GOOGLE and Genericide

It was bound to happen that someone would take a swipe at Google, claiming that the registered trademark should be cancelled because people use the word as a verb in a “generic” and “indiscriminate” way, which constitutes “genericide.”  The Ninth Circuit Court of Appeals rejected the effort. Here is a synopsis of the Ninth Circuit’s reasoning, as posted by Justia:

“U.S. Court of Appeals for the Ninth Circuit Opinions
Elliott v. Google, Inc.
Docket: 15-15809
Opinion Date: May 16, 2017
Judge: Richard C. Tallman
Areas of Law: Intellectual Property, Internet Law, Trademark
A claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. Plaintiffs petitioned for cancellation of the GOOGLE trademark under the Lanham Act, 15 U.S.C. 1064(3), based on the ground that it is generic. The Ninth Circuit affirmed the grant of summary judgment in favor of Google, Inc., holding that plaintiffs failed to recognize that a claim of genericide must always relate to a particular type of good or service, and that plaintiffs erroneously assumed that verb use automatically constitutes generic use; the district court correctly framed its inquiry as whether the primary significance of the word “google” to the relevant public was as a generic name for internet search engines or as a mark identifying the Google search engine in particular; the assumption that a majority of the public uses the verb “google” in a generic and indiscriminate sense, on its own, could not support a jury finding of genericide under the primary significance test; and plaintiffs have failed to present sufficient evidence in this case to support a jury finding that the relevant public primarily understands the word “google” as a generic name for internet search engines and not as a mark identifying the Google search engine in particular.

You can read the entire opinion here: http://cdn.ca9.uscourts.gov/…/opini…/2017/05/16/15-15809.pdf.

Eric Goldman’s analysis can be found here: http://blog.ericgoldman.org/…/google-gets-big-ninth-circuit…

Author’s Guild Case Against Google Dismissed

The case brought by the Author’s Guild and others against Google for copyright infringement relative to the Google Books and Library Project has been dismissed by the Court following the grant of summary judgment for Google.  The case sought damages on behalf of authors arising out of Google’s scanning of more than twenty million books, the delivery of digital copies to participating libraries, the creation of an electronic database of books, and the making of text available for online searching through the use of “snippets.”  Most of the books were protected by U.S. Copyright Law, and Google did not obtain permission from the copyright holders.

The Court (Circuit Judge Chin of the the United States District Court for the Southern District of New York [Manhattan]) granted Google’s Motion for Summary Judgment (and denied the Author’s Guild’s Motion for Partial Summary Judgment).  Assuming that the Author’s Guild had established a prima facie case of copyright infringement against Google under 17 U.S.C. section 106, the Court found that Google’s effort provided significant public benefits and, upon consideration of the four Fair Use factors set forth in 17 U.S.C. section 107, ruled that Google’s actions were Fair Use.

The entire opinion, which contains a very good analysis of the Fair Use defense, can be found through http://www.pacer.gov/, and likely will be posted by others soon.  The case name and number are Authors Guild v. Google, 1:05-cv-08136. More news articles are available on the Internet for your information.

We shall see whether the ruling is affirmed on appeal.