Website Law

When you search the internet using Google, you get two types of results: “organic” results determined by the Google algorithm to be relevant to your query, and paid advertisements.

The paid advertisements appear where an advertiser has bid on keywords relating to the search terms - i.e. has agreed to pay Google in respect of user clicks resulting from the appearance of the advertisement in search engine results pages relating to those keywords.  This is a form of “pay-per-click” advertising.

Where an advertiser uses keywords that are identical or similar to another company’s trade marks, there is an obvious risk of conflict.  The question is: can a trade mark owner use its trade marks to prevent this (arguably unfair) form of competition?

European national courts

There have been a number of cases in Europe dealing with the issue of trade marks being used as keywords without authorisation, but the national courts have not yet arrived at a clear  position.

In the words of Mr Justice Arnold, “given that both European trade mark law, and European law with regard to the liability of internet service providers are substantially harmonised … there ought to be a common set of European answers to the issues that arise in such cases.” (Interflora Inc. Interflora British Unit v Marks and Spencer Plc Flowers Direct Online Limited ([2009] EWHC 1095 (Ch)).  Accordingly, several cases have resulted in references to the ECJ.

In the German Bananabay case (I ZR 125/07), both the claimant and defendant were sellers of adult entertainment products. The claimant was the owner of the registered trade mark BANANABAY, and wanted to stop the defendant from using the mark as an AdWords keyword. The German Federal Supreme Court (the Bundesgerichtshof) decided that it needed to be clarified whether “use as a trade mark” includes the use by a Google (not a party to the proceedings) of the trade mark as an Adwords keyword.  Accordingly, the question was referred to the ECJ.

In the UK, Interflora is attempting to stop Marks and Spencer using “Interflora” as a keyword. M&S argues that its use of the keyword is not “use in trade”, and that there is no confusion between the two flower services.  As part of his decision to refer this case to the ECJ, Justice Arnold noted that Google’s policy (and presumably its legal advice) in the UK and Ireland is different to its policy elsewhere in Europe.

In France, three companies are seeking to prevent Google from selling their trade marks as AdWords (C-236/08 Google France, Google Inc. v Louis Vuitton Malletier,  C237/08 Viaticum Luteciel, and C-238/08 CNRRH Pierre Alexis Thonet, Bruno Raboin, Tiger, a franchisee of Unicis). These cases are different from Bananabay and Interflora, in that the defendant is Google, not the advertiser.  In the reference to the ECJ, the three French cases have been combined.

European Court of Justice: the Advocate General’s Opinion

Where questions are referred to the ECJ, the Advocate General provides an opinion on those questions, which the ECJ will consider before its ruling. The Advocate General’s opinion on the questions referred by the French court is the first to become available.

The three references from the French court before the ECJ all pose, in the Advocate General’s  words, the same question: “does the use by Google, in its AdWords advertising system, of keywords corresponding to trade marks constitute an infringement of those trade marks? Although the references are formulated somewhat differently, they all ask for an interpretation of Article 5(1) of Directive 89/104 and therefore concern that basic question of whether Google has committed a trade mark infringement”.

The Advocate General states that Google should not be held liable for infringement when allowing advertisers to use another party’s trade mark as an AdWord, because no product is actually being sold to the general public at the time when the keyword is selected.  He argues that “the use is limited to a selection procedure which is internal to AdWords and concerns only Google and the advertisers.” Accordingly, the Advocate General suggests that trade mark owners should not be allowed to prevent the use by Google of their trade marks as keywords.

In answering the question whether the use of a trade mark as a key word affects the essential function of the mark, because of a likelihood of confusion on the part of the public, the Advocate General finds that Google is a tool that establishes a link between keywords corresponding to trade marks and natural results, but this link alone is not sufficient to establish confusion, because “internet users only decide on the origin of the goods or services offered on the sites by reading their description and, ultimately, by leaving Google and entering those sites”. He states that “neither the display of ads nor the display of natural results in response to keywords which correspond to trade marks leads to a risk of confusion as to the origin of goods and services”, and that “neither AdWords nor Google’s search engine affects or is in danger of affecting the essential function of the trade mark”.

