Written by: Joseph M. DiCioccio

The United States Intellectual Property Enforcement Coordinator Victoria Espinel recently blogged about a new effort to combat online piracy of intellectual property.  The broad-based effort attempts to leverage the participation of several large internet/publishing companies (Google, Yahoo, Microsoft, AOL and Condé Nast), advertising networks (24/7 Media, Adtegrity) and the Interactive Advertising Bureau.  The parties have agreed to voluntarily adopt a set of best practices to remove advertising from websites that are primarily engaged in copyright piracy (movies, video games, music, books, etc.) or selling counterfeit goods.

Continue Reading Google, Yahoo, and Ad Networks Agrees to Set of Best Practices to Combat Online Piracy

Written by Geri Haight

Six months after the U.S. Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of Rosetta Stone’s trademark infringement lawsuit against Google, the parties issued a joint statement today announcing that they have settled their legal dispute. The parties stated:  “Rosetta Stone Inc. and Google have agreed to dismiss the three-year-old trademark infringement lawsuit between them and to meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” 

Continue Reading Google and Rosetta Stone Settle AdWords Trademark Infringement Suit

Written by Susan Neuberger Weller

On Friday, August 10, 2012, Google announced that it was changing its search algorithms so that websites with high numbers of valid copyright infringement removal notices would appear much lower in the search results. This announcement was greeted with strong approval by many online copyright content owners who have for years tried various methods of pressuring Google and other Internet site operators to take action to combat copyright infringement and piracy. Many of these large media companies had backed two anti-piracy bills before the U.S. Congress earlier this year  – known as SOPA and PIPA – which had proposed significant penalties for online pirating of copyrighted content, with particular aim at infringing foreign websites. That legislation was opposed by many constituencies, including Yahoo and Google, claiming it would abridge freedom on the Internet. The legislation ultimately died.

Google said it now receives more than 1 million copyright removal notices a week related to its search engine, and, in the last 30 days, had received over 4.3 million. To put this in perspective, the number of notices received in the last 30 days is more than what Google received for all of 2009.

It remains to be seen whether any others will follow Google’s approach, and whether this action will result in any diminishment of copyright infringement online.


Written by Susan Neuberger Weller

At a conference held June 18 at Stanford University Law School – The 9th Annual Stanford Ecommerce Best Practices Conference – it was reported that copyright holders are increasingly using the Digital Millennium Copyright Act’s (“DMCA”) notice and takedown procedures to address copyright infringement on websites. Continue Reading Copyright Owners Using DMCA To Take Down URLs

Written by Geri Haight

The list of gTLD applications and applicants, disclosed by ICANN yesterday, is a fascinating read.  It provides an insight into how the Internet will be transformed (or, depending on your point of view, confused) in the coming years as new domain name extensions are introduced to consumers.  But, at the outset, what is really interesting is the breakdown of applications. Continue Reading The List of gTLD Applicants: A Breakdown

Written by Geri Haight

Last year, the Internet Committee for Assigned Names and Numbers (ICANN), the organization responsible for the coordination of the global Internet domain name system, announced a plan to bring sweeping changes to the Internet’s generic top level domain (gTLD) structure. Internet users are familiar with gTLDs, if not by name. gTLDs are Internet extensions such as .com, .org and .net found at the end of a domain name. Under the new system, a business could apply to own its .BRAND. An automobile company could apply to own .CARS. A city government could apply to own .CITY. The possibilities, seemingly, are endless. Continue Reading Has Someone Applied to Register Your .BRAND? Find Out On June 13th

Written by Susan Weller

Do you “google?” That is the essence of the question before the Federal District Court in Arizona in a Complaint filed on May 21, 2012 by David Elliott against Internet search engine giant Google, Inc. In Elliot v Google, Inc., CV-12-1072-PHX-MHB, Elliot claims that Google’s once distinctive mark GOOGLE® has become generic and lacks trademark significance due to its common use as a transitive verb. After losing to Google in UDRP proceedings involving many “Google-related” domain name registrations that he owns, Elliott now seeks a declaratory judgment that his domain names are rightfully his, that they do not infringe any trademark rights Google may own, and that all Google’s registered GOOGLE® marks should be cancelled since “google” is now a common generic word worldwide that means “to search the Internet.” Continue Reading Is It Proper To Say You Google On GOOGLE®?

