Written by: Jamison Arterton

Over the past few years, numerous trademark infringement suits have been filed over keyword advertising.  Last month, the 10th Circuit weighed in on this subject, issuing a decision with broad implications.  In 1-800 Contacts, Inc. v. Lens.com, Inc. , the 10th Circuit held that the use of another’s trademark to generate sponsored advertisements does not constitute trademark infringement.

Continue Reading The Latest Keyword Advertising Battle: The 10th Circuit Finds No Infringement Based on Use of Another’s Trademark to Generate Sponsored Advertisements

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

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

Written by Jamison Arterton

In the latest Google AdWords decision, a U.S. Federal District Court judge in Texas refused to certify two classes of advertisers who filed separate infringement suits against Google Inc.  The complaints, filed in 2009, each claim that Google sold search terms that included registered trademarks to advertisers who were not affiliated with or sponsored by the trademark holder.  The purchaser’s advertisements were then displayed on the top or right side of the corresponding results page as “sponsored” advertising.  According to the complaints, the sale of such keywords to competitors infringes on the trademark owner’s rights, particularly since Google does not remove sponsored advertisements upon notice of trademark rights.  It only removes or disables such links if the advertisement itself contains another’s trademark.  The purported classes, led by FPX LLC and John Beck Amazing Profits LLC respectively, claim that they had met all the prerequisites for class certification under Fed.R.Civ.Pro. 23(a)(2).  FPX sought certification of a Texas-only class of owners of registered marks that were sold by the defendant as a keyword and/or an AdWord from May 11, 2005 to the present.  In contrast, John Beck sought class certification for a nationwide class of trademark holders.

U.S. District Court Judge T. John Ward adopted the magistrate judge’s recommendation in denying the class certification because the plaintiffs could not meet the commonality requirement given the individualized nature of each class member’s claims. The court reasoned that such claims also required a determination of the validity of each plaintiff’s mark, weighing against class certification.

 The purchase of keyword Internet advertising is a key component of marketing programs for businesses as Internet users frequently rely on search engines, such as Google, to find and purchase products.  It remains to be seen whether the United States will follow the European Union’s Court of Justice’s recent determination that the purchase of a keyword or AdWord that is identical to the trademark of another and is used to promote goods or services in competition with the trademark owner may constitute trademark infringement under certain circumstances.  However, last week’s decision is a blow to trademark holders seeking to enforce their trademark rights in a class action setting.  While search engines and their online advertising programs continue to create common problems for trademark holders, last week’s decision calls into doubt whether joint remedies are available to trademark holders for such violations.  For the time being, it looks like it is back to the Whac-A-Mole approach to trademark enforcement in the AdWords context.

Written by Geri Haight

Remember last year when the European Union’s Court of Justice ruled that Google did not violate European Union law by selling trademarks as keywords and thereby permitting advertisers to purchase and use keywords corresponding to their competitor’s trademarks in Google ads?  The decision let Google, as an intermediary, off the hook for trademark infringement claims arising from its promotion of the practice of buying another’s trademark as a keyword.  That was very good news for Google’s bottom line:  it derives approximately 97% of its revenue from advertising, which totaled $23.7 billion last year. Continue Reading Google Adwords Decision in Europe: Trademark Owners May Prevent Competitors From Using Trademarks As Keywords