Edible Ip, LLC v. Google, LLC ( 2022 )

In the Supreme Court of Georgia
Decided: February 15, 2022
S21G0798. EDIBLE IP, LLC v. GOOGLE, LLC.
MCMILLIAN, Justice.
This case involves Google LLC’s application of internet search
algorithms, which it uses to auction off search terms for profit to
advertisers, and the interests of Edible IP, LLC, which seeks to
exercise control over the profit generated from its trade name and
associated goodwill. In 2018, Edible IP brought an action against
Google arising from Google’s monetization of the name “Edible
Arrangements” without permission in its keyword advertising
program. Google moved to dismiss the complaint, or in the
alternative, to compel arbitration. The trial court granted the
motion, dismissing the complaint on several grounds, including that
it failed to state a claim, and alternatively compelling the parties to
arbitration. Edible IP appealed from that order, and the Court of
Appeals affirmed the dismissal for failure to state a claim. See
Edible IP, LLC v. Google, LLC, 358 Ga. App. 218 (854 SE2d 565)
(2021). We granted certiorari to address whether the trial court
properly granted Google’s motion to dismiss. 1 For the reasons that
follow, we conclude that Edible IP has not stated a cognizable claim
for relief and therefore affirm.
The Court of Appeals summarized the relevant facts
underlying this appeal as follows:
[T]he complaint alleges that Edible IP owns the
trademarks, trade names, and other intellectual property
associated with Edible Arrangements, a business
consisting of websites and “brick-and-mortar” franchises
that sell, among other things, floral-shaped arrangements
of fresh-cut fruit. To support these websites and
franchises, Edible IP licenses the use of its intellectual
property to various entities. Edible IP, however,
maintains ownership of the intellectual property, which
includes the trademark/trade name “Edible
Arrangements,” as well as the goodwill generated by the
brand.
Google operates an internet search engine that
allows individuals to search for information by typing
relevant words into a search bar. Using algorithms that
analyze the search terms and requested information,
1 We are aided in this endeavor by amicus curiae briefs filed by the
International Franchise Association and the Internet Association.
2
Google returns “organic” results of the query on a results
page. According to the complaint, Google monetizes its
search engine by “sell[ing] . . . ‘keywords’” to advertisers
that “trigger advertisements on the search results page
when Google users search for the keyword term.”
Keyword advertising is purchased through an
auction-like process, with prospective advertisers bidding
on terms suggested by Google. The auction includes
general terms like “shoes” and “mother’s day gift,” as well
as trade names such as “Edible Arrangements.” Google
has never contracted with Edible IP for the right to use
the Edible Arrangements trade name, and Edible IP has
not otherwise given Google permission to include its trade
name in the keyword advertising program. Nevertheless,
Google began auctioning the trade name to advertisers in
approximately 2011. As described by the complaint,
Google places advertisements purchased through the
keyword program “in a more attractive location on the
results page than its ‘organic’ results in an effort to drive
consumer behavior and get those consumers to click on
the ad rather than Google’s ‘organic’ results.”
Based on these and other allegations, Edible IP sued
Google for theft of personal property, conversion, money
had and received, and civil [Racketeer Influenced and
Corrupt Organizations (“RICO”)] violations. Google
moved to dismiss the complaint, arguing that any claims
alleged by Edible IP needed to be arbitrated, that a forum
selection clause deprived the trial court of personal
jurisdiction over Google, and that the complaint failed to
state a claim upon which relief could be granted. Google
also requested that the trial court compel the parties to
arbitration.
3
The trial court granted the arbitration request,
determining that Edible IP was subject to an arbitration
provision agreed to by one of Edible IP’s affiliates, which
had accepted the terms and conditions of Google’s
advertising program. The trial court also found that a
forum selection clause within those terms and conditions
required that the litigation be filed in California.
Alternatively, the court concluded that the complaint
failed to state a claim.
Edible IP, 358 Ga. App. at 219-20.
On appeal, the Court of Appeals assumed, without deciding,
that the trial court correctly determined that Edible IP was bound
by the arbitration and forum selection clauses in Google’s contracts
with companies affiliated with Edible IP and held that Edible IP’s
complaint failed to state a claim upon which relief may be granted.
See Edible IP, 358 Ga. App. at 220. We granted Google’s petition for
certiorari to review that holding.
