September 14, 2006 4:00 AM PDT
Behind Google's German courtroom battle
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Google, for its part, claims it has "at all times acted reasonably and fairly."
"We are always ready to talk to people who are prepared to be reasonable about these issues," the Google representative said. "But at the end of the day, he decided to go to court."
The parties now await proceedings in the German case, which could drag on several more months.
The appeals court will weigh not only whether Google should continue to be barred from using the Gmail name for its German service, but also, at Giersch's lawyers' request, whether it should be paying fines for alleged defiance of the district court's injunction.
Specifically, Giersch and his lawyers are concerned that any German user with a googlemail.com alias can still seamlessly receive e-mail addressed to a gmail.com alias--a situation that Google confirms. For instance, a German user who registers the address "firstname.lastname@example.org" can also receive mail addressed to "email@example.com." The question that remains is whether, as Giersch and his attorney Sebastian Eble claim, this represents "a severe infringement of the injunction."
Although Giersch vigorously disputes it, the matter has already been settled in Google's eyes. The court has already ruled that Google is "not responsible for people sending mail to '@gmail.com' when they should be sending it to '@googlemail.com,'" the company representative said, adding that even if people send e-mail to gmail.com suffixes, the user can only reply from a googlemail.com suffix.
If Google is, in fact, using the "Gmail" term internally, as a sort of "relay" service, then it may not be running afoul of the injunction, said Laura Heymann, a trademark-law professor at the College of William and Mary in Virginia.
At least one U.S. court "has concluded that that kind of internal use does not qualify as trademark use under U.S. trademark law and so therefore is not prohibited; and at least one German court has held similarly with respect to the use of trademarks as metatag," she said in an e-mail interview. "It would be interesting to see if the German court here adopts similar reasoning."
An opinion is also expected from the Swiss court, where Google has sought to overturn Giersch's 2005 trademark registration as a "bad faith" attempt to squeeze out its operations there. It's not clear when the decision will be rendered.
Giersch maintains the allegations of "bad faith" are nonsense and that he's not out to block use of Gmail on a broad scale. "If I had wanted to, I could've registered all trademarks every single day in Togo, in Africa," but that's not his business model, he said. He claims he has reasons for picking each of the places where he has registered Gmail-related trademarks in 2005 and has declared those intentions to Google: Switzerland, for its proximity to the German market; Monaco, because he has moved there for its tax perks; and Norway, because he earned his masters degree in business there.
Giersch says he has begun beta-testing his hybrid mail service in Itzehoe. Crediting his ventures, he said he is in a "good place" financially and splits his time between well-appointed homes in Los Angeles and Monaco. He and wife Kelly Rutherford, an American television actress, have a baby on the way.
"I'm on the phone with my attorneys in Europe every single day," Giersch said. "This all is a lot of pressure for my family, too...I want this to stop, but not by giving up. I want this to stop only by shutting down Gmail."
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