Rosetta Stone trademark infringement lawsuits

[thmgoodw]

I apologize if this has been discussed before, but I didn't find anything in a search.

I stumbled upon this today, a complaint filed last year by Rosetta Stone against a competitor (Rocket Languages, sold through clickbank), and its affiliates.

Basically, Rosetta Stone didn't like the results that were showing up in Google, and decided to sue the competitor and certain of its clickbank affiliates.

There were a several grounds listed in the complaint, mainly:

(1) affiliates were using Adwords (and yahoo search marketing) to bid on Rosetta trademarked terms, and also were using them in the title and descriptions of the adwords ads; and

(2) affiliates were using review sites, where they would do things like rank Rosetta Stone low and pick Rocket Languages as the #1 pick, and use headlines and titles with Rosetta Stone or Rosetta Languages in them.

Interesting to me, none of the affiliates had infringed the Rosetta Stone trademark in the domain name. These were just (1) adwords claims and (2) review site claims.

Now, I don't really do much adwords, but I noted that the affiliate terms and conditions for Rocket Languages explicitly states that you can't use trademarks in adwords. Not sure if this was in place prior to the lawsuit last year.

What really concerns me is the claims against the review sites. This has me terrified in fact.

I note that Rosetta Stone didn't skimp on its lawyers, as Cooley is arguably the top intellectual property/internet tech law firm.

Anyone know how this ended up? Of the two affiliate websites explicitly listed in the complaint, one is entirely offline and the other has some dumb default wordpress blog set up with no links in it other than a little adsense.

[palealeisgreat]

i'm curious about what they can do legally against a review site too. I thought review sites were all protected by freedom of speech.

how many others have been running successful ppc campaigns on yahoo under product/service terms? you're just suppose to make sure the term isn't in your ad right? What about the URL? If it's in the URL but not the actual "domain name" is that fine too?

Thanks in advance

[marciayudkin]

I thought review sites were all protected by freedom of speech.

False and deceptive advertising is not protected by freedom of speech. If you read that Rosetta Stone lawsuit carefully, it's as much about deception as about trademark infringement.

Marcia Yudkin

[thmgoodw]

I think part of the problem is that there is a difference between whether you could be sued in the first place and whether you would win such lawsuit.

Does anyone here really have the massive $$$ to defend a lawsuit against a big time corporation with their lawyers charging $600+ per hour?

Originally Posted by palealeisgreat

i'm curious about what they can do legally against a review site too. I thought review sites were all protected by freedom of speech.

how many others have been running successful ppc campaigns on yahoo under product/service terms? you're just suppose to make sure the term isn't in your ad right? What about the URL? If it's in the URL but not the actual "domain name" is that fine too?

Thanks in advance

[thmgoodw]

Originally Posted by marciayudkin

False and deceptive advertising is not protected by freedom of speech. If you read that Rosetta Stone lawsuit carefully, it's as much about deception as about trademark infringement.

Marcia Yudkin

Obviously Rosetta Stone would spin anything written against it as deceptive, so would I.

I think it is a pretty slippery slope when we are talking about opinions of products and where the courts should be stepping in.

[SageSound]

How were those supposed "reviews" conducted?

If they were just some tables showing some arbitrary ranking to make the program THEY were promoting show up as apparently "better" than the others, well, that's just plain deceptive!

The value in a review of a language learning product would be a study of how long it took some reasonable sample of people to attain a given level of language proficiency by some point in time. Is that what those reviews purported to be?

Or were they just meaningless metrics dolled-up to "look good"?

Does anybody here think that some affiliates who promote Clickbank products are not beyond posting deceptive materials in order to make a few sales?

The trouble with the IM world is, it's every person for themselves. It's virtually impossible to police things very well.

I suppose the only thing surprizing about these lawsuits is that they happened at all! I can only imagine that the affiliates in question got greedy and left their deceptive sites up for way longer than they should have.

BTW, Google has been sued numerous times for the exact same reasons, and some of those suits are still pending. The courts have been asked to decide if Google is subject to Trademark violations by auctioning off ad placements that use 3rd-party trademarks to anybody who cares to bid on them. Their argument is, "Hey, we're not the police! If someone wants to violate another company's trademark rights, that's not our problem." I think at least one court came down against them, and they may have changed their tune a little bit regarding well-known tradmarks. But it would be impossible for them to verify that every ad is perfectly sanitized against trademark violations.

-David

[davezan]

Originally Posted by thmgoodw

Anyone know how this ended up?

They settled:

Ryan Gile - Las Vegas Trademark Attorney - Vegas Trademark Attorney - Nevada Trademark Attorney

This one's pretty much a straightforward trademark infringement lawsuit. The two people have used
a party's trademark in Google Adwords for their own monetary benefit, caused confusion rather than
deception here, and they eventually settled like many civil lawsuits do.

Simple answer: don't use a party's trademark to confuse people in the marketplace and for your own
commercial benefit in Google Adwords. Or any other source for that matter.

[Floyd Fisher]

Originally Posted by davezan

They settled:

Ryan Gile - Las Vegas Trademark Attorney - Vegas Trademark Attorney - Nevada Trademark Attorney

This one's pretty much a straightforward trademark infringement lawsuit. The two people have used
a party's trademark in Google Adwords for their own monetary benefit, caused confusion rather than
deception here, and they eventually settled like many civil lawsuits do.

