Rosetta Stone v. Google , 676 F.3d 144 (4th Cir 2012), is the decision of the US Court of Appeals for the Fourth Circuit that challenges the legality of the Google AdWords program. The Court cancels the award of a summary for Google that has held Google AdWords not a violation of trademark law (see Lanham federal law, 15 U.S.C.Ã, Ã, § 1114 (1)).
Although other cases have dealt with trademark infringement in the context of online keyword advertising (see Playboy Enterprises, Inc. v. Netscape Communications Corp., Google, Inc. v. American Blind & Wallpaper Factory, Inc.) Rosetta Stone v Google is considered the last serious American challenge to Google's AdWords program. Nevertheless, Rosetta Stone 'won' the drop of the summary ruling, the subsequent settlement between the two parties left commentators stating that Google had 'won' the word keyword trademark.
Video Rosetta Stone Ltd. v. Google, Inc.
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Google has used a keyword ad version, known as AdWords, since October 2000. Google places paid ads on the top and sides of the search results pages as "sponsored links." Every time someone enters a search, Google places the most relevant ads, as determined through the relevance and bid on the word by the advertiser. Most advertisers with Google pay based on cost per click.
In 2004, Google changed its policy and began allowing advertisers to bid on trademarked words. In 2009, Google further changed its AdWords policies now allowing the use of trademarks both in ad text and as ad keywords. As a result of policy changes, more than twenty lawsuits have been filed against Google accusing trademark infringement.
In response to the revamped AdWords policy, Rosetta Stone, a popular maker of foreign language learning software, filed a lawsuit against Google for violating Lanham Law, claiming Google "assists third parties to mislead consumers and abuse Rosetta Stone Marks by using them as" keywords "trigger for paid advertising and by using it in paid text or ad title". Rosetta Stone sues specifically for: direct trademark infringement, contributory trademark infringement, trademark infringement representation, and trademark dilution. Rosetta Stone is also prosecuted for unfair enrichment under the laws of the state of Virginia.
The district court granted Google's motion for concluding judgments on all Lanham Act claims that found that there was no consumer confusion, the use of Google's trademarked keywords to work, and the use of trademarked keywords was a nominative fair use or contributed to the increase in the Rosetta Rock Brand Recognition. The district court also granted Google's motion to reject Rosetta Stone's unfair claim of enrichment. Rosetta Stone appeals to the Fourth Circuit on all claims, which review the de novo case.
Maps Rosetta Stone Ltd. v. Google, Inc.
Holding of the Court
The Fourth Circuit reverses the decision of the district court on summary decisions for direct trademark infringement, contributory trademark infringement, and trademark dilution. The Court affirmed the award of a summary verdict for claims of representation trademark infringement and reinforced a motion to dismiss unjust enrichment for different reasons from the district court.
Analysis
Trademark infringement directly
To win over trademark infringement directly under Lanham Act, the plaintiff must prove:
- That they have a valid mark
- The Defendant used the mark in the trade and without the Plaintiff's authorization
- The Defendant uses the mark (or imitation) "in connection with the sale, distribution or advertisement of" goods or services; and
- The use of the mark by the Defendant is likely to confuse consumers
On appeal only 'chaotic possibility' branch is in dispute. In the Fourth Circuit, the possibility of confusion is determined by looking at nine factors: (1) the strength or specificity of the plaintiff's mark as actually used in the market; (2) the similarity of the two brands with the consumer; (3) similarity of identifiable goods or services; (4) the similarity of facilities used by markers; (5) the similarity of advertisements used by shareholders; (6) the intention of the accused; (7) real confusion; (8) the quality of the defendant's products; and (9) the sophistication of the consuming community.
The first court confirmed the limited factor analysis of the district court. The district court only looks at the intentions, the actual confusion, and the sophistication of the consuming public factors. However, the Court blamed the district court's reasoning on all three factors.
The Court referred to Google's change to the AdWords trademark policy, and Google's expectation of a trademark lawsuit as a result of the change, to find that there were actual factual issues for the purposes of Google and to refuse a district court summary court ruling.
For actual customer confusion, the Court ruled that the district court had failed to correctly account for sponsor confusion. The Lanham law allows consumer confusion about the source from which the goods originate, or confusion as to whether a merchandise is sponsored by a trademark holder. Therefore, the Court found that the district court's verdict on evidence of actual consumer confusion was flawed. Looking at the evidence itself, the Court found that the deposition of actual consumers testified to the confusion and number of complaints to the Rosetta Stone customer care center raised the actual facts, whether there was real confusion and refused grants from the district court summaries. consideration.
Finally, the Court found the sophistication of the people who consume too the decisive facts to decide on a motion for the summary decision.
Function
The doctrine of functionality in trademark law prohibits trademark rights in the functional features of a product or its packaging. (15 USC Ã,§Ã, 1052 (e) (5)) Functional is defined as a product feature that is important for the use or purpose of the article or if it affects the cost or quality of the article.
