CNG Financial Corporation v. Google Inc

Filing 25

RESPONSE to Motion re 24 MOTION for Judgment on the Pleadings on Defendant's Counterclaim filed by Plaintiff CNG Financial Corporation, Counter Defendant CNG Financial Corporation. (Hunter, Barry)

Case 1:06-cv-00040-SSB-TSB

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Filed 07/17/2006

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO WESTERN DIVISION
CNG FINANCIAL CORPORATION
Plaintiff/CounterclaimDefendant
vs.
Case NO. 1 :06-cv-040

Chief Judge Sandra S. Beckwith Magistrate Timothy S. Black

GOOGLE INC.
Defendant/Counterclaim- :

CNG FINANCIAL CORPORATION' RESPONSE TO THE MOTION FOR JUDGMENT ON THE PLEADINGS ON THE COUNTERCLAIM OF GOOGLE INC.
s Rule 12(C) Motion for

Plaintiff.

For its

, Inc. (" Google

Judgment on its Counterclaim, CNG Financial Corporation ("CNG") states as follows:

INTRODUCTION
CNG has spent years and millions of dollars developing its Check N' Go trademarks so
that consumers associate the name with the services of a reputable, established lender and seek it
out when looking for a source of payday loans. However, an internet consumer using the Google
search engine to locate Check ' n Go by entry of the Check N' Go trademark will be

not only with a link to the Check

, but also with links to the sites of
These Sponsored Links appear on

unaffiliated companies, designated as " Sponsored Links. "

screen directly under and to the side of the Check N' Go search term because Google has sold to
various of Check ' n Go s competitors the ability to use the CNG trademark as a keyword which

triggers the
confusing because the competitors '

s link. This

names lack the

mark and resemble generic descriptions that could apply to
Thus, a consumer cannot tell from the screen which link will take it to the real Check N' Go site.

Dockets.Justia.co

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This program generates great profits for Google, but misleads consumers by creating a
false impression that Check ' n Go sponsors the links which

asks Google for a link to the authentic source of Check ' N Go s services and instead receives a

result that leads the consumer to a competitor, without any warning from Google that it has also

served up the unaffiliated links. Google says that this practice is helpful and tries to paint it as a
legitimate form of comparative advertising which the courts have embraced.

Legally, however,

Google resembles the

, when

patron for a " Coke " serves a Pepsi-cola instead, without ever informing the diner of the

substitution. Implicitly, the waiter represents that he has delivered the product that the trademark
identifies , a genuine "Coke.
Courts view this as infringement
, 1 and

the same result on analogous behavior involving internet keywords and in more traditional non-

internet settings. Thus, despite its protests to the contrary, Google, and not CNG, now asks this
Court to reject established precedent and create a new and potentially disturbing rule oflaw.

STATEMENT OF FACTS
CNG' s Check ' N Go

s second largest payday lending

business , and CNG invests millions of dollars each year in promoting its registered Check ' N Go
trademark through national advertising and on the Check ' N Go website. (Complaint, ~16. J The
website both promotes the companies '

services and enables
(Id

Check ' N Go Online directly over the internet.

at ~18. J Consumers can

Go website by typing in its address www. checkngo. com . or by using an internet search engine.

See The Coca-Cola Company

v.

Overland, Inc. 692 F. 2d

1250 (9

th Cir. 1982);

The Coca-Cola

Co.

Supp. 287 (E. D. Ark. 1970). To the extent that

v. Dorris 311 , rather than a

particular beverage, the issue remains the same - in this case, Google indication that the options it presents are not all "Coke" products.

s"

menu" does not include any intelligible

2 In accordance with the standard applicable to this motion , CNG' s allegations and its denials of the allegations of
the counterclaim are taken as true and the allegations of the pleadings are read in its favor.

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According to Google, its search engine is the most widely used in the world, answering
hundreds of millions of user queries every day. (Counterclaim, ~7. J

of services to interested businesses, including the keyword-triggered advertising program entitled
Adwords. " Adwords

(known as a Sponsored Link) to the purchaser s web site. (Complaint, ~23; Counterclaim,

~8.

The Sponsored Link
designed to entice users to click on that link. Google profits every time an user clicks on the one
of these Sponsored Links. (Complaint, ~25; Counterclaim, ~9.

