Sourav Dan, a 4th year student at KIIT law school has sent us this interesting post on the similarities between the decisions of an Indian court and American Court in holding Google liable for contributory infringement in cases where its ‘Adwords’ keywords suggestion tool, ‘suggests’ arbitrary or fanciful trademarks.
Helping hands of BharatMatrimony.com decision in changing the fate of Google Adwords in Rosetta Stone Ltd. v. Google Inc.
By
Sourav Dan
This post analyzes the judgment of the US Court of Appeals for the Fourth Circuit in the case of Rosetta Stone v. Google Inc where Google was held liable for contributory trademark infringement when it sells trademarks as ‘Keywords’ for its Ad-words program. The gravity of the case can be well judged from the fact that some of the biggest names in business and associations submitted supporting briefs for both the sides. For the appellant it included Ford Motors, Harmon International, Rolls Royce, Tiffany, Chanel, Oakley, VIACOM, SWARAVOSKI ,INTA etc. and for the respondent; Electronic Frontier Foundation, Yahoo! & eBay.
The reasoning of the Court of Appeals in this case is very similar to that of the Madras High Court in a similar case filed against Google by Consim, which is the owner of several matrimony related websites such as Bharatmatrimony.com etc. Although the Madras High Court had refused to hold Goolge liable for any form of trademark infringement in the case filed by Consim, since the marks in question were descriptive and rather weak, the High Court did indicate that it would rethink its conclusions in case the impugned marks were unique and arbitrary. Prashant Reddy had already covered this in his previous post the detailed analysis of the Madras High Court judgment.
In the very same year that the Madras High Court delivered its judgment, the US District Court of Virginia delivered a judgment, in a similar case, concluding that Google could not be considered liable for direct, contributory and vicarious infringement when it sold registered trademarks ROSETTA STONE as Adwords to third parties.
The reason being only three factors, of the traditional nine factors test, namely 1) defendant’s intent; (2) actual confusion; and (3) the consuming public’s sophistication out were applicable in the present case and even these 3 factors were not satisfied by the facts of the present case.
On the issue of contributory infringement the Virginia District Court was of the same view as the Indian Court. In pertinent part it held that the mere existence of a tool that assists advertisers in optimizing their advertisements does not, in itself, indicate intent to induce infringement and adding that a desire for economic gain alone does not translate into contributory trademark infringement. The Court disagreed with the Plaintiff on the point of vicarious infringement and held that Google could not be held liable for vicarious infringement for the mere reason that it had financial relationship with the alleged infringers.
The plaintiffs subsequently appealed the decision of the Virginia District Court before the Fourth Circuit Court. The Appellate Court remanded the case back to the district court for determining the issue of direct infringement.
However on the point of contributory infringement, the Court found that GOOGLE Inc. intended to create confusion by permitting the use of the ROSETTA STONE trademarks as keywords. The reason for this being that Roseet Stone ltd. showed that from September 3, 2009 through March 1, 2010, even though Rosetta Stone Ltd. notified Google of approximately 200 instances of Sponsored Links advertising counterfeit Rosetta Stone products, no action was taken against them.
The similarity of the Fourth Circuit decision with the Madras High Court decision is on the issue of contributory infringement i.e. both Courts have categorically stated that Google could be held liable for contributory infringement only in case it offered for sale as keywords, arbitrary and fanciful trademarks which has no nexus or connection with the nature of the goods or services.
It remains to be seen whether these similar judgments from the Indian and American Courts will force Google to revert to its pre-2004 policy which forbade the sale of registered trademarks as keywords.
