Elliot v. Google Inc.

Citations: 45 F. Supp. 3d 1156; 2014 WL 4470390Docket: No. CV-12-1072-PHX-SMM

Court: District Court, D. Arizona; September 11, 2014; Federal District Court

SummaryOriginalCytator Case TreatmentBackward CitatorAnalysis

EnglishEspañolSimplified EnglishEspañol Fácil

Plaintiffs David Elliot and Chris Gillespie filed cross-motions for summary judgment against Defendant Google Incorporated. The Court, presided by Senior District Judge Stephen M. McNamee, denied the Plaintiffs' motion and granted the Defendant's motion. The case revolves around two U.S. trademarks for the GOOGLE mark: Registration Number 2884502 (the '502 Mark) and Number 2806075 (the '075 Mark). The '502 Mark pertains to computer hardware and software for indexing information, while the '075 Mark covers a variety of computer services, including creating personalized online information services and data retrieval.

During a two-week period in March 2012, Plaintiffs registered 763 domain names incorporating "google" alongside other terms. Google filed a complaint for the transfer of these domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP), citing that the domain names were confusingly similar to its trademarks, that Gillespie lacked legitimate rights to the names, and that registration was made in bad faith. The UDRP panel ruled in favor of Google, ordering the transfer of the domain names.

Subsequently, Elliot initiated legal action to cancel the trademarks, claiming they had become generic. Google counterclaimed for trademark dilution, cybersquatting, and other violations under the Lanham Act and California state law. After discovery, both parties sought summary judgment, focusing on the issue of the trademarks' validity as potentially generic. The Court outlined that summary judgment is appropriate when no genuine dispute exists concerning material facts, emphasizing the need for movants to demonstrate the absence of such disputes to prevail.

For issues where the movant bears the burden of proof at trial, the initial burden for summary judgment involves presenting evidence that prevents a reasonable jury from favoring the non-movant. Conversely, if the non-movant holds the burden at trial, the movant can satisfy its initial requirement by demonstrating a lack of evidence supporting the non-movant's claims. If the movant meets this burden, the non-movant must then present "significantly probative" evidence that could lead to a favorable verdict. In evaluating these burdens, the court must accept the non-movant's evidence as true and draw all reasonable inferences in their favor. Determinations of credibility and the weighing of evidence are jury responsibilities, not functions of the judge during a summary judgment motion.

In the case at hand, Plaintiffs argue that the term "GOOGLE" has become generic, as the public uses it as a verb to mean searching online indiscriminately, which they claim renders it incapable of distinguishing services. The Defendant counters that there is insufficient evidence to support the claim that the public perceives "GOOGLE" as generic, arguing instead that it identifies a specific product. The court will first address the legal question of whether a mark's use as a verb inherently makes it generic, as well as the admissibility of expert testimony, before determining if summary judgment is warranted regarding the generic status of the GOOGLE mark.

A trademark can be canceled if it becomes the generic name for the goods or services it represents, under 15 U.S.C. § 1064(3). The primary significance test assesses whether the relevant public perceives the mark as identifying the product or the producer. A mark is not considered generic if the public primarily associates it with the producer rather than the product itself. The court will evaluate the public's understanding of the term in question to determine if it has become generic.

Plaintiffs argue that a trademark loses its status when used primarily as a verb, but this premise is incorrect. A trademark can still serve its legal purpose of distinguishing goods or services as long as it identifies the source. The usage of a trademark as a verb can be both discriminate and indiscriminate. Discriminate use, such as "I will PHOTOSHOP the image," refers specifically to Adobe's software, fulfilling the trademark function. In contrast, indiscriminate use could imply image editing with any software, which undermines the trademark's source-identifying role. However, a mark is not inherently generic simply because it serves a dual function—identifying a specific product while also describing a broader category of services. The Senate Report clarifies that a mark is not deemed generic solely based on its public significance; it must primarily signify the nature of the product rather than its origin. Non-purchasing references do not indicate generic use, as primary significance is assessed within purchasing contexts. Ultimately, if the mark still indicates a specific producer to consumers, it retains its trademark validity, regardless of common verb usage. A strict grammatical approach to genericism conflicts with the Lanham Act's intent, which aims to protect consumer confidence and safeguard trademark owners' investments.

