Mass Law Blog

GEICO v. Google Over Adlinks

by Lee Gesmer on August 19, 2005

Trademarks. Google sells other companies’ trademarks as “keywords” on its Internet search engine. Whenever someone types in one of these keywords, such as GEICO, not only will Google’s search results show links to GEICO’s web site, but Google also will show advertising for other insurance companies under a banner called “Sponsored Links.” For example, when writing this blog, we searched “GEICO” on Google’s site and were shown paid links to two of GEICO’s competitors, USInsuranceonline.com and InsureMe.com.

Understandably, GEICO protested this practice of using its trademarks to direct consumers to its competitors. Given that 80% of Google’s revenues derive from this “AdWord” program (in turn causing Google to become a Wall Street darling, up three-fold in a year), Google refused to cease and desist, at which point GEICO sued for trademark infringement and unfair competition.

After a bench trial (translation: no jury) in federal court in the Eastern District of Virginia in December 2004, the Judge ruled “from the bench” (translation: she delivered her decision orally in court) that GEICO had failed to establish that the use of its trademarks only to direct Google searchers to competitors created consumer confusion (the talisman of a trademark violation).… Read the full article

Electronic Discovery – The New New Thing

by Lee Gesmer on July 21, 2005

Procedure. There are fads in the law, just like everywhere else. Apologies to Michael Lewis, but there can be no doubt that, in the odd and insular world inhabited by litigators, electronic discovery is the new, new thing, and almost everyone is scrambling to catch up. It is what Y2K was from 1997 to January 1, 2000, but unlike Y2K, it’s not going away anytime soon.

It easy to tell what’s hot in litigation: just watch publications like the National Law Journal and the American Lawyer and look for frequent articles on the “hot topics.” Google “electronic discovery” and you get 354,000 hits.

I’ll be writing more about electronic evidence and discovery, but for now it’s worth noting that if you want to learn about this subject one resource stands tall: Kroll Ontrack.

Kroll makes an effort to track and digest every case involving electronic discovery and computer forensics (look here to see this lengthy document, which can be sorted by topic or jurisdiction).… Read the full article

Copyright Law and Parts Numbering Systems (yawn…)

by Lee Gesmer on July 21, 2005

Copyright. Sexy: Internet file sharing systems, Grokster, sampling, The Wind Done Gone, fair use, the legal standard for non literal infringement of computer source code.

Not sexy: copyright protection for parts numbering systems.

Yet, believe it or not, from time to time clients do ask whether parts numbering systems are protected.

Lewis Clayton at Paul Weiss has written an article (published in the July 8, 2005 issue of the National Law Journal), discussing several recent cases dealing with parts-numbering systems and the “merger doctrine” under U.S. copyright law.

Read the article here

… Read the full article

The Wayback Machine and the DMCA

by Lee Gesmer on July 14, 2005

Copyright, Digital Millennium Copyright Act. Quick now, what’s a good legal strategy when you’re involved in a bitterly contested trade secret, copyright and trademark case? Sue the lawyers on the other side, accusing them of hacking, of course. At worst, you’ll distract them and knock them off their game; at best, you’ll force their disqualification, pushing them out of the case and making your opponent go to the expense and inconvenience (not to be underestimated) of hiring new counsel and and getting them up to speed on the case.

And, it doesn’t matter that your suit may be borderline or even frivolous. Every experienced lawyer knows that in the American legal system the risks of being sanctioned for bringing a frivolous suit are only slightly higher than finding a hundred dollar bill on a Times Square sidewalk during lunch hour.

So, what happened here? First, there is an underlying trademark and trade secret suit between the similarly named “Healthcare Advocates” and “Health Advocate” that is of no particular interest to anyone except the parties.… Read the full article