1. A trial court is not authorized to grant a motion to dismiss
for failure to state a claim upon which relief may be granted unless:
(1) the allegations of the complaint disclose with certainty
that the claimant would not be entitled to relief under any
state of provable facts asserted in support thereof; and (2)
the movant establishes that the claimant could not
possibly introduce evidence within the framework of the
4
complaint sufficient to warrant a grant of the relief
sought.
Global Payments, Inc. v. InComm Financial Svcs., Inc., 308 Ga. 842,
842-43 (843 SE2d 821) (2020) (citation and punctuation omitted).
And in deciding such motions, “all pleadings are to be construed
most favorably to the party who filed them, and all doubts regarding
such pleadings must be resolved in the filing party’s favor.” Id. at
843 (citation and punctuation omitted). This Court reviews the
grant of a motion to dismiss de novo. See Norman v. Xytex Corp., 310
Ga. 127, 130 (2) (848 SE2d 835) (2020).
Edible IP insists that this case does not involve trademark
infringement claims, 2 asserting instead that it is challenging
Google’s direct sale of its proprietary name and goodwill to
competitors via Google’s keyword advertising program and that the
trial court ignored longstanding property law that guarantees a
remedy for violations of property rights. Based on this theory, Edible
2 In its complaint against Google, Edible IP specifically disavowed any
such claims: “Edible IP does not assert any federal trademark infringement or
federal dilution claims, nor seek any other relief for any consumer confusion.”
5
IP has alleged four claims: (1) civil theft of personal property; (2)
conversion; (3) money had and received; and (4) violations of
Georgia’s RICO Act. We will address each of the claims in turn.
a. Civil Theft of Personal Property
Georgia law authorizes the owner of property to bring a civil
action to recover damages from any person who either (1) willfully
damages the owner’s personal property or (2) commits a theft as
defined in OCGA § 16-8-2. See OCGA § 51-10-6 (a). OCGA § 16-8-2,
in turn, provides that
[a] person commits the offense of theft by taking when he
unlawfully takes or, being in lawful possession thereof,
unlawfully appropriates any property of another with the
intention of depriving him of the property, regardless of
the manner in which the property is taken or
appropriated.
In its complaint, Edible IP relied on the second method, alleging that
“Google has committed theft by taking, in violation of OCGA § 16-8-
2” by “unlawfully tak[ing] and otherwise appropriat[ing] Edible IP’s
property by selling that property without permission to others and
keeping the proceeds for itself.” Edible IP identified the property as
6
its “trade name ‘Edible Arrangements’ and the good will and
reputation associated with that name.”
Noting the statutory definition of “deprive,”3 the trial court
concluded that because Edible IP has been able to make use of its
trade name over the past decade, Edible IP was unable to plead facts
establishing that Google “withheld” or “disposed” of its trade name.
The Court of Appeals ultimately agreed, explaining that, rather
than taking Edible IP’s trade name or selling it for profit, Google’s
conduct involves the sale and placement of advertisements, which
does not constitute a taking or appropriation of Edible IP’s property.
See Edible IP, 358 Ga. App. at 221 (1).
Edible IP now argues that, in affirming the trial court’s grant
of Google’s motion to dismiss, the Court of Appeals looked beyond
the plain language of Georgia’s theft statute to improperly limit its
In this context, “[d]eprive” means, without justification:
3
(A) To withhold property of another permanently or temporarily;
or
(B) To dispose of the property so as to make it unlikely that the
owner will recover it.
OCGA § 16-8-1 (1).
7
scope. On the other hand, Google asserts that OCGA § 51-10-6 was
introduced in the legislature as the “Civil Shoplifting Act” to give
merchants a civil remedy against shoplifters and does not cover the
use of trademarks. 4 We are, thus, first required to determine
whether Edible IP’s trade name and associated goodwill are
“property” within the meaning of the civil theft statute and, if so, the
contours of the associated property rights and whether Edible IP has
sufficiently alleged that Google has wrongfully “appropriated” this
property.
(i) Turning to the first question, we begin by defining several
key terms. OCGA § 16-1-3 (13) broadly defines “property” as
anything of value, including but not limited to real estate,
tangible and intangible personal property, contract rights,
services, choses in action, and other interests in or claims
to wealth, admission or transportation tickets, captured
or domestic animals, food and drink, and electric or other
power.
4See Ga. L. 1988, p. 404, § 1; D. Johnson, Injuries to Personality; Provide
Remedy for Owners of Intentionally Damaged or Stolen Property, 5 Ga. St. U.