Simple answer: don't use a party's trademark to confuse people in the marketplace and for your own
commercial benefit in Google Adwords. Or any other source for that matter.

You sure about that?

Judge Sides With Google Vs. Geico - CBS News

[St Croix]

Thanks for posting this thread.

This was an interesting read as I am in the throws of launching a web2.0 style review website to open up to the general public.

I've done some research on this case since seeing your thread. The review sites in question were crappy wordpress landing pages thrown up by affiliates - no TOS, privacy policies etc. Really a laugh.

Here's some updates on the case:

Rosetta Stone Ltd v. Rocket Languages Ltd et al - Boliven Legal Proceedings

Cheers

[seasoned]

You know, this is RIDICULOUS! When will this ever stop? Rosetta Stone is techhnically NOT trademarkable! It is a name in COMMON USE! In FACT, it is in COMMON USE regarding LANGUAGE TRANSLATION!!!!!!!!! The THIRD real link in Google says it is a tablet that was created about 2200 years ago, and got the name the rosetta stone over 200 years ago! Rosetta Stone - Wikipedia, the free encyclopedia

If they REALLY wanted to prevent this, they should have come up with a REAL trademarkable term! HECK, when I was told I would have to learn informatica, I tried to google it. I *****COULDN'T*****! You know why!?!?!? Because it is an ITALIAN word! What does it mean?!?!? COMPUTING! So are we to prevent italians from talking about computing!?!?

Steve

[Holy]

I use rosetta stone myself, and never heard of that other software.

Rosetta stone is just paranoid They do enough offline marketing!

[Bebebun]

Did any of the affiliates have to pay any monetary compensatio to Rosetta Stone? I could not find that information on the updates page.

[thmgoodw]

Originally Posted by davezan

They settled:

Ryan Gile - Las Vegas Trademark Attorney - Vegas Trademark Attorney - Nevada Trademark Attorney

This one's pretty much a straightforward trademark infringement lawsuit. The two people have used
a party's trademark in Google Adwords for their own monetary benefit, caused confusion rather than
deception here, and they eventually settled like many civil lawsuits do.

Simple answer: don't use a party's trademark to confuse people in the marketplace and for your own
commercial benefit in Google Adwords. Or any other source for that matter.

It didn't sound like the Review sites had any sort of "confusion" over whether they were run by Rosetta Stone. I'm pretty sure the consumers knew that Rosetta Stone were not running them.

The Google Adwords issue is a separate one.

I like how in the attorneys review of the case he said that the two affiliates had to throw some money at Rosetta Stone to help pay for their lawyers.

Based upon what others described as the quality of these review sites, I doubt these guys were able to throw enough to cover one hour of Cooley's time. I can't even imagine what Cooley's bill would have been in something like this. Certainly in excess of $100k.

[davezan]

Originally Posted by Floyd Fisher

You sure about that?

Judge Sides With Google Vs. Geico - CBS News

Thanks and I'm actually aware of that. The difference between that case and
this one is Rosetta Stone went after another party rather than the big G itself,
although Rosetta recently also sued Google for the same reason as Geico.

Originally Posted by seasoned

Rosetta Stone is techhnically NOT trademarkable! It is a name in COMMON USE! In FACT, it is in COMMON USE regarding LANGUAGE TRANSLATION!!!!!!!!!

I don't see Wikipedia saying what you just said other than what it described.
And neither do the following:

Rosetta stone Definition | Definition of Rosetta stone at Dictionary.com

Rosetta stone - Definition from the Merriam-Webster Online Dictionary

Rosetta stone Definition | Definition of Rosetta stone at Dictionary.com

Besides, you will need a court to say if Rosetta Stone is generic for language
services. And Rosetta Stone is being used as a trademark for software about
languages, which arguably isn't generic or common use.

Anyway, a take from this is Rosetta didn't go after those two simply because
of their review site. They did so because they used their trademark to make
money off it without their permission.

Supposedly this is pretty straightforward. Supposedly, anyway, but....I guess
we all have our own take on this.

[chris_surfrider]

What really concerns me is the claims against the review sites. This has me terrified in fact.

Their issue was with the sponsored links, and what was contained in those links.

It wasn't about organic rankings or referrals. That's still "gray".

Either way, be sure to do the following:

1) Disclose compensation where a material connection exists

2) Accurately portray any product/service you mention or write about. Don't mislead, lie or exaggerate.

3) Credit ownership of Trademarked names and symbols where credit is due. Talk to an attorney about how to properly portray and disclaim things as required.

Yes, you can still write and publish ABOUT pretty much anything, if you are a citizen of a free-speech country.

But you've got to stay on the level and be aware of how serious these companies take things like misrepresentation, libel and outright infringement.

There is a big difference between comparing products (which does organically draw targeted traffic as a natural result), and deliberately sand-bagging one in order to promote something else.

(That paypalsucks.com site comes to mind, as it prominently displays a competing merchant account service... amazed it's still up. So does the RipOffReport, whose owner allegedly had to flee the country to save his ass from being sued to oblivion.)

The bottom line is that over-hype and misdirection isn't good content, and won't be trusted or pay off in the long run.

Help your visitors by providing honest content and "keep it real". It's your right, it's more profitable long-term, and you'll stay safe in the process.

Cheers

-Chris

P.S. But to reiterate, talk to a lawyer about the fine-print stuff like what to say in your disclaimers and how to display trademarked images/text on your site. Laws vary by region, so it's not something you'll be able to figure out on the WF...