A little help from their friends: Rosetta Stone has allies in Google AdWords dispute

Rosetta Stone Ltd, an American company that produces language-learning software, has appealed the summary dismissal of its claim against Google Inc. in relation to use of its trade marks as keywords for paid advertisements using Google AdWords (for a refresher on AdWords, see one of our previous posts on this topic).

In its claim in the United States District Court, Rosetta Stone alleged that “Google, through its AdWords program, was helping third parties to mislead consumers and misappropriate the Rosetta Stone [trade] marks by using them as keyword triggers for sponsored links” (and had therefore committed trade mark infringement).  Among other things, it was also alleged that Google’s conduct resulted in trade mark “dilution”.  Under US law, anti-dilution provisions allow the owner of a famous mark to seek redress where another person’s use of a trade mark causes the dilution of the distinctive quality of their mark.  For a comparison on “Dilution down under” please click here.

The court found there was no trade mark infringement as “no reasonable trier of fact could find that Google’s practice of auctioning Rosetta Stone’s trade marks as keyword triggers to third party advertisers…creates a likelihood of confusion as to the source or origin of Rosetta Stone’s goods”.  The court even went one step further, finding that “because Google uses Rosetta Stone’s trade mark to identify relevant information to users searching on those trade marks, the use is a functional and non-infringing one.”  The court also found that there could be no trade mark dilution due to the fact that, from the time the alleged conduct had occurred, Rosetta Stone’s brand awareness had increased and its reputation had not been harmed.   

Earlier this month Rosetta Stone filed an appeal against this decision, reportedly arguing that “in granting summary judgment to Google, the District Court violated settled principles of summary judgment, misconstrued fundamental trade mark tenets, and effectively created a special, unwarranted, and unprecedented rule of immunity for Google”.  Rosetta Stone is not alone in its views, as five amicus curiae briefs have also been filed with the District Court supporting Rosetta Stone.  An amicus curiae brief, meaning “friend of the court”, is a brief that is filed by a non-party that has an interest in the proceedings.  Some of the parties that have contributed to the amicus curiae briefs include Tiffany, Coach, the NFL, Ford Motor and Viacom.

The Rosetta Stone case is not the first of its kind; recently the European Court of Justice (ECJ) has been asked to consider whether the use of a competitor’s trade mark as a keyword constitutes trade mark infringement.  In July 2009, we looked at the “Interflora” case, where Interflora brought a case for trade mark infringement against Marks & Spencer for using their trade marks (and misspellings of their trade marks) as keywords in Google AdWords.  In March 2010, we looked at another case before the ECJ, where Louis Vuitton, Viaticum and another party sued Google over the AdWords practice on the basis it amounted to trade mark infringement.       

Australia is also no stranger to the controversy surrounding AdWords.  In 2007, the ACCC brought a claim against the Trading Post, Google Inc and two of Google’s subsidiaries for misleading and deceptive conduct for use of the names “Kloster Ford” and “Charlestown Toyota” in the title of sponsored links on Google (see Australian Competitor and Consumer Commission v Trading Post Australia Pty Ltd & Ors).  The ACCC has subsequently withdrawn its case against Google’s subsidiaries but otherwise the case is still on foot.  In another Australian case, Mantra Group Pty Ltd v Tailly Pty Ltd (No 2), the issue of use of a trade mark as a keyword again arose.  In this case the defendant was restrained from using the term “Circle on Cavill” (the plaintiff’s trade mark) as a trade mark to advertise accommodation, including as part of a metatag or a search engine keyword.  To read more about this case, please click here.     

With the obvious attention and support companies are prepared to give to this topic across the world, it would appear that the war on Google AdWords is far from over.

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