L. Rev. 503 (1988).
8
Id. (emphasis added). A “trade name”5 is “a word, name, symbol,
device, or any combination of the foregoing in any form or
arrangement used by a person to identify his business, vocation, or
occupation and distinguish it from . . . others.” OCGA § 10-1-371 (8).
“Goodwill” has been defined as “essentially the positive reputation
that a particular business enjoys. This ‘positive reputation’
manifests itself as an expectancy that a business has of continued
patronage from its customer.” 38 Am. Jur. 2d Good Will § 1. See also
Armstrong v. Atlantic Ice & Coal Corp., 141 Ga. 464, 466 (81 SE 212)
(1914) (“Good will is the favor which the management of a business
wins from the public, and the probability that old customers will
continue their patronage and resort to the old place.” (citation
omitted)); Goodwill, Black’s Law Dictionary (11th ed. 2019) (defining
goodwill as “[a] business’s reputation, patronage, and other
intangible assets that are considered when appraising the
business”).
5 A “trademark” is separately defined as “a mark used by a person to
identify goods and to distinguish them from the goods of others.” OCGA § 10-
1-371 (7).
9
We have expressly recognized that goodwill is a type of
intangible property interest. See Nat. Assn. for Advancement of
Colored People v. Overstreet, 221 Ga. 16, 29 (4) (a) (142 SE2d 816)
(1965) (“It is uniformly recognized that good will is a species of
property and constitutes a valuable asset of the business of which it
is a part.” (citation omitted)). See also Reis v. Ralls, 250 Ga. 721, 723
(1) (301 SE2d 40) (1983) (“[I]t appears clear that in addition to a
trademark, a trade name, along with the goodwill it represents, may
be the subject of an Article 9 security interest.”).
Here, Edible IP specifically pleaded that it is the only entity
entitled to license the use of the trade name “Edible Arrangements”;
that it licenses the use of that name to its various franchisees and
affiliates, including both brick-and-mortar franchises and internet-
based retailers locally, nationally, and globally; and that its
franchisees rely heavily on consumers seeking out their locations by
name. Construing these factual allegations in favor of Edible IP for
the purpose of analyzing Google’s motion to dismiss, as we must,
Edible IP has sufficiently alleged a property interest in the trade
10
name “Edible Arrangements” and its associated goodwill within the
meaning of OCGA § 51-10-6.
(ii) We turn now to the question of whether Google’s actions
constitute theft of that property interest as alleged by Edible IP, and
to answer that question, we must first consider what rights the
owner of a trade name and the associated goodwill has to exclude
others from using its trade name. “Georgia protects trade names by
statute and by common law.” Diedrich v. Miller & Meier & Assocs.,
254 Ga. 734, 736 (2) (334 SE2d 308) (1985). See also Giant Mart
Corp. v. Giant Discount Foods, Inc., 247 Ga. 775 (279 SE2d 683)
(1981). Thus, in order to determine the contours of Edible IP’s
property right in its trade name, we must examine both Georgia
statutory law and the common law.
Georgia statutes have long provided only limited protections to
owners of trademarks and trade names. Notably, these statutory
protections do not preclude a third party from any and all use of an
owner’s trademark or trade name. For example, in 1968, the General
Assembly enacted the Uniform Deceptive Trade Practices Act,
11
OCGA § 10-1-370 et seq., as a source of relief for, among other
things, the victim of trademark or trade name infringement. See Ga.
L. 1968, p. 337, § 2. Relevant to our inquiry here, OCGA § 10-1-372
(a) defines a deceptive trade practice as one that:
(1) Passes off goods or services as those of another;
(2) Causes likelihood of confusion or of misunderstanding
as to the source, sponsorship, approval, or certification of
goods or services;
(3) Causes likelihood of confusion or of misunderstanding
as to affiliation, connection, or association with or
certification by another;
...
(12) Engages in any other conduct which similarly creates
a likelihood of confusion or of misunderstanding.
Other statutes protect against the deceptive use of another’s
trademark or trade name. OCGA § 23-2-55 provides that “[a]ny
attempt to encroach upon the business of a trader or other person by
the use of similar trademarks, names, or devices, with the intention
of deceiving and misleading the public, is a fraud for which equity
will grant relief.” (Emphasis added.) See also Giant Mart Corp., 247
Ga. at 776 (holding that relief under OCGA § 23-2-55 “depends upon
a showing of intent to deceive[,]” which “may be presumed if
12
encroachment is done with knowledge of prior right”). Similarly,
OCGA § 10-1-453 provides:
Any firm, person, corporation, or association who shall
use the name or seal of any other person, firm,
corporation, or association, in and about the sale of goods
or otherwise, not being authorized to use the same,
knowing that such use is unauthorized with intent to
deceive the public in the sale of goods, shall be guilty of a
misdemeanor.
