Director, Service Delivery and Senior Legal Counsel, Incopro
Consumers enjoy buying stuff online – hardly an earth-shattering proposition in 2020 and not least as a global pandemic continues to encircle the globe, driving a seismic increase in online retail and locking most consumers out of traditional brick and mortar. Yet, the complexity of the technology underpinning their ability to do so is utterly mind bending. Clicking “buy now” via smartphone on that furniture polish you left off the weekly shop as you wait in line for the carwash is now a wholly unremarkable way to purchase polish. Few consumers ever pause to consider the significance of that click, which in fact initiates a series of algorithms so complex as to place their understanding way beyond most. The convenience of being able to shop in this way belies the reality of it involving the services of multiple, inter-connected parties including retailers, web hosts, ISPs, email providers, payment card networks, couriers and in all probability, search engines.
According to our data-driven research paper, Search Engines Time to Step Up, published in October 2019, search engines are pivotal in directing traffic to websites which infringe trademarks and offer for sale counterfeit goods, with an average of 56.3% of traffic to those sites arriving via organic search. This is hugely problematic for brands and consumers and, if left unchallenged, allows bad actors to flourish and remain one step ahead.
Happily for trademark owners, the landscape is slowly evolving, with Google issuing confirmation this summer that, upon being notified, it will now remove from organic search results links to pages on websites, which list a counterfeit product. Here we examine Google’s recent shift in policy, what may have driven the change and why for brands and their consumers, this step forward is really only the beginning.
THE PAST – WHY GOOGLE’S HISTORIC POSITION ON TRADEMARK INFRINGING LISTINGS IN ORGANIC SEARCH RESULTS WAS FLAWED AND LEFT MOST BRANDS WITH (ALMOST) NOWHERE TO TURN
Prior to June 2020, Google would do nothing when asked by a brand to remove from organic search results websites, which sell counterfeits. The rigidity of Google’s position here (unlike with copyright infringements where copyright owners have long been able to notify Google of copyright infringements in search results and request that they be removed pursuant to the Digital Millennium Copyright Act “DMCA”) has made it all but impossible for brands to secure appropriate and effective relief. Historically, their only option was to approach Google having first secured a Court Order, with all the vertiginous cost and inconvenience that that entails, before Google would agree to evaluate trademark infringements and even then, Google’s policy was to retain significant latitude over how it actually deals with relevant, infringing listings.
THE PRESENT – A SIGNIFICANT STEP FORWARD, BUT WITH A SIGNIFICANT AMOUNT STILL TO DO
With a striking display of volte face, Google does not now require the protection of a Court Order before it will intervene and, whilst the full impact of the recent policy shift is still to be examined in full, this is welcome news for trademark owners, for brands and for their consumers.
The significance of Google’s shift in policy should not be overlooked. Google has added an option to its Legal Trouble-shooter Form (extract below) through which users can now report individual links to pages on websites offering for sale counterfeit goods from organic search results (in a sense “levelling up” the position as regards trademarks with copyright).
This new approach presents brands with an additional weapon to deploy against infringing websites. Successful website enforcement was (and largely still is) reliant on brands issuing notices to the parties responsible for operating the website (hosts, registrars etc). Frequently, those notices are lost in the ether or are resolved only for the website to emerge elsewhere on the Internet where the infringement cycle begins all over again. As noted above, our research established that search engines are pivotal in directing traffic to infringing websites. We also established that some 47% of traffic to these websites comes from consumers using keywords, which specify a brand or particular product protected by trademarks. For the avoidance of doubt, successfully deploying the solution announced by Google will not cause websites to evaporate. However, it ought materially to reduce traffic to these sites, denying them the oxygen they depend on for survival.
Surprisingly given its significance, Google did not issue a formal communication through its press channels prior to the launch of this new initiative. As such, it is difficult to say definitively what may have driven the change. That said, it is clear that legislative and regulatory pressures on Internet platforms in general is intensifying. Initiatives such as the Shop Safe Act in the United States and the Digital Services Act package of measures announced by the European Commission are aimed broadly at enhancing platform accountability. Having long been committed to lobbying around Google’s policy on organic search, with a consistent position that search engines can and should do much more to protect brands and consumers, we targeted change; first through the publication of the Search Engines Time to Step Up research paper and subsequently through engagement and dialogue. The dual pressures of lobbying and the more restrictive legislative and regulatory environment in which Internet platforms find themselves appear to have elicited this policy change, which is cautiously welcomed by brands and their consumers.
THE FUTURE – WHAT DOES THIS BOIL DOWN TO FOR BRANDS AND CONSUMERS AND WHAT MORE IS THERE STILL TO DO?
With this recent change, Google agrees to deindex individual URLs. It does not agree to deindex entire websites (which could potentially be comprised of many hundreds or thousands of URLs). This leaves brands having to file separate notices for each individual URL for websites which are typically dedicated to infringing trademarks and selling counterfeit goods and which serve no legitimate purpose. The new policy does not therefore go far enough to protect brands and consumers.
Google’s shift in policy – in practical terms – does little to alleviate the strain on brands who continue to face relentless attacks from agile, intelligent infringers. With ever increasing pressure on budgets, this effectively means that brands are having to prioritize one search related threat over another, whilst never tackling the problem at source.
Though this development is a positive step forward, it’s clear that there is still much more that Google can and should do.
So, what next?
As the legislative and regulatory framework around Internet platforms pivots towards greater platform accountability, there is an opportunity for brands to capitalize on this growing momentum and redouble their efforts in pursuit of change.
The colossal power of Internet search engines presents an imbalance as brands seek to police and enforce their intellectual property rights on the Internet and protect consumers. In light of this, Google should not relax and, through its inaction, can expect further lobbying from industry groups and others in order to ensure that brands and consumers are protected on the Internet to the fullest extent.
THE BRAND PROTECTION PROFESSIONAL |SEPTEMBER 2020 | VOLUME 5 NUMBER 3
2020 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES