If Michael Page could tell you just one thing about cyberspace, it would be that it's not so special. His gift for turning a search engine's algorithms into familiar parts of life in the "real world" have made the Keker & Van Nest partner the go-to guy when Google Inc.'s keyword advertising gets challenged by trademark holders big or small. Last month he reached again to his well of analogies to argue Rescuecom v. Google, a high-stakes case at the U.S. Court of Appeals for the Second Circuit.
"Courts get confused when they start talking about cyberspace," argues Page. "We spent years figuring out the limitations on trademark use in the real world," he says. "Those limitations are there for a good reason. We shouldn't just throw them away because they're on a computer."
To win these cases, Page needs to draw a clear connection between Google's keyword ad business and long-established advertising practices in the physical world. Page's most recent brief for the search leader began with a story about Suzie, a fictitious shopper who goes out planning to buy Calvin Klein jeans, Nike shoes, and Advil. Along the way she encounters a variety of advertising tactics-some familiar, some not, but all perfectly legal-that cause her to change her mind and buy something different in each case. The story ends with the true trademark of a modern shopping spree-a Google search. The purpose of the tale is to counter Rescuecom's argument that the search giant shouldn't be allowed to sell the ads of competing companies when users type in "Rescuecom," since Rescuecom owns the trademark.
Page brings unusual perspective to his work. He spent more than a decade in the music business before becoming a lawyer, starting as a roadie for a college friend's band and eventually becoming a manager for acts such as Hall and Oates, Neil Young, and Patti LaBelle. He enrolled at the University of California, Berkeley's law school, Boalt Hall, at age 35. Since graduating, the Connecticut native has collected a list of high-tech clients that include Google as well as Palm, Inc., Electronic Arts Inc., and Nintendo Co. The former rocker defended the Grokster file-sharing service against a full-scale legal assault from the record companies; he beat them in district court and the U.S. Court of Appeals for the Ninth Circuit but was ultimately defeated at the U.S. Supreme Court. Keker, a one-office litigation firm in San Francisco, has close ties to Google; Keker & Van Nest of counsel and Stanford University law professor Mark Lemley has done work for the search giant, as well, and Lemley's wife, Rose Hagan, is Google's chief trademark counsel.
Rescuecom Corp., a Syracuse, New York-based franchiser of computer-repair service operations, sued Google in 2004. Google only started selling trademarked keywords in April of that year ("months before its initial public offering," notes Rescuecom's lawyer), when the company decided that not doing so was overprotecting trademark holders at the expense of consumers, who benefit from seeing competitors' ads.
Rescuecom is hardly the first trademark owner to sue a search engine. But Google's favored defenseĀ-arguing that selling keyword ads isn't a "use in commerce" of a trademark at all-hasn't been squarely addressed by courts. Page is also defending Google against a suit brought by American Airlines, Inc., which was filed in August and is still in its early stages. Trademark lawyers were looking to an earlier suit brought by American Blinds & Wallpaper Factory Inc. against Google to resolve the issue, but American Blinds folded just before trial in a San Jose district court. The judge in that case had rejected Google's effort to throw the case out on summary judgment with a one-sentence order.
The Rescuecom case, by contrast, wrapped up in the Northern District of New York exactly as Google hopes future trademark lawsuits against it will end. That's why the pressure is on Page to win at the Second Circuit. If e-commerce companies can keep winning defense victories on that precedent, they won't have to get into arguments about consumer confusion and its source-issues that are often litigated through the use of time-consuming and expensive surveys. A loss, Internet companies say, could be devastating for their business. Yahoo! Inc., eBay Inc., and AOL, LLC, have all weighed in with amicus briefs supporting Google, as have public-interest groups like Public Citizen and the Electronic Frontier Foundation.
Rescuecom's lawyer, Syracuse-based Edmund Gegan, ridiculed their arguments in his brief, noting that many Internet companies, including Yahoo, don't sell display ads triggered by a competitor's trademark and "have done remarkably well and have not suffered financially." At the Second Circuit, Gegan argued that "use in commerce" shouldn't be considered as a separate issue that makes or breaks the case: It's directly tied to consumer confusion.
The three-judge panel gave both sides a hard time. One discouraging sign for Google: The judges appeared worried about the difference between the "sponsored link" ads Google puts in the margin and the sponsored search results that appear at the top of the page. Page pointed out that the sponsored search results are clearly marked as "sponsored." But that certainly wasn't the debate he wanted to be in.