(Emphasis added.) 6 Under each of these statutes, it is clear that
trade names are only protected from use by others to the extent that
such use is deceptive or there is a likelihood of confusion by the
public. 7
6 We note that a claim for trademark dilution under OCGA § 10-1-451
(b) requires a “blurring” or “tarnishment” of the trademark to bring an
actionable claim. McHugh Fuller Law Group, PLLC v. PruittHealth, Inc., 300
Ga. 140, 144-46 (2) (794 SE2d 150) (2016). Edible IP does not allege that Google
has diluted the Edible Arrangements trade name by using it in Google’s
keyword advertising program.
7 We note that the General Assembly enacted OCGA § 16-9-93.1 in 1996,
which, in pertinent part, makes it a crime for
any person . . . knowingly to transmit any data through a computer
network . . . if such data uses any . . . trade name, registered
trademark, logo, legal or official seal, or copyrighted symbol . . .
which would falsely state or imply that such person . . . has
permission or is legally authorized to use [it] for such purpose
when such permission or authorization has not been obtained.
OCGA § 16-9-93.1 (a). See Ga. L. 1996, p. 1505, § 1. Shortly after its enactment,
however, a federal court deemed the statute unconstitutional. See American
13
Here, Edible IP has not alleged that Google’s use of the “Edible
Arrangements” trade name in its keyword advertising program
causes any confusion, and in fact, has disclaimed in the complaint
that it is “seek[ing] any . . . relief for any consumer confusion.” Thus,
we see no basis in Georgia statutory law for Edible IP’s claim that
Google has appropriated the “Edible Arrangements” trade name
simply by using it in Google’s algorithms and keyword advertising
programs.
The common law likewise does not provide a basis for Edible
IP’s civil theft claim. Under the common law, a cause of action based
on the use of a trademark or trade name has also generally been
Civil Liberties Union of Ga. v. Miller, 977 FSupp. 1228, 1233-35 (1) (N.D. Ga.
1997) (concluding that, because the statute criminalizes the use of trademarks
and trade names regardless of the speaker’s intent to deceive or whether
deception actually occurs, the statute’s language is not narrowly tailored to
promote a compelling state interest; is overbroad and sweeps protected activity
within its proscription; and is void for vagueness). Relying on Miller, Google
argues that Edible IP’s proposed construction of OCGA §§ 51-10-6 and 16-8-2
would render the civil theft statute unconstitutional in the same way as OCGA
§ 16-9-93.1 and that, under the canon of constitutional doubt, the civil theft
statute should be read to not criminalize the use of non-deceptive and non-
confusing trade names in keyword searches. We need not reach that question,
however, because we conclude below that Edible IP has failed to state a claim
for civil theft of its trade name on other grounds.
14
predicated on either an intent to cause consumer confusion or the
likelihood of creating confusion or misunderstanding. See, e.g.,
McLean v. Fleming, 96 U.S. 245, 251 (24 LEd 828) (1877) (“[N]o
trader can adopt a trade-mark, so resembling that of another trader,
as that ordinary purchasers, buying with ordinary caution, are
likely to be misled.”); McHugh Fuller Law Group, PLLC v.
PruittHealth, Inc., 300 Ga. 140, 144 (2) (794 SE2d 150) (2016); Reis,
250 Ga. at 724 (2) (concluding that equity will enjoin use of another’s
trade name where “the buyers are knowingly using a confusingly
similar name”); Pearl Optical, Inc. v. Pearle Optical of Ga., Inc., 218
Ga. 701, 705 (3) (130 SE2d 223) (1963) (if the general public might
be deceived and misled into confusing the two businesses, the result
could dilute plaintiff’s goodwill to the unjust enrichment of
defendant); Gano v. Gano, 203 Ga. 637, 639 (47 SE2d 741) (1948)
(liability existed where defendant copied trade name “for the
purpose of deceiving the public into thinking that the businesses of
the plaintiffs and the defendants were the same”); Kay Jewelry Co.
v. Kapiloff, 204 Ga. 209, 213 (49 SE2d 19) (1948) (“The ultimate
15
wrong under all these theories of relief is that there will be a
confusion on the part of the public.”). As this Court has explained,
“[r]elief against unfair competition by the use of trade-names really
rests on the deceit or fraud which the later comer into the field is
practicing upon the earlier comer and on the public.” Atlanta Paper
Co. v. Jacksonville Paper Co., 184 Ga. 205, 212 (2) (190 SE 777)
(1937). And,
[u]nless it appears that there is or will probably be a
deception of ordinary buyers and the general public into
thinking that the goods or business of one is the business
or goods of another, and thus bring about the sale of one
man’s goods as the goods of the other, the case is [damage
without injury], for which no action lies.