Google posts these so-called Sponsored Links on the top and the side of the results page
triggered by the search query.

s entered

search term (which appears in a bar at the top of the page) and the results listed directly below
and to the side,

in addition to the logical linkage made by the user who knows that his entry of
, ~28; Counterclaim,
~9. J

the particular term produced that batch of

The

Google search engine results pages are also often designed so that the display of the " Sponsored

Link" designation,
Moreover, it is not

as opposed to the ad

sponsors" these links - -

many users to believe that those links are " sponsored" by the company whose name they entered

into the Google search engine window. (Complaint, ~24.

Google has sold various key words comprised, in whole or in part, of CNG' s Check '
Go trademark to Check ' n Go
s competitors. (Complaint, ~27. J Consequently, Google causes

the purchase of the Check ' N Go trademark to trigger the
these competitors ' websites on the Google search

, immediately below and to the

side of Check N' Go , whenever a consumer types the trademark into the Google search window.
3 Although Google refers to this as the margin, advertisers obviously would not pay for inconspicuous ad placement.

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CNG alleges that this

n Go and the
n Go has itself

services of its

sponsored the links, while denying that the practice qualifies as fair use of CNG'
legitimate comparative advertising. (Complaint, ~~36, 37; Reply, ~17. J Thus , Google sells, and

its advertisers purchase, the possibility that they will intercept

, due to CNG'

extensive and pervasive advertising, are trying to find one of the nation s largest and best known
and trusted payday lending operations.

Confused consumers may
competitors' websites. They may not
case , where many of the companies
, especially in this

s trademarks as Adwords keywords have

not invested in name recognition to the extent that CNG has and go by fairly generic
identifiers, such as a link labeled "Loans" to a site called ..www.MyCashNow. com .. which could
be mistaken for descriptors of Check ' n Go s services. The consumer, once distracted, may not
return to Check ' n Go s website. Even if he appreciates the diversion, he will have to spend time

and energy trying to backtrack or otherwise find Check ' n Go s sites. (Complaint, ~30.
When Google refused to stop this practice, CNG

infringes CNG' s

trademark, that

CNG' s competitors to infringe CNG' s trademark in connection with the Adwords program, that

Google s Adwords program creates a false or misleading impression of the affiliation of CNG

with the competing sites offering payday loans, that Google has been unjustly enriched through
its sale of CNG' s trademark, and that Google has misappropriated the goodwill associated with
this trademark.

Google filed a

infringing use of the CNG trademark, an allegation which CNG

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wholly inappropriately, that the Court resolve these disputed factual inquiries on the pleadings
by ruling as a matter of law that no "trademark" use of CNG' s trademark has occurred.

ARGUMENT

The Comolaint states a cause of action under the Lanham Act
The federal trademark statute prohibits the "use in commerce" of a registered trademark
or factual description "in connection with the sale, offering for sale, distribution, or advertising

of any goods or services on or in connection with which such use is likely to cause confusion.
15 U.S. C. 991114 and 1125.
4 Thus

, the argument that the Court must find a "trademark"

use

begs the question: does Adwords employ CNG' s trademarks in connection with the advertising

of services in a manner likely to cause confusion?

, then the assertion that Google s use

of the trademark also serves another "non-source identifying" function has no significance.

Google does not really

use" CNG' s trademark; its

Adwords program undisputedly produces a result whereby the CNG trademark is literally "used

or displayed in the sale or advertising of services and the services are
See

15 U.S. C.

91127.

5 Instead

, Google argues that there is no "trademark

use

" a concept which

the Sixth Circuit defines as the use of a

in a way that

4 Liability also attaches to one who induces infringement by another or continues to supply its product to one whom
Inwood Laboratories, Inc. v. Ives Laboratories, Inc. 456 U.S. 844 953- 54 (1982). Thus, even were the Court to believe that Google does not use CNG' s trademark, Google may still be liable for the use of the trademark by its advertisers or on one of the other theories asserted by CNG.
it knows or has reason to know is infringing.

