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Here at WebFuel, we love inviting guest bloggers. Why? Because they can provide great insights about Canadian Search Issues from a different perspective. This week we welcome back Ottawa lawyer James Katz. In the past, James has blogged for WebFuel about Domain Name Disputes related to the .CA Domains and legal disputes in Canada. This week James returns with a post about legal issues related to Google Places.

Guest Post by James Katz

With the vast majority of consumers now searching for local businesses online, the importance of a Google Places listings to a business mining its local market can no longer be ignored. For those of you who are not sure what a Google Places listing is, or looks like, the good folks at WebFuel have provided a breakdown for you in the blog post entitled SEO & The Anatomy of a Google Places: From a Canadian Perspective.

My job as a lawyer that specializes in Internet related legal issues (which can range from simple contractual matters all the way to trade-mark infringement and cyber-libel) is to understand the legal issues that can arise from the use of Places listings. Suffice to say that, because of the volume of web traffic that Google sends, it wasn’t long before Places became a hugely popular location-based search tool. It also wasn’t long before legal issues associated with the misuse of Google Places listings began to arise, especially with regard to the issues of online trade-mark infringement and anti-competitive conduct.

Although Google has in place fairly strict policies governing the content of Google Places listings, including a general prohibition against using the intellectual property of others (such as trade-marks), it is important to understand what your legal rights are if you, and your business are faced with an online trade-mark dispute concerning a Google Places listing. For example, what if a competitor is using your business’s trade-name or trade-marks in its Google Places listing? Or, even more misleading, what if that competitor lists your unique business name or brand name as a link, which links not to your website, but to your competitor’s? Such tactics are not only unethical; they are also potentially in breach of Canadian trade-mark and competition law. I use the word “potentially” because, as of the date of this article, there are no reported Canadian court decisions that have concluded that such tactics are in fact illegal.

However, while the Canadian courts have been slow to address these legal issues, those in other commonwealth jurisdictions have a developing body of case law that indicates that such behavior is, in fact, unlawful. Recent court decisions in Australia (where Canadian courts often turn if a novel legal issue is being addressed in Canada for the first time)  have concluded that visible components of a trade-mark that appear either on a website or in a Google Places listing can amount to trade-mark infringement. The relief granted in that case included an injunction against using hidden meta tags on the infringing website that also made use of the infringed trade-mark, as well as an injunction prohibiting the infringer from using infringing keywords targeted via Google AdWords.

From a Canadian perspective, it is clear that using a competitor’s trade-mark visibly on a website (and this would include a Google Places listing) will amount to trade-mark infringement, especially if the infringing site itself that is linked to from Google Places is considered to be an active website, which in essence allows a consumer to purchase the infringing products or services directly through the website in question. In the case of passive websites (which are not set up to transact business, but act only as advertisements of the wares or services in question), the Canadian legal landscape is still unclear, as the appearance of infringing trade-marks on such sites may not be considered an infringing use of a trade-mark in association with wares. However, it is likely that such use may be considered infringing (under Canadian law) vis a vis services if the website is advertising services that are performed in Canada.

Canadian law is also unclear regarding the use of infringing marks in meta tags and paid keywords. However, given the Australian experience, it seems likely that, depending of the facts of a given case, that such unethical uses of a competitor’s trade-marks may, at the very least, be in breach of Canada’s Competition Act, which prohibits businesses from promoting its business by making a representation that is false or misleading in a material respect. It is also possible that such uses also amount to the tort of passing off, which essentially prohibits activities that are calculated to confuse consumers into thinking that infringing wares or services are in fact being supplied by the legitimate supplier and trade-mark owner.

Finally, it should be noted that trade-marks that also contain a design component (often called logos) are also protected as an artistic design under the Copyright Act. Therefore, there is no doubt that the use of such a trade-mark in Google Places or on a website, without permission, would amount to copyright infringement, which constitutes the unauthorized communication or reproduction of an original artistic work. As an aside, business owners must also keep in mind that if they use photographs in their Google Places listing, they must ensure that they hold the necessary copyright to use them. Stock photographs purchased (usually online) for Google Places listings or for any other advertisement are usually licensed, and commercial use of such images may be prohibited.

In sum, although Google has in place mechanisms to report infringements that occur via Google Places, keep in mind that it will often take Google months to even begin investigating such complaints. In the interim, your business could suffer as consumers are directed away from your website to that of your unethical competitor. Therefore, by exercising those legal rights available to you, you can equip yourself to take immediate and decisive action with your legal counsel to protect your business interests.

James Katz is Lawyer and Trade-mark Agent with the Ottawa law firm BrazeauSeller LLP. James’ practice focuses primarily on Internet related legal issues and litigation, including trade-mark and copyright infringement, defamation and online privacy issues.

Disclaimer: The contents of this Blog post, and associated opinions are those of its Author, and do not necessarily represent the opinions of WebFuel, or its employees.