Id. at 213 (2).
Other jurisdictions, considering infringement claims in various
statutory contexts and under the common law, have reached this
same conclusion, i.e., without consumer confusion, mere use of a
trademark or trade name does not deprive the owner of the
trademark or trade name and its associated goodwill. See, e.g.,
Limitless Worldwide, LLC v. AdvoCare Intl., LP, 926 FSupp.2d
16
1248, 1254 (D. Utah 2013) (declining to issue injunctive relief to
protect defendant’s goodwill where there was no likelihood of
confusion from the plaintiff’s use of the word “Spark”); Minnesota
Pet-Breeders v. Schell & Kampeter, 843 FSupp. 506, 518 (D. Minn.
1993) (“The touchstone of proof of loss of goodwill damages is
consumer confusion – if consumers are not confused[,] . . . the
complaining party cannot be said to have suffered compensable loss
of any goodwill . . . .” (emphasis in original)); Union Carbide Corp. v.
Fred Meyer, Inc., 619 FSupp. 1028, 1035 (D. Ore. 1985) (“No loss of
reputation, trade, or good will . . . takes place in the absence of
consumer confusion.”). Cf T-Mobile US, Inc. v. Aio Wireless LLC, 991
FSupp.2d 888, 929 (S.D. Tex. 2014) (monetary damages not
sufficient to remedy the loss of future goodwill where plaintiff
established likelihood of consumer confusion).
And although Edible IP disclaims asserting any federal
trademark claim, a review of federal trademark law is instructive
on the contours of a third party’s right to use a trade name. Like
Georgia statutory law and the common law, federal trademark law
17
offers only limited trademark and trade name protection.8 For
example, the doctrine of fair use permits reference to a competitor’s
trade name in an advertisement. See Saxlehner v. Wagner, 216 U.S.
375, 380-81 (30 SCt 298, 54 LEd 525) (1910) (seller can use
competitor’s name in advertising to explain its product was
imitation of competitor’s); Toyota Motor Sales, U.S.A., Inc. v. Tabari,
610 F3d 1171, 1180 (A) (9th Cir. 2010) (“[T]he wholesale prohibition
of nominative use in [trade names] . . . would be unfair to merchants
seeking to communicate the nature of the service or product offered
. . . [and] to consumers, who would be deprived of an increasingly
important means of receiving such information.”); Intl. Stamp Art,
Inc. v. United States Postal Service, 456 F3d 1270, 1277 (11th Cir.
2006) (no trademark infringement where defendant’s use of the
mark did “not attempt to capitalize on consumer confusion” and did
not “implicate the source-identification function that is the purpose
8 See 15 USC § 1115 (b) (1-9) (listing defenses available to an
infringement claim, including subpart (b) (4): “[t]hat the use of the name . . . is
descriptive of and used fairly and in good faith only to describe the goods or
services of such party, or their geographic origin”).
18
of trademark” (citation omitted)). See also Smith v. Chanel, Inc., 402
F2d 562, 567-68 (9th Cir. 1968) (allowing perfume maker to
advertise that its scent smells like Chanel No. 5); Delta Air Lines,
Inc. v. Wunder, Case No. 1:13-CV-3388, 2015 U.S. Dist. LEXIS
199749, at *32-33 (N.D. Ga. Dec. 15, 2015) (“[O]ne can use another’s
mark truthfully to identify another’s goods or services in order to
describe or compare its product . . . . This right to use a mark to
identify the marketholder’s products—a nominative use—however,
is limited in that the use cannot be one that creates a likelihood of
confusion . . . .” (citation omitted)); McHugh Fuller Law Group, 300
Ga. at 148 (2) (“[T]rademark law does not impose a blanket
prohibition on referencing a trademarked name in
advertising. Indeed, it is often virtually impossible to refer to a
particular product for purposes of comparison, criticism, point of
reference, or any other such purpose without using the mark.”
(citation and punctuation omitted)).
