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Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Gordon Roy Parker v. Google, Inc.

Civ. No. 04-CV-3918 (E.D. Pa., March 10, 2006), affirmed -- F.3d – (3rd Cir., July 10, 2007).

District Court dismisses claims charging Google with direct copyright infringement as a result both of its archiving Usenet postings that contain excerpts of plaintiff’s copyrighted works, and its display of excerpts of plaintiff’s copyrighted website in search results.  The District Court holds that Google has not engaged in the requisite volitional conduct necessary to be held guilty of direct copyright infringement because such copying is a by-product of the automated operation of Google’s search engine and related technologies.  As such, Google’s acts are akin to a user’s use of its ISP to transmit infringing material to a third party, which do not give rise to direct infringement claims against the ISP.  On appeal, the Third Circuit affirmed the dismissal of Parker’s direct infringement claims, on the grounds that Google’s archiving of infringing Usenet postings lacked the requisite “volitional conduct.”

Relying on Field v. Google, (D. Nevada 2006), the District Court also dismisses direct copyright infringement claims arising out of Google’s presentation to users of “archival” copies of plaintiff’s website in search results denominated “cache.”  The District Court holds that Section 512(b) of the Digital Millennium Copyright Act (“DMCA”), applicable to copyright infringement claims arising out of “system caching,” bars such claims here.

The District Court also dismissed vicarious and contributory copyright infringement claims arising out of Google’s archiving of Usenet posts created by third parties that themselves allegedly infringe plaintiff’s copyright, both because Google lacks the requisite knowledge of such inadequately identified infringing activity, and because it does not derive sufficient direct financial benefit therefrom.  This decision too was affirmed by the Third Circuit on appeal.

The District Court further dismissed defamation, invasion of privacy and negligence claims advanced by plaintiff arising both out of Google’s archiving of Usenet posts authored by third parties that allegedly defamed plaintiff, as well as out of Google’s storage and display in its “cache” of a website that purportedly defamed plaintiff.  Such claims are barred by the immunity afforded Google by Section 230 of the Communications Decency Act (“CDA”), a decision affirmed on appeal.

Finally, the District Court dismissed Lanham Act claims brought against Google as a result of its alleged republication of a website operated by a third party titled “the Official Roy Gordon FAQ.”  The District Court held that the third party was not violating the Lanham Act both because it was not using a mark in commerce as it was not selling anything on its site, and because consumers were not likely to be confused as to the origin of the site, given the criticism of plaintiff found thereon.  The Lanham Act claims against Google also failed because it was not a “moving force” or “active participant” in the creation of this site, or the alleged use thereon of plaintiff’s ‘mark.’  The Third Circuit affirmed the dismissal of the Lanham Act claims because of the absence of a likelihood of consumer confusion.  The Court also affirmed the dismissal of plaintiff’s trade disparagement claims because the statements at issue on the third party website were not made in the context of commercial advertising.

It should be noted that the plaintiff appeared pro se.  In addition, the Third Circuit’s opinion was denoted “Not Precedential.”

Google Purportedly Aids Users In Obtaining Defamatory and Infringing Content

Defendant Google runs a search engine that helps users locate websites that contain information they are seeking.  To assist it in providing this service, Google makes copies of each website its ‘crawlers’ visit, which it stores.  When Google presents responses to a user’s search query, it often presents both a link to the current version of the responsive site, and a second d link to an “archival” copy of the site made by its ‘crawler.’  This second link is denominated ‘cache’ and apparently takes the user to a copy of the website stored on Google’s servers.  Google’s search results also contain descriptions of the located website.  According to plaintiff, these descriptions often contain excerpts of the referenced website.

Google also provides users with the ability to access, search and post messages to the Usenet.  The Usenet is a collection of topical online bulletin boards, known as “newsgroups,” to which individuals may contribute via ‘posts.’  Google has stored and lets users access an archive of Usenet posts dating back to 1981.

