September 14, 2006 4:00 AM PDT

Behind Google's German courtroom battle

(continued from previous page)

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."

"We are always ready to talk to people who are prepared to be reasonable about these issues. But at the end of the day, he decided to go to court."
--Google representative

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 "johndoe@googlemail.com" can also receive mail addressed to "johndoe@gmail.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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30 comments

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that's a tough one.
Doesn't the domain make a difference?
Google uses gmail.com, Giersch uses gmail.de.
You can go to whatever.com/.org/.gov/.net and have 4 different
things, how is this any different?
If Giersch doesn't own the gmail.com domain, how does he have
a case?
Posted by fear_and_loathing (82 comments )
Reply Link Flag
Trademarks don't care about extensions...
It is still cybersquatting if you get target.net, or other trademarks. Just because it is .de does not mean it is a seperate entity. The issue is consumer confusion. Rememeber whitehouse.com vs whitehouse.gov? How many kids have gotten porn thinking they were going to email the president.
Posted by umbrae (1073 comments )
Link Flag
Not the same business.
The two businesses are not the same.

It's like the post office claiming it owned the word MAIL
Posted by disco-legend-zeke (448 comments )
Link Flag
Domain name vs. trademark
No, the domain name does not make the difference. An established trade mark superesedes domain name ownership. This has been clearly demonstrated in *many* cases now, for instance in the case of the guys who had registered cocacola.(***) and the rulings were cut and dry, that no matter whether the Coca Cola Corp ever actually wanted to use those domains did not matter, but somebody else owning and/or using such domains would infringe.
Posted by bigstinker (1 comment )
Link Flag
Gmail
Except that "G-Mail" is confusingly similar to GMail which stood for Gateway Mail and was used to send email through Bitnet before the term "internet" was ever coined.
Posted by Nchantim (10 comments )
Reply Link Flag
Come On
The guy is married to Kelly Rutherford and his life is already charmed give up the fight and let us have our email already, just be sure to get some nice publicity on your way out. Maybe Google can buy the whole company for a few million.
Posted by ccarey (18 comments )
Reply Link Flag
I hope he never gives in
Here is an enterprising young man, who has built a business through his own effort and intelligence. Now a big company comes in and tries to bully him. How can everyone see this as something he is doing wrong. He had the name first. It is his. Let google figure out another name.

I hope he never gives in.
Posted by burlap (8 comments )
Reply Link Flag
I wonder...
David v Goliath...

It would actually be nice to see all the corospondences that has passed between the two camps before judging...
Posted by stevejobless (40 comments )
Link Flag
I was on his side till ...
I read the final line of the article:

"I want this to stop, but not by giving up. I want this to stop only by shutting down Gmail."

So now this guy is trying to put himself over how many people that use Gmail!?

Sorry but if he was truly only out to protect his name he'd have the same consideration for the thousands of Gmail users he's trying to shaft. To say (even if translated poorly) that he wants Gmail shutdown shows that he has more on his agenda than simple trademark right protection.

Until he gets off his high horse I'm going to have to side with Google on this one, as much as that pains me to say (and yes I have a gmail account).

