LIKELIHOOD OF CONFUSION®

When courts consider search engine company liability for trademark infringement, whether direct or indirect, they typically focus on the sale of “trademarked” keywords, or search terms, to third parties for use in advertising and directing internet traffic to websites that compete with the trademark owner, as recently demonstrated in Rescuecom v. Google. If such use were itself infringing, contributory liability could arise out of the search engine company’s role in selling the infringing keywords to third parties.

THE Rosetta Stone

There’s another way, however, in which contributory liability under Inwood could extend to a search engine company—or at least, so it has been argued: If the company knowingly continued to supply its services to an infringing third party.  This was the basis for liability urged unsuccessfully by Tiffany in its suit against eBay.  In the recent decision in Rosetta Stone Ltd. v. Google Inc., the court drew extensive comparisons between the two cases in reaching its decision.

In Rosetta Stone, the plaintiff language-learning company argued both theories of liability against the search engine Google, and the court declined to find contributory liability under either approach.  It granted summary judgment to Google, though in doing so the court limited its ruling to “advertisers selling counterfeit Rosetta Stone products,” leaving the precedential value of the opinion unclear.

The dispute in Rosetta Stone arose out of Google’s “AdWords Propram,” an “auction-style advertising program that displays advertisements to users of Google’s search engine in the form of Sponsored Links.”  With the AdWords Program, advertisers can use Google to cause a Sponsored Link to their website to appear whenever a user searches on Google for certain keywords. Prospective advertisers can select keywords they choose themselves or from a list provided by Google. Lists of keywords provided by Google are “filtered” by Google to remove “trademarked” terms for which Google has received a complaint.

At the time of the litigation, Google’s AdWords policy expressly allowed a given keyword to be used both as a trigger to a Sponsored Link advertisement and as part of the advertisement itself. More fundamentally, Google’s policy permitted not only the brand owner and its authorized licensees, but also other advertisers to include another’s trademark-protected term in their advertisement text under certain, non-infringing conditions.  To address fraud and counterfeiting associated with its AdWords Program, Google had created a “Trust and Safety Team.” The Trust and Safety Team responded to “notices of counterfeit advertisements on Google’s website and [took] down any advertisements confirmed to violate its AdWords Program.”

Notwithstanding Google’s internal policing, Rosetta Stone asserted that some advertisers were able to beat the system and create Sponsored Links that “deceive[d] and misdirect[ted] Google’s users to websites that [sold] counterfeit Rosetta Stone products or suggest[ed] to consumers a connection to Rosetta Stone that [did] not exist.” It therefore sued Google, alleging, in addition to direct infringement, both contributory and vicarious trademark infringement.

In support of the contributory liability claim, Rosetta Stone argued the two theories of infringement outlined above, tracking the two-prong test under Inwood. Thus, as to intentional inducement, Rosetta Stone contended that Google’s practice of including brand names as suggested keywords “directly induce[d] advertisers to infringe on Rosetta Stone’s marks.”

Secondly, Rosetta Stone argued that “by allowing counterfeiters to open AdWords accounts and bid on Rosetta Stone Marks, despite receiving notice of their counterfeit status, Google [was] supplying a service to those it [knew] or ha[d] reason to know [were] engaging in trademark infringement.” To demonstrate Google’s knowledge of ongoing infringement, Rosetta Stone pointed to an admission by Google in its Registration Statement filed with the Securities and Exchange Commission acknowledging that as a result of its policy allowing the purchase of trademark-protected keywords, it could be subject to more trademark infringement lawsuits. It pointed furthermore to “approximately 200 instances of Sponsored Links advertising counterfeit Rosetta Stone products[,]” and asserted that even after being notified about the counterfeit websites involved, “Google continued to allow Sponsored Links for other websites by these same advertisers to use the Rosetta Stone Marks as keyword triggers and in the text of their Sponsored Link advertisements.”

While recognizing, per Tiffany v. eBay, that further the application of Inwood liability beyond manufacturers and distributors can extend to service providers who “exercise sufficient control over the infringing product,” the court nonetheless rejected both of Rosetta Stone’s theories of recovery against Google. Read More »

Originally posted 2006-04-05 12:48:34. Republished by Blog Post Promoter

The Business Review (Albany) reports (reg. required) on what could be a very important decision relating to the importation of grey goods:

The U.S. Court of Appeals for the Federal Circuit has directed the U.S. International Trade Commission to reconsider its ruling prohibiting domestic sales of John Deere harvesters that were produced for the European market…

At issue is whether the products intended for the European and U.S. markets are materially different. In its decision the appellate court directed the trade commission to require Deere to prove that sales were based on the differences in the products….

