The bizarre case of "Mr Spicy" (full judgement here) and his fight against Yahoo! UK Ltd and its sister company Overture Services Ltd is an odd one.
For a start, it's one of those cases that should never have got to court, and yet it did. Moreover, it's the sort of case which no one actually wins. I suppose that Yahoo gets the benefit of knowing that its keyword advertising and sponsorship business does not open it up to claims by the thousands of trade mark owners who might be affected, because a win by the Mr Spicy, as unlikely a prospect as it was, might well have opened the litigation floodgates but it comes at a price.
Yahoo's lawyers spun it as a "groundbreaking trade mark infringment case concerning keywords and sponsored search results" and whilst it was the first case of its kind in the UK, the fact the judge described the claim as "totally without merit" suggests that it wasn't really the dramatic victory Yahoo lawyers claim.
The case was brought by Mr Vince Wilson, owner of the Community Trade Mark for "MR SPICY". Mr Wilson has a trailer from which he runs the business Mr Spicy, selling food at carnivals and other festivals around London. He had registered the mark in 2003.
In November 2006, Mr Wilson discovered that if he typed Mr Spicy into the Yahoo UK search engine, the results would direct him to Sainsbury's website under the sponsored listings which appeared on the results page. A month later, he noticed that the results would also direct him to Pricegrabber.com's website and it was these sponsored links that upset him.
He decided to issue proceedings against Yahoo and Overture arguing that these sponsored links constituted an infringement of his trademark.
A major aspect of Yahoo and Overture's defence was that the advertisers whose sponsored links appeared on the search results had not actually purchased "Mr Spicy" as a keyword or phrase and that there was no infringement of Mr Wilson's trade mark. Indeed, the court heard evidence that no one had ever bought the keyword "Mr Spicy" and the sponsored links came about whenever the search included the word "spicy".
The judge took the view that the sponsored search results which included Sainsbury's and Pricegrabber had no effect on Mr Wilson and his brand.
"I do not begin to see how what is described in the search response with reference to Sainsbury's has any impact of an adverse character on Mr Wilson's rights as proprietor of the CTM."
He therefore took the view that Mr Wilson's claim did not disclose any cause of action and gave summary judgment for Yhaoo and Overture concluding:
"The trade mark in this case is not used by anyone other than the browser who enters the phrase "Mr. Spicy" as a search query in the defendants' search engine. In particular, the trade mark is not used by the defendants. The response of the defendants to the use of the trade mark by the browser is not use of the trade mark by the defendants. That is enough to decide the case in the defendants' favour. But the matter does not stop there. If, by some process of reasoning, one were to hold that the search engine's response to the words used by the browser was, itself, use by the defendants, in my judgment, it is not use
of the mark "Mr. Spicy". What, instead, is being used is the English word "spicy" as it appears in that phrase."
So having decided that Mr Wilson, who represented himself throughout the proceedings, had no claim, he also ordered that his claim be struck out and that Yahoo and Overture should get the costs of the proceedings paid on a "standard" basis.
Costs are important here, because it's fairly clear that Yahoo will not recover the full cost of defending these proceedings, which they put at £92,000. An additional judgement on the issue of costs which was heard a few days after the initial judgement was given reveals that Yahoo did their very best to settle the claim, but as is often the case with litigants in person, they just couldn't do it. So having had to go through all this hassle for no reason, Yahoo asked the court to award them all their costs on an indemnity basis i.e. they wanted to be paid for all the legal costs they had incurred without any strict assessment being made. The judge, while seemingly sympathetic to Yahoo's situation decided against it and so Mr Wilson only remained liable for costs on a standard basis, starting with a first instalment payment on account of £15,000.
I know, I said this was the sort of case where no one actually wins, but actually that's not quite true. Yahoo will still liable for all their legal costs, so as pleased as they might be to get Mr Wilson's claim struck out, they will still be paying the full costs of Bird & Bird's £92,000 fees (which of course include counsel's fees) which suggests that the lawyers are the only winners.
Post Script:
The impact of this case and it's relationship with Google's decision to alter its Trademarks Adwords policy which took effect earlier this month is explained in detail in a piece by Bonita Trimmer of Wragge & Co. on the Society for Computers and Law website.