Written by Geri Haight

As part of its plan to dramatically expand the Internet’s infrastructure beyond .com (and other pre-existing generic top level domains (gTLDs)), ICANN, the Internet Corporation for Assigned Names and Numbers, promised brand owners that a variety of additional trademark protection mechanisms would be put in place.  One such mechanism is the Trademark Clearinghouse.  Continue Reading ICANN’s Trademark Clearinghouse: An Update

On Monday, the Court of Appeals for the Fourth Circuit reversed the district court’s decision ending Rosetta Stone’s trademark infringement case against Google.  Rosetta Stone’s complaint, filed in 2009, alleged that Google infringed Rosetta Stone’s trademark rights by selling its trademarks as keywords to third-party competitors without Rosetta Stone’s permission.  Under Google’s AdWords program, Google offers advertisers the ability to select certain keywords that will trigger a “sponsored link” to the advertiser’s chosen website.  Google displays the “sponsored link” above or next to the organic search results.  The Rosetta Stone trademarks at issue, which Google included as keywords in its AdWords program, included “language library,”  “global traveller” and “Rosetta Stone,” among others.  Rosetta Stone alleged that Google’s sale of its trademarks to unrelated third parties for use in sponsored advertising caused consumers to follow the unaffiliated sponsored link advertisements based on the mistaken belief that the associated links/websites were owned by or affiliated with Rosetta Stone when, in fact, they are not.

In 2010, the district court ruled in Google’s favor,  concluding (among other things) that “no reasonable trier of fact could find that Google’s practice of auctioning Rosetta Stone’s trademarks as keyword triggers to third party advertisers creates a likelihood of confusion as to the source and origin of Rosetta Stone’s products[.]”  In the end, the district court gave Google a total victory, granting its motions for summary judgment on Rosetta Stone’s claims of (1) direct trademark infringement; (2) contributory infringement; (3) vicarious infringement; (4) trademark dilution; and (5) unjust enrichment (under Virginia law).  The Fourth Circuit reversed, at least in part, remanding the issues of direct infringement, contributory infringement, and trademark dilution to the district court.  In so doing, the Fourth Circuit set forth the details of some interesting bits of evidence for the district court to consider on remand.   Continue Reading Fourth Circuit Resurrects Rosetta Stone’s Challenge to Google’s AdWords Program

Our colleagues at Mintz Levin’s Employment Matters blog recently posted an interesting piece about a dispute regarding ownership of a Twitter account.  The dispute arose from an employer/employee relationship, but serves as an important reminder about protecting your brand on social media sites.

As alleged in the complaint (PhoneDog LLC v. Kravitz), PhoneDog operates a website that offers cellphone news and reviews and it hired Kravitz as a product reviewer and video blogger.  While at PhoneDog, Kravitz was given use of a twitter account “@PhoneDog_Noah” to disseminate information on behalf of the company, and to promote its services.  Over time, @PhoneDog_Noah amassed 17,000 followers. After resigning his employment with PhoneDog, Kravitz began working for a competitor but continued tweeting under the @PhoneDog_Noah handle.  Although he later changed the account’s name to omit the PhoneDog name, the 17,000 followers continued to follow Mr. Kravitz’s tweets. PhoneDog sued Kravitz, asserting claims for misappropriation of trade secrets, interference with prospective employment advantage, and conversion, based on his use of the PhoneDog handle and his retention of the twitter account’s followers.  Kravitz moved to dismiss the case, but on Monday, the court rejected his arguments and the case will now move forward. Continue Reading Who Owns a Company’s Twitter Account (and Musings on Social Media and Trademarks)?