Published by LawTechie - March 4, 2011 - LawTechie

Rosetta StoneRosetta Stone has upgraded from court battle to congressional lobbying as it endeavors to ban trademarked terms from Google’s Adwords service. For some time now Rosetta stone has attacked Google’s Adwords for alleged trademark infringement, arguing that Rosetta’s trademarked terms are used by competing companies, via Adwords, to redirect potential Rosetta customers to its competitors.

Rosetta had previously lost a District Court ruling when the Court held that Rosetta failed to show that sufficient potential customers were confused away from its products via Adwords (Rosetta is currently appealing this ruling in the Fourth Circuit). Not bothering to wait for its appeal, Rosetta has decided to pursue a new front: congressional lobbying.

Now, the language learning company is launching an attack on Google on a new front: Rosetta Stone is lobbying lawmakers for new limits on search engines’ ability to accept trademarked terms as ads. Rosetta Stone CEO Tom Adams recently testified at a Senate Judiciary Committee hearing in favor of the proposed Combating Online Infringement and Counterfeits Act, a controversial anti-piracy bill. The measure would allow the government to shut down domain names that allegedly host sites dedicated to copyright infringement.

While most forms of online copyright infringement are fairly easy to identify (it is rare that online copyright infringement takes forms other than direct copying rather than unauthorized derivative work, etc…), trademark infringement almost always requires a nuanced approach and a vigorous analysis of “confusing similarity.” It is worrying, and potentially unconstitutional, if Congress proceeds to usurp the Judicial Branch’s traditional analytical role in this area of law.

Moreover, it remains to be seen whether it is even possible for Google to tweak its Adwords system so that certain words cannot be used in connection with certain products or service (since a trademark is only protected in connection with a specific good or service).

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.

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