5 Traditional trademark analysis of use in commerce has centered on the jurisdictional function played the phrase

noted its extremely and broad scope, and simply adopted the common sense approach that the liable party must See, e. g., OBH, Inc. v. Spotlight actually employ the trademark in connection with some Magazine , Inc. 86 F. Supp. 2d 176 , 185 (W. Y. 2000). For instance, the Holiday Inn case, sometimes cited as
establishing trademark use as a prerequisite for infringement, actually turned on a lack of use in the most elementary Holiday Inns, Inc. v. 800 Reservation, Inc. 86 F. 3d 619 , 623-25 (6th Cir. 1996). There , the sense of the word. central defendant obtained a vanity telephone number which corresponded to a frequent misdialing of the numeric equivalent to Holiday Inn s 1-800-HOLIDAY number, but never promoted it by
equivalent or the Holiday Inn trademark or took any other steps which created confusion between the two. Id.

contrast, Google has designed Adwords so that the correct input of the exact trademark will potentially consumers to competing sites and, at the least, will create a mental and visual association between the trademark and the ads for the services offered on those sites.

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product."

See Interactive Products Corp.

v.

A2ZMobile Office Solutions 326 F. 3d 687, 695 (6th

Cir. 2003). Google

the affiliation of

n Go with

however, CNG asserts that it does - an
Ziegler v.

IBP Hog Market,

Inc.

249 F. 3d 509 , 512 (6

th Cir. 2001). Thus , whether the use

identifies the source of payday loans for consumers presents a clear question of fact.

Accordingly, under Google s source identifying theory, Google can prevail only if it has
demonstrated that CNG can undoubtedly prove no

set of facts which would support the argument
at 512

that the users associate the

(emphasis added). As alleged by CNG, however, advertisers buy trademark keywords precisely

because consumers mistakenly believe that the
triggered by their search of the trademark are affiliated with that trademark. One need not even

read the allegations in the light most favorable to CNG to
given that nothing in the text of the competitor

, especially
including their generic

s advertising or links,

sounding names, clearly indicates that they

Plainly the

determination as to whether the Check ' N Go

source of the sponsored
manufacture for this case, but rather on a factual inquiry,
court to have examined similar practices.

6 In one case , the court noted that a study reflected that 62 percent of consumers do not understand the difference
between sponsored links and natural search results. Edina Realty, Inc. v.

THEMLSonline. com 2006 WL 737064

(D. Minn. ).

In addition,

CNG will present survey
N Go

consumers confronted with the search results page

mistakenly believed that they would reach the Check ' N Go website by clicking on Sponsored Links.

)("

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Courts have consistently concluded that the type of practice at issue here constitutes a trademark use.
Cases involving Adwords have allowed trademark claims to proceed.
Indeed , the bright line rule which

exempt internet advertisers from the reach of the Lanham Act, because virtually every use of a
term to trigger a search engine, through metatags, domain names, keywords or the like, could be
characterized as serving an organizational,

non-source identifying function. Every case to have

considered Google s liability for its sale of trademarks has held that this constitutes a trademark
use to which the

, nearly every other

trademarks appear in metatags, hidden text, domain names and keywords to trigger competitors

advertisements in conjunction with other results generated by entry of the mark as a search term
has found a trademark use.
In the leading case

, the court held that the plaintiff

GEICO ,

had adequately pled use of

advertisers to pay
Insurance Company v.

Government Employees

Google, Inc. 330 F. Supp.2d 700, 704 (E.D. Va.

2004)(" GEICO"

When

defendants sell the rights to link

, defendants are using the

trademarks in commerce in a way that may
trademark holder to do so.
) The

now relies, including a prior case from its own district. Instead, it focused on Google s sale of

the trademark as a keyword "to which advertisers could directly purchase rights "

as a violation

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of the literal terms of the Act.

Id.

Whether this qualified as a fair use or created a likelihood of
Id

confusion presented fact specific issues for resolution after the pleading stage.

at 704?

Google , Inc.

v.

American Blind and Wallpaper

also refused to dismiss

claims against Google based on its
(N.

Id. 2005 WL

Ca1.). Applying the

, the court held that it did not

beyond doubt" that American Blind "could prove no set of facts in support of its claims which
would entitle it to relief." Id.

at *5. Although

motions on the pleadings, the court rejected any reading of the Lanham Act which would ignore

the underlying intent to protect trademark owners from diminution of the value of those marks
through misappropriation or otherwise. Id.

at *4, n. 18.

More recently, a court held that an advertiser s purchase of a trademark from Google in

ordered to generate its
Edina Realty, Inc. v.

