Congratulations are in order for the Google Legal Team! Yesterday Corporate Counsel announced that Google Inc. was selected as the winner of the 2011 Best Legal Department competition. United Parcel Service, Inc., and WellPoint, Inc., were also given honorable mention recognition. The detailed profiles of all three will be published in the magazine’s June issue and also available online.
This story caught my eye because Anthony Paonita, Editor in Chief of Corporate Counsel, cited the selection of Google as the winner due to the fact that the company “has had to deal with the sometimes messy consequences of its frequent marketplace disruptions.” Paonita went on to explain that the Google “win stems from these cases that “test the limits of laws perpetually lagging behind new technology. Can advertisers use trademarked terms in Google ads? Can Google scan and make available copyrighted but out-of-print books? Is the company liable if results of its search engine direct users to counterfeit or pirated products?” But wasn’t the resolution of the trademark terms a loss for Google at least indirectly? Isn’t the so-called Google Book Settlement on hold having been rejected by the district court? And didn’t Google just set aside $500 million to cover the cost of fines relating to an antitrust investigation initiated by the Department of Justice? See Google puts $500 million in antitrust pot.
I don’t doubt that the Google Legal Team is an excellent department, and undoubtedly praiseworthy. It is also correct to say that they are dealing on nearly a daily basis with cutting edge issues that relate to the use of intellectual property in a still young medium — the Internet. It is also true to observe that they have had to deal with antitrust matters, as well as patent, copyright and trademark matters, not to mention the undoubtedly countless private matters that we haven’t yet learned about and many we won’t ever learn about. Nevertheless, I wonder whether there is a premature victory lap or recognition that is just slightly ahead of accomplishment. Certainly if Google scores a final victory in the Rosetta Stone appeal on trademarks (more below) and can resurrect the book settlement (more below) that would go a long way to justifying this award, I just wonder whether it might be a year ahead of schedule and a bit akin to President Obama winning the Nobel Peace Prize after only a few months in Office. See The Nobel Peace Prize for 2009.
Just earlier this year, in Binder v. Disability Group, Inc. (C.D. Cal., Jan. 25, 2011), the district court determined that it was trademark infringement to use the trademark of a competitor in your Google Adwords campaign. See Advertisers Beware. Not exactly good news for Google, I would think, given how valuable the use of a competitor’s trademark might be to an advertiser, thereby being indirectly lucrative for Google. Not terrible, but not the type of stuff from which victory laps are made.
Of course, it is true that Google defeated Rosetta Stone in the Eastern District of Virginia in 2010, but Rosetta Stone has filed an appeal with the United States Court of Appeals for the Fourth Circuit. Rosetta Stone is asserting that some advertisers created Sponsored Links that deceived and misdirected Google’s users to websites that sold counterfeit Rosetta Stone products. See Rosetta Stone v. Google: Lost in Translation.
The case between Rosetta Stone and Google was expected to have oral arguments during the May 2011 session, but on March 30, 2011, the Fourth Circuit notified the parties, and the voluminous amici, that the case was moved from the “tentative calendar” to the “awaiting calendar,” which means the oral argument will not take place before September 2011. See Tentatively Calendared Case Continued. As yet the Fourth Circuit has not published a list of cases that will be argued in September 2011. Thus, it seems a little premature for a Google victory lap regarding trademarks while the Rosetta Stone appeal is pending, although the win at the district court level was important. This case has enormous downside for Google should they lose though, and an award pre-decision from the Fourth Circuit could seem like a possible jinx to those who are superstitious.
On top of the still open Rosetta Stone case at the Fourth Circuit, Google has had mixed results on trademark cases in Europe. Google recently lost an appeal in France, see Google Loss Upheld by French Court, while during 2010 Google did score what has been called a major victory at the Court of Justice of the European Union. See Big win for Google at Europe’s top court.
If volume of important cases on the trademark front over the last calendar year the a criteria then Google should definitely be near the top of the recognition chart. I can’t help but think that if I were on the Google Legal Team I would be at least a little squeamish about possible premature adulation on the 2011 trademark front.
Perhaps more perplexing is the fact that the much discussed book settlement went from limbo to be denied, which is hardly something victories are made of, although a lot of work has undoubtedly gone into that case for many years. For those not intimately knowledgeable about the book settlement and case, the genesis of the dispute dates all the way back to 2004. Google entered into agreements with some academic institutions to digitize their library books and Google started digitizing. The goal was to preserve the content of older works in various states of disrepair, as well as to make that content available electronically. But many of those books were still protected by copyright and Google didn’t ask the copyright owners for permission to copy the books, which lead to a group of authors and publishers bringing a class action copyright infringement suit against Google in 2005.
The Google book lawsuit suit ultimately lead to a settlement agreement between Google and the authors and publishers. Problematic from the Google perspective, however, was the fact that there were many objections from virtually all corners, including the United States Department of Justice. That proposed settlement received hundreds of formal objections, including one huge vote of no-confidence from the Department of Justice. See DOJ Says Google Book Settlement Not Appropriate. Ultimately Judge Chin of the U.S. District Court, Southern District of New York rejected the settlement finding that it was not “fair, adequate, and reasonable”. See The Google Book Settlement and Orphan Works.
Whether you agree with the selection of Google for the winner of the 2011 Best Legal Department award or not, Google was nominated by its peers, which says something in and of itself. Nominations were accepted in the form of responses to a detailed questionnaire developed by Corporate Counsel and distributed to the general counsel of all Fortune 500 corporations. The magazine’s editors and reporters evaluated submissions and ultimately selected the winners. So let the debate begin!