Nearly Every Company That Hates Google Piles On To Rosetta Stone Case

from the even-against-their-own-interests dept

Fri, Nov 5th 2010 5:30am — Mike Masnick

For many, many years, we've covered the long list of cases involving some company suing Google because someone else bought an AdWords ad based on a keyword that the plaintiff had the trademark on. As we've discussed over and over and over again, these lawsuits make little sense for a couple of reasons. First, a trademark does not give you total control over the word, but only in cases where there is a likelihood of confusion (or dilution, though, that's a bit of a separate issue). Having a competitor advertise on your keywords is unlikely to confuse anyone. It's perfectly reasonable to try to put your ads where people are looking for your competitor's products. It's why when you go to the supermarket, they often will hand out coupons to you for competing products to what you've bought. That's not illegal, it's competition. Second, if there actually is any confusion in the ad, the liability would be on the advertiser, not on Google.

Thankfully, in most of these cases, the courts have recognized this and Google has prevailed. One high profile one, decided a few months back, was an attempt by language software firm, Rosetta Stone, to sue Google over ads on the site. Rosetta Stone failed badly, and while there were some quirky aspects to the ruling, it got the "big questions" right.

Rather than recognizing the nature of trademark law, Rosetta Stone is appealing, and the case is generating a lot of attention. Eric Goldman has a rundown of amici briefs supporting Rosetta Stone's position, and it's basically a "who's who" of companies who hate Google and are or were involved in other lawsuits against Google. You have Viacom and Blue's Destiny, who both sued (and lost to) Google on copyright issues. It seems they're hoping that if secondary liability in trademark can be applied to Google on this issue, perhaps they can use it to argue for more secondary liability in copyright law. That's a longshot, and it's a pretty childish reason to file an amicus brief here. There are some other companies that have sued over trademark keyword advertising in the past... And then there's the Association for Competitive Technology (ACT) and the Business Software Association (BSA), both of which have very strong ties to Microsoft. This seems really strange, because a loss for Google here would absolutely harm Microsoft. As Eric Goldman notes:

Could Microsoft be foolish enough to use this lawsuit as an opportunity to tweak its arch-enemy Google, even though an adverse ruling in this case would almost unquestionably be against Bing's best interests?

Even more bizarre is that eBay also has pretty strong ties to ACT, and eBay has been fighting against a long series of ridiculous secondary liability trademark claims from luxury goods makers (many of whom signed on to the exact same brief by ACT. It would appear that this brief actually appears to go against many of the best interests of ACT's largest members. A very strange move by ACT who should know better.

One other oddity: apparently Rosetta Stone's opening brief in the case was heavily redacted for no good reason, which seems problematic on such a high profile case that could impact a variety of technologies and services. Thankfully, Paul Levy saw this and questioned why there were so many redacted parts, and the lawyers have agreed to release an unredacted version of the brief.

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Filed Under: advertising, keyword advertising, trademark
Companies: ebay, google, microsoft, rosetta stone, viacom

20 Comments

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cj (profile), 5 Nov 2010 @ 6:28am

Another case of mistaken identity(not really)
So because Rosetta Stone is being pirated in wholesale fashion due to their software being overpriced they are going after Google??? I really hope they dont get away with this in the end, but you never know with courts!
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halley (profile), 5 Nov 2010 @ 6:29am

Nearly a perfect Prisoner's Dilemma:
Could Microsoft be foolish enough to use this lawsuit as an opportunity to tweak its arch-enemy Google, even though an adverse ruling in this case would almost unquestionably be against Bing's best interests?
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Jake, 5 Nov 2010 @ 6:31am

Seems to me that if Google are tailoring these ads to their customers via clickstream data, not always with their informed consent, then the least they ought to be doing is a modicum of vetting before taking someone's money in exchange for an AdWord or sponsored link. I don't think legal liability is necessarily the way to go, and in fact I think they won't need any more compulsion than the bad rep their sponsored links are getting as a result of stories like this one, but the only organisation in a logistical position to vet Google AdWords is Google itself.
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Alatar, 5 Nov 2010 @ 6:52am

Look, all the virtuous defenders of the public !
Oh, look, Microsoft is suddenly worried about users' rights and legitimate practices (after threatening PC manufacturers that if they dare sell a computer without windows preinstalled and sold by force even if you already own 5 licences, they will go berserk).
This lawsuit is missing some briefs by Facebook and Apple, then we will have the perfect bunch of morons suing open-source Google, the bunch of dirty companies and idiot Iphone and wondows-PC owners who suddenly find the need to make a grandstanding.

