Tag Archives: Rosetta Stone v. Google

Search for resolution

Originally posted 2012-11-07 16:48:57. Republished by Blog Post Promoter

It’s two posts in one (I like to pull that off when I can), not even counting this one:  Mike Masnick on Eric Goldman on the settlement of the Google / Rosetta Stone case that gets everyone so agitated alla time:

Perhaps the most well known [adwords lawsuit against Google] was the one that Rosetta Stone filed back in 2009 (the ninth such case). That case has been kicking around for years, with various ups and downs. Rosetta Stone even went so far as to supportSOPA’s predecessor, COICA, in the hopes that it would be useful in making Google liable for the ads others placed on its site. We had thought that a clear headed judge would point out the obvious, but instead, we got a massively confused ruling that was quite troubling in which it was unclear if the judge really understood the issues at play. Given all of this, it’s not a huge surprise that Google figured out a way to settle the case out of court. Metzenbaum Federal Courthouse, Cleveland, OhioWhile it probably had to pay a small sum to make that happen, Eric Goldman notes, nothing in what’s been announced suggests that Google agreed to change any of its practices. He also notes that, at this point, nearly every such case against Google has ended in a Google win or quiet settlement in which Google’s policies are left intact:

Irrespective of the specific settlement terms, ending this case is a strategic win for Google because it takes out the last “major” US trademark owner challenger to AdWords.  Combined with the recent dismissal of the Jurin lawsuit, Google is now down to two pending US trademark lawsuits over AdWords: CYBERsitter and Home Decor Center.  Despite CYBERsitter’s recent intermediate “win,” I don’t think either of the two remaining lawsuits are dangerous to Google.  As a result, Google is tantalizingly close to successfully running the table on all of the US trademark challenges to its AdWords practices.  When this happens, Google will have legitimized the billions of dollars of revenues it makes by selling trademarked [sic] keywords in AdWords.

Eric may be slightly more optimistic on this than I am. Having seen so many of these cases come and go, I still expect others to jump in, in the hopes of getting offered a similar “settlement” just to go away. Hopefully one of the remaining cases ends in a clear judicial smackdown against companies who are trying to stretch trademark law well beyond its intended purpose.

Hard to disagree with Mike here.   Read More…

A long blog thread’s journey INTA night

Now:  I had mentioned that the Managing IP link I provided in the first INTA post alluded to some pretty interesting fireworks involving the “empty chair” in this debate, i.e., Google.  First, again, from that story:

A Google representative stood up during the Q&A period to remind attendees that the search engine’s ad platform has zero tolerance for counterfeiting, as well as proactive tools for weeding out bad actors.  “You can ask us to monitor your trademarks in ad text and we will take down ads that infringe,” said the Google attorney.

Mmmmm… yeah.  Let’s get a little more granular.  Here’s how it actually went down, courtesy of the official INTA audio (a very nice feature) after the traditional, “Any questions?”:

Hi, my name is Annabelle DanielVarda and I’m with Google… (laughter, scattered applause) … It certainly would have been nice to have had an opportunity to speak on these issues, on the panel, but I have my little piece of paper and I want to speak to some of the issues that I want to get some clarification on.

And in saying she wanted to “get some clarification on” Google Senior Trademark Counsel Annabelle DanielVarda didn’t mean, by “get,” “receive.”  For it is better, as we learned from the video from the previous post, to give than to receive!  And DanielVarda gave “clarification” or, at least, the Google party line — and, after all, we’d been treated to the anti-Google party line for an hour already.

Whether in substance she “gave” as good as she “got,” I don’t know.  But I applaud her corporate boldness — not everyone could pull this off.  This was, as I explained in an earlier post (and notwithstanding the — nervous? — laughter when she introduced herself) a somewhat hostile room.  And here she was standing up there answering the unasked question instead of asking a question, reminding everyone on her employer’s behalf that something was a little off here.  DanielVarda set up her own chair on that panel, put down Google’s marker and then, her work done, galloped off into the night.  Well, the morning.  It was dark in the room however.

LIKELIHOOD OF CONFUSION® I was so impressed with her moxie, and what I thought was a borderline scandalous omission (I have since been informed that it was not intentional, for what that’s worth) that I wanted to ask DanielVarda more.  But I have never met the lady.  So being very tech-savvy, don’t you know, and according to many possessing a little moxie myself — and possessing, too, so very little to lose — I logged onto the INTA Attendee Portal, got Annabelle DanielVarda’s contact information, and — assuming I worked the darn thing right — am pretty sure I sent her an email, explaining that I’m this guy with a blog and was going to write about what happened that morning and maybe we could talk for a minute.