TheMLSolution.com 2006 WL 737064 (D.Minn. ). As

Edina

explains, the

defendant's purchase of a trademarked term from Google not only guarantees placement in the
search results, but also generates a visual association between the Sponsored Link and the mark

because Google displays the user s selected search term (such as the Check
above the results containing the Sponsored Links. Id.

at *3. "While not a conventional ' use in
Id.

commerce ' defendant nevertheless uses the (trademarkJ commercially.

7 Ultimately, the court ruled in favor of Google at trial , on the grounds that the survey presented by the plaintiff

failed to sustain its burden of
Employees Insurance Co. v.

See Government

Google, Inc. 2005 WL 1903128 (E.

Va.

8 The American Blind

court specifically addressed Google s argument, not made here, that it had no liability because
its

it did not use the trademark on

goods or services. Although courts have

terms specific to the defendant, the statute contains no such express requirement. And although Google employs the

trademark in connection with its competitors, a finding that it did not
advertisers who use that trademark in advertising their services on Adwords.

s contributory or vicarious liability for the
Id.

at *5.

,"

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Courts considering similar practices have concluded that trademark claims exist.

To reach this result, the

Edina

court appropriately analogized Adwords to other situations

in which search engines and
particular trademarked term
competitors, situations which the courts have uniformly found actionable.
in See id.

For instance
th Cir. 2001),

Playboy Enterprises, Inc.

v.

Netscape Communications Corp. 354 F. 3d 1020 (9

the court considered a practice used by various search engines called "keying," which "allows
advertisers to target individuals with certain interests by linking advertisements to pre-identified
terms.
Id.

at 1022. The search engines required adult entertainment companies to key their sites

to a list including two Playboy trademarks, so that the advertisers ' sites would appear whenever a
consumer typed the Playboy trademarks into the search engine window. Id.

at 1023. They then

monitored the rate that users "clicked" onto the ads triggered by the key terms, in order to market
their keyword service, and received a fee for the advertisers ' use of the service.
Id.

Without deciding whether the search engines were directly or contributorily liable - that

is whether the search engine or its advertisers used the trademark - the court allowed the claim
against the search engines to proceed past the
Id.

at 1024 ("

conclude that defendants are potentially liable under one theory and that we need
which one.
) By " keying "

certain advertisements to the trademarked terms, the defendants used
s permission. Id.

the marks in

Because a computer user may

become confused and reach the site one of the trademark holder s competitors as a result of the
search engine s use of the trademark

(sJuch use is actionable.

Id.

at 1026.
, the Ninth

Having found
concluded, after lengthy analysis, that the possibility of

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user clicked on the
keywords, even though the user might realize upon accessing the site that it had no connection to
the plaintiff. Id.

at 1025. The Sixth Circuit
, and have recognized

only actionable

infringement may occur, especially in the internet context, when the consumer arrives at a site he

would not
company whose trademark he sought.

See PACCAR, Inc.

v.

Telescan Technologies,

LLC 319

3d 243 , 253 (6th Cir. 2003);
v.

overruled in part on other grounds, KP Permanent Make- Up, Inc.
(2004); Tdata Inc. v.

Lasting Impression, Inc. 543 US.
907 (S. D. Ohio

Aircraft Technical Publishers

411 F. Supp.2d 901 ,

CNG alleges that this type of "initial

interest

confusion" occurs when internet users input the search term "Check N' Go " but then click on an

unaffiliated Sponsored Link before realizing the lack of connection between the two and, like the
plaintiff in Playboy,

should have the opportunity to present evidence to support that claim.

Considering a claim against an internet advertiser, the United States Court of Appeals for
the Tenth Circuit also found the use of similar technology actionable in Australian Gold, Inc.

Advanced Technology Systems,

Inc.

436 F. 3d

1228 (loth Cir. 2006). 9

The

company to list it in a preferred position
trademarks. Id

at 1239. By this method, as well as by listing the trademarks in their text and
Id.

metatext , the defendants attempted to "divert traffic" to their sites.

Thus, Defendants used

the goodwill associated with Plaintiffs ' trademarks in such a way that consumers might be lured
to the (productsJ from Plaintiffs ' competitors. This is a violation of the Lanham Act."
Id.

