Monday, July 13, 2009

Software Company [Rosetta Stone] Sues Google for Trademark Infringement [United States]

Rosetta Stone, maker of the popular foreign language software, filed a federal trademark suit against Google in Virginia Friday, alleging that one of the Web giant's major advertising programs allows companies to confuse consumers.

The suit, filed by Gibson, Dunn & Crutcher partner Terence Ross at the U.S. District Court for the Eastern District of Virginia, is just the latest to target Google for its AdWords program, which lets companies buy advertisements that run alongside its search engine results. The ads are triggered by certain keywords, and show up as "sponsored links."
According to the complaint, since 2004, Google has let companies attach their ads to trademarked keywords they do not own. So a search for Rosetta Stone might bring up the company's official Web site, as well several paid advertisements for its competitors. Google also allows companies to use those trademarked terms in the headlines of their ads.
Rosetta Stone's suit accuses Google of allowing companies to "free ride" on its brand and of "hijacking" consumers by confusing them into clicking on the wrong sites.
"Google either is misleading or will mislead consumers in innumerable different ways," the complaint states. "Accordingly, it is impossible for Rosetta Stone to cure this problem merely by pursuing remedies against Google's advertisers alone."
Google has been hit with a string of similar lawsuits over its AdWords program. In April, the 2nd U.S. Circuit Court of Appeals ruled that one of those suits could go forward after a lower court had dismissed it. The appeals court found that Google was using the trademarks in an act of commerce, giving the trademark owners the right to file a claim.
With that legal issue resolved, Gibson's Ross said that juries will have to decide whether Google's practice is likely to confuse consumers.
"There's not going to be any quick resolution of any of these" suits, he said. "You could get different outcomes from different juries over time."
Google itself appears to have expected the legal trouble. In its complaint, Rosetta Stone quotes from one the company's Securities and Exchange Commission filings from 2004, shortly after it adopted its current trademark policy.
"As a result of this change in policy, we may be subject to more trademark infringement lawsuits," the company stated. "Adverse results in these lawsuits may result in, or even compel, a change in this practice which could result in a loss of revenue for us, which could harm our business."
According to Ross, however, there seems to be no sign of Google backing down from the practice. He noted that the company started letting trademarked words into headlines, for instance, after the 2nd Circuit's ruling.

This article first appeared on The BLT: The Blog of Legal Times.

Friday, July 03, 2009

FT Facsimile Edition Crosses The Title Hurdle; May Launch Sooner Than Expected [India]

The Registrar of Newspapers in India (RNI), in its latest list approved yesterday, has granted the title ‘Financial Times Facsimile’ to Financial Times India Pvt. Ltd, the Indian unit of Pearson (NYSE: PSO) Plc., the publisher of the respected British pink paper. A facsimile edition is an exact replica of a newspaper published abroad and is not allowed to carry local news or advertising that is not part of the original edition.

The title ‘Financial Times’ is owned in India by The Times of India publisher Bennett, Coleman & Co. Ltd. Early last year, shortly after it emerged that Financial Times was in talks with the Network18 Group to launch a daily in India, a BCCL subsidiary, Times Publishing House Ltd, registered several titles, such as Asian Financial Times, Financial Times Asia, Daily Financial Times, Emerging Financial Times, Financial Times of Asia. FT, FT Asia, FT Network, FT South Asia, FT World, FT Worlwide, WFT, World Financial Times and Worldwide Financial Times, according to the information on the RNI website. Financial Times India has approached the Intellectual Property Appellate Board, a government body that settles disputes over trade marks, to obtain rights to its globally recognized title. The case is next scheduled for a July hearing.

FT has also received clearances from the Foreign Investment Promotion Board to make the necessary investments. Final clearances from the Ministry of Information and Broadcasting may be the only remaining procedure required before the paper can hit the stands.
FT’s global competitor, The Wall Street Journal, launched a facsimile version of its Asian edition last month.