In summary, trademark law recognizes a distinction between
the illegitimate misappropriation of a business’s goodwill and
19
legitimate comparative advertising and, therefore, permits the use
of trade names as long as referencing other brand names does not
confuse consumers and is not deceptive. 9 Indeed, if liability for using
a trademark or trade name could be imposed without the “likelihood
of confusion” test, as Edible IP urges, then “over 100 years of
trademark law would be discarded.” J. Thomas McCarthy,
Conversion of a Trademark, 4 McCarthy on Trademarks and Unfair
Competition, § 25:9.50 (5th ed. 2019) (hereafter “McCarthy”)
(explaining why “the tort of ‘conversion’ should not be used in
ordinary trademark infringement cases as a shortcut around the
trademark law’s standards of protection”). We see no reason to
9 A federal trademark infringement claim is also predicated on the
likelihood of consumer confusion. The Eleventh Circuit, for example, employs
a seven-factor test to analyze the likelihood of confusion:
(1) strength of the mark alleged to have been infringed; (2)
similarity of the infringed and infringing marks; (3) similarity
between the goods and services offered under the two marks; (4)
similarity of the actual sales methods used by the holders of the
marks, such as their sales outlets and customer base; (5) similarity
of advertising methods; (6) intent of the alleged infringer to
misappropriate the proprietor’s goodwill; and (7) the existence of
actual confusion in the consuming public.
Delta Air Lines, Inc. v. Wunder, Case No. 1:13-CV-3388, 2015 U.S. Dist. LEXIS
199749, *25-26 (N.D. Ga. Dec. 15, 2015) (citation and punctuation omitted).
20
extend civil theft in Georgia to encompass the mere use of a trade
name, without implicating consumer confusion, when doing so
would subvert Georgia trademark law, federal trademark law, and
the common law of trademark infringement.
Edible IP claims that it has the absolute right to control the
use of its trade name and associated goodwill, but the cases Edible
IP points to for this proposition are inapplicable here. For example,
in Department of Transportation v. Arnold, 243 Ga. App. 15 (530
SE2d 767) (2000), the Court of Appeals held that the government
was required to pay a landowner for the goodwill associated with his
property taken by eminent domain. See id. at 17 (1). This case does
not aid Edible IP, as there is no allegation here of a physical taking
associated with its goodwill claim. Edible IP also points to Martin
Luther King, Jr., Center for Social Change, Inc. v. American Heritage
Products, Inc., 250 Ga. 135 (296 SE2d 697) (1982), in which this
Court held that Martin Luther King, Jr.’s heirs are entitled to
protect his “name and likeness” from those who would appropriate
it “without consent and for financial gain.” Id. at 141-42 (1)
21
(recognizing common law right to prevent exploitation of person’s
image for profit as “one of preventing unjust enrichment by the theft
of good will” (citation omitted)). But, the intangible property at issue
in that case was a natural person’s right to publicize his name and
likeness, which is also a kind of invasion of privacy claim, and is a
right that is distinct from those trade name rights extended to a
corporation such as Edible IP. See id. at 138-42 (analyzing right to
publicity as deriving from a natural person’s right to privacy); cf.
United States v. Morton Salt Co., 338 U.S. 632, 652 (IV) (70 SCt 357,
94 LEd 401) (1950) (“[C]orporations can claim no equality with
individuals in the enjoyment of a right to privacy.”); Bd. of Regents
of the Univ. System of Ga. v. Atlanta Journal & Atlanta Constitution,
259 Ga. 214, 217 (4) (a) (378 SE2d 305) (1989) (distinguishing
between a personal right to privacy and a corporate preference for
privacy).
Edible IP also argues, citing Williams v. National Auto Sales,
Inc., 287 Ga. App. 283 (651 SE2d 194) (2007), that “an unauthorized
22
sale of the property is itself an unlawful exercise of dominion.” 10 Id.
at 286 (1). Although this principle is generally true, this argument
inaccurately presupposes that Google has actually sold any of Edible
IP’s property versus using the “Edible Arrangements” trade name in
selling Google’s own advertising. 11
An-Hung Yao v. State, 975 NE2d 1273 (Ind. 2012), is likewise
distinguishable. In An-Hung Yao, the defendants were charged with
theft, among other things, for selling “airsoft guns” that were
replicas of real weapons made by a firearms manufacturer; the theft
10 In Williams, a car owner sued a dealership and its employee for
conversion and a variety of other claims after the dealership repossessed the
owner’s car and sold it to a third party. See 287 Ga. App. at 283.
11 Edible IP also points to several cases that it alleges found a deprivation
of property absent any physical taking. See, e.g., Levenson v. Word, 294 Ga.