The European version was less expensive because the marketing climate in Europe caused the company to reduce prices there, [a partner from the winning firm] said.

The story is evidently really a press release from the winning law firm. Anyone with a link to the actual decision is invited to send it along to likelihoodofconfusion gmail.

Blawg Review #279 is up at Mirriam Seddiq’s Not Guilty blog.

It’s not safe for work.  Unless you work in a law office.

Home… that’s something else.

Originally posted 2005-07-15 14:09:49. Republished by Blog Post Promoter

The ABA Journal has an article on bloggers which mentions the Media Bloggers Association and quotes my own self. This is progress, I guess: Ten years ago I was writing for the ABA Journal, and now the ABA Journal‘s writing about me!

That doesn’t mean I’ll rejoin the ABA, however. That ship has long left the dock.

Originally posted 2009-06-19 12:07:08. Republished by Blog Post Promoter

A lot of people, including judges, lawyers and civilians, don’t seem to really understand what statutory damages are all about.  They are not supposed to be a windfall (discussed more here).  But just tell that to the jury that awarded “infinity dollars” — practically — to the Lords of Music for what was indeed knowing copyright infringement of two dozen songs, and to the person on whose head the jury just laid that award.

I’m not an “information wants to be free” nutter, and musical compositions aren’t “information” anyway except to the most heartless utilitarian, but Stan Schroeder (presumably no nutter either, but probably to my left on this issue) hits it right on the head:

In one of the most ridiculous verdicts I’ve seen, the jury decided that Jammie Thomas-Rasset, the first woman who was charged with copyright infringement and offered to settle but decided to fight the RIAA, is guilty and owes the recording industry 1.92 million dollars, or $80,000 per song.

As we mentioned in our original article, Jammie’s case was full of holes, and she probably would have done better if she had just settled with the RIAA. But what’s striking here is the amount of money awarded to the recording industry for infringing the copyright for just one song.

It reminds me of a recent Penny Arcade comic which mocks Microsoft’s Zune Pass, which offers unlimited selection of music for 15 dollars per month; since time never ends, this technically amounts to infinity dollars. Since the music is DRMed, if you ever stop paying, you lose all your music.

It’s just a joke, but it makes a good point. How much is one song worth to you? How much is it worth to the author? How much is it worth to the recording industry? You can push arguments to favor each side, and ultimately you can always claim that a song never fully loses its value and it can therefore be set to an arbitrary, insanely high amount of money.

The problem with this approach is that it results in cases like the one against Jammie Thomas-Rasset, who now has (there are indications that the RIAA is still willing to settle with a much lower amount of money, but it’s irrelevant; what’s important is the principle of the matter) to pay 1.92 million dollars for infringing the copyright of 24 songs.

In a word, it’s stupid.

As this fine roundup of the legal issues from the EFF explains, there are lots of problems with this outcome, including a two-pronged constitutional one — is this unconstitutionally excessive, and is there a different standard on that question when it comes to statutory damages? — as well as the whole issue of what has happened to statutory damages in the hands of the Copyright Congress.  Of course, there’s the fact that, as Fred von Lohmann explains, “I assume these arguments will first be submitted to the trial judge in post-trial motions. After all, this judge has already indicated that he found the previous $220,000 award to be “unprecedented and oppressive.”

Seems that way, doesn’t it?  (Part II is here.)

I first read about the brouhaha over the Politico trademark claim against the College Politico blog on Instapundit:

ED MORRISSEY: “Who owns the word ‘Politico’?” The blogosphere has been very good to Politico, and I think they should bear in mind the ill-will they’re incurring as a result of their heavy-handed legal tactics. This is like me going after everyone who uses the word “pundit” in their blog name.

Almost everything about that post, and other things besides, made me very much not to want to have an opinion on this topic. Just think what that’s saying!

But now my public, namely Jimmie himself, is demanding that LIKELIHOOD OF CONFUSION® speak!:

The Politico’s case seems to rest on the “likelihood of confusion” standard as they claim it’s likely that people who come across Gutkowski’s site might think they were coming across a site affiliated with The Politico.I think that’s a pretty weak claim.The College Politico looks nothing like The Policito in design or content. It specifically claims a slant to the right and does not purport to be a straight news site in any way. “Politico” is also a commonly-used word and Gutkowski seems to be using the word as the dictionary defines it.

It seems to me that if The Politico’s claim is granted, the court would set a precedent for other people to claim ownership of other common English words. In which case, I’m going to go ahead and grab “blog” and “times”, and maybe “the”.

