Plaintiff-Side Briefs in Rosetta Stone v. Google Appeal
By Eric Goldman
Rosetta Stone and five amici groups have filed their briefs in the Fourth Circuit appeal in Rosetta Stone v. Google. The filings:
It appears Rosetta Stone has new appellate counsel: Terrence Ross and the Gibson Dunn team are out; a team from Skadden Arps is in. The brief makes several predictable arguments responding to some quirks in the district court opinion.
Inexplicably, the brief was filed in heavily redacted form. Paul Levy is going to fix that.
Normally, I’m irked when INTA takes hardcore pro-TM owner positions in amicus briefs. INTA should represent the entire trademark community, which has widely varying views about the proprietary of trademarked keyword advertising. This brief focuses on two doctrinal points: the court misinterpreted the “functionality” defense and botched the dilution analysis. As a descriptive matter, I agree that the lower court’s discussion on both points was goofy, so there is a kernel of merit in INTA trying to help the courts keep trademark doctrine straight. Even so, the INTA brief takes a characteristically and excessive maximalist position, especially on dilution.
This amici agglomeration consists of Carfax, Ford Motor, Harmon International, the Media Institute, Viacom and Blues Destiny. Viacom and Blues Destiny are both Google-haters. Viacom of course is still pursuing YouTube for copyright infringement despite its huge loss in district court; and Blues Destiny sued Google for copyright infringement before giving up. I’m finding it hard to believe that Carfax or Ford Motor care about copyright issues like Viacom and Blues Destiny do, so the agglomeration is weird.
The brief focuses on the standard for contributory trademark infringement. I assume the copyright plaintiffs care because a more liberal trademark standard might migrate back to secondary copyright principles.
This amici agglomeration consists of Association for Competitive Technology (which describes itself as a “trade association for computer software, hardware, consulting companies working to keep e-commerce unregulated”–ironic!), Burlington Coat Factory, Business Software Association, Chanel, Coach, GEICO, Harrah’s Entertainment, SAS Jean Cassegrain, Longchamp, the NFL, Oakley, the PGA, Rolls-Royce, Sunkist, Sunrider, Swarovski, Tiffany, TiVo, Tumi and United Continental. This is another weird agglomeration–a mix of content owners (NFL, PGA), high end brands (Tiffany, Chanel, Rolls Royce), technology organizations (ACT, BSA, TiVo) and random others.
GEICO is another disgruntled former plaintiff against Google. Both the ACT and BSA have ties to Microsoft, who hates Google and is contesting Google’s business through multiple fronts (1, 2). Could Microsoft be foolish enough to use this lawsuit as an opportunity to tweak its arch-enemy Google, even though an adverse ruling in this case would almost unquestionably be against Bing’s best interests?
It’s also a little jarring to see ACT on this brief given that it lists eBay as a sponsor. So, when ACT joined the brief, it effectively put eBay shoulder-to-shoulder with Tiffany–even though Tiffany bitterly (and unsuccessfully) fought eBay over trademark infringement for years, and a favorable ruling for Rosetta Stone in the Fourth Circuit could undercut the power of eBay’s win in the Second Circuit. How did this happen?
Substantively, this brief raises the same two issues as the INTA brief (functionality and dilution). Given the similarity, I wonder if this agglomeration considered trying to join the INTA brief. Maybe INTA preferred to work alone. Otherwise, it’s a little odd to see the overlap/duplication between the two briefs.
This amici agglomeration includes ConvaTec, Guru Denim, Monster Cable, Petmed and 1-800 Contacts. It’s not surprising to see 1-800 Contacts at this party given that they frequently sue competitors over keyword advertising. (I don’t have a blog category for 1-800 Contacts, but I probably should. For now, see this search list). Monster Cable is well known for their litigiousness over trademark issues involving competitors and non-competitors who use the term “monster,” although I’m not aware of them bringing keyword ad lawsuits.
This brief is the most peripatetic of the amicus briefs; it addresses confusion, functionality, contributory infringement and keyword triggering vs. trademarks in ad copy.
This was the oddest of the five amicus briefs. I don’t know much about Volunteers of America, and it’s not obvious why they would care about trademark issues enough to weigh in here–especially given their crummy trademark and their status as a non-profit organization.
The brief itself argues for a maximalist application of the initial interest confusion doctrine. This is an odd argument because the Fourth Circuit’s Lamparello opinion thumped the initial interest confusion doctrine pretty hard, so this brief has to swim upstream. I’m not sure how much credit any of the amicus briefs will get from the court, but this amicus brief will undoubtedly get the least attention of the five.
One overall assessment: it’s interesting to see how many Google haters piled onto this opportunity to tweak Google. You don’t become an 800 pound gorilla without stepping on a few toes, and those toes are stepping back!
* District court’s opinion granting a motion to dismiss on the unjust enrichment claim.