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Keywords

lawsuitplaintiffdefendantliabilityappealsummary judgmenttrademarkpartnershipunjust enrichment
liabilitysummary judgmenttrademarkcorporationunjust enrichment

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Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 102 U.S.P.Q.2d 1473

Facts

Rosetta Stone Ltd., a provider of language learning products, filed a lawsuit against Google Inc. alleging trademark infringement, contributory and vicarious trademark infringement, and trademark dilution. The case arose from Google's practice of allowing third-party advertisers to use Rosetta Stone's trademarks as keywords for paid advertisements. Rosetta Stone claimed that this practice misled consumers and caused confusion regarding the origin of its products. The district court granted summary judgment in favor of Google on most claims, leading Rosetta Stone to appeal.

Rosetta Stone began in 1992 as a small, family-owned business that marketed its language-learning software under the brand name 'Rosetta Stone.' By 2006, Rosetta Stone had become an industry leader in technology-based language-learning products and online services, and, by January 2010, it had become a publicly traded corporation with 1,738 employees and gross revenues of approximately $252 million.

Issue

Whether Google's use of Rosetta Stone's trademarks as keywords in its advertising program constituted trademark infringement, contributory infringement, vicarious infringement, and trademark dilution.

Whether Google's use of Rosetta Stone's trademarks as keywords in its advertising program constituted trademark infringement, contributory infringement, vicarious infringement, and trademark dilution.

Rule

To establish trademark infringement under the Lanham Act, a plaintiff must prove: (1) ownership of a valid mark; (2) unauthorized use of the mark in commerce; (3) use of the mark in connection with the sale or advertising of goods or services; and (4) likelihood of consumer confusion. The court also noted that the functionality doctrine does not protect a defendant from liability if the mark's use is likely to confuse consumers.

Analysis

The court found that there were genuine issues of material fact regarding whether Google's use of Rosetta Stone's trademarks created a likelihood of confusion among consumers. The court emphasized that anecdotal evidence and internal studies indicated that consumers were confused about the origin of the products. Additionally, the court noted that the strength of Rosetta Stone's mark and the nature of Google's advertising practices were relevant to the likelihood of confusion analysis.

Conclusion

The court affirmed the district court's dismissal of the unjust enrichment claim and the ruling on vicarious infringement but vacated the summary judgment on the direct infringement, contributory infringement, and dilution claims, remanding them for further proceedings.

We conclude that neither ground can sustain the summary judgment order as to this claim. Accordingly, we vacate the district court's order as it pertains to the direct infringement claim and remand for further proceedings.

Who won?

Google Inc. prevailed on the unjust enrichment and vicarious infringement claims, as the court found no evidence that Google acted in a manner that would create liability under those theories. The court reasoned that there was insufficient evidence to establish that Google had a partnership with advertisers or that it was unjustly enriched by the use of Rosetta Stone's trademarks.

Google Inc. prevailed on the unjust enrichment and vicarious infringement claims, as the court found no evidence that Google acted in a manner that would create liability under those theories.

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