Protecting trademarks fosters market competition by allowing consumers to differentiate between products and ensuring producers benefit from their reputation for quality. Trademarks are safeguarded from appropriation to prevent consumer deception and reward producers for their investments. It is against trademark law to revoke a mark's protection simply because it has become widely recognized or used generically by the public, as this indicates the mark's fame rather than its generic status. Arbitrary or fanciful marks, which lack independent meanings before their adoption as trademarks, are particularly protected. The court found the plaintiffs’ claims that verb usage equates to generic usage unsupported, noting that previous non-precedential cases cited by plaintiffs did not convincingly establish this connection. The critical factor remains whether the mark primarily signifies the source of a service to consumers, irrespective of its use as a verb. This principle emphasizes that a mark is not generic if its primary significance is as an identifier of origin.

The primary significance test does not inherently distinguish between a product brand and a product genus. In the context of the GOOGLE mark, the key issue is whether the public primarily associates it with the Google search engine or sees it as a general term for search engines. In the Ninth Circuit, expert opinions can be admissible to oppose summary judgment if the expert is deemed competent and the opinion is factually supported. Expert testimony must be relevant and based on a reliable foundation within the expert's discipline. Scientific evidence requires evidentiary reliability based on scientific validity, which focuses on methodology rather than conclusions. The reliability assessment is adaptable, evaluating whether the expert's testimony is grounded in sufficient facts and reliable methods as per Federal Rule of Evidence 702.

Both parties contest each other’s expert reports regarding the public's perception of the GOOGLE mark. The defendant's expert linguist, Dr. Geoffrey Nunberg, noted a linguistic trend where distinctive trademarks are used to describe a broader category without losing their proprietary meaning. He provided examples of trademarks used as verbs that imply a general action, explaining that using "google" as a verb does not negate the trademark’s distinctiveness. Dr. Nunberg concluded that the GOOGLE mark has not become generic, asserting that the phrase "go google it" does not automatically equate to "look it up on the internet."

Plaintiffs criticize Dr. Nunberg, labeling him a "hired gun" for allegedly reversing his opinion, but fail to substantiate this claim. Evidence shows that Dr. Nunberg was never retained by Plaintiffs, did not share any confidential information with Defendant, and his sole expert opinion was presented in his report. The allegation of inconsistency can be explored during cross-examination. Additionally, Plaintiffs’ claim that Dr. Nunberg's opinions address ultimate issues is incorrect, as such opinions are permissible under Federal Rule of Evidence 704(a). There are no serious challenges to the reliability of Dr. Nunberg's methods or data, thus his opinion is deemed admissible.

Defendant's expert, Dr. Gerald Ford, conducted a consumer survey to demonstrate that the TEFLON mark is primarily associated with DuPont's non-stick coating. The survey involved 420 randomly selected participants who identified various names as brand or common names. Results showed that 93.77% recognized GOOGLE as a brand name, with similar recognition for YAHOO! (93.52%) and COKE (89.53%). Only AMAZON had higher brand recognition than GOOGLE. The survey's results are statistically significant, with a 95% confidence level and a 2.37% error margin. Plaintiffs' only objection to the survey is its perceived irrelevance due to the lack of accounting for verb usage in determining generic use.

Plaintiffs reference the Ninth Circuit's criticism of Teflon-style surveys in **Anti-Monopoly, Inc. v. General Mills Fun Group** to support their argument. However, the **Trademark Clarification Act of 1984** was enacted to counter the reasoning in that case, clarifying that a trademark can serve a dual purpose: identifying goods and indicating their source. Plaintiffs contest the relevance of Dr. Ford’s survey, arguing it focuses solely on the noun usage of "google" rather than addressing verb usage. Nevertheless, Dr. Ford's findings indicate that 93.77% of respondents associate "GOOGLE" primarily with the specific brand rather than as a general term for search engines, making the survey relevant to the inquiry of public perception.

Additionally, Plaintiffs’ counsel, Richard Wirtz, conducted surveys using "Google Consumer Surveys," which showed varying results on how respondents interpret the term "google." In the first survey of 1,033 responses, 52.2% viewed it as "to search something on the internet," and 28.7% as "the name of a specific search engine." The second survey of 1,007 responses indicated 72% understood it as "to search something on the internet." Plaintiffs argue these results demonstrate the public predominantly uses "google" as a general verb.

The Defendant opposes Wirtz’s surveys as inadmissible due to claims of irrelevance, unreliability, and his lack of qualification. They argue that the surveys are flawed as they did not allow respondents to specify that "google" meant searching using the Google search engine. For a survey to be admissible, it must adhere to accepted survey principles, including rigorous evaluation of sampling and bias. Survey experts must demonstrate a solid grasp of current methodologies, with qualifications typically requiring advanced training in relevant social sciences or extensive professional experience in survey research.

