Comparative Advertising on Google Does Not Violate Trademark Law, Public Citizen Tells Court

Dec. 6, 2010 

Comparative Advertising on Google Does Not Violate Trademark Law, Public Citizen Tells Court

In ‘Friend of the Court’ Brief, Public Citizen Defends Search Engine Against Lawsuit by Rosetta Stone

WASHINGTON, D.C. – The Internet search giant Google does not violate trademark law when it allows online advertisers to purchase ads based on trademarked keywords, Public Citizen argued in an amicus curiae, or “friend of the court,” brief filed today in the U.S. Court of Appeals for the Fourth Circuit in support of Google.

 Rosetta Stone, a best-selling language learning software company, is seeking to stop Google from allowing other language learning companies to buy advertising that appears when users enter the term “Rosetta Stone,” claiming that doing so infringes and dilutes the company’s trademark. Public Citizen maintains that the ads do not violate Rosetta Stone’s trademark.

 “These arguments should be rejected,” said Paul Alan Levy, a Public Citizen attorney specializing in Internet free speech and trademark law. “Both keyword advertising and the ‘sale’ of keywords foster truthful comparative advertising, which is protected by trademark law as well as the First Amendment.”

Rosetta Stone sued Google in federal court in Virginia in 2009, but the court dismissed the action last summer. Rosetta Stone is appealing.
 
The issue in this case is whether targeted messages, particularly commercial messages, to members of the public who have expressed interest in obtaining information about particular brands violate trademark law. Rosetta Stone feared that users may see other companies listed in a search and be led to buy a competitor’s product.
 
 Trademark laws do not forbid all uses of trademarks, only deceptive ones, Levy said. It is not the responsibility of Google, or any search engine operator, to direct users to a trademark holder’s official website, he said.

According to Levy, Rosetta Stone’s argument is based on the false assumption that anyone who searches for “Rosetta Stone” in a search engine is necessarily looking for the company’s official site and only that site, and if they visit another link on the search results it is because they are “confused.”  Levy said that, to the contrary, Internet users come to search engines knowing that they will receive a menu of choices.

 “Further proving that this assumption is wrong, a Google search of ‘Rosetta Stone’ returned about 5.3 million results, and no rational user could possibly think that all of these results identify Rosetta Stone’s own website,” Levy said. “Perhaps the user is looking for reviews of the software, reading about grievances with the company, or simply wants to compare similar products. ‘Rosetta Stone’ is a logical search term in any of those cases.”

 Moreover, Levy said, search engine users know that the first link they click may not take them where they want to go. “Because it is so easy to go back to the search results and try another link – such as Rosetta Stone’s official site that appears there – the consumer suffers little difficulty from any mistakes she may make in her first choice. The opportunity to provide truthful comparative advertising should not be shut down because of the possibility of such transitory mistakes.”

 Because there has been no trademark violation, the court should deny Rosetta Stone’s appeal and let users decide for themselves which products to purchase.

 To read the brief, visit https://www.citizen.org/litigation/forms/cases/getlinkforcase.cfm?cID=628. !!!

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Public Citizen is a national, nonprofit consumer advocacy organization based in Washington, D.C. For more information, please visit www.citizen.org.