Not a Trademark Case: Edible vs Google at the Georgia Supreme Court

by Dennis Crouch

Edible IP v. Google (GA 2021)

This interesting case is pending before the Supreme Court of Georgia over the question of keyword advertising under Georgia law.  The following comes from Edible’s brief:

Edible’s claim is simple. It owns valuable intangible property associated with the trade name “Edible Arrangements.” The law [of Georgia] protects its right to exclude others from trading on that name and its associated good will for profit. The Complaint alleges that when Google auctions off that name and the associated business goodwill, Google violates Edible’s rights to exclude others from its property and appropriates the value of Edible’s goodwill for itself. As a matter of fact, this is an illegal [theft-by-]taking, and Edible can introduce evidence within the framework of the Complaint to prove each cause of action.

The trial and appellate courts both sided with Google, holding that keyword advertising is akin to permissible sponsored product placement in grocery stores.  The Supreme Court is set to hear oral arguments in the case on November 10, 2021.

Google argues that any decision in Edible’s favor would be contrary to federal trademark law and be in violation of the free speech provision of the First Amendment of the U.S. Constitution.

Google may have cleaned-up its advertising in the lead-up to the Supreme Court arguments. My search on Oct 18, 2021 revealed no ads showing up for “Edible Arrangements” but one of the top hits is a rhetorical question from Google “Is Edible Arrangements overpriced?”

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NOT a TM Case: A key aspect of the case is that Edible is not on suing trademark law.  Rather the cause of actions center on state statutes involving theft of personal property.  “Customer confusion is not an element of any of Edible’s claims.”  Edible’s Brief.   In its argument, Google argues for a bright line rule that Georgia courts cannot enforce rights to trade-names absent fraud, deception, or confusion.  According to Google, any broader rights would impinge upon the company’s freedom to sell competitive advert-space tied to Edible’s name as protected by the First Amendment.

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Edible International, LLC is the company that franchises the basket delivery.  The plaintiff here Edible IP, LLC is the company that owns the trademarks. Edible IP licenses the marks to Edible International.   It is not clear to me the exact relationship between these two companies, but they are obviously related.

Edible International opened an advertising account with Google, and clicked “I agree” to Google’s terms that included an agreement to arbitrate any resulting disputes.  The district court found this was binding on Edible IP, and that issue is also before the Georgia Supreme Court. Edible IP argues that it should not be bound by the actions of its Edible International relation.

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The International Franchise Association filed a brief in support of Edible: “Google’s advertising model is profiting directly from using the trade names and goodwill of established companies for profit. This use is antithetical to fair business practices and the law, and it should not be allowed.”

21 thoughts on “Not a Trademark Case: Edible vs Google at the Georgia Supreme Court

  1. 6

    This argument seems to grate against trademark law. It is long established that trademark rights are not a “right in gross” like a patent or copyright, but merely a “right appurtenant” to a business. One corrollary of that is that you have to show confusion or likelihood of confusion.

    First issue is whether Georgia law allows a right in gross in a word or phrase. I am dubious. Second issue is whether that is pre-empted by the Trademark Act. This issue is whether there is a First Amendment problem. Truthful comparative advertising, for example, seems to me to be protected by the First Amendment, yet could be impinged by this expansive view of Georgia law.

    1. 6.1

      There be a far cry difference though as the use here is behind the scenes of the search engine, and is explicitly used — by Google — as their revenue generation stream (in other words, they very much are making money on the terms). There is no sense of alternatives as you have posited.

      1. 6.1.1

        Yes, Google is making money by selling a use of brand names. But that begs the question of what proprietary interest one has in one’s trade name or trademark. It is generally understood in trademark law that you cannot own a word completely, only for certain purposes.

        There used to be a bumper sticker that said “My other car is a Porsche.” The printers of those clearly were using the word Porsche, and indeed an association with that brand as an expensive, luxury car, to make money. But I doubt that Porsche has a claim against those printers. Not under trademark law. The Georgia law I do not know, but I am dubious.

  2. 5

    A first amendment right to “sell competitive advert-space tied to [someone else’s] name” seems a bit of a stretch c.f., the long established right to publicity, etc.

    1. 5.1

      Prior cases had sought to dismiss the notion that the selling (by Google) was an action ON the trademark itself, basically asserting that Google’s actions were just not ‘business related’ enough.

      I always thought that such ‘reasoning’ did not stand up to scrutiny.

      1. 5.1.1

        All of the prior cases dealt with trademark laws requirement of likelihood of confusion. The early cases held there was a likelihood of initial confusion, because if you put in “Brand X” as a search term, and then a “Brand Y” result showed up, you were misleading people into thinking they were connected, at least initially.

        Google then got smart and created a separate “Sponsored Ads” section, and courts generally held there is no confusion.

        Some courts have expressed doubts about the confusion. One judge analogized it to someone going into a deparment store, and asking “Do you have a Pierre Cardin sweater,” and the clerk saying, “Yeah we have that, but we have some nice Ralph Lauren sweaters on sale, want to see some?”


          Thanks – I do think you are correct as to both how those early cases turned and the subsequent actions.

          But I still think the early cases missed the point of the behind-the-scenes business aspect, and that a focus on likelihood of confusion was not the avenue that should have been taken.

          (precisely in part because the actual Google use has nothing to do with comparative advertising)


            All of the prior cases were trademark cases, for which likelihood of confusion is an element of infringement. Without that showing, you have no case.

    2. 5.2

      How about truthful comparative advertising? Don’t you think that is protected?

      Or component brand referencing (e.g., “Intel inside”)?

      1. 5.2.1

        >How about truthful comparative advertising? Don’t you think that is protected?

        Google isn’t selling fruit baskets (nor selling blank advertising space ala a newspaper), so it’s hard to see any ‘comparative advertising’ happening here. IMHO, what Google is doing is more analogous to “Serve this fruit basket at your Superbowl party,” which as we all know, will get you sued in a heartbeat.

        But, to answer your question, even truthful comparative advertising would be limited e.g., you couldn’t run an ad with the caption “Callaway, the driver that Tiger Woods ~actually~ uses” over a zoomed in picture showing a Callaway driver in Tiger’s hands on Sunday at a major event.


          Fake edit: The key factor in this area is that comparative advertising isn’t trademark infringement, not that there is a 1st amendment right to use the other person’s mark i.e., I don’t think you could infringe someone’s trademark, then claim it’s protected by the 1st amendment.

  3. 4

    Not sure how Google’s use of the disputed keywords by Google and non-parties to the advertising contract would be bound by the arbitration clause of the advertising contract: the subject matters are not actually related to any activity by either party undertaken as a cause of the advertising relationship. If the plaintiff used Gmail phones and there was an arbitration clause in the Gmail terms of use, would that encompass this dispute as well?

  4. 3

    I wonder if this strange GA case could implicate another TM legal issue – the legal effect of a naked sale of a TM without any quality control over the subject product or service?

  5. 2

    Did you bros see the news that a bunch of “evil” women were recently outright fired FOR THEIR ID? Apparently they were either straight up volunteers or perhaps some slightly paid guides.

    link to

      1. 2.1.2

        “This is related to IP law, how?”

        How do you think? It’s called personnel issues, and they pervade every area, including IP. Will we achieve True Equity (TM) or will we not?

    1. 1.1

      It’s not – this is just one of 6’s ongoing “look at me look at me” topics.

      No real harm though, and more like a ‘meh, it’s not like 6 is the only one that has discovered that one can make money in the markets.’

      1. 1.1.1

        That sounds an awful lot like you do not believe achieving True Equity (TM) must be the mission of the federal government anon.

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