Counsel involvement in survey design is permissible, but an attorney should not independently create a survey without expert assistance. An expert interpreting survey results must have a solid background in scientific and survey methodology. The Wirtz surveys lack adherence to accepted principles, with no clarity on statistical methods or their reliability, and Mr. Wirtz lacks the necessary training in survey design and interpretation. Experts for both Plaintiffs and Defendants did not assess the Wirtz surveys' methodological validity, with one expert specifically deeming them "worthless" due to vague questions. Plaintiffs' argument that the Wirtz surveys are compliant is undermined by their attempts to qualify Wirtz and "Google Consumer Surveys" as experts, without clear methodological backing. The absence of expert analysis on the Wirtz surveys renders them inadmissible under the Federal Rules of Evidence. Furthermore, if admitted, Mr. Wirtz's testimony would conflict with his role as an advocate. In contrast, Plaintiffs’ expert James Berger conducted a modified survey based on a precedent case to assess whether "GOOGLE" is perceived as a generic term. Berger's survey involved 251 respondents, and over half indicated they would use "google" in a search context.

Mr. Berger concluded that survey results demonstrated that the term "google," when used as a verb, is generic and commonly understood to mean searching on the internet. However, the defendant challenged the objectivity and reliability of Berger's survey, claiming it was biased toward supporting the plaintiffs' position. During his deposition, Berger admitted the survey did not assess consumers' understanding of the GOOGLE mark as a brand or the generic nature of the term concerning specific search engine products. His survey included only one substantive question, contrary to typical Thermos style surveys, which usually feature multiple inquiries. Berger acknowledged his lack of awareness regarding the methodologies of the referenced Wirtz surveys and did not claim they were methodologically sound, having no involvement in their execution. The court found that while Berger's opinion on the general use of "google" as a verb is admissible, it is not the key issue in the case. The primary concern is whether the GOOGLE mark is perceived by the public as indicative of search engines in general, a question on which Berger lacks the qualifications to provide an opinion.

A party seeking summary judgment benefits from presumptions supporting their motion, particularly regarding trademark validity. Federal registration of a trademark, such as the GOOGLE mark, carries a strong presumption of validity, including the presumption that the mark is not generic. Although the Plaintiffs contest the validity of the GOOGLE marks, registered under 15 U.S.C. § 1058 and § 1065, they bear the burden of proving at trial that these marks are generic. The registrations also relieve the Defendant from demonstrating that the trademark is not generic. To counter the Defendant's motion, Plaintiffs must present specific facts indicating that the GOOGLE mark is generic. If they fail to present such evidence, they cannot meet the higher standard needed to show that the evidence does not support the mark's non-generic status.

Evidence relevant to determining the primary significance of the GOOGLE mark includes dictionary definitions, usage by the mark-holder, competitor usage, media references, and consumer surveys. The determination hinges on whether the GOOGLE mark is primarily understood by the public as a general term for search engines. Plaintiffs' objections regarding evidence relevance are misplaced, as any evidence that influences the public’s understanding of the mark is pertinent. Notably, Plaintiffs could not identify a dictionary that omits the trademark significance of "google." They allege intimidation of dictionaries by the Defendant, citing specific instances where definitions were altered to acknowledge the trademark. Furthermore, both of Plaintiffs' linguistic experts acknowledged that the GOOGLE mark identifies Google as the provider of its search engine services. Plaintiffs argue that the term "google" has become an indiscriminate verb, supported by a statement from co-founder Larry Page encouraging users to "keep googling."

Plaintiffs argue that the GOOGLE mark may be deemed generic based on its ability to generate a definition via a search query and its use in other domain names not owned by Plaintiffs. However, it is established that the Defendant actively uses the GOOGLE mark in national advertising, enforces strict third-party usage policies, and invests significant resources in protecting the mark. While non-enforcement could imply a mark's generic status, the evidence indicates the Defendant does enforce its rights, making Plaintiffs' claims unreasonable. Furthermore, Plaintiffs contend that the Defendant’s enforcement spending is disproportionately low relative to the mark's value, suggesting abandonment, but fail to provide legal support for this theory. The Court finds such reasoning inconsistent with trademark law, which aims to protect markholders' interests. The generic use of "google" as a verb does not establish the mark's generic status, as evidence from competitors shows no non-trademark usage of the mark. Although non-use by competitors could suggest non-generic status, it remains a peripheral consideration. The ability of competitors to describe their products without the mark indicates that the mark is likely not generic, supported by legal precedents indicating that the existence of alternative descriptive terms further suggests a mark's distinctiveness.