Not that I think Google is some kind of pure Jesus, but before criticizing, you have to be legitimate in it, and be clean yourself
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CommonSense (profile), 5 Nov 2010 @ 7:05am

Rosetta stone...
And to think, I was almost ready to buy the Rosetta Stone cd's to brush up on the French that I've lost since college... Unfortunately, I can't support a company that can't see past the dollar $ign$ in their eyes, and won't look at the bigger picture.

It's too bad, because I'd heard they were really good. I wonder if Google is going to start offering something similar so I can get it from them instead...
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JEDIDIAH, 5 Nov 2010 @ 7:25am

Re: Rosetta stone...
It doesn't matter that they are jerks. I just couldn't get past their price tag. I figured that I could just "muddle through" rather than pay what they wanted for their stuff.

...and I muddled through just fine.
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Anonymous Coward, 5 Nov 2010 @ 7:38am

I need to trademark every word in the dictionary and sue everyone that uses words.
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Pixelation, 5 Nov 2010 @ 7:41am

BSA...
should be sued by the Boy Scouts of America for use of their acronym.
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Hephaestus (profile), 5 Nov 2010 @ 7:42am

Re: Rosetta stone...
" I wonder if Google is going to start offering something similar so I can get it from them instead..."

Thinking about it Rosetta Stone really would be an easy app to build on the web.
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Jason, 5 Nov 2010 @ 7:45am

either or...
Amici or amicus briefs, but not amici briefs. It chokes on the inner tongue of my brain.

Although it could technically be correct, I guess, if you intended to indicate a plurality of filing parties styled in each of the briefs, but it just sounds like you're trying to match the modifier, which we don't do in English.

/excessively technical nitpick
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interval (profile), 5 Nov 2010 @ 8:39am

Re: either or...
Wow. I just had complete language geek brain blow-out.
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blackturtle.us, 5 Nov 2010 @ 8:58am

Rosetta Stone
Rosetta Stone has got to be the most over-priced language learning product on the planet! It has not proven to be even close to the most useful product I've used in my language learning endeavors. Obviously Rosetta Stone fears that if they are forced to compete, that they might have no choice but to drop their price to about a tenth of what they currently charge, which would still be more than their product is worth!
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Anonymous Coward, 5 Nov 2010 @ 9:47am

Google should just threaten to create a competing product and give it away free. That'll shut RS up.
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Anonymous Coward, 5 Nov 2010 @ 10:18am

"Having a competitor advertise on your keywords is unlikely to confuse anyone."

Says you. Courts have certainly recognized the possibility that such use of a trademark would lead to confusion, depending on the context.
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Shawn (profile), 5 Nov 2010 @ 10:22am

Re:
[citation needed]
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Anonymous Coward, 5 Nov 2010 @ 10:29am

Re: Re:
E.g., Hearts on Fire Co. v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009); Morningware, Inc. v. Hearthware Home Prods., Inc., 673 F. Supp. 2d 630 (N.D. Ill. 2009); Soilworks, LLC v. Midwest Industrial Supply, Inc., 575 F. Supp. 2d 1118 (D. Ariz. 2008).
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Jose_X, 5 Nov 2010 @ 2:43pm

Re:
The prisoners you mention are stuck in a bad situation. That is not the case here. Microsoft would give up search if it means they will be able to fall back to their old safety and very powerful levers. They can always seize the market eventually leveraging their Windows monopoly and integration at server and client. Problem for them was that Google got off the blocks too fast, continues to move fast on new markets, and is an asset to the open source world (which is a threat to Microsoft's position). Google is also directly attacking Microsoft's existing conquered lands.

Also, the prisoners are on an equal footing. Not here. Since Google is in a superior position by far, this action carried out by Microsoft will hurt Google more than if Google tried same. In other words, regardless of which prisoner does the deed in the other's trial, it's Google that suffers more.

In short, one prisoner gets less spanking than the other if things go bad. Additionally, that prisoner would more easily salvage large quantities of existing loot by helping condemn the other even if this first prisoner will hurt some as well.
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abc gum, 6 Nov 2010 @ 8:35am

Denial of a Motion to Dismiss
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d, 2 Mar 2011 @ 12:12am

dd
cxcc
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sprearson81 (profile), 10 Jun 2012 @ 8:33am

So, by nearly every company we mean basically nearly every company in existence.
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