Behind Google's German courtroom battle

Last October, the search giant grabbed headlines--and miffed some British users--when it voluntarily renamed its service "Google Mail" in the United Kingdom, following an out-of-court trademark dispute.

The woes don't end there. Across western Europe, a quiet battle rages on between Google and Daniel Giersch, a German-born venture capitalist who insists he'll never relinquish his 6-year-old trademark registration of "G-mail...und die Post geht richtig ab" (translation: G-mail...and the mail goes right off).

"Google's behavior is very threatening, very aggressive and very unfaithful, and to me, it's very evil," he said in a recent telephone interview with CNET News.com from his part-time Los Angeles home.

A Hamburg, Germany, district court has already handed Giersch victories at both the preliminary and final stages of the litigation. Dismissing Google's arguments that the two names are not confusingly similar, it ordered the company earlier this year to remove all "Gmail" references from its German service and to cease handing out gmail.com aliases to users within the geographic area.

Buoyed by that success, Giersch said he plans new lawsuits to defend more recent registrations of the trademark in Switzerland, Norway and Monaco, where he hopes to expand his electronic postal delivery business that goes by the G-mail (short for "Giersch mail") name. He said he is also considering a suit in the United States based on alleged "investment losses" that the overseas disputes have wrought on the American arm of his venture capital firm. (Google has already encountered competition for the U.S. trademark.)

Google still maintains it has clear rights to use the Gmail name in Germany and in countries throughout the world where it has applied for such trademark rights. It lodged an appeal against the Hamburg district court's decision but claims it has nevertheless been abiding by the orders to restrict all people determined to be German residents to use only of googlemail.com, ever since a preliminary injunction was issued in April 2005.

"In no case do we offer or allow a user to use '@gmail.com' if the user's IP address is German," a company representative said in an e-mail interview.

Daniel Giersch

Google has initiated its own actions against the 32-year-old Giersch in other European countries since the German litigation began, asserting it has prior rights to the Gmail name and that Giersch's registration attempts should be blocked. Giersch's lawyers said the company has filed--so far, unsuccessfully--for a cancellation of his Norwegian holding with the country's trademark office. The Google representative would confirm only that a court challenge is pending against the Swiss trademark, adding that "there are a number of cases outstanding against Giersch in Europe."

For the Mountain View, Calif.-based search market leader, the rationale is simple: "Google will take the action it deems necessary to protect our interests in Europe," the company representative said.

Google v. Giersch
Sergey Brin and Larry Page started Google with a home-brewed data center in a dorm room. For Daniel Giersch's venture, it was a backpack and a bicycle.

When he was 18, Giersch founded his first company, a same-day mail delivery service designed to offer a swifter alternative to the Deutsche Post. Within a few years, by his estimation, the company was delivering 80 percent of the mail within his hometown of Itzehoe, a town of about 30,000 residents near Hamburg.

Giersch ultimately sold control of the physical delivery operations and started on a new venture he called "hybrid mail." The idea is to combine the relative security of physical mail delivery with the speediness of e-mail. A sender's document is scanned into Giersch's system at its origin, transmitted electronically to a G-mail office in the destination city, printed out at the other end and hand-delivered to its recipient. Giersch also offers users a "secure" gmail.de address, which they can obtain only by verifying their identities with a passport or other official ID card--a far different business model from Google's Gmail, he said.

In 2000, Giersch registered "G-mail...und die Post geht richtig ab" with the German trademark office. He was still investing in and developing his hybrid mail service four years later (in Germany, one has five years after registering a trademark to commercialize its use), when he saw news reports that Google planned to launch a Web e-mail service named Gmail. Google's e-mail service debuted in April 2004.

"Knowing Google is very powerful, I liked it at the time; I Googled myself everyday. I said, 'you know what? I want to call these guys,'" Giersch said in a telephone interview. "I did my MBA, and I know what a big company is looking for, and that is international growth. I knew sooner or later they would go to Germany."

After rebuffing his initial attempts to talk over the situation, Google eventually offered to buy the German trademark rights for $250,000, Giersch said. But by then, turned off by what he deemed "arrogance" on the search giant's part, he had decided never to settle. When Google started offering the Gmail service in German in 2005, Giersch believed he had grounds under German trademark law to sue the company for infringement, so he did just that.

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 "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."