App. 104, 107-08 (668 SE2d 763) (2008) (addressing assets of a decedent’s
estate); Taylor v. Powertel, Inc., 250 Ga. App. 356, 358-59 (551 SE2d 765)
(2001) (charges on a phone bill); Jones v. Turner Broadcasting System, 193 Ga.
App. 768, 769 (389 SE2d 9) (1989) (business plan for a television show); Brown
v. State, 177 Ga. App. 284, 290-91 (339 SE2d 332) (1985) (theft of services);
State v. Cecil, Case No. 35979-1-II, 2008 Wash. App. LEXIS 1400, at *19
(Wash. Ct. App. June 17, 2008) (affirming theft conviction where defendant
copied credit card number, social security number, and PIN); State v. Nelson,
842 A2d 83, 86 (N.H. 2004) (scanned copies of photographs amounted to theft).
Again, however, these cases are readily distinguishable, as they either do not
involve the alleged theft of trade names or clearly involve consumer confusion,
a claim Edible IP has expressly abandoned.
23
was alleged to be of the “trademarks and/or markings or symbols of
identification.” Id. at 1280. The defendants argued that it was “not
theoretically possible” to exert unauthorized control over a third
party’s trademark and that any such unauthorized use could only be
remedied by a civil trademark infringement action. Id. at 1281-82.
After examining the applicable theft statute, the Indiana Supreme
Court held that copying the distinct look of the weapon and using
the trademark could, on a motion to dismiss the charges, be
considered exerting unauthorized control over the trademark or at
least “encumber” the trademark. Id. Here, however, unlike in An-
Hung Yao, Edible IP does not allege that Google has replicated the
goods and services Edible IP provides by using the “Edible
Arrangements” trade name, instead alleging that the trade name
was used in a separate and distinct service offered by Google
through its keyword advertising program.
In sum, given Edible IP’s express disavowal of the element of
consumer confusion in the complaint, it cannot state a claim for civil
theft arising from the use of its trade name and associated goodwill.
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Accordingly, the trial court did not err in granting Google’s motion
to dismiss Edible IP’s claim for civil theft.
b. Conversion
In Count 2 of its complaint, Edible IP asserts a claim for
conversion under OCGA § 51-10-1, which provides that “[t]he owner
of personalty is entitled to its possession. Any deprivation of such
possession is a tort for which an action lies.” The intentional tort of
conversion, we have explained, “consists of an unauthorized
assumption and exercise of the right of ownership over personal
property belonging to another, in hostility to his rights; an act of
dominion over the personal property of another inconsistent with his
rights; or an unauthorized appropriation.” Decatur Auto Center, Inc.
v. Wachovia Bank, N.A., 276 Ga. 817, 819 (583 SE2d 6) (2003)
(citation and punctuation omitted).
Although Georgia law may provide relief for the conversion of
certain intangible property, 12 we have never extended that tort to
12 See Trotman v. Velociteach Project Mgmt., LCC, 311 Ga. App. 208, 210-
11 (2) (a) (715 SE2d 449) (2011) (affirming grant of injunction where jury found
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claims based on the mere use of a trademark or on trade name
infringement, and we decline to do so now. Again, the cases Edible
IP relies upon are readily distinguishable. For example, in English
& Sons, Inc. v. Straw Hat Restaurants, Inc., 176 FSupp.3d 904 (N.D.
Cal. 2016), the court concluded that the plaintiffs had “converted”
the defendant’s trademark and other intellectual property by
wrongfully registering ownership of the trademark with the U.S.
Patent and Trademark Office – not just by simple use.13 See id. at
923 (2).
Other courts have likewise rejected attempts to expand the tort
of conversion to encompass the type of intangible property
traditionally protected within the scope of trademark law. See, e.g.,
Ortega v. Burgos, Case No. 12-CV-05421, 2014 U.S. Dist. LEXIS
defendant had violated the Uniform Deceptive Trade Practices Act in
converting course materials and other intellectual property stored on laptop).
