In a highly anticipated decision from the Fourth Circuit Court of Appeals involving Rosetta Stone's trademark infringement suit against Google concerning Google's sale of AdWords (Rosetta Stone v. Google, No. 10-2007 (4th Cir. 2012)), the Fourth Circuit affirmed in part, vacated in part, and remanded to the U.S. District Court for the Eastern District of Virginia to reconsider whether Google directly or contributorily infringed, or diluted, the ROSETTA STONE trademarks by selling AdWords to third parties. Below are published remarks and analyses following the Fourth Circuit's decision, and predictions about the outcome of the case at the district court upon remand.
- Rosetta Stone press release (April 10, 2012):
"Rosetta Stone greatly appreciates today's opinion by the United States Court of Appeals for the Fourth Circuit. Rosetta Stone is deeply concerned about trademark infringement, including the rampant problem of online counterfeiters engaging in theft of intellectual property and confusing consumers regarding the products being offered for sale. Today's important decision by the Fourth Circuit allows Rosetta Stone's efforts against such infringement to proceed. We look forward to further proceedings in this matter."
- Washington Post, Rosetta Stone’s lawsuit against Google gets the green light to proceed (April 15, 2012):
"Although several companies have lodged similar complaints against Google, this is the first time a court of appeals has established that a company can bring a trademark infringement case against Google on the basis that the sponsored links are confusing to consumers. Some trademark experts said it could open the door for more companies to sue Google on the same grounds (a prediction Google declined to comment on), and that the outcome of the Rosetta Stone case could affect virtually every company that sells goods or services to the public and is trying to protect its brand against counterfeiters."
- Eric Goldman (Professor of Law at Santa Clara University School of Law), Fourth Circuit's Rosetta Stone v. Google Opinion Pushes Back Resolution of Keyword Advertising Legality Another 5-10 Years (April 10, 2012):
"Sadly, this ruling--giving Rosetta Stone another chance in court--will undoubtedly revive the trademark plaintiff bar's interest in suing Google for its keyword ad practices. Just like Google got hit with over a dozen lawsuits in the wake of Google's Second Circuit "loss" in the Rescuecom case, I imagine a bunch of low-merit suits will follow this ruling too. (I put Google's "loss" in quotes because ultimately Rescuecom just gave up its lawsuit). Google will almost certainly win all of the incoming cases, just like it destroyed most of the cases filed post-Rescuecom, but it will have to spend a lot more money in legal fees to get there."
- Dabney Carr (Troutman Sanders), Summary Judgment Awarded in First EDVA Trademark Decision Since Rosetta Stone (May 15, 2012):
"The [Wag’N Enters., LLC v. United Animal Nations (E.D. Va)] decision [ ] reaffirms that even after Rosetta Stone, summary judgment remains available for accused trademark infringers, especially where a plaintiff fails to develop evidence of actual confusion or present survey evidence as a substitute for proof of actual confusion."
- Robert Angle (Troutman Sanders), Rosetta Stone Opinion Clarifies Standard for Trademark Infringement Claim in Keyword Advertising Context (April 17, 2012):
"The Fourth Circuit’s opinion clarifies that trademark infringement analysis in a keyword advertising context will follow traditional trademark standards applicable to likelihood of confusion, rather than specialized standards. These standards will apply not only for trademark claims filed against search engine providers, but also for the more common situation in which these claims are filed against a competitor who purchases a plaintiff’s trademark as a keyword from the search engine provider and uses them to trigger sponsored advertising links."
"Proving likelihood of confusion in these cases is a fact-specific inquiry, which will require evidence (survey or otherwise) suggesting that consumers are likely to be confused by the manner in which a trademark is used as a keyword to trigger advertising links and/or in the text of the links themselves."
- Joshua Jarvis (Foley Hoag), Google AdWords Appellate Decision Injects Some Uncertainty Back Into the Keyword Game (April 12, 2012):
"...little in the opinion suggests that the ultimate disposition of [Rosetta's] claims will be significantly different the second time around (though the second time around may take a good deal longer). As a practical matter, the [4th Circuit] opinion injects a bit of uncertainty back into the keyword game that will last for years to come."
- Cases citing Rosetta Stone v. Google:
Coach, Inc. v. Farmers Market & Auction, slip op., No. AW-11-CV-01239 (D. Md. August 7, 2012) (explaining that Rosetta Stone belies the notion that contributory trademark infringement liability is limited to manufacturers and distributors).
Amerigas Propane, LP. v. Opinion Corp., slip op., No. 12-cv-00713 (E.D. Pa June 19, 2012) (distinguishing facts from Rosetta Stone where pleading alleges that Defendant exercised a degree of control over the advertisements on its webpage).
American Optometric Society, Inc. v. American Board of Optometry, Inc., slip op., No. 2:10-cv-03983 (C.D. Cal. June 12, 2012) (explaining that, in the context of a trademark dispute, while reactions of the public are typically tested through the use of consumer surveys anecdotal evidence can be used to support an inference of consumer confusion).
Dwyer Instruments, Inc. v. Sensocon, Inc., slip op., No. 3:09-CV-10-TLS (N.D. Ind. June 5, 2012) (citing Rosetta Stone for the proposition that the strength of the mark is often not informative as to confusion where the defendant is not passing off its products under the plaintiff's mark but using the plaintiff's mark to refer to the plaintiff's own products).
Clearline Techns. Ltd. v. Cooper B-Line, Inc., slip op., No. H-11-CV-1420 (S.D. Tex. May 9, 2012) (explaining that Google was not liable under a vicarious liability theory because the plaintiff failed to show that Google "controls the appearance and content" of the infringing products or the use of the marks in those products)