12:01pm PT by Eriq Gardner
Film Academy Investigating Google in Oscars Trademark Infringement Lawsuit (Exclusive)
There's obviously no love lost between Hollywood and Google on the intellectual property front, but would the Academy of Motion Picture Arts and Sciences make a splashy move like suing Google?
For the past two years, AMPAS, which puts on the Oscars each year, has been locked in a legal battle with Go Daddy. At issue in the case is whether the domain registrar giant facilitates trademark infringement from unscrupulous cybersquatters by allowing users to buy a domain like oscarshotels.com or oscarsliveblogging.com, "park" the page and collect a portion of revenue from Go Daddy's advertising partners on a pay-per-click basis.
The litigation has been stuck at the pretrial discovery stage, and there, Go Daddy appears to be mounting what might be called a "Blame Google defense."
As a result, in the past month, both Go Daddy and AMPAS have been attempting to get the judge to compel Google to hand over documents. Further, both parties also are looking to depose Google executives. Google is resisting, telling a judge, "Both parties to this litigation would undoubtedly love to bring Google into the mix, but discovery should not be used as a fishing expedition to develop claims that were not pled."
The already-nasty litigation could trigger tremendous fallout.
In December 2010, a federal judge in California allowed AMPAS to go ahead with its claims that Go Daddy’s “illegal activities result in advertising related to the Academy’s marks being placed on numerous parked pages that have actual relationship to the Academy, thereby causing dilution of Plaintiff’s interest in legally protected trademarks.”
Since then, AMPAS has been deposing many employees at Go Daddy, all the way up to the company's eccentric founder Bob Parsons.
One big topic of discussion in the early discovery phase is Google's involvement in helping monetize these controversial websites.
According to one court filing by the Film Academy, "Go Daddy has repeatedly informed AMPAS and the Central District of California Court that the sponsored links and advertisements on the parked pages are supplied by Google through Google's 'Adsense for Domains program (AFD)."
To win the lawsuit, AMPAS has to demonstrate a "bad faith intent to profit" from websites illegitimately registered. AMPAS says that as this case has proceeded, Go Daddy has been making the case that it cannot be liable under the Anti-Cybersquatting Protection Act because Google's AFD program is "solely responsible."
Further, AMPAS points to what's been said during the depositions: "Plaintiff has deposed at least 12 Go Daddy witnesses -- many of those witnesses have been unable to answer even basic questions about who, what, when and how Go Daddy came to the decision to monetize its parked page programs. The only other entity with knowledge on these issues is Google."
As a result, AMPAS has been demanding that a judge compel Google to give up information related to the implementation of AFD with respect to Go Daddy's parked page programs; its policies, procedures and expectations relating to domain names incorporating third-party trademarks; and revenue sharing between Google and Go Daddy.
AMPAS already has received 4,600 documents from Google, but it wants more, plus depositions of Google executives.
Pressure on Google also is coming from Go Daddy, which also has served a subpoena on the web search giant. Go Daddy also is seeking information about Google's decisions and policies.
The moves have brought a strong objection from Google.
On an initial matter, Google says that an agreement in writing between it and GoDaddy has barred any discovery upon Google in this lawsuit.
That's because Bryan Cave, the law firm representing Go Daddy, also represents Google in other matters. Because of the conflict, a waiver was worked out about 18 months ago wherein Bryan Cave could handle the case so long as Go Daddy wouldn't seek discovery from Google. (Go Daddy says it never authorized the waiver. The mess appears to be a terrible headache for Bryan Cave, one of the nation's biggest law firms.)
Google also objects to the way that this all has been handled, allegedly without proper notice and in an untimely fashion. The company asserts this is going to be a burdensome nightmare. What's being demanded of it?
"In short, everything, for seven years, about one of Google’s major advertising products, from its inner workings and trade secret algorithms to all of its terms and regulations to all of its income," responds Google in legal papers. "The task of preparing a single witness even for this one topic is daunting; it is the equivalent of asking General Motors for the person most knowledgeable about Chevys.”
(AMPAS has assured the court that it "has no desire to gain visibility into Google's "search and advertising algorithms.")
The developing controversy in this court case might be opening a rift between two Internet giants -- Google and Go Daddy -- and demonstrating the stakes.
Google argues that its role is irrelevant. "Simply put, a domain name violates or does not violate the ACPA regardless of the contents of the associated webpage," it says in opposition to motions to compel.
But Go Daddy hardly agrees, saying in legal documents, "Although Google has repeatedly tried to distance itself from the underlying litigation, the import of AMPAS’ claims, which seek to hold Go Daddy liable for inter alia contributory cybersquatting as a result of providing a method for the placement of specific advertisements on allegedly infringing domain names, cannot be underestimated in relation to Google’s bottom line."
AMPAS and one of its attorneys haven't responded to our question of whether Google faces any potential lawsuit. A hearing on Google's cooperation with the ongoing lawsuit is scheduled for Oct. 2 in San Jose federal court.
E-mail: [email protected]; Twitter: @eriqgardner