The Advocate General also does not think that Google’s use of keywords takes an unfair advantage of, or is detrimental to the distinctive character of a trade mark; because, while trade marks enjoy various types of protection, which are “linked to the promotion and innovation of investment”, this protection is never absolute, and must be balanced against other interests, such as freedom of expression and freedom of commerce. He continues by stating that Google’s uses of key words which correspond to trade marks are “independent of the use of the trade mark in the ads displayed and on the sites advertised in AdWords; they are limited to conveying that information to the consumer”.

He concludes by saying that “if trade mark proprietors were to be allowed to prevent those uses on the basis of trade mark protection, they would establish an absolute right of control over the use of their trade marks as keywords. Such an absolute right of control would cover, de facto, whatever could be shown and said in cyberspace with respect to the good or service associated with the trade mark”.

The Advocate General’s opinion is followed in approximately 80% of cases.

Nominet is the organisation responsible for the administration of the .uk top level domain, including the procedure used for the resolution of certain classes of domain name dispute.

There are two basic documents governing Nominet’s Dispute Resolution Service (DRS): the Policy and the Procedure.  The DRS Policy sets out the substantive grounds upon which a complaint may be made; whereas the DRS Procedure governs the procedural aspects of the Nominet DRS.

This note is a brief summarise the DRS Procedure (and unless otherwise stated, all paragraph references below are to the paragraphs of the DRS Procedure).

If you are the complainant

Any person or legal entity is entitled to make a complaint.

You may make a complaint jointly with other persons, as long as one of you is specified as the ‘lead complainant’.  At the time of making the complaint you must also specify which of the complainants is to become the sole registrant of the disputed domain name.

You must submit your complaint electronically, but it may be necessary to send some information as hard copy.  You need to set up an account with Nominet, in order to file a complaint. See the Nominet website for specific details on e-filing (paragraph 24).

Your complaint musn’t exceed 5000 words, and you must specify the registered domain name that is the subject of the dispute, as well as the similar or identical name you want to assert your rights in.  In preparing the complaint, you should close attention to the DRS Policy, which sets out exactly what you will need to prove.

Once Nominet has received the complaint, it will check that it complies with all the formal requirements, and if it does not, you will have 3 days to make any required corrections (paragraph 4).  Nominet will then forward the complaint to the respondent, who will have 15 days to file a response (paragraph 5).  You then have a right to reply to this response, which must be restricted solely to new matters the respondent has raised, and that you have not raised in the original complaint (paragraph 6).

If the respondent does not file a response, you are entitled to apply for a summary decision (paragraph 5).

If you are the respondent

If you have been notified that a complaint has been filed against your registered domain name, you have 15 days to file a response.  You must submit this response to Nominet electronically, but it may be necessary to send some information as hard copy.  See the Nominet website for specific details on e-filing (paragraph 24).

Your response musn’t exceed 5000 and you must specify the grounds that you rely on in your defence (see, in particular, paragraph 4 of the DRS policy).  The specific formal and procedural  requirements concerning the response are set out in paragraph 5 of the Procedure.

You don’t have to file a response, in which case the complainant is entitled to apply for a summary decision.  If the nominated expert in that case grants the complainant’s application, your registration of the domain name will be transferred to the complainant.

The post-filing procedure

Once the complaint, the response, and reply to the response, if any, have been received, Nominet will commence informal mediation between the complainant and the respondent (paragraph 7).  All information discussed during this mediation is treated as confidential.

If no resolution is reached, the complainant has the option of paying a fee and having an expert nominated by Nominet, who will make a decision in this case.  If the complainant does not pay this fee, Nominet will consider the complaint to be withdrawn, unless the respondent chooses the pay for the expert (paragraph 8).

