Letter from AmeriKat

The AmeriKat has returned to London this week after a relaxing four days of fresh air and sea breezes on the island of Guernsey, only to find she has come down with a mammoth case of flu (not of the Swine variety, she hastens to add). Apparently, the London pollution keeps viruses at bay ...

Viral lobbyists

Like the viruses currently in the AmeriKat's bloodstream, the lobbyists in the hallways of Washington D.C had a busy second quarter infecting the various governmental branches with their agendas. A group of lobbyists that were particularly busy this year was comprised of Alan Davison, Pablo Chavez, Johanna Shelton, Harry Wingo and Robert Tai. These names are undoubtedly unfamiliar to many of the IPKat’s readers, but the corporation to whom they were lobbying for will be – Google Inc. Google spent $950,000 on lobbying this quarter, a figure which is up $200,000 over the second quarter of 2008. The increase is not surprising. In the past year, Google has faced several issues ranging from the hotly-disputed Google Book Search settlement to AdWords lawsuits to various YouTube infringement suits.

Can evidence of confusion be found in the Rosetta Stone?

A change in Google’s AdWords policy last month prompted Rosetta Stone, a provider of foreign language educational materials, to file a trade mark infringement suit in the Eastern District of Virginia contending that Google is free-riding off its Rosetta Stone mark by selling to third parties the right to use the mark for online advertising. Previously companies bid on keywords, including trade marks, which would trigger their advertisements to appear to the right of the Google Search. These key words and trade marks, however, would not appear in the advertisement’s body of text. On 15 June 2009, however, Google widened its policy so that keywords and trade marks would now appear in the advertisement’s text. At paragraph 67 of the claim Rosetta Stone alleges that, due to Google’s dominant position,
“Google effectively forces Rosetta Stone to purchase the ‘rights’ to have official Rosetta Stone advertisements appear when Internet users search the web for Rosetta Stone Marks. In other words, Google has set up a system wherein Rosetta Stone and others are, de facto, forced to pay Google to reduce the likelihood that consumers will be confused by Google’s own practices”
which costs Rosetta Stone “millions of dollars.” Rosetta Stone’s general counsel Michael Wu stated that
“Google and its advertisers benefit financially from and trade off the good will and reputation of Rosetta Stone without incurring the substantial expense that Rosetta Stone has incurred in building up its popularity, name recognition, and brand loyalty.”
Rosetta Stone will have to produce evidence, empirical or otherwise, that Google’s display and use of their mark in the ad text confuses consumers.

The US Circuit Court of Appeals had previously ruled in favour of Google in an earlier AdWords dispute brought by computer repair firm Rescuecom. But this past April the Court vacated this earlier ruling due to a misapplication of the ratio in 1-800 Contacts v WhenU and has now reinstated the case. The only issue to be decided at this trial is identical to the issue in Rosetta Stone’s claim: whether there exists confusion on the part of consumers by Google’s use of the complainant’s marks.

The AmeriKat believes that showing confusion, especially in relation to the behaviour of online consumers, will be incredibly difficult for the complainants in these AdWords suits. As reported in Business Week, Andrew Pederson (Google’s spokesman) said that Google’s AdWords policy was akin to a grocery store’s display of different brands on a shelf:
“Just as it’s reasonable to expect a range of brands on any shelf in a grocery store, providing users on Google with more than one option when they search for a brand name or other trademark helps them to find the best product at the lowest price.”
Except, the AmeriKat argues, grocery stores don’t put Kellogg’s stickers on generic cornflakes in order to assist the consumers in identifying that they are breakfast cereals, albeit at a lower price.

Google Search Settlement

A significant proportion of the lobbying budget will have been devoted to the issue of the Google Book Search settlement. As previously reported by the AmeriKat, the Google Book Search settlement has generated such a degree of concern in various creative industries that the Justice Department has begun an inquiry into the antitrust implications of the settlement and its possible violations of the Sherman Act. The DoJ is not the only governmental organization that will be investigating the settlement. After an initial complaint from Germany (supported by Britain and France) the European Commission will be holding a hearing where interested parties will be given the opportunity to comment on the settlement on 7 September 2009. With rumours that the House Judiciary Committee are contacting interested parties to arrange a hearing into the settlement, the AmeriKat expects that legislative and media coverage of the settlement to escalate in the run-up to the European Commission hearing and the expected 7 October judgment of Judge Denny Chin.

The AmeriKat will be interested to assess whether after these upcoming trials and hearings Google’s lobbying investment will have paid off. The AmeriKat also suggests that readers read this article in the Wall Street Journal about an ex-Google lobbyist who is reported to be working for Obama’s administration.