Playboy case clearly belie Google s assertion that no appellate court has ever accepted the theories that CNG now pursues. Indeed, the vast weight of internet trademark authority supports CNG' s claims.

9 This and the

g.,

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These holdings build off the

companies'

use of competitors '

trademarks as metatags.

hidden in a web

engmes.

PACCAR 319 F.2d at 248 n.2. In that way they function just like the keywords used to

produce Google s Sponsored Links because

underneath the entered search term. Whereas with metatags the
trademark to "trick" the search engine into listing its web
a search of that mark, in

trademark to accomplish the same result.

See Interstellar Starship Servs.

v.

Epix, Inc. 304 F.
search

936 ,

945 ,

n.

10 (9th Cir. 2002)(noting the evolution from metatags to

engine algorithms incorporate corporate dollars into their formulae.
engines in return for primary placement among the search results.
Thus , despite the existence of what

signifying function or legitimate comparative advertising, courts considering trademark metatag
use have concluded that, when
See,
v.

e.

Brookfield Communications, Inc.
th Cir. 1999); Niton Corp. v.

West Coast Entertainment Corp.

174 F. 3d 1036 ,

1064-

Radiation Monitoring Devices, Inc. 27 F. Supp.2d 102 (D. Mass.
309 , 322-23

1998);

Bihari

v.

Gross 119 F. Supp.2d

(S.

Y. 2000)(although not
, in

metatags constituted use in
Tdata 411 F. Supp.2d 901 at
found that the defendant Tdata

, the Court

s practice of placing its
C. 991114 or 1125. Id.

s trademarks in the
at 907 (finding that "use of the

metatags of its websites violated

(plaintiffsJ mark in metatags constitutes infringing use of the mark to pull consumers to Tdata

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web site and the products its features, even if the consumers later realize the confusion

). After a

lengthy analysis, the Court concluded that " (tJhe trademark aspect of this litigation boils down to

whether Tdata is improperly trading or traded on a mark held by ATP.

Id.

at 912. As Tdata had

placed the term in the metatag precisely because it intended to use its power as a trademark to
draw consumers,
its use gave rise to a claim for trademark infringement.

Id.

Cases involving domain names also show that a use

purpose other than signifying source and still also cause
uniformly acknowledge that a domain name (in the form of ..www. trademark.com ) functions as
a physical address on the internet.

See PACCAR 319 F.2d at 248 n.

, 250 (collecting cases).

They also, however, examine the facts surrounding the use of that domain

whether it creates a possibility that consumers will experience confusion as to the source of the
products on the

Id.

Thus ,

merely

containing a trademark but never using it in conjunction with a site advertising any product is not

an actionable use of the mark, because the domain name functions
other hand,
associating a site with that

only

as an address. On the

commercial activity on the site generally means trademark infringement has taken place.

See id

(stating the "obvious"

fact that,

although they also serve as addresses "words in many domain

names can and do communicate information as to the source or sponsor of the website
The Sixth Circuit conducted this type of dual analysis in a case upon which Google relies
Interactive Products Corp. v.

A2Z Mobile Office Solutions, Inc. 326 F. 3d 687 (6th Cir. 2003).

, despite a superficial similarity, Google s role differs significantly from that of domain name registrars. registrars escaped liability because they are involved only in the address aspect of the name; they do not suggest or market particular domain names, profit from misdirected searches, sell the registration knowing that the buyer will use it to infringe, or otherwise have any ongoing involvement in the design or use of the registered th Cir. 2002)(analogizing to Bird v. Parsons 289 F. 3d 865 , 877-78 (6 Holiday Inn site. See and explaining that mere registration did not infringe). The Act now provides for liability on the part of registrars upon a showing of bad faith intent to profit from the registration or operation of the site. 15 U.S. c. ~1114(2)(D).
In older cases ,

10 Moreover

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There, the defendant stopped selling a product with the trademark "Lap Traveler" on a page on
its web site , but neglected to

domain path associated with that

motion for summary judgment, the court defined the preliminary question of use as "whether the
presence of ' laptraveler ' in the URL post- domain path for (the

stand webpage is likely to cause confusion among consumers regarding the origin of the (product
actually sold on that page.

Stated another way, the issue is whether a

notice ' laptraveler '

in the post-

domain path and then think that the Mobile

produced by the same company (or a company affiliated with the company) that makes the Lap
Traveler.
Id.

at 696. Rather

domain

path as determinative, the Sixth Circuit thoroughly reviewed the purposes served by inclusion of
the trademark, giving the plaintiff the
Interactive Products Corp. v.

