Rescuecom Files Reply Brief in Rescuecom v. Google

By Eric Goldman

In the Second Circuit appeal of Rescuecom v. Google, Rescuecom has filed its reply brief to Google’s first brief and the various amicus briefs filed in support of Google’s position. Rescuecom’s brief relies heavily on McCarthy’s recent treatise entry that took the position that “trademark use in commerce” isn’t a predicate requirement of the plaintiff’s prima facie case. McCarthy’s argument has a little support in the statutory text, but it also ignores various words plainly in the statute. Personally, at this point I don’t think either side can make a persuasive textual argument because the statute is fatally ambiguous.

In response to the law professors’ amicus brief, Rescuecom argues (1) we mischaracterized their position to say they wanted to block all trademark uses (not true), and (2) even if our argument that Google is more properly analyzed under contributory infringement doctrines, Rescuecom has made sufficient allegations on that front–especially because the allegedly most confusing aspects (the allegedly poor delineation between ads and organic search results) are in Google’s control, not the advertisers’.

One clarification. The reply brief says that all courts outside of the 2nd circuit evaluating trademark use in commerce have rejected the argument that keyword purchases/sales aren’t a trademark use in commerce. This is true only if we ignore the WhenU adware cases. See slide #4 from my slides on keyword law. It also ignores domain name cases such as Bird v. Parsons (6th Cir. 2002), which held that a domain name auction site didn’t make a trademark use when selling a domain name.

Other source material in the case:

* Law professors’ brief by Stacey Dogan and me

* Electronic Frontier Foundation amicus brief by Jason Schultz, Corynne McSherry and Fred von Lohmann

* Public Citizen amicus brief by Paul Levy

* eBay/Yahoo/AOL amicus brief by Celia Goldwag Barenholtz, Janet Cullum and others of Cooley Godward Kronish (warning: 1.8MB file)

* Google’s initial brief

* Rescuecom’s initial brief

* District Court’s opinion

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