Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

December 2012 Issue

Civil Cases

CYBERsitter LLC v. Google, Inc.,
2012 WL 5873650 (C.D. Cal. Oct. 24, 2012)


Plaintiff CYBERsitter LLC (“CYBERsitter”) develops Internet content-filter programs.  Google, Inc. (“Google”) sells keyword-triggered advertising through its AdWords program.  From 2000 to 2010, CYBERsitter used the AdWords program and agreed to Google’s user agreement, which stated that litigants must bring “all claims arising out of or relating to this agreement or the Google program(s) [i.e., any of Google’s advertising programs]” in the federal or state courts of Santa Clara County, California.  ContentWatch, a CYBERsitter competitor, purchased CYBERSITTER as a keyword from Google and used the CYBERSITTER mark in the text of its advertisements triggered by searches for CYBERSITTER.  CYBERsitter sued Google and ContentWatch, alleging that Google infringed its trademarks by (1) selling the right to use the CYBERSITTER mark to ContentWatch, who “in turn illegally use[d] the trademark in its online advertisements”; and by (2) allowing and encouraging ContentWatch’s use of CYBERSITTER in its online advertisements through the AdWords program.

Google moved to transfer the case to the Northern District of California, arguing that jurisdiction was controlled by CYBERsitter’s AdWords user agreement with Google.  The court denied Google’s motion, holding “[i]t is clear from a plain reading of the forum-selection clause in light of the [the Google AdWords user agreement]” that the clause did not apply to CYBERsitter’s infringement claims.  Specifically, the court held that the AdWords agreement “solely addresse[d] Plaintiff’s participation as a customer in Google’s advertising program(s)[,] not Plaintiff’s rights or duties in regard to a third party’s unlawful infringement of its trademark.”  Google argued that the phrase “Google Program” included CYBERsitter’s infringement claims against Google and that if the court were to deny the motion, it would be ignoring the term “Google Program(s)” and “reading inconsistent or contradictory meaning” into the plain language of the clause.  The court disagreed, finding no “objectionable surplusage” in holding that the agreement did not apply here.  The court also rejected Google’s argument that CYBERsitter’s infringement claims “relate[d] directly” to the AdWords agreement because of Google’s Editorial Guidelines and trademark policies that appeared on separate web pages.  It found that CYBERsitter’s infringement claims were unrelated to Google’s general monitoring policies.

This case conflicts with the results in several 2010 decisions in AdWords cases from other district courts.  In Flowbee International, Inc. v. Google, Inc., No. 4:2010-cv-00668 (N.D. Cal. Feb. 18, 2010), Flowbee sued Google for allowing a competitor to purchase its trademark in Google’s AdWord program.  Google successfully moved to transfer the case from the Southern District of Texas to California based on the Adwords agreement’s forum-selection clause.  The Texas court held that “the language of the forum selection clause covers not only claims related to the agreement, but also claims related to the Google Programs.”  Similarly, in Parts Geek, LLC v. U.S. Auto Parts Network, Inc., 2010 WL 1381005 (D.N.J. Apr. 1, 2010), the District Court of New Jersey came to the same conclusion and granted Google’s motion to transfer the case to California pursuant to Google’s Adwords agreement.  The CYBERsitter court did not mention either decision in its opinion.

This case is of interest because many trademark owners are likely AdWords customers, and this decision provides support for keeping infringement actions against Google in the forums chosen by trademark owners.