Rosetta Stone Ltd. v. Google, Inc.
676 F.3d 144
| 4th Cir. | 2012Background
- Rosetta Stone owns ROSETTA STONE marks and uses them in language-learning products and ads.
- Google operates AdWords and keyword-based advertising, displaying sponsored links with text ads.
- Google policies in 2004 allowed trademarks as keywords; in 2009 it allowed limited use in ad text under certain conditions.
- Rosetta Stone sued Google for direct, contributory, and vicarious infringement, and for dilution, plus unjust enrichment.
- District court granted summary judgment against Rosetta Stone on most claims; the Fourth Circuit vacated in part and remanded some claims.
- On appeal, the court affirmed vicarious infringement and unjust enrichment decisions but vacated and remanded direct infringement, contributory infringement, and dilution claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion for direct infringement | Rosetta Stone argues Google’s use of ROSETTA STONE as keywords/text causes confusion. | Google contends no likelihood of confusion given nominative use and context. | Vacated; genuine issues of fact remain on confusion factors. |
| Functionality doctrine applicability | Functionality does not shield Google's use in AdWords. | Functionality should bar infringement. | Functional doctrine does not apply; district court erred in relying on it. |
| Contributory infringement | Google knowingly aided counterfeit Rosetta Stone ads by allowing infringing links. | Not enough to show continued infringement by identified individuals. | Vacated; evidence could support triable issue of contributory infringement. |
| Vicarious infringement | Google and advertisers form an implied partnership/control over ads infringing marks. | No joint control with infringers over sponsored links. | Affirmed district court's grant of summary judgment for Google on vicarious infringement. |
| Trademark dilution (FTDA) | Google’s use after 2004 dilutes Rosetta Stone’s famous mark; timing of fame and first use at issue. | Dilution requires proof of likelihood of dilution; fame timing contested. | Remand to reevaluate dilution elements and the timing of first diluting use and fame; not decided at this stage. |
Key Cases Cited
- CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263 (4th Cir. 2006) (multifactor test for likelihood of confusion; nominative use considerations)
- Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) (famous marks and dilution framework; caution on factors)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (contributory infringement and joint-liability relevance; nominative fair use context)
- Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005) (nominative fair use; branding context in confusion analysis)
- George & Co., LLC v. Imagination Entm't Ltd., 575 F.3d 383 (4th Cir. 2009) (actual confusion considerations and reliability of surveys)