Plaintiff Gordon Roy Parker (“Parker”) is a writer who authored the e-book “29 Reasons Not To Be A Nice Guy” in which work he holds a registered copyright.  The book purports to offer seduction advice.  Parker posted “Reason No. 6” from this book on the Usenet.  Parker also maintains a website at Cybersheet.com.

Plaintiff complained that Google made available to its users archival copies of his Usenet post of “Reason No. 6.”  He also complained that Google excerpted and presented in search results portions of his Cybersheet.com website, and presented full copies via its “cache.”  In addition, Parker complained that Google made available defamatory statements about him authored by third parties, both in archived Usenet postings and in ‘cache’ copies of websites containing such statements.  Finally, Parker complained that Google was making available a third party website, titled the “Official Roy Gordon FAQ,” which allegedly contained defamatory statements about plaintiff and was itself infringing Parker’s trademark.

As a result, Parker commenced this lawsuit, charging Google with copyright and trademark infringement, defamation, negligence and invasion of privacy.

Direct Copyright Infringement Claims Dismissed Due To Lack Of Volitional Conduct

On Google’s motion, the District Court dismissed the complaint, which determination was affirmed by the Third Circuit on appeal.  As explained by the District Court, to state a direct copyright infringement claim, a plaintiff must show both that it holds a valid copyright in the work in question and that the defendant copied that work, or violated one of the other exclusive rights granted plaintiff therein.  In addition, the plaintiff must also show that the defendant, in committing such infringing acts, engaged in “volitional conduct.”  As the Fourth Circuit held in CoStar Group Inc. v. LoopNet, “volitional conduct” is absent when an ISP’s system is used by a third party to transmit infringing material over the Internet.  On appeal, the Third Circuit agreed, holding such “volitional conduct” a necessary element of a direct copyright infringement claim, citing CoStar with approval.

The District Court held that the absence of such volitional conduct by Google mandated the dismissal of Parker’s direct infringement claims.  These claims arose both out of Google’s archiving of Usenet postings authored by Parker, which included his copyrighted “Reason No. 6,” and Google’s excerpting of portions of Parker’s Cybersheet.com website in its search result description. Because both acts arose out of the automatic functioning of Google’s systems, they were akin to the conduct of an ISP in transmitting infringing materials and thus lacked the requisite volitional element necessary to constitute direct copyright infringement.  Said the District Court:

When an ISP automatically and temporarily stores data without human intervention so that the system can operate and transmit data to its users, the necessary element of volition is missing.  The automated activity of Google’s search engine is analogous.  It is clear that Google’s automatic archiving of Usenet postings and excerpting of websites in its results to users’ search queries do not include the necessary volitional element to constitute direct copyright infringement.

The Third Circuit agreed, holding Google’s act of automatically archiving the allegedly infringing Usenet posts of third parties lacked the volitional element necessary to sustain a claim of direct copyright infringement.

Google’s Creation And Display Of ‘Archival’ Copies Of Websites In Search Results Denominated “Cache” Protected By The DMCA

Following the Court’s decision in Field v. Google, (D. Nevada  2006), the District Court also dismissed the direct copyright infringement claims plaintiff advanced as a result of Google’s copying and display of Parker’s website in its “cache.”  Google was immunized from such claims by operation of the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”), 17 USC Section 512(b), applicable to the “system caching” of qualified internet service providers.  Said the District Court:

In addition, while it is not entirely clear from Plaintiff’s rambling Complaint, should Parker be claiming direct copyright infringement based on Google’s automatic caching of web pages as a means of indexing websites and producing results to search queries, this activity does not constitute direct infringement either.  Based upon Title II of the DMCA, … 17 USC Section 512(b), the District Court for the District of Nevada recently held that Google is entitled to the Act’s safe harbor provisions for its system caching activities.  Field, 2006 WL 242465 at *14-16 (granting Google’s motion for summary judgment that it qualifies for Section 512(b) safe harbor for system caching.)  We conclude that Plaintiff has not stated a claim upon which relief can be granted based solely on Google’s automatic system caching.