For a start, it's one of those cases that should never have got to court, and yet it did. Moreover, it's the sort of case which no one actually wins. I suppose that Yahoo gets the benefit of knowing that its keyword advertising and sponsorship business does not open it up to claims by the thousands of trade mark owners who might be affected, because a win by the Mr Spicy, as unlikely a prospect as it was, might well have opened the litigation floodgates but it comes at a price.
Yahoo's lawyers spun it as a "groundbreaking trade mark infringment case concerning keywords and sponsored search results" and whilst it was the first case of its kind in the UK, the fact the judge described the claim as "totally without merit" suggests that it wasn't really the dramatic victory Yahoo lawyers claim.
The case was brought by Mr Vince Wilson, owner of the Community Trade Mark for "MR SPICY". Mr Wilson has a trailer from which he runs the business Mr Spicy, selling food at carnivals and other festivals around London. He had registered the mark in 2003.
In November 2006, Mr Wilson discovered that if he typed Mr Spicy into the Yahoo UK search engine, the results would direct him to Sainsbury's website under the sponsored listings which appeared on the results page. A month later, he noticed that the results would also direct him to Pricegrabber.com's website and it was these sponsored links that upset him.
He decided to issue proceedings against Yahoo and Overture arguing that these sponsored links constituted an infringement of his trademark.
A major aspect of Yahoo and Overture's defence was that the advertisers whose sponsored links appeared on the search results had not actually purchased "Mr Spicy" as a keyword or phrase and that there was no infringement of Mr Wilson's trade mark. Indeed, the court heard evidence that no one had ever bought the keyword "Mr Spicy" and the sponsored links came about whenever the search included the word "spicy".
The judge took the view that the sponsored search results which included Sainsbury's and Pricegrabber had no effect on Mr Wilson and his brand.
"I do not begin to see how what is described in the search response with reference to Sainsbury's has any impact of an adverse character on Mr Wilson's rights as proprietor of the CTM."
He therefore took the view that Mr Wilson's claim did not disclose any cause of action and gave summary judgment for Yhaoo and Overture concluding:
"The trade mark in this case is not used by anyone other than the browser who enters the phrase "Mr. Spicy" as a search query in the defendants' search engine. In particular, the trade mark is not used by the defendants. The response of the defendants to the use of the trade mark by the browser is not use of the trade mark by the defendants. That is enough to decide the case in the defendants' favour. But the matter does not stop there. If, by some process of reasoning, one were to hold that the search engine's response to the words used by the browser was, itself, use by the defendants, in my judgment, it is not use
of the mark "Mr. Spicy". What, instead, is being used is the English word "spicy" as it appears in that phrase."
So having decided that Mr Wilson, who represented himself throughout the proceedings, had no claim, he also ordered that his claim be struck out and that Yahoo and Overture should get the costs of the proceedings paid on a "standard" basis.
Costs are important here, because it's fairly clear that Yahoo will not recover the full cost of defending these proceedings, which they put at £92,000. An additional judgement on the issue of costs which was heard a few days after the initial judgement was given reveals that Yahoo did their very best to settle the claim, but as is often the case with litigants in person, they just couldn't do it. So having had to go through all this hassle for no reason, Yahoo asked the court to award them all their costs on an indemnity basis i.e. they wanted to be paid for all the legal costs they had incurred without any strict assessment being made. The judge, while seemingly sympathetic to Yahoo's situation decided against it and so Mr Wilson only remained liable for costs on a standard basis, starting with a first instalment payment on account of £15,000.
I know, I said this was the sort of case where no one actually wins, but actually that's not quite true. Yahoo will still liable for all their legal costs, so as pleased as they might be to get Mr Wilson's claim struck out, they will still be paying the full costs of Bird & Bird's £92,000 fees (which of course include counsel's fees) which suggests that the lawyers are the only winners.
Post Script:
The impact of this case and it's relationship with Google's decision to alter its Trademarks Adwords policy which took effect earlier this month is explained in detail in a piece by Bonita Trimmer of Wragge & Co. on the Society for Computers and Law website.
