By Stephanie Bodoni March 23 (Bloomberg) — Google Inc. may have to more aggressively monitor the use of trademarked terms as keywords that link Internet searches to advertisements after a European Union court ruling today. Google doesn’t breach LVMH Moet Hennessy Louis Vuitton SA or other brand owners’ trademarks by selling protected keywords, the European Court of Justice in Luxembourg said. At the same time, Web companies may be liable for trademark breaches in ads if they knew of or had control over ad data, the court said. The ruling raises questions about whether Google, the owner of the most popular internet search engine, will have to alter the business model that drove sales to $23.7 billion last year. The company stores ad content on its systems, which the court today said may make Google liable for trademark breaches if national judges find it plays an “active role” in creating the promotions. “Google is totally dependent upon advertising and anything that might undermine their existing model is bad,” said Alex De Groote , a media analyst at Panmure Gordon & Co, adding the ruling sets an important precedent. “LVMH is a branded luxury goods company, so its own trademark, its own brand, is absolutely sacrosanct for them.” The decision is the first time the EU’s top court has ruled on the rights of companies such as LVMH to prevent search engines in the 27-nation region from distributing protected names as keywords. It doesn’t change how Mountain View, California-based Google sells the ads, which made up 97 percent of revenue last year. Monitor Ads Instead, Google may have to monitor ads linked to searches for terms that are trademarked to avoid the risk that national judges will rule against it. That may be a large workload for Google and other online companies. About half of all online searches involve brands or specific products, said Alexander Wisch , a media analyst at Standard & Poor’s Equity Research in London. The court said Internet hosts may be able to benefit from an exemption under the EU’s e-commerce law if their role in processing potentially infringing data is neutral. In the case of Google, its role played “in the drafting of the commercial message which accompanies the advertising link or in the establishment or selection of keywords is relevant,” said the court. The decision left it to national courts to analyze on a case by case basis whether the role played by Google is “of a mere technical, automatic and passive nature.” Leaving the decision as to who can and who can’t benefit from the liability exemption to national judges could be “dangerous for Google and other online service providers because it can lead to different readings of the ECJ judgment in different countries,” said Stijn Debaene , a partner at Field Fisher Waterhouse LLP in Brussels. EBay Dispute The decision may have implications for other online service providers, such as EBay Inc. , which last month in a dispute with LVMH was ordered by a French court to pay 200,000 euros ($270,000) for reserving misspelled versions of brand names. LVMH will use the ruling “to show that online referencing services such as Google and EBay do play an active and not a passive role,” said Pierre Gode, vice-president of Paris-based LVMH. “Our objective is not to cause a bloody combat or to break up the Internet, we just seek an access with intelligence,” Gode said. More Lawsuits Advertisers may face more lawsuits by LVMH and other brand owners after the court said that advertisers who buy protected keywords for ads on search engines without identifying whose products they sell will be liable for trademark breaches. This part of the ruling may force Google to “tweak their business model,” said Nicola Dagg , an intellectual property lawyer at Allen & Overy LLP in London. “Google will have to put forward a formula,” an alert to advertisers that they need to clearly show what products they sell, Dagg said. It will be “a very close judgment call for them” to take care they can’t be sued if keywords they sell lead to trademark breaches. France’s highest appeals court in 2008 sought guidance in three cases, one involving LVMH, on whether Google’s use of keywords breaches companies’ rights under the region’s trademark rules. LVMH accused Google of violating the luxury-goods maker’s trademarks by linking users who search for “Vuitton” and “LV” to Web sites selling counterfeit fashion accessories. Protected Trademarks In some countries, mainly in Europe, Google blocks names from being chosen as keywords once it’s received proof that they are protected trademarks. This isn’t the case in about 190 countries , including the U.K., Ireland and the U.S., following a change of its policy in June to give users more choices. The ruling “puts the onus on brand owners to police and notify Google,” said Tom Carl, a trademark lawyer at Taylor Wessing LLP in London. Google, owner of the most-used Internet search engine, and LVMH have been fighting for seven years in France over Internet searches linked to trademarks. Google is appealing a Paris court’s 2006 ruling in favor of LVMH claims that the U.S. search engine provider breached its trademarks. LVMH sued Google in 2003 and the Paris Central Court three years later ordered Google to pay 300,000 euros for trademark infringement. Today’s cases are C-236/08 Google France v. Louis Vuitton Malletier; C-237/08 Google France v Viaticum; C-238/08 Google France v CNRRH, Pierre-Alexis Thonet. To contact the reporter on this story: Stephanie Bodoni in Luxembourg at sbodoni@bloomberg.net






