Google France, Google Inc. V Louis Vuitton Malletier - 5RB Barristers

Reference: C-236/08

Court: Court of Justice of the European Union (Grand Chamber)

Judge: Skouris, President, Tizzano, Cunha Rodrigues, Lenaerts and Levits, Presidents of Chambers, Timmermans, Rosas, Borg Barthet, Ilei (Rapporteur), Malenovsk, Lhmus, Caoimh and Kasel, Judges

Date of judgment: 23 Mar 2010

Summary: Trade Marks - Infringement - Internet - Search engine - Google 'AdWord' service - Whether operation of service infringed trade marks - Article 14 of Directive 2000/31 - Whether service within hosting exemption

Facts

The three conjoined cases (Cases C-236-08, C-237-08 and C-238-08) concerned claims by the three respondents, Vuitton, Viaticum and Thonet against Google alleging a number of trade mark violations.  In summary, the violations alleged against Google arose as a result of the entry by internet users of their trade mark names into Google’s search engine, which trigerred the display, under the heading ‘sponsored links’, of links to, In respect of Vuitton, sites offering imitation versions of Vuitton’s products, and in respect of Viaticum and Thonet , of links to competitors of their respective trademarks.

In each case the disputes arose from the use, as keywords in an internet referencing service, of signs which correspond to trade marks, without consent having been given by the proprietor of those trademarks.

One distinct question before the ECJ was whether Google could rely upon the hosting exemption for ‘information society services’ in Article 14 of Directive 2000/31.

Issue

Whether (1) Google’s use of trade marks in the AdWords service was itself an infringement;

(2) the Article 14 hosting defence was available

Held

Remitting the case to the domestic court:

(1) Google’s use of trade marks in the AdWords service was not an infringement;

(2) In order to establish whether the liability of a referencing service provider may be limited under Article 14, it was necessary to examine whether the role played by that service provider was neutral, that is, its conduct was merely technical, automatic and passive. The mere fact that the referencing service was subject to payment, as Google’s was, did not deprive Google of the benefit of Article 14. The role played by Google in drafting the commercial message which accompanies the advertising link or in the establishment or selection of keywords was relevant. The essential test contemplated by Article 14 was whether the service provider had played an active role of such a kind as to give it knowledge or, or control over, the data stored. In the present case the national court was best placed to be aware of the actual terms on which the service was supplied.

Comment

Although a decision on trade marks, this decision is of wider significance as it is the first judgment of the European Court of Justice (or as it is now, the ‘Court of Justice of the European Union’) on the terms of the hosting defence in Article 14, which applies to all forms of liability, including copyright and defamation (see eg Bunt v Tilley). Of particular importance is the clear message that the fact that a search engine, such as Google, receives payment for some of the services it offers is irrelevant to the application of Article 14.  The decision does however leave many questions unanswered. While the central tenor of the decision focuses upon the role a search engine or information society service plays in the conduct sought to be impugned, it leaves unanswered the central question: what conduct is required before it can be said that such conduct is something more than merely technical, automatic and passive.

Links

Judgment