I used my Gmail address.

Maybe it got caught in the spam filter.

More likely I just don’t “get” it.  But, you know… I never really have.

Just not that INTA it

It felt like I could write a seven-part series about all the ideas I had in my head, driving me insane, about INTA 2012.  Maybe if I’d stayed up all night at the time, I would have.

But then we would all be sorry.  So I’m going to sum it all up tonight.  This post, one more and then no more.

As I’ve mentioned to the point of what threatens to look like obsequiousness, Howard Hogan of the Gibson “plaintiff does not bring this lawsuit lightly” Dunn & Crutcher law firm, which has represented various plaintiffs against Google, made a sporting effort to acknowledge the glaring imbalance of the SEO panel.

Sporting.  Effort.  His recitation of the relevant case law, however, evinced neither of these qualities.  Why?  No idea.  I’ve made that point.

On the other hand, Hogan’s discussion of what sounded something like actual proffers of evidence of consumer confusion by Rosetta Stone  – almost as if the per se Internet infringement rule that is “initial interest confusion” (IIC) might not be enough —  was heartening.  LIKELIHOOD OF CONFUSION to be decided based on proof?  What next, proof of harm?  If this is a trend I’d love to see it spread.

The third panelist, Geoff Livingston, an SEO guy, opined as followed:  “People don’t take the time today to discern quality information.”  Naturally this played, again, to the IIC approach, and the suggestion that judges have to do the discerning for “people” who choose not to take the time to check (outside of, yes, the counterfeiting context) if Pepsi is now endorsed, affiliated or approved by Coke.

Livingston made an intriguing point, however, about what he called “karmic marketing”:  You can “legitimately” (not his word; he’s not a lawyer) generate “relevance”, leading to search-engine pageviews based on use of your competitor’s trademarks in web-page content, by saying nice things about him.

Huh.  So nominative fair use is really a defense to trademark infringement when it’s happy nominative fair use?  Kind of  like here:

Now the “SEO Guru” in this piece didn’t use the term “karma,” but who would know more about it?

Happy fair use:  The future of INTA-Approved Trademark Using!®

Part last is in the pipeline…

Rosetta Stone v. Google: Schwimmer, Goldman, Levy intervene, 4th Circuit listens – UPDATED

There's no limit for some of us!

The Rosetta Stone v. Google appeal:  Marty, Eric and Paul — listed in the caption as limited intervenors, but, really, the biggest sticks in the room — have spoken, and the Fourth Circuit has, um, also spoken:

Appellant Rosetta Stone Ltd. appeals from an order, see Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010), granting snmmary judgment against Rosetta Stone on its claims against Appellee Google Inc. for trademark infringement, see 15 U.S.C. § 1114(1)(a); contributory and vicarious trademark infringement; and trademark dilution, see 15 U.S.C. § 1125(c)(I). Rosetta Stone also appeals from an order dismissing its unjust enrichment claim under Virginia Law. See Rosetta Stone Ltd. v. Google Inc., 732 F. Supp. 2d 628 (E.D. Va. 2010). For the reasons that follow, we affirm the district court’s order with respect to the vicarious infringement and unjust enrichment claims; however, we vacate the district court’s order with respect to the direct infringement, contributory infringement and dilution claims and remand these claims for further proceedings.

Here’s the opinion (PDF with OCR).  For analysis of the secondary trademark  liability issues the court was presented with see here, of course.  Notably, the court readily reversed the vicarious infringement ruling below.  But regarding contributory infringement, first — hey, it’s my blog — consider what Jane Coleman said, in the excerpt posted here at the time, on how the district court in Rosetta Stone applied, or misapplied, the opinion in Tiffany:

The court drew heavily on the Second Circuit’s reasoning in Tiffany v. eBay to reject Rosetta Stone’s second argument, finding that it failed to show that Google knew or had reason to know that it was supplying its services to parties engaging in trademark infringement.  In Tiffany, “eBay’s generalized knowledge of infringement” on its website was insufficient to impose contributory liability on the online sales site eBay.  Compared to eBay, the court reasoned, Google had been presented with even fewer notices of infringement. It therefore declined to find the “specific” knowledge required by the court in Tiffany. . . .