See also
1024 ,

A2Z Mobile Office Solutions, Inc. 195 F. Supp.2d

1031 (S.

Ohio 2001)(although plaintiff offered no legal authority for proposition that post-domain path
use can infringe, court evaluated likelihood of confusion).

The court found no
Traveler would be directed to the defendant's web
the inconspicuous appearance of the trademark in

domain path.

Id.

at 697-

(distinguishing cases in which defendants, by the use of metatags, did take steps to cause search

engines to display links to their
Supp. at 912 (distinguishing
A2Z).

see also Tdata

411

Instead,

a

particular brand of product would enter that product's trademark , either as a domain name or a
search term, just as CNG alleges that consumers looking for its services do here.

,"
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Accordingly, while post-domain paths typically do not signify source (implying that they

may do so depending on the facts), the Court

, for its purposes

it is enough to
' in the

find that (the plaintiffj has not

post domain path of (defendant'sJ portable-computer-stand web page is likely to cause consumer
confusion.
finding of non-use. Id

at 698. Thus

A2Z

turned on a lack of evidence of confusion, rather than a legal
at * 4 n.

Id.; American Blind

16. The

inquiries illustrates how these cases are ill-suited for
question. See 1. Thomas McCarthy, Trademarks and Unfair Competition

923:11:1 (4

th ed.

)(so-

called non-trademark uses are simply those uses that are highly unlikely to cause confusion).

Moreover A2Z' conclusion that the post-domain path implicated only the pure locator

function remains distinguishable. In this case, CNG alleges that the use of CNG'
designed to direct consumers to Check ' n Go s competitors' web sites and that the use ofCNG'

trademark does create a

competing services, creating source confusion. Only

A2Z

case neither reached the site because of use of the trademark nor would notice the placement of

the trademark in connection with the products offered on the site A2Z 326 F. 3d at 697, could
the court properly conclude that the trademark had not been used in

with goods or services. The absence of those facts

In sum, whether identified as Adwords, keying or metatag cases, nearly every opinion
addressing the behavior at issue has

competitor s advertising raises an issue

whether Google or its advertisers makes the actual "use" of the trademark, giving rise to either

direct or contributory liability, Adwords allows the advertisers to employ CNG' s trademark in

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connection with the advertising of competing services. Because it pays Google for this privilege
both the advertiser and Google ultimately profit from CNG' s investment in developing a superior

product and the name recognition that allows consumers to locate it.
( n Jo

unfair competition.

Tdata 411 F. Supp.2d at 912 (discussing use of trademarks as

At the least, it raises sufficient doubt as to make judgment on the pleadings wholly inappropriate.

Cases to reach the opposite conclusion involve clearly distimwishable facts
Moreover , the circumstances presented here and in the majority of the Adwords, keying

and metatag cases differ
most heavily on a trio of cases involving the internet advertising service WhenUcom. However
the WhenU business model and technology functioned quite differently from Google s Adwords
program.

To

contextual"

mapped" its customer

s ads by

determining which of the

advertiser
(E.D. Va.

s products.

Haul International,

Inc.

v.

WhenUcom, Inc. 279 F. Supp.2d

723 ,

743

2003).

The

addresses, keywords and algorithms such that the input of an included term or terms triggers the

appearance of advertising linked to that

Id.

When the WhenU program makes a

connection , it generates an advertisement from one of WhenU' s customers, according to internal

priority rules, that appears as a separate "pop-up" window displaying the name of the advertiser.

WhenU advertisers cannot pay to target a specific competitor and have no access to the WhenU
directories , which WhenU sells on the basis of categories, not particular terms.
Accordingly, Haul's Id.

at 745.

ruling that the inclusion of "

Haul" in WhenU' s SaveNow

directory did not make actionable use of the trademark, depended on the court' s conclusion that

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WhenU: (1) "does not sell the U-Haul URL to its customers;" and (2) does not "display the UHaul URL or the words '

Haul' to the computer user when the add pops up.

Id.

at 728, 726

WhenU does not sell individual web addresses to its advertising clients and does not guarantee

to any advertiser that its ad will be shown when a consumer
made WhenU' s use for the "pure machine linking function.
Id.

