18, 2012)), certainly Goldman thinks it will be, but Matthew Huisman writing in the National Law Journal isn’t so dismissive.

CYBERsitter’s competitor ContentWatch (in the Internet filtering software industry) employed AdWords advertising that used "CYBERsitter" as a keyword. "Defendant Google has willfully participated in, facilitated and encouraged these acts for its own financial gain," alleged the complaint.

Just last week U.S. District Court Judge Ronald Lew denied Google’s motion to dismiss, and CYBERsitter is acting as if it is eager to proceed to trial.

IP Value Wire has blogged about this subject several times; one of the most important elements to valuation analysts is the calculation of lost profits damages. We will continue to monitor these developments.