Other News

The BlackBerry that may be nestling in your briefcase or pocket right now was made by Research in Motion (RIM). Last Thursday, Research in Motion agreed to pay $267.5 million to settle a 2006 patent lawsuit brought by California-based wireless email company Visto Corporation. The settlement also provides that RIM receives a perpetual, fully-paid licence on Visto’s patents. RIM had previously counterclaimed that Visto’s patents did not involve any new inventions which resulted in various global lawsuits being brought, including in the UK. If this case rings a bell now, it is probably because of Mr Justice Floyd’s refusal to grant RIM its full costs, stating that for its lawyers' (Allen & Overy) $10.32 million fees “one would be entitled to expect each of them to be able to recite all the documents in the case by heart.” Nevertheless, last week’s settlement may signal the end of a run of lengthy patent battles against RIM, whichwill now be able to focus its attention on its core market objectives.

 The Associated Press (AP) settled a lawsuit last week over AP stories that were rewritten and posted without credit on All Headline News. The claim was based on the “hot news” doctrine which originated in International News Services v Associated Press, a 1918 Supreme Court case which stated that, although there is no copyright in facts, breaking news is to be considered as a ‘quasi property’ right. Justice Pitney, in giving the majority decision, developed the doctrine of misappropriation in the news. According to his judgment a news organization has gathered news “at the cost of enterprise, organization, skill, labor and money” and therefore has a limited proprietary interest in it against a competitor. The AmeriKat is all for a settlement, but would have loved to seen the “hot news” doctrine reappear in court with one of its original parties almost 100 years later.

 Last week the AmeriKat reported on a Marvel Comic character, but this week it is DC Comics that make an appearance in her letter. DC Comics has filed a lawsuit against John Stacks, a Florida man who is allegedly committing copyright and trade mark infringements by selling resin composite figurines of Batman, Robin, Catwoman and other characters. Stacks told reporters that he has contracts with all the actors including Adam West, Burt Ward, and Frank Gorshin to use their likeness on his figurines. Stacks contends he has only earned about $3,000 from the kits in the past 10 years. DC Comics are suing him for $7.5 million. The AmeriKat believes that this suit will resolve itself amicably, if only for DC Comics to avoid a RIAA-style PR disaster.

 Speaking of recent RIAA PR disasters, AmeriKat readers may remember the case of Jammie Thomas-Rasset, the Minnesotan mother who has a $1.92 million judgment against her for illegally downloading 24 songs. Two weeks ago Thomas-Rasset’s legal team asked a federal judge to grant a retrial or at least lower the damages to $18,000. The Hollywood Reporter reported that Tomas-Rassett’s attorney, Kiwi Camara, told the court that the $1.92 million judgment was “grossly excessive and, therefore, subject to remittitur as a matter of federal common law.” One of the artists Thomas-Rasset downloaded, Richard Marx, said that he was “ashamed to have [his name] associated with this issue.” The RIAA is apparently open to negotiation.
Letter from AmeriKat Letter from AmeriKat Reviewed by Annsley Merelle Ward on Sunday, July 26, 2009 Rating: 5


  1. Are Visto's European patents also covered by the licence?

    There are currently a lot of sparks flying between those lovers squabbling before the EPO, with RIM represented in many cases by Lovell. It would be interesting to know whether the agreement calls for the oppositions and quasi-oppositions to be abandoned.

    RIM is also fighting some of some patents which were acquired from Bosch by "patent sharks".

  2. Dear AmeriKat,

    You are saying that Google puts "Kellog's stickers on generic conflakes".

    Checking on the Google website (https://adwords.google.com/support/bin/answer.py?answer=145626) it says that the use of a third party/competitor's trademark in the text of an ad is only allowed if it meets certain criteria (e.g. use of term in a descriptive or generic way, resale/nominative use, sale of components, Informational site).

    I am not a native English speaker, but the way I understand Google's guidelines, it does not allow its clients to use the TM of their competitor's TM in their ad texts straight away.

    The way I've understood it, it is furthermore (still) not allowed to use a third party TM for comparative advertising.

    Firstly: Would you agree with my last statement?

    Secondly: I haven't read the case (yet), but do you know a case where a TM was not used in a way as described above but to dilute the attention of customers (eg. "BMW are for old men, drive Audi!"?

    Third question: Google says that it is "willing to perform a limited investigation of reasonable complaints about use of trademarks in ads"to see if the ads meet the criteria mentioned above. Do you know of any cases where TM-owners have actually complained about the fact that their competitors' ads did not meet the criteria?

    Last question: Does anybody know some (non-commercial) studies (such as the Fallows, PEW 2005- or the Pan et al 2007- studies) about the actual likeliness of consumer confusion through keyword advertising?

    Kind regards,


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