) This
at 728.

11 Obviously, unlike

WhenU , Google does sell the CNG trademark and its search engine does display the trademark

on the screen in conjunction with the " Sponsored Links" of CNG' s competitors.

The Second Circuit likewise distinguished WhenU' s conduct from that at issue here in 1-

800 Contacts, Inc.
the 1- 800

v.

WhenUcom, Inc. 414 F. 3d 400 (2d Cir. 2005). It first noted that the use of

web address in WhenU' s directory did not create any possibility of visual confusion
trademark. Id.

with the 1- 800

at *24. "In contrast to some of its competitors, moreover, WhenU

does not disclose the proprietary contents of the SaveNow directory to its advertising clients nor

does it permit these clients to request or purchase
Id.

at *24

GEICO); see also

*33 (" (UJnlike several other internet advertising

companies , WhenU does not ' sell' keyword trademarks to its customers or otherwise manipulate

which category-related advertisement will pop up
internal directory. ) Finally,

divert or misdirect (computerJ users away from 1-

800' s web site, or alter in any way the results a
the 1- 800

trademark or website address.

Id.

at *32 (citing

Playboy

and

Brookfield).

Again

behavior and results very different from those associated with Adwords.

the Adwords product at issue here.

court specifically refused to apply the WhenU holdings, including this decision in its own district, to GEICO 330 F. Supp. 2d at 704 (identifying as critical distinction" that WhenU allowed advertisers to bid on broad categories of terms that included the trademarks, but did not market the protected marks themselves as keywords to which advertisers could directly purchase rights.
GEICO

11 The

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Rather than rejecting these distinctions, as Google

WhenU court simply did not conduct the same sort of comparative
in Virginia, and made no attempt to reconcile its holding with the
Circuit. Wells Fargo Co. v. GEICO

case, as did the Second

WhenUcom, Inc. 293 F. Supp.2d 734 (ED.Mich. 2003)(refusing

to grant preliminary injunction against WhenU). Moreover, while referencing Google in dicta
the court had no occasion to analyze the actual workings of Google s program. Instead, it relied
on an unconsidered and, it turns out, mistaken belief that practices resembling "keying" (which it

viewed as comparable to the Adwords process) could not implicate trademark protections.
The court identified

Playboy Enterprises, Inc.
Ca1.),

v.

Netscape Communications Corp.

Supp.2d 1070, 1076 (C.

aff'

202 F. 3d 278 (9

th Cir. 1999), as the only opinion to

address whether "keying" a trademark constituted use. Noting that the California court' s ruling
on a motion for preliminary injunction did not directly
court nonetheless
, the

Wells Fargo

s practice did not
however,

Approximately one year later,

the Ninth

Playboy

case and

expressly held, on a motion for summary judgment, that the defendants clearly used the disputed
marks in commerce. Playboy,

354 F. 3d at 1024. Thus, the only case the

Wells Fargo

court

identified as involving a comparable situation ultimately concluded in CNG' s favor.
This Court need not follow the inconsistent result reached in New York.

Finally, Google also
authority. The court in Merck

Co. , Inc.

v.

Mediplan Health

425 F. Supp.2d

402 (S.
12 In addition

Y. 2006) recently dismissed claims against Adwords customers on the grounds that

, although nominally decided on use, the WhenU cases emphasize that the pop up ads Haul 279 F. Supp. 2d at 728 (simultaneous appearance of both the sought after web site and the ad was appropriate comparative advertising). case, where CNG has alleged that the
involved easily identifiable competitors. See

certainly not one inherently distinct from CNG.

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the use by
independent basis for a trademark action.
Id.

at 416. While the opinion did

machine linking purpose served by the use of the trademark in triggering the advertising, it also

noted that "it

is significant that

websites. Under these circumstances,

there is nothing improper with defendants' purchase of
Id.

sponsored links to their websites from
Therefore ,
the decision turned as

at 415- 16.

advertising customers) as it did any analysis of Adwords in the abstract.
lacks

, this case

Merck'

significant" factor,

because the sponsored

offered by Check n' Go to their own nor offer those services themselves.

