Google won a significant partial victory in the U.S. District Court for the Eastern District of Virginia yesterday when, in response to Google's motion for a directed verdict, Judge Leonie M. Brinkema ruled that Geico had not presented sufficient evidence that Google’s sale of Geico’s trademarks as keywords, triggering ads for competitors and others on the Google search results page, constituted trademark infringement. The ruling is limited to situations where the ads themselves do not include the trademarks, rather, the marks only serve as mechanisms to trigger the ads. The judge also handed Geico a victory (not widely reported in the press), stating that where the competitors ads do display the GEICO trademarks in a manner which is likely to cause confusion, that constitutes trademark infringement, at least by the advertiser. Judge Brinkema adjourned the trial, stating that she would issue an opinion and then resume the trial on Geico’s outstanding claim that when the ads do display the trademarks, Google should be held liable for contributory trademark infringement, unfair competition and trademark dilution. If such liability is found, the court would then have to determine what remedies, if any, Geico should be awarded. Google claims that, in such cases, it merely acts as a publisher and should not be responsible. The judge urged the parties to use the recess to try to settle the case.

Although it is presently unclear how far Judge Brinkema’s opinion will go, it will likely rely on the evidence (or lack thereof) that was presented in this particular case on the question of whether the keying practice constitutes trademark “use” and whether there is a likelihood of confusion stemming from the practice. It is possible that the judge may go a step further, and hold that keying involving trademarks is not per se trademark infringement. However, Geico had not requested a ruling on the practice per se.

This decision is not binding on other trial courts that are considering similar claims by other trademark owners against Google. Nevertheless, other courts may take this ruling into account (and Google will certainly urge them to do so). An appeal is also possible if the case is not settled.

Arent Fox Member Sheldon H. Klein has been closely following this case, and has been quoted in The New York Times, The Los Angeles Times and USA Today.