Of course, I’m not a lawyer, nor do I pretend to play one in the blogosphere. However, my friend Ron Coleman is, and what’s more, he’s an expert in trademarks and copyrights, so he ought to know a thing or three about the . I’d definitely be interested in his take on The Politico’s claim.

Well, I can’t agree with Glenn Reynolds’s “everyone who uses the word ‘pundit’ in their name” example, and while Jimmy is blogging with mouse in cheek about his planned claim of “blog,” “times” and “the,” I give him credit for making some effort.  Frankly, there is some very good discussion, but unfortunately also some very bad, incorrect information mixed in, at the original post over at Hot Air.

A couple of things.  Let’s sit down. Read More »

Originally posted 2005-01-05 20:48:00. Republished by Blog Post Promoter

If you’ve got a modem, you might get a link: It doesn’t get any better for a blogger on his third day in business. Now I feel a little guilty, though.

It will pass. Thanks.

Originally posted 2006-07-05 18:45:34. Republished by Blog Post Promoter

I complain a lot in this space about the ruthless expansion of IP “rent seeking,” i.e., the attempt to snag “rights” wherever possible in “space” previously considered free and open for the imagination and for cultural interaction, you know?

But looking back on this article from 1998, I realize that although at the time it seemed scary, it hasn’t worked out all that badly for us.  Right?  Of course right.

Originally posted 2007-01-29 17:00:27. Republished by Blog Post Promoter

Can a building be a trademark? Can a photo of a building be a trademark? Can a drawing based on a photo of a building be a trademark? I’d be inclined to answer no, no, maybe.

Well, when the Supreme Court of your local country says it is, the answer is yes, it seems. One more reason to be glad we’re Americans (not “North Americans”), I guess. As the offending blogger, TheCourt.ca, put it, “one takedown message from the Supreme Court of Canada is… interesting; two would be unfortunate.” Yes, it would be — in more ways than two!

Hat tip to Library Boy.

Originally posted 2006-06-26 22:34:43. Republished by Blog Post Promoter

You’ve got to pay your dues if you want to sing the blues

Websites with fake junk: too-good-to-be-trues!

So many fakes out there — if you want honest schmooze,

Click Counterfeit Chic for this week’s “Knockoff News“!

Licensing of Confusion

Is it infringement or a breach of contract?  Is it a license or an assignment?  Well, whatever it is, it’s a little complicated, and Pamela Chestek does a good job of following all that geometry on her Property, Intangible blog.

Not just a good job:  That blog post represents hard work — not just intellectually following the fact pattern, but painstakingly cutting and pasting “actualities” into the post.  Nice.  But it’s all worth it for a great blog post, isn’t it, Pamela?  Uh, right?

Either way, I liked this excerpt she pulled from the July 16, 2010 Southern District of New York opinion:

[This] is essentially a contract dispute between an exclusive licensee and licensor over the right to use the trademark[s] at issue. The dispute should be determined by the principles of contract law, as it is the contract that defines the parties’ relationship and provides mechanisms to redress alleged breaches thereto. The Lanham Act, in contrast, establishes marketplace rules governing the conduct of parties not otherwise limited. This is not a case of either the licensee or licensor attempting to protect a trademark from unscrupulous use in the marketplace by third parties. Rather, this case involves the alleged breach of a license agreement.

Is the Mother Court reading “unscrupulous” back into the Lanham Act?  That would be refreshing!

Originally posted 2008-03-02 00:42:46. Republished by Blog Post Promoter

We toyed a little bit with the very big idea of prior restraint in constitutional law about a week ago. Now Clarice Feldman writes about “Duke’s boundless chutzpah”:

After tarring and feathering and discriminating against the Duke lacrosse members at a critical juncture in their college careers and lives, the Duke Administration has gone to court trying to shut down the players’ website, which contains the pleadings in their recently filed case against the university and a compendium of press coverage about the case.

The website seems well within ethical bounds and the pleadings by the University cite no authority to suggest otherwise.

I’d like to see those pleadings, but until I do, well, boundless does seem like the right word! (Hat tip to Insty.) This sure sounds like the civil version of the sort of unethical lawyering that has already ended one hot-shot legal career, and the kind of Goliath-like litigation bullying that just makes us reach for our slingshot.

Meanwhile be sure to click and link to that website — and, unless the players object, maybe archive and mirror it, too. Just in case.

Yes, we’re feeling a little subversive at LIKELIHOOD OF CONFUSION®.  And then some!