In finding that Rosetta Stone had not met its burden of showing that summary judgment was proper as to the contributory trademark infringement claim, the court’s language left unclear what its conclusions were regarding Google’s liability for the sale of trademark-protected keywords to competitors who were not necessarily counterfeiters. Specifically it found that “no reasonable trier of fact could find that Google intentionally induce[d] or knowingly continue[d] to permit third party advertisers selling counterfeit Rosetta Stone products to use the Rosetta Stone Marks in their Sponsored Link titles and advertisement text.”  If indeed the court intended to limit its holding to direct trademark infringement arising out of counterfeit websites, then it is not clear how or whether its decision would apply to the scenarios presented in the cases of GEICO and American Blind. In these two earlier cases, the courts left open the possibility that search engine operators who use third parties’ trademarks might, in appropriate circumstances, bear contributory liability for trademark infringement arising out of those advertisements.

The Fourth Circuit seems troubled by a similar question, focusing on the contrasting procedural postures in the respective cases:

On appeal, Rosetta Stone argues that the district court misapplied the standard of review and incorrectly awarded summary judgment to Google where the evidence was sufficient to permit a trier of fact to find contributory infringement. We agree. In granting summary judgment to Google because “Rosetta Stone has not met the burden of showing that summary judgment is proper as to its contributory trademark infringement claim,” the district court turned the summary judgment standard on its head. . . .   Tiffany involved an appeal of judgment rendered after a lengthy bench trial.  Because of its procedural posture, the district court in Tiffany appropriately weighed the evidence sitting as a trier of fact. Accordingly, Tiffany is of limited application in these circumstances, and the district court’s heavy reliance on Tiffany was misplaced. We conclude that the evidence recited by the district court is sufficient to establish a question of fact as to whether Google continued to supply its services to known infringers. Accordingly, we vacate the district court’s order to the extent it grants summary judgment in favor of Google on Rosetta Stone’s contributory infringement claim.

Facts:  Important stuff!

UPDATE:  From the horse’s mouth —  Eric’s take:  “Fourth Circuit’s Rosetta Stone v. Google Opinion Pushes Back Resolution of Keyword Advertising Legality Another 5-10 Years.”  Highlights:

Direct TM Infringement. This is probably the most obvious place where the opinion mechanically marched through the doctrinal elements without acknowledging the big picture. It’s really makes so sense to hold that Google *directly* liable for trademark infringement for keyword ad sales, because Google’s products/services or marketing do not confuse consumers about the source and origin of marketplace offerings. If any consumer confusion takes place, it’s caused by the advertisers, and Google is at most secondarily liable for that. But the opinion is tone deaf about this key point. . . .

On the plus side, the opinion correctly notes that the standard multi-factor likelihood of consumer confusion (LOCC) test doesn’t work in nominative use situations. . . . I hope other courts similarly rethink the multi-factor LOCC test in nominative use cases. It really don’t work at all.  [Actually, the Third Circuit did so a while ago (see here) -- RDC] . . .

The opinion says that the district court’s reliance on Tiffany v. eBay was misplaced because that ruling came after a bench trial and therefore couldn’t help on summary judgment. Unfortunately, the opinion gives short shrift to what evidence from Rosetta Stone could support contributory infringement. The only evidence cited by this opinion is the fact that Rosetta Stone identified some ads from rogue sellers and Google didn’t block other unidentified ads from those sellers. If that’s Rosetta Stone’s best argument for contributory infringement, I think it will lose the contributory claim handily.

Dilution. Characterizing keyword ad sales as dilution is unprecedented and virtually unsupportable doctrinally. This opinion doesn’t address that. It simply points out minor doctrinal errors in the lower court’s opinion (not surprising, as I said the lower court’s “rejection of the dilution claim was bizarre”), but misses the big picture that there’s absolutely nothing Google does that could dilute or tarnish Rosetta Stone’s marks. . . .

Rosetta Stone v. Google: Lost in translation

This is a summary and analysis of the recent (August 2, 2010) decision in Rosetta Stone Ltd. v. Google Inc., 2010 WL 3063152 (E.D. Va.). The case has been added to Jane Coleman‘s highly-praised online treatise Secondary Trademark Infringement; availability of the full 2010 update will be announced shortly.  Below is an adaptation of the integration of Rosetta Stone into the treatise text.

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

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…