On April 28, 2010, the District Court for the Eastern District of Virginia granted summary judgment in favor of Google that its use and sale of “Rosetta Stone” as a keyword in its Adwords program did not infringe upon the Rosetta Stone trademark for language instruction software products. This decision represents the most recent victory for Google in its battle against trademark owners claiming that the Adwords program violates their rights.
The battles began in 2004, when GEICO sued Google alleging that Google’s unauthorized sale of GEICO’s trademarks as keywords to trigger the display of third party ads on Google’s search results page infringed GEICO’s trademark rights. GEICO argued that consumers were likely to be confused by these sponsored ads into the belief that they were genuine GEICO ads or that the advertisers were somehow associated with GEICO. After losing a motion to dismiss that claim, the case was ultimately settled. But new suits followed, including complaints filed by American Blind & Wallpaper, American Airlines and Rescuecom. In most cases, the claims were ultimately settled before a final determination about Google’s practices could be made by a court, and the settlement terms were confidential.
Then, in 2009, Google suffered a setback when the Second Circuit Court of Appeals reversed the trial court’s dismissal of Rescuecom’s complaint against Google. Google had successfully persuaded the trial court that its sale of trademarked keywords was not a “use in commerce” as required by the Lanham Act, the federal trademark statute. The Second Circuit disagreed and held that Google’s practice satisfied the “use in commerce” requirement. It remanded the case back to the trial court to determine whether Rescuecom could prove the remaining elements of its trademark infringement case. Earlier this year, Google again settled the claims levied against it.
But against Rosetta Stone, Google took the case to decision and won. Like previous plaintiffs, Rosetta Stone argued that Google’s sale of “Rosetta Stone” as a keyword to trigger sponsored ads by third parties violated its exclusive trademark rights. It complained that the keywords triggered paid ads for Amazon.com, competitors offering other language instruction products, and even counterfeiters. In successfully defending the Adwords program and obtaining summary judgment from the trial court, Google avoided the “use in commerce” argument that proved unsuccessful before the Second Circuit and instead focused on how its advertising program was consistent with the policies underlying trademark law and fair advertising. A retailer selling the Rosetta Stone software has the legitimate right to use that mark in its advertisements, even if it also happens to sell competitors’ products as well. A Rosetta Stone competitor has the right to advertise its services using the Rosetta Stone mark in a comparative manner so long as it does not create confusion. And, as for counterfeiters, Google pointed to the efforts it undertakes to stop counterfeiting of which it is made aware, including specific efforts it undertook with respect to counterfeit Rosetta Stone products. All in all, the trial court determined that Rosetta Stone lacked sufficient evidence to support its claims.
Rosetta Stone has indicated that it is considering an appeal, and we can probably expect an appeal will be forthcoming. But for now, a big win for Google and Adwords
