The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 21 June 2017

A googol of generic questions in Ninth Circuit's Elliott v Google decision

If you were going to ask a friend to search something online, what word or phrase would you use to direct him or her to conduct that search?  "IPKat it", of course!  Kat jokes aside, this question was at the center of the recent Ninth Circuit Court of Appeals (Ninth Circuit) judgment in Elliott v. Google.

The dispute concerned the attempt of Mr. Gillespie (later joined in the suit by Mr. Elliott) to acquire 763 domain names such as “googledisney.com” and“googlebarackobama.com”, all containing the word “google”. Google Inc. objected to the registration and filed a complaint of domain name infringement, or “cybersquatting”, before the US National Arbitration Forum. Upon refusal, the claimants petitioned the Arizona District Court for the cancellation of the Google trade mark on grounds of “genericide”. In other words, according to the claimants, the Google trade mark would have lost its uniqueness as it is used as a verb in common language. In fact, in the cross-motions for summary judgment, the claimants stated that the use of a trade mark as a verb, i.e. “I will google this”, constitutes genericness automatically. On grounds of insufficiency of evidence provided to support this argument, the District Court sided with Google and dismissed the claim. The claimants decided to appeal the judgment, focusing on two arguments in particular:
  • the District Court misapplied the primary significance test + it failed to recognize the importance of verb use; and 
  • the District Court impermissibly weighed the evidence in the granting of the summary judgment.
The question which then the Ninth Circuit had to answer was: Are there any genuine issues of material fact and did the District Court apply the relevant substantive law?

The Ninth Circuit ultimately sided with the District Court's findings that the evidence before it from the claimant was insufficient.

With regards to the first point of appeal, the circumstances surrounding Mr. Elliott's claim are undeniable - people do actually use the verb “to google”. What was lacking in the claim, as the Ninth Circuit noted, is the fact that it was not made with regards to a particular type of good or service. Lanham Act provisions supported Google's view.  Those provisions clearly state that in order for a mark to be considered generic the mark must lose its primary significance towards less than all of the goods and services for which the mark is registered (15 U.S.C. §1064(3)).

With arbitrary or fanciful marks, the word used as trade mark has its own meaning and it therefore has its own place in language (the Ninth Cirucit in this case used the example of the trade mark IVORY, which is a trade mark for soap but also is the material of the tusks of elephants Abercrombie & Fitch Co. v. Hunting World, Inc., F.2d 4, 9 n.6). Thus, it is essential when making a generic trade mark claim to clearly identify the goods and services related to the product: in fact, a mark maintains its validity if the public can describe “who” the mark is, conversely, the mark loses its validity if the public only understands “what” the service is Kellog Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938). Only implying that the fact that “to google” is used as a verb is not enough, the primary significance test must be shifted to inquire whether the public, when using such verb, implies a generic way of referring to search engines or whether it identifies the Google search engine in particular. In this regard, the Court noted that it is not possible to partake to the public's inner thought process and thus discern whether they are using the verb in a “discriminate”, or with a particular source in mind, or an “indiscriminate”, no particular source in mind, manner (the same reasoning was followed in the Coca-Cola Co. v. Overland Inc., 692 F.2d 1250 (9th Cir. 1982), where it was argued that customers in a restaurant when ordering “a COKE” could refer to any type of cola beverage). 

A googol of Kats
This Kat also thinks that an argument could have been made with reference to the word googol, the very word from which the trade mark name Google originated from. A googol, in mathematical lingo, is a 1 followed by 100 zeros. In fact, the intent behind the choice of the trade mark Google as a search engine was to indicate the act of sifting through an immense amount of data, a googol of data with a small typo. Googol is then a word with its own meaning and could very well be used as a verb, to indicate, for example. the multiplication of a number by a very large amount. It is certainly not a common usage word, but nonetheless it exists and it pertains to a completely different domain, thus underlining the importance of identifying the goods and services involved.

The Ninth Circuit found that the use of a trade mark as verb does not constitute genericness automatically and that the claimant did not produce enough evidence to support its argument.

As to the second point of appeal, the Court determined that the evidence put forward by the claimant was insufficient as to “how the public primarily understands the word itself”. The claimant produced four categories of evidence:  (i) consumer surveys (of which only one was considered acceptable); (ii) use by the media and by consumers; (iii) use in dictionaries; and (iv) evidence from Google itself encouraging users to “keep googling”.  All evidence was dismissed.   

The question reported in the opening of the post was considered as only supporting the statement that the verb “to google” might be used indiscriminately, but that does not necessarily imply that it refers to all search engines. On the second point, use by the media and consumers, the claimant cited as evidence the song Bottlez (rEVOLVEr, RCA Record 2001), where the singer T-Pain says "to google [his] name”. The Ninth Circuit held that it was impossible to partake to the singer's inner thought process. It was also impossible to determine if T-Pain was referring to Google or to another search engine. Other examples of use in the media and by consumers cited by the claimant were of  the use of the phrases such as “to google on eBay” and “to google on Facebook”.  These were rejected as they were not disclosed during discovery and, in any event, they were considered largely irrelevant.
The dictionary evidence was not decisive. This was because the sources cited refer to the verb “to google” - the secondary meaning of the trade mark which only indicates the act of searching something through a search engine. As for the last point, the claimant was, again, not able to show what was on the mind of Mr. Larry Page when he wrote the “Google Friends Newsletter”.  

Finally, Elliott argued that there is no efficient alternative to the verb “to google” in order to describe the act of searching on the internet. This claim was rejected as the Court held that for this to be true it would require the search engines to call themselves “a google” but none of them do.  It reinstated that “genericide” does not occur “until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name” TY Inc. v. Softbelly's Inc., 353 F.3d at 531.

This Kat also thinks that the use of the Google mark has a hard time being compared to other marks which have become generic because searching on the internet is an active process.  A user will have to physically type the name of the search engine or have it previously set as a homepage, as opposed to for example asking for an aspirin at the drug counter or looking for shredded wheat cereal at the supermarket.  Furthermore, there is a difference between traditional and vertically integrated search engines: search engines like Google look for information across the web, while eBay, for example, will look into its vertically integrated database. As the Court pointed out in the judgment, the goods and services for which a trade mark is registered are key to a claim of "genericide". If eBay services, here taken as an example, are mixed up with the inherently different services of Google it is clear that that claim is void.

Keep IPKatting!


Image credits: Cecilia Sbrolli

No comments:

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':