No sound policy dictates exemptin2 Goo2le s potentially infrin2in2 conduct from trademark
Moreover, the
Merck

court may simply have been led astray by Google s ubiquity and by

its warnings of
advertising customers. Google s sale of trademarks is not crucial to the efficient functioning of

the internet or even Google

s search engine.

consumer looking for a

companies offering payday loans can simply type in a term such as payday

whose sites make fair use of the trademark (by virtue of comparative advertising or the like) will

likely still appear on list of
organize information without the auction of trademarked

Indeed, even Google

European policy forbids such sales, and the web continues to function.

13 Google has the technological capability of blocking the

, including CNG'

Check ' N Go Mark, as a keyword/search term for its search engine. Indeed, Google s former trademark policy was

to block such purchases, and other prominent search engine companies continue to do so. (Complaint, ~32.

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If the court adopts a bright
protection, it opens the door to potential

, a search engine could knowingly

facilitate infringement to increase its own per click revenue with no obligation to account to the

trademark owner. On the other hand, if the courts deal with specific behavior under the accepted
tests of confusion
, then all of the objectives

, including protection of

consumers and owners, can be preserved. If a particular Adwords use

result helpful to consumers, it may continue; if, as in this case, it does not, then it should stop.

CONCLUSION
As one of its "basic
objectives

" trademark law "helps assure a producer that it (and not

an imitating competitor) will reap the financial, reputation-related rewards associated with a
desirable product." Qualitex Co. v.

Jacobson Products Co. ,

Inc. 514 U.S. 159 ,

163- 64

(1995);

see also

15 U.S. C. 91127 (purpose of the Lanham Act, is to inter alia

protect persons engaged
s example of competition
, the advertiser

in (J commerce against unfair competition. ) Look back

between Ford and Toyota. What if,
was a start up manufacturer like

product by misleading consumers about an affiliation with
simply placing an add on the page opposite a Toyota ad, KIA paid Car and Driver magazine to

list the page

name? A
instead to a KIA page. That customer
, realize the mistake and move on to

the real Toyota listing. However, he might also read about KIAs, a choice he would otherwise

not have made, and a decision illustrating the type of initial interest confusion found actionable

by the Sixth Circuit. And what if the KIA ad did not

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KIA but instead contained a description of vehicles by model name alone and the (non-specific)
name of various on-line dealers who offered those

information, or he might just contact the KIA dealer, not realizing the mistake until after the KIA

had begun to sound pretty good. Recognizing both possibilities, the law provides Toyota with a
remedy against KIA' s hypothetical attempt to trade off of the initial interest in the Toyota name.

Likewise , what if Google s hypothetical pizza place somehow could place its doorway

under the Domino s sign? And what if
their products on shelves next to famous brands, but actually paid the stores to put their similarly
packaged merchandise under a
' trademarks?

Not just

competitors , but also consumers, would expect the courts to address this behavior and not avoid
the issue through a hyper-technical reading of statutory language.
In fact,

the law does
, CNG may at the

trademark law by

Google for guaranteeing, in exchange for payment from CNG' s competitors, that a user s input
of the CNG trademark will generate a Sponsored Link to the website advertising the competitors
services. Because CNG could conceivably prevail on its allegations that this practice

consumer confusion, Google s motion must be denied.

Respectfully submitted

Barry D. Hunter Ann Gallagher Robinson Frost Brown Todd, LLC 2200 PNC Center 201 East Fifth Street Cincinnati OH 45202-4182 Tel.: [phone]
Isl

Fax: [phone]

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Barry D. Hunter Medrith Lee Norman Frost Brown Todd LLC 250 West Main Street, Suite 2700 Lexington , Kentucky 40507 [phone] [phone]-fax
Attorneys for CNG FINANCIAL CORPORATION

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CERTIFICA TE OF SERVICE

I certify that a copy of the foregoing was electronically filed with the Clerk
using the CM/ECF, system which will send notification of such filing to the following, this 17th

day of July, 2006:

Kenneth F. Seibel, Esq. Jacobs , Kleinman, Seibel & McNally 2300 Kroger Building 1014 Vine Street Cincinnati , OH 45202

Michael H. Page, Esq. Klaus H. Hamm, Esq. Keker & Van Nest LLP 710 Sansome Street 94107 San Francisco , CA

/s/ Barry D. Hunter Attorney for Plaintiff/Counter Defendant

LEXLibrary 0102393. 0533475 305181v.