The term "internet search engines" serves as a general descriptor for the category that includes the Google search engine. Competing services like Yahoo! and Microsoft Bing actively differentiate their offerings from Google's in their marketing. There is no evidence indicating that "google" has become a generic term for all search engines, as competitors do not use it in such a context. While Plaintiffs argue that the media often uses "google" as a verb, much of their evidence is inadmissible due to late disclosure. Some media references acknowledge the trademark nature of "GOOGLE" and do not provide instances where other search engines are referred to as "google." Plaintiffs' survey evidence shows that 51% of the public understands "google" as a verb for searching online; however, it does not clarify if this understanding is generic or specific. The critical issue remains whether "google" primarily signifies the type of service rather than the provider, a question not addressed by the survey. The Court notes that while summary judgment is typically avoided in trademark cases due to their factual complexity, it is appropriate here as no material facts are genuinely in dispute. A registered trademark can possess multiple significances, but Congress has clarified that a trademark cannot be canceled as generic if it holds more than one meaning.

A registered trademark is not classified as generic solely because it also identifies a unique product or service. Specifically, the term "google" has four interpretations: 1) it is a trademark for the Google search engine; 2) it refers to searching on the internet using Google; 3) it describes searching on the internet using any search engine; and 4) it serves as a common term for search engines generally. For the cancellation of the '502 and '075 marks to be warranted, the fourth meaning must be the primary significance of "google" to the majority of consumers.

Evidence presented indicates that 51% of internet search engine users use "google" as a verb for online searching, confirming the second and third meanings. However, Plaintiffs argue without competent evidence that the third meaning is the most frequently used and seek cancellation based on this claim. This argument is flawed; the legal standard for genericness focuses on whether the primary significance of the term is a common descriptive term, not merely its frequency of use. 

Despite the assertion about verb usage, there is no evidence proving that the primary significance of "google" is as a common term rather than as a brand. Over 90% of consumers recognize "google" primarily as a brand, not a general term, reinforcing that the first meaning is more significant than the fourth. Thus, the '502 and '075 marks are not subject to cancellation. Plaintiffs failed to provide compelling evidence that the primary significance of "google" is a common descriptive term for search engines, which is required for their cancellation claim to withstand summary judgment.

Plaintiffs failed to meet their burden of proof under the primary significance test for determining whether the term "google" is generic, focusing instead on public perception of its use as a verb. This misstep led to their claim for genericide being deemed unfounded. The Court rejected the Plaintiffs' argument to redefine federal trademark law based solely on the frequency of verb use, affirming that the established Ninth Circuit standard evaluates genericness through the "who-are-you/what-are-you" test. Evidence showed that the public associates "google" primarily with the specific search engine, not as a general term for search engines. Despite acknowledging that some people use "google" as a verb, the overall consensus indicates it is recognized as a brand. Consequently, the Court ruled in favor of the Defendant, granting summary judgment and denying the Plaintiffs’ motion. Additionally, ongoing Trademark Trial and Appeal Board proceedings regarding the cancellation of the GOOGLE mark are stayed pending this case's outcome. The Court also denied requests for oral argument, citing sufficient prior opportunities for written submissions.

Plaintiffs' hearsay objection is deemed inadequate because the evidence can be admissibly presented at trial, as outlined in Federal Rule of Civil Procedure 56(c). The Trademark Clarification Act of 1984, which amended the Lanham Act, established the primary-significance test, requiring contested designations to be classified as either generic or trademark. However, some scholars argue this binary classification is flawed, suggesting that trademarks can serve multiple informational functions simultaneously. They propose a more nuanced approach to assess consumer perception along a continuum between generic and trademark significance.

The surveys conducted, which included questions about the term "Google," were incorporated into the Plaintiffs’ consumer survey expert's report rather than submitted separately. Critics of the primary-significance test highlight its oversimplification, advocating for a method that recognizes varying degrees of trademark awareness among consumers. It is noted that better survey methodologies could yield more reliable insights regarding public perception.

Plaintiffs' claims that dictionary definitions have been influenced by fear of the Defendant lack admissible evidence. Under Federal Rule of Civil Procedure 26(a)(3)(A)(iii), parties must disclose documents they intend to use at trial, with non-compliance leading to automatic sanctions unless justified. The Defendant raised objections regarding undisclosed media evidence, and Plaintiffs did not adequately respond, leaving the admissibility of this evidence unclear. Consequently, the Court will disregard the late-disclosed evidence.