US Case Law: “Rosetta Stone vs. Google”
The second case in which Google has been involved in the US is “Rosetta Stone vs. Google“. For those who are not acquainted with Rosseta Stone Ltd´s commercial activity, it is a company that developes software used for helping people to learn languages “on line”. Besides that, Rosetta Stone Ltd is the owner of several trademarks, including Community trademarks registered for classes 9, 38, 41 and 42 of the Nice Classification.
Google´s Adwords System is at the root of the controversy. This application is a tool that allows companies (called “sponsors”) to buy the right to appear in the list of “sponsored links” when someone’s introduces a keyword in the “search” box. When Rosetta Stone´s trademarks or relating services were typed in Google´s search engine, as keywords, certain of the sponsored links displayed in the screen led internet users to counterfeit copies or otherwise improper copies of Rosetta Stone´s products.
As for the above, the Fourth Circuit of Appeal on April 9 2012 declared that such activity on behalf of Google constituted:
- Direct trademark infringement: “a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result from its use of trademarks”.
- Contributory trademark infringement: the Court found that there was enough evidence to hold Google responsible for contributory trademark infringement on the grounds that “It (Google) allowed known infringers and counterfeiters to bid on the Rosetta Stone marks”. Therefore, and on the bases of the evidence submitted, since Google was aware that sponsors were buying Rosetta Stone´s marks to redirect internet users to websites where counterfeit Rosetta Stone´s products were being sold, was sufficient evidence to hold Google accountable.
- Trademark dilution. Rosetta Stone brought before the Court a claim for trademark dilution on the basis that “if customers or prospective customers see the plaintiff´s famous mark used by other persons in a non-confusing way to identify other sources for many different goods and services, then the ability of the famous mark to clearly identify and distinguish only one source might be diluted or weakened”. Thus, the Court finally held that lower court erred when it held that Rosetta was required to show that Google used the Rosetta Stone’s marks as identifiers for Google´s own goods or services. Therefore, the Court remanded this issue back to the lower court for findings on, for instance, fair use, among others.