The district court has found that even if Rosetta Stone can make a case for consumer confusion, it will provide a summary assessment of direct trademark claims, based on the doctrine of functionality. District courts find that keywords have important indexing functions by allowing Google to easily identify information in its data base. The district court also finds keywords serving the advertising function for consumers, enabling them to search for certain information, goods, or services, and to compare prices.
The court completely rejects the application of the doctrine of functionality in such a situation. The court ruled that the right place to analyze functionality is related to how the trademark relates to the functionality of the actual product instead of whether it makes the functionality of Google's computer programs better.
Contribute violation
A contributory violation occurs when the manufacturer or distributor intentionally induces another person to infringe on the trademark, or if it continues to supply the product to a person known or has reason to be found to be involved in a trademark infringement. In this situation, the manufacturer or distributor is responsible for any damage done as a result of fraud. General knowledge is insufficient; the accused must provide his or her products or services to "identified individuals" who are known or have reason to know that they are involved in trademark infringement.
District court rely on Tiffany Inc. v. EBay, Inc. , in which the Second Circuit dismissed a trademark infringement claim contributing to eBay by Tiffany, to rule against a copyright infringement claim of Rosetta Stone. In this case, the Second Circuit has decided that the receipt of thousands of notices about fake Tiffany jewelry is not the same as "knowing or having reason to know" on behalf of eBay. The district court found sending Rosetta Stone about 200 notices of sponsored links advertising Rosetta Stone software is not enough to prove that Google knows or has reason to know that the site is involved in trademark infringement.
The court quit, finding that the district court's evaluation of the evidence found by Rosetta Stone did not meet its burden for a summary verdict. However, the question is whether Google has met the that weighs on conclusions assessment and provides evidence to support Rosetta Stone's claim, and that Tiffany Inc. v. EBay, Inc. is to decide after the trial and hence the application is limited here, the Court rejected the court decision of the district court decision.
Unfair enrichment
The district court stated that Rosetta Stone had failed to accuse the implicit promise to pay, thus giving Google the motion to dismiss. The court found this misread about unfair enrichment standards, but upheld the movement to refuse on the grounds that Rosetta Stone fails to accuse the fact that it provides benefits at Google, which Google should be expected to pay back.
Trademark dilution
In 1996, Congress enacted the Federal Trademark Law (amended in 2006 under the 2006 Trademark Reduction Act enactment) which sets out federal claims for trademark dilution. To declare a prima facie dilution claim, the plaintiff must state that:
- He has a distinctive famous brand
- The defendant has started to use alerts in trafficking that allegedly weaken the famous mark
- That the similarity between the Defendant's sign and the famous mark raises the relationship between the sign; and
- That association tends to spoil the uniqueness of a well-known mark or may damage the reputation of a well-known brand
Trademark dilution does not depend on consumer confusion, otherwise dilution relates to dimming the strength and value of existing trademarks through their unauthorized use by others.
The district court has granted Google's motion for concluding judgments about dilution claims for two reasons. Firstly, Google's use of the Rosetta Stone mark is not to identify its own goods and services and therefore the terms of fair use of the Lanham Act nomination protect Google from Rosetta Stone's claims. Second, the Rosetta Stone trademark is not diluted because Rosetta Stone fails to prove that Google's use is likely to break the distinctiveness of a well-known brand or possibly damage the reputation of a well-known brand. In power against dilution, the district court relies primarily on raising the Rosetta Stone brand awareness since the introduction of the new Google AdWords trademark policy.
In relation to fair use, the Court found that the nominative fair use terms were a defense, putting the burden on Google instead of Rosetta Stone to prove. Furthermore, the district court has failed to analyze whether Google has acted in good faith, a requirement for fair use.
With regard to the second reason, the Court finds that the possibility of dilution is a six-factor analysis, in which the court should see:
- The degree of similarity between a trademark or a well-known trademark and brand
- The degree of uniqueness or attribution of the famous mark
- The extent to which the owner of a famous brand is involved in the use of a mark that is virtually exclusive
- Known mark recognition rate
- Whether the brand user or trade name is meant to create an association with the famous mark
- Any actual association between brand or trade name and famous brand
The district court analyzed only one factor, the level of recognition of the Rosetta Stone mark. The court returns so the lower court can overcome additional factors that may apply.
Next Developments
Before a new trial can begin, Rosetta Stone and Google agree to settle all claims. On October 31, 2012, the two companies released a joint statement through Reuters stating, "Rosetta Stone Inc. and Google have agreed to cancel a three-year trademark infringement lawsuit between them and to collaborate meaningfully to combat online advertising for counterfeit goods and prevent abuse and misuse of trademarks on the Internet. "Settlement terms are not disclosed.
Implications
Google relies on AdWords as the main revenue earner for its $ 60 billion business. While it is not known how much of the revenue is related to a trademark, negative decisions can greatly affect Google's revenue.
Source of the article : Wikipedia
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