February 2011 Issue

Civil Cases

Jurin v. Google,
2011 WL 572300 (E.D. Cal. Feb. 15, 2011)

ABSTRACT
Google suggested and sold plaintiff’s trademark as a search-engine keyword to plaintiff’s competitors.  Plaintiff sued for false designation of origin under the Lanham Act and breach of contract.  The court granted Google’s motion to dismiss plaintiff’s breach-of-contract claim, holding that Google’s AdWords policy did not create a contract and that Google did not breach the implied covenant of good faith and fair dealing because Google followed its AdWords policy.  However, the court denied Google’s motion to dismiss plaintiff’s false-designation-of-origin claim, rejecting Google’s argument that such claims apply only to those who directly compete with plaintiff.

CASE SUMMARY

FACTS
Plaintiff Daniel Jurin marketed and sold a building-material product under the trademark STYROTRIM.  As part of its AdWords program, defendant Google suggested STYROTRIM as a keyword to Jurin’s competitors, who then purchased STYROTRIM as a keyword.  As a result, Jurin’s competitors’ ads appeared as sponsored links on Google search-results pages when users searched for STYROTRIM.  Jurin sued Google for various claims, including false designation of origin and false advertising under the Lanham Act and breach of contract.  The court had earlier granted Google’s motion to dismiss these claims due to Jurin’s failure to properly plead his claims.  In dismissing Jurin’s false-designation-of-origin claim, the court held that Jurin failed to allege that Google’s use of the term STYROTRIM in its AdWords program, or the display of sponsored links incorporating the term STYROTRIM, created a misleading suggestion as to the producer of the goods.  The court, however, allowed Jurin to amend his complaint.

ANALYSIS
In the present decision, the court granted Google’s motion to dismiss Jurin’s amended breach-of-contract claim, but denied its motion to dismiss Jurin’s amended false-designation-of-origin claim. 

The court first examined Jurin’s false-designation-of-origin claim, which was based on false-association and false-advertising grounds.  Section 43(a)(1)(A) of the Lanham Act prohibits the use in commerce of any mark “which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”  Like before, Jurin’s second amended complaint alleged that Google’s AdWords program and its keyword-suggestion tool caused a false-association between Jurin’s STYROTRIM products and his competitors’ products by displaying links to the competitors’ websites when Internet users searched for STYROTRIM.  Google argued that the false association ground could not stand because Google did not produce building materials, so its goods could not be confused with Jurin’s.  Specifically, Google contended that Section 43(a)(1)(A) should be construed narrowly to require that the defendant produce the goods that the plaintiff has alleged caused confusion with its own goods.  The court rejected Google’s argument, stating that the statute uses “indefinite” language such as “any person” or “another person” rather than narrow terms like “competitors.”  Although the court previously dismissed Jurin’s false-designation-of-origin claim based on an identical argument by Google, it stated that its present analysis “is the correct one” and overruled its prior holding. 

Turning to Jurin’s breach-of-contract claim, Jurin did not rely on any written agreement with Google, beyond Google’s AdWords policy on its website.  As an initial matter, the court held that Google’s AdWords policy regarding keywords did not constitute a contract between the parties.  Moreover, even if this policy was a contract, Jurin’s argument that Google was required by the terms and conditions of its AdWords policy to investigate Jurin’s complaint of trademark infringement and to remove the STYROTRIM mark from its keyword database was misplaced.  Jurin admitted in his second amended complaint that Google did not violate its policy by stating: “Google does not prohibit itself from misusing the trademark of the owner in the keyword suggestion tool. . . . Further, the stated policy of investigating ad words and keywords is not applicable in the United States.”  Google’s AdWords policy makes clear that it will not disable keywords in response to trademark complaints in several regions, including the United States.  Google thus did not violate any express provisions of its AdWords policy or of any contract that may have existed. 

Jurin also argued that Google breached the implied covenant of good faith and fair dealing by “taking a strong stance against trademark infringement, yet encouraging misuse of trademarks in the keyword suggestion tool.”  The court noted, however, that Google followed the terms of its AdWords policy by investigating only instances where a trademark-related keyword appears in sponsored ads.  Because Google followed the express terms of its policy, its “good faith [was] satisfied.”  Moreover, because the implied covenant of good faith and fair dealing “cannot override express provisions,” Jurin could not force Google to do what its policy clearly states it will not do.  Accordingly, the court granted Google’s motion to dismiss Jurin’s breach-of-contract claim.

CONCLUSION
This decision is interesting because it is one of the few keyword decisions that focus on a plaintiff’s false-designation-of-origin claim instead of a trademark-infringement claim.  This case is also unique for plaintiff’s assertion of a breach-of-contract claim based on Google’s alleged failure to follow its own AdWords keyword policy or an implied covenant of good faith and fair dealing.