Peace.
Posted by Far Star (82 comments )
Link Flag
You go Mr. Giersch. God bless you! (nt)
(nt)
Posted by Heebee Jeebies (632 comments )
Reply Link Flag
Google should sue them all for extortion!
The domain gmail.com was created on Aug 12, 1995 by the people at garfield.com to be used as a free e-mail service similar to what hotmail was offering and to what GMail currently is. The internet archive shows what there webpage looked like in 1998 and you can see that G-Mail is present.
<a class="jive-link-external" href="http://web.archive.org/web/19981212025151/http://www.garfield.com/" target="_newWindow">http://web.archive.org/web/19981212025151/http://www.garfield.com/</a>
This predates the German man's trademark. Google approached the people at garfield and purchased the domain from then in good faith thereby transferring all rights to GMail going back to 1995 to google. All the people who filed trademark rights to GMail in the U.S. and the rest of the world after google made the announcement that they were starting the service are simply opportunist and should be charged with extortion.
Posted by AnimeFan5 (6 comments )
Reply Link Flag
Countries
We have these things called... countries... nowadays. Trademarks in one country dont usually apply to other countries. The domain could have been registered in 1899 in the US ... that has little to do with whether or not 'gmail' can be used in Germany legally.
Posted by (402 comments )
Link Flag
Names, and Times
If gmail was there first, and a small party business started the
service, they should have the ultimate decision on which Google
is asking to do, even though google was a university project, at
least I hope it was, for the sake of a search engine. Now they
are going into email services, if they have the hardware for it,
and if the people want it in that area. the DNS and netdress
elements should be completely different, google should have
something like "aname@gomail.com" short for
"aname@google.mail.com"

That would solve many problems and restore the peace.

-Alex
Posted by PixelRGB (1 comment )
Reply Link Flag
check out this Giersch job opening
<a class="jive-link-external" href="http://cc.msnscache.com/cache.aspx?q=3990171289098&#38;lang=en-US&#38;mkt=en-US&#38;FORM=CVRE2" target="_newWindow">http://cc.msnscache.com/cache.aspx?q=3990171289098&#38;lang=en-US&#38;mkt=en-US&#38;FORM=CVRE2</a>

To paraphrase:

"I need someone to do all the work for my PhD thesis for me, including raising all the money for the research, as well as act as my personal chaffeur. I expect you to have a first class wardrobe, and oh yeah, I'm only going to pay you 1500 Euros a month."

Gee, what an opportunity! This certainly calls into question the sort of person this Giersch guy is. CNET journalists ought to do more research before they write their articles.
Posted by floobydoo (1 comment )
Reply Link Flag
Re: Check out this Giersch job opening
OK, admittedly that's not good, but is his case against Google wrong?

I don't believe it is - not in the least.

Charles R. Whealton
Charles Whealton @ pleasedontspam.com
Posted by chuck_whealton (521 comments )
Link Flag
Assistant
Still for an assistant about 2000 USD a month canĀ“t be all that bad? And it also says it will be extend if they are successfull.
Posted by andrewholden (17 comments )
Link Flag
"Dont be evil"
Cha, right. Google's proving to be just as 'evil', if not more so, than most other corporations.

Give the guy a billion dollars, Google. Stop being cheap bastards. He beat you to the trademark, so either buy it from him or live with it.
Posted by (402 comments )
Reply Link Flag
evil?
Evil would be starting companies that are the same as his and running him out of business. They offered him 250k for the name, his business is a lot smaller and would definitely benefit from 250k influx of cash. HE is just being a greedy *****.
Posted by dingleberry420 (21 comments )
Link Flag
Google already bought the name once
They should counter-sue him back to the stone age.
Posted by Too Old For IT (351 comments )
Link Flag
Pardon?
"... that he's not out to block use of Gmail on a broad scale."

"... I want this to stop only by shutting down Gmail."

Pardon? Can [Giersch] please speak with a little more of a forked tongue?

Or did he just 'forget' to say *in Germany, Norway, Sweden, and Moranaco?*
Posted by hawkeyeaz1 (569 comments )
Reply Link Flag
Based on this two-faced speech
He should chuck his PhD and go to law school. Or into politics.
Posted by Too Old For IT (351 comments )
Link Flag
The Garfield site is not applicable to this case. The German business was established and running when Google tried, honorably enough, to buy it. He does not want to sell it and this is not a case of cybersquatting, though it may be a bit like Nabaoth's Vinyard. Google should just accomodate itself to not using gmail which is silly anyhow in germany. Tthe problem I have with gmail is it requires a whole extra step as opposed to Yahoo or Hotmail...or aol/aim . There is nothing sacrosanct about it having to be Google's.
Posted by dradzone (4 comments )
Reply Link Flag
 

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