Vicarious And Contributory Copyright Infringement Claims Dismissed

The District Court also dismissed Parker’s contributory and vicarious copyright infringement claims.  These claims arose out of Google’s alleged display of works authored by third parties which themselves infringed unidentified works in which Parker held a copyright.  Such display allegedly occurred when Google archived and made available Usenet posts that contained such infringing materials.  Such claims failed because Parker did not specify the copyrighted works that were the subject of such allegedly infringing conduct.  Parker’s contributory infringement claims also failed because Google lacked the requisite knowledge of such third party infringing conduct necessary to sustain such a claim.  This determination was affirmed on appeal.

Parker’s vicarious infringement claim failed because Google did not receive the direct financial benefit from such infringing activity needed to sustain this claim.  Said the District Court:

A defendant is vicariously liable for copyright infringement if he enjoys a direct financial benefit from another’s infringing activity and ‘has the right and ability to supervise’ the infringing activity.

The District Court held that generalized allegations that Google’s advertising revenues increase with increased user traffic were insufficient to meet this burden.  The Third Circuit affirmed this aspect of the District Court’s decision as well.

Defamation, Invasion of Privacy and Negligence Claims Barred By The CDA

The District Court dismissed Parker’s claims of defamation, invasion of privacy and negligence arising out of Google’s republication of, and failure to address allegedly defamatory statements authored by third parties.  Google made such defamatory statements available both when it archived third party Usenet posts that contained such statements, and when it copied the ‘Official Roy Gordon FAQ’ website that itself contained defamatory statements.  Parker alleged that Google invaded his privacy by aiding users in searching and obtaining from the Internet information about him, and thereby creating an “unauthorized biography.”  The District Court dismissed each of these claims, holding Google immunized therefrom by operation of Section 230 of the Communications Decency Act, as the content giving rise thereto was authored by third parties.  This determination was affirmed on appeal.

Lanham Act Claims Arising Out of ‘Republication’ Of Third Party Website Dismissed

Finally, the District Court dismissed the Lanham Act claims brought by Parker.  These claims arose out of Google’s “republication” of a third party website called the “Official Roy Gordon FAQ” which purportedly contained defamatory statements critical of plaintiff.  Parker claimed that this use of his “mark” would mislead consumers as to the source of this site.  The District Court rejected this claim for numerous reasons.  The Court held that the operator of the “Official Roy Gordon FAQ” site was not guilty of trademark infringement because it was not using plaintiff’s mark in commerce, as it did not offer to sell anything at its site.  The Court also held that this use was unlikely to confuse consumers as to the source of this site, given the derogatory statements it contained concerning plaintiff.  Because the trademark infringement claims against the site operator failed, so too did the claims against Google, as they sought to hold Google liable as an “aider and abetter” of the third party’s allegedly infringing activities.  In addition, such claims failed because Google was not alleged to have contributed in any was to the creation of this website.  Said the District Court:

“Personal liability extends only to those persons who actively participate as a moving force in the decisions to engage in the infringing acts or otherwise cause the infringement as a whole to occur.” … [T]here does not appear to be any aider and abetter liability under the Lanham Act.  (citation omitted).  It is clear that Google’s ‘republication of the Ray FAQ’ cannot possibly make it a ‘moving force’ in the infringement.  Plaintiff provides no additional detail about the meaning of ‘republication’ in this context and has certainly not alleged active participation on the part of Google.

This determination was affirmed on appeal.  The Third Circuit held that Parker’s false designation of origin claim failed because it was unlikely that consumers would be confused as to the source of the “Official Roy Gordon FAQ” website.  Parker’s trade disparagement claims failed because the statements at issue were not made in the context of commercial advertising.

Finally, the Third Circuit affirmed the District Court’s denial of Parker’s motion for leave to file a Second Amended Complaint on the grounds of futility.  Parker’s proposed pleading, held the Court, could neither cure the defects noted in his initial pleadings, nor supply alternative and viable claims, against Google.

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