Class Action Status is the Holy Grail of Google Trademark Lawsuits

Thursday, May 14th, 2009 by Andy Beal

Class Action Status is the Holy Grail of Google Trademark Lawsuits

I’ve honestly lost track of the number of trademark lawsuits brought against Google, but how about we add one more to the pile?

Firepond is stepping up to the plate, but what’s interesting about its approach is not its claim that AdWords allows competitors to bid on its trademarks–although that is in there–but that the company is seeking class-action status.

In papers filed this week in federal court in the eastern district of Texas, software development company Firepond seeks class-action status on behalf of all Texas trademark holders whose names have been used to trigger search ads…this appears to mark the first time [Google] has faced a potential class-action suit about the issue.

Firepond faces two challenges here. First, the odds are against them that they’ll even with the trademark case–previous courts have sided with Google. Second, it’s going to be nye on impossible to get a judge to approve class action status. I’ve looked at this for other issues–defamation/copyright–and there’s just no clear way forward. The biggest hurdle is that a class action lawsuit needs multiple plaintiffs with substantially the same claim. In the case of trademarks, each plaintiff will likely have their own issues–in other words, not every plaintiff will have their trademark violated by AdWords in the exact same way.

I’m not a lawyer, but it appears those that have passed the bar exam, tend to agree:

Eric Goldman, director of the High Tech Law Institute at Santa Clara, says it’s unlikely that the court will allow the class-action. "Every trademark is different, the identity of each competitive (or other) advertiser is different, every AdWords ad copy is different, the informational needs of every trademark owner’s customers are different"

Of course, that doesn’t mean you shouldn’t try. Hitting a home run is hard, but that doesn’t mean you shouldn’t take a swing, right? And, the first company that successfully achieves class action status will get the attention of marketers everywhere–and Google!. Go on to win such a case, and Google loses a healthy chunk of its revenue.

This will be one to watch.

PS. I just checked Google and didn’t see any AdWords ads for "Firepond" do you?

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8 comments on “Class Action Status is the Holy Grail of Google Trademark Lawsuits”

Dean Says:

May 14th, 2009 at 10:02 am

Welcome to the new “Get Rick Quick” scheme in America.

“Go on to win such a case, and Google loses a healthy chunk of its revenue.” Yes, but it loses a chunk of its revenue to lawyers who contribute nothing to the industry. I give you Exhibit A: http://tinyurl.com/c8tqac Google Settles lawsuit for $20M. Lead plaintiffs get 20K, lawyers get $5M. WTF???

When will we see reform that will oblige the losers of these cases to pay the expenses of the winners. Do that and the “roll the dice” mentality will end.
Ryan Says:

May 14th, 2009 at 10:04 am

Google took down the Sponsored Links for a ‘Firepond’ search after the suit was filed. The suit includes screen-shots of Firepond’s competitors Sponsored Links.
Scott Adie Says:

May 14th, 2009 at 5:00 pm

I agree with Dean. It seems that everyone who can’t compete on their own merits finds some way to engage the winners in a lawsuit. At the very least it buys them some publicity and at best, it ruins American businesses interest in generating legitimate competition to succeed.

And I further agree that the losers of these unsubstantiated lawsuits ought to by law, be required to pay the defendants legal fees and compensatory damages. Fair is fair right. If that happened more often, some of these punk companies would be off in the corner somewhere sucking their thumbs instead leeching on the successful among us.
Google AdWords Opens Up a Can of Trademark Worms | News Portal | Lastest News Articles Says:

May 15th, 2009 at 11:10 am

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Trademark Owners Up In Arms With Google’s New Policy | News Portal | Lastest News Articles Says:

May 15th, 2009 at 11:16 am

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Google target ads based on addresses « KarmaWeb Says:

May 19th, 2009 at 8:16 pm

[...] you an ad of a competing service (I guess one that paid Google)…Isn’t this the crux of trademark case against google? Can an address be a trademark? I would be annoyed if I owned any of these [...]
Trademark Owners Up In Arms With Google’s New Policy | Move with Mind Says:

May 24th, 2009 at 12:48 am

[...] to this already happening and raising the ire of some including a company called Firepond who is at the center of the suit. On Monday, FPX filed a class-action suit against Google in federal court in Texas, saying that [...]
Trademark Owners Up In Arms With Google’s New Policy | Business Marketing Experts Says:

May 31st, 2009 at 8:23 am

[...] Well, many advertisers, despite the real threat of higher per click costs due to increased competition (oh, Google’s post didn’t go there of course ) are happy to hear this and they should be. They can now broaden their approach to selling through AdWords. It’s the trademark holders themselves that are up in arms. The New York Times tells of a class action suit being filed in Texas due to this already happening and raising the ire of some including a company called Firepond who is at the center of the suit. [...]

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