The expert may request further statements from the complainant or the respondent (paragraph 13).  No in-person hearings will be conducted, unless the expert determines it to be necessary (paragraph 14).  The expert will base his decision on the parties’ submissions, but there may be cases where the expert wishes to rely on other relevant information which is not in the case papers, in which case he will inform the complainant and respondent, and invite them to make additional submissions (paragraph 16).

Once the expert has reached a decision, he will communicate it to the complainant and respondent (paragraph 17), and either party has the right to appeal the decision (paragraph 18).  If the complainant and respondent reach an approved settlement during the proceedings, Nominet will terminate the DRS proceedings (paragraph 19).

User-generated content can be a real headache for website operators.   One particular risk associated with such content is defamation; however there is a special defence to libel actions which may assist a website operator who is accused of publishing defamatory content submitted by users.

See my most on “Dealing with defamatory posts on your website or blog” for background.

Section 1(1) of the Defamation Act 1996 provides:

“In defamation proceedings a person has a defence if he shows that— (a) he was not the author, editor or publisher of the statement complained of, (b) he took reasonable care in relation to its publication, and (c) he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement.”

When the owner of a website hosting user-generated content is accused of publishing a libel contained in such content, Section 1 is usually the first point of call.

Authors, editors and publishers

The first point to check is whether the defendant or potential defendant is an author, editor or publisher.  These terms are given a special meaning in Section 1(2):

• “author” means the originator of the statement, but does not include a person who did not intend that his statement be published at all;

• “editor” means a person having editorial or equivalent responsibility for the content of the statement or the decision to publish it; and

• “publisher” means a commercial publisher, that is, a person whose business is issuing material to the public, or a section of the public, who issues material containing the statement in the course of that business.

Notwithstanding these definitions, there are some categories of person who will never be considered an author, editor or publisher.  Of particular interest to website owners are Sections 1(3)(c) and (1)(3)(e) of the Act:

“A person shall not be considered the author, editor or publisher of a statement if he is only involved— … (c) in processing, making copies of, distributing or selling any electronic medium in or on which the statement is recorded, or in operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form; … (e) as the operator of or provider of access to a communications system by means of which the statement is transmitted, or made available, by a person over whom he has no effective control.”

In a case not within paragraphs (a) to (e) the court may have regard to those provisions by way of analogy in deciding whether a person is to be considered the author, editor or publisher of a statement.”

Reasonable care and knowledge/belief

In addition to not being an author, editor or publisher, a person wishing to rely upon the Section 1 defence must show that he or she (or it) took reasonable care in relation to the publication, and did not did not know, and had no reason to believe, that what he or she (or it) did caused or contributed to the publication of a defamatory statement.

In this connection, Section 1(5) provides:

“In determining for the purposes of this section whether a person took reasonable care, or had reason to believe that what he did caused or contributed to the publication of a defamatory statement, regard shall be had to— (a) the extent of his responsibility for the content of the statement or the decision to publish it, (b) the nature or circumstances of the publication, and (c) the previous conduct or character of the author, editor or publisher.”

Analysis

Section 1 leaves web publishers in an dilemma.  They must show they took reasonable care in relation to a publication.  However, in some circumstances reasonable care may require prior review: and prior review may lead to the web publisher being considered to be an “editor” and therefore not entitled to take advantage of the defence.

In circumstances where reasonable care does not require prior review etc of user content (assuming there are such circumstances!) a defendant should have a better chance of being able to rely upon this defence in relation to user-generated content if:

• the defendant does not engage in prior review, or prior editing, of the user generated content;

• the website expressly disclaims responsibility for the content on the part of the defendant;

• the website includes a procedure whereby defamatory material can be notified to the defendant ex post facto for deletion where appropriate;

• as the defendant becomes aware of potentially defamatory content, that content is quickly removed.