13 San Francisco Arts & Athletics, Inc. v. United States Olympic
Committee, 483 U.S. 522 (107 SCt 2971, 97 LE2d 427) (1987), another case on
which Edible IP relies, was a highly fact-specific ruling involving an act of
Congress that granted the United States Olympic Committee unique statutory
rights that the United States Supreme Court expressly recognized were
different “from the normal trademark protection.” Id. at 531 (III). Of note,
under that act, the Olympic Committee was not required to prove that a
contested use was likely to cause confusion. See id.26
70457, at *3 (II) (E.D.N.Y. May 22, 2014) (dismissing trademark
conversion claim because “[n]ot only has this Court been unable to
find any authority that recognizes trademark conversion, the
leading treatise on trademark law states that, ‘[e]very court to
consider such a claim has rejected it’” (citation omitted)). See also 4
McCarthy, supra, § 25:9.50 (“Occasionally, a trademark owner will
allege, either along with or instead of a traditional infringement
claim, that its mark has been ‘converted’ by defendant. Every court
to consider such a claim has rejected it. The author agrees that the
tort of ‘conversion’ should not be stretched and deformed to
substitute for the traditional law of trademark infringement.”).
Accordingly, we cannot say that the trial court erred in
concluding that Edible IP had failed to state a claim for conversion.
c. Money Had and Received
In Count 3 of its complaint, Edible IP asserts a claim for money
had and received, alleging that Google currently holds a sum of
money belonging to Edible IP. The common law action for money
had and received “is founded upon the equitable principle that no
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one ought to unjustly enrich himself at the expense of another[.]”
Sentinel Offender Services, LLC v. Glover, 296 Ga. 315, 331 (4) (a)
(766 SE2d 456) (2014) (citation omitted). This action “is
maintainable in all cases where one has received money under such
circumstances that in equity and good conscience he ought not to
retain it.” Id. (citation and punctuation omitted).
Edible IP’s claim for money had and received again relies on its
unavailing assertion that, rather than selling advertising space,
Google is in essence selling Edible IP’s trade name and illegally
profiting from it. And, despite Edible IP’s insistence that our courts
have previously held that “the fact that [money] was received from
a third person will not affect [a defendant’s] liability,” 14 this holding
does not change the futility of Edible IP’s claim for money had and
received because Edible IP has no claim to the profits that Google
has earned by selling advertising. Accordingly, for this reason and
14 Haugabook v. Crisler, 297 Ga. App. 428, 432 (677 SE2d 355) (2009)
(citation and punctuation omitted). See also id. (“[I]t is immaterial how the
money may have come into the defendant’s hands, . . . if, in equity and good
conscience, he is not entitled to hold it against the true owner.” (citation and
punctuation omitted)).
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for the reasons discussed above in Divisions 1 (a) and (b), Edible IP
cannot, as a matter of law, show that it is entitled to profits that
Google earns through its keyword advertising program (even if the
program uses the trade name “Edible Arrangements”) or that Google
has been unjustly enriched at Edible IP’s expense, and this claim
likewise fails.
d. Georgia’s RICO Act
In the final count of its complaint, Edible IP asserts that Google
has violated Georgia’s RICO Act, OCGA § 16-4-1 et seq.,15 by
“obtaining . . . an interest in or control of personal property,
including but not limited to money, through a pattern of
racketeering activity.” Specifically, Edible IP asserts that Google’s
racketeering activity includes the theft of Edible IP’s rights in its
trade name. 16 Thus, this claim requires Edible IP to successfully
15 OCGA § 16-14-4 (a) states that “[i]t shall be unlawful for any person,
through a pattern of racketeering activity or proceeds derived therefrom, to
acquire or maintain, directly or indirectly, any interest in control of any
enterprise, real property, or personal property of any nature, including money.”
16 The RICO Act defines “racketeering activity,” which includes “[t]heft
in violation of Article 1 of Chapter 8 of this title[.]” OCGA § 16-14-3 (5) (A) (xii).
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plead the underlying claim of theft, which we have determined that
it has not done here. Accordingly, Edible IP’s RICO claim also fails.
Cf. Bowden v. Medical Center, 309 Ga. 188, 202-03 (3) (845 SE2d
555) (2020) (“However, because all of the alleged offenses depend on
proving that [the defendant] intentionally misrepresented the
amount it claimed to be reasonable charges in filing the liens, and
because we have already determined that the filing of liens
consistent with chargemaster rates in this case does not constitute
fraudulent activity, the RICO claims also fail.”).
2. Because we conclude that the trial court did not err in
granting Google’s motion to dismiss on the ground that Edible IP
has failed to state a cognizable claim for relief, we need not address
Edible IP’s remaining enumerations of error challenging the trial
court’s alternative grounds for dismissing the complaint. Because
the Court of Appeals correctly upheld the trial court’s dismissal, we
affirm that judgment.
Judgment affirmed. All the Justices concur, except Peterson, J.,
disqualified, and LaGrua, J., not participating.
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