Plaintiff’s Lanham Act false association claims against Google AdWords program survive motion to dismiss
By Abby Lauer – Edited by Matt Gelfand
Jurin v. Google, No. 2:09-cv-03065-MCE-KJM (E.D. Cal. Feb. 14, 2011)
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The U.S. District Court for the Eastern District of California denied in part and granted in part Google’s motion to dismiss in a case involving trademark infringement and breach of contract claims against the search engine.
While granting Google’s motion to dismiss plaintiff’s breach of contract claim, the court denied the motion with regard to plaintiff’s claims that the Google AdWords program infringed his trademark rights against false association. In an unexpected decision, the court declined to require the defendant to be the producer of the goods alleged to cause confusion with the plaintiff’s goods.
Technology & Marketing Law Blog criticizes the decision as inconsistent with other keyword ad cases.
Plaintiff Daniel Jurin owns a company that markets and sells its trademarked “Styrotrim” building material. Google’s AdWords program offers “Styrotrim” as a keyword, and advertisers, including Jurin’s competitors, can bid on the term “Styrotrim” in order to display advertisements for their websites whenever someone searches for the term on Google or one of its partners.
Jurin sued Google, claiming that the search engine misappropriated his trademarked name for its own profit and failed to investigate trademark infringement as promised by AdWords program policy. Jurin claimed that Google was liable for false association under the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), which requires a showing “that a defendant’s illicit use of its mark in commerce has caused consumers to become confused, mistaken, misled and/or deceived as to the producer of the goods offered for sale.” Jurin also alleged that Google violated an implied covenant of good faith and fair dealing by failing to take action on trademark infringement of the “Styrotrim” brand.
In support of its motion to dismiss, Google argued that the false association provision of the Lanham Act should be construed narrowly to require that the defendant is the producer of the goods allegedly confused with the plaintiff’s own goods. Finding ambiguity in the language of the statute and legislative intent that the false association provision be construed broadly, the court declined to take this interpretation; as a result, the court denied Google’s motion to dismiss on the false association claim. The court granted Google’s motion to dismiss the breach of contract claim, finding that Google did not violate any express provision of its policy or the implied covenant of good faith and fair dealing.
The court’s decision to allow Jurin’s false association claim against Google was surprising because it had already rejected the trademark infringement claim twice. Judge England justified the shift in a footnote, however: “the Court has now concluded that the analysis set forth herein is the correct one.” It is also noteworthy that the court did not cite Heartbrand Beef, Inc. v. Lobel’s of New York, LLC, a 2009 case in which the Southern District of Texas dismissed a similar claim against Yahoo. Although this case has not yet reached its final conclusion, the court’s denial of Google’s motion to dismiss may prompt a flurry of additional trademark infringement lawsuits against Google and other search engines that operate keyword advertising programs.
Abby Lauer is a 2L at the Harvard Law School.