Rosetta Stone Reply Brief

Case: 10-2007 Document: 137 Date Filed: 12/13/2010 Page: 1
APPEAL NO. 10-2007

__________________________
IN THE
United States Court of Appeals
FOR THE FOURTH CIRCUIT
__________________________
ROSETTA STONE LTD.,

Plaintiff-Appellant,
v.
GOOGLE INC.,
Defendant-Appellee.
__________________________
ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
__________________________
APPELLANT’S REPLY BRIEF

__________________________
Clifford M. Sloan
Mitchell S. Ettinger
Jennifer L. Spaziano
SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
1440 New York Avenue NW
Washington, DC 20005
Phone Number: 202.371.7000
Email: cliff.sloan@skadden.com
Counsel for Appellant

TABLE OF CONTENTS
TABLE OF AUTHORITIES ................................................................................... iii
INTRODUCTION .....................................................................................................1
I. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON

THE DIRECT TRADEMARK INFRINGEMENT CLAIMS ........................3
A. Rosetta Stone’s Direct Liability Claim Is Not Premised On

Initial Interest Confusion.......................................................................3
B. Confusion Is Presumed As A Matter Of Law .......................................6
C. Google’s Use Of The Rosetta Stone Marks Results In A

Likelihood Of Confusion ......................................................................7
1. Google’s Practices Must Be Considered In Context And

Cannot Be Analyzed Piecemeal..................................................7
2. All Nine Factors Relevant To The Likelihood Of

Confusion Analysis Favor Confusion.......................................10
(a) The Undisputed Factors Are Relevant To Google’s

Practices And Favor Confusion......................................11
(b) Evidence Of Actual Confusion Defeats Summary

Judgment.........................................................................12
(c) Intent And Consumer Sophistication Favor

Confusion........................................................................18
II. THE FUNCTIONALITY DOCTRINE HAS NO APPLICATION TO

GOOGLE’S USE OF THE ROSETTA STONE MARKS ...........................20
III. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON

THE SECONDARY TRADEMARK INFRINGEMENT CLAIMS ............21
A. Google Is Not Entitled To Summary Judgment On Contributory

Infringement ........................................................................................22
B. Google Is Not Entitled To Summary Judgment On Vicarious

Infringement ........................................................................................25
i
IV. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON

THE TRADEMARK DILUTION CLAIM ...................................................25
V. THE DISTRICT COURT ERRED IN DISMISSING ROSETTA

STONE’S UNJUST ENRICHMENT CLAIM..............................................29
CONCLUSION........................................................................................................32
ii
TABLE OF AUTHORITIES
Cases Page(s)
Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316 (4th Cir. 1992) ...............4
Austl. Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006) ...................................3
CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263 (4th Cir. 2006) .................9
Coca-Cola Co. v. Snow Crest Beverages, Inc.,

64 F. Supp. 980 (D. Mass. 1946), aff’d, 162 F.2d 280 (1st Cir.),
cert. denied, 332 U.S. 809 (1947)..................................................................24
Diane Von Furstenberg Studio v. Snyder, No. 106cv1356 (JCC),

2007 U.S. Dist. LEXIS 66633 (E.D. Va. Sept. 10, 2007) .......................27, 28
GEICO v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004) ...............................25
General Analytics Corp. v. CAN Ins. Cos., 86 F.3d 51 (4th Cir. 1996) ..................22
George & Co., LLC v. Imagination Entertainment Ltd.,

575 F.3d 383 (4th Cir. 2009) .........................................................................13
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982)....................................24
Johnson & Johnson Vision Care, Inc. v. 1-800-Contacts, Inc.,

299 F.3d 1242 (11th Cir. 2002) .......................................................................9
Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700 (3d Cir. 2004) ..............................14
Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)................................................5
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,

507 F.3d 252 (4th Cir. 2007) .........................................................................28
Perini Corp. v. Perini Constr., Inc., 915 F.2d 121 (4th Cir. 1990) .........................16
PETA v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000),

aff’d, 263 F.3d 359 (4th Cir. 2001) ...............................................................27
Playboy Enters., Inc. v. Netscape Commc’ns Corp.,

354 F.3d 1020 (9th Cir. 2004) .................................................................20, 21
iii
Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808 (7th Cir. 2002) ...............4, 5
Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) ..............................27
Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) ...........14, 17, 18
Schering Corp. v. Pfizer Inc., 189 F.3d 218 (2d Cir. 1999) ....................................15
Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)........................21
Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234 (4th Cir. 1997) ...................6
Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010),
cert. denied, 562 U.S. --- (Nov. 29, 2010)............................................. passim
Statutes and Rules Page(s)

15 U.S.C. § 1114.............................................................................................. passim
15 U.S.C. § 1115................................................................................................11, 12
15 U.S.C. § 1125.............................................................................................. passim
iv
INTRODUCTION
The judgment for Google should be vacated for the reasons
established in Rosetta Stone’s opening brief (“RSB”). As to each of its claims,
Rosetta Stone set forth facts showing genuine issues for trial. In concluding
otherwise, the District Court violated settled principles of summary judgment,
misconstrued fundamental trademark tenets, and created a special, unwarranted,
and unprecedented rule of immunity for Google.
In its response (“GB”), Google largely abandons the District Court’s
opinion, presumably recognizing the District Court’s analysis cannot stand. Then,
in presenting its own arguments, Google mischaracterizes this case. Rosetta Stone
brought this case to stop Google’s auction and sale of the Rosetta Stone Marks to
third parties for use as keywords and in the content of their sponsored links.
Google, however, asserts that Rosetta Stone challenges not only these uses of its
Marks, but all uses of the Rosetta Stone Marks on the Internet. GB at 2. Rosetta
Stone openly acknowledges numerous permissible uses of its Marks, including on
the Internet, but Google’s auction and sale of the Rosetta Stone Marks, which is
likely to confuse consumers and dilute the Marks, violates established trademark
law.
Google – not Rosetta Stone – seeks a special rule of trademark law for
the Internet. Google argues that the Internet practices challenged here could cause,
1
at most, initial interest confusion, GB at 12, 15-17, even though the Lanham Act
broadly prohibits trademark use that is “likely to cause confusion, or to cause
mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Google likewise argues that the
“traditional” likelihood-of-confusion factors, which this Court has applied for
decades, should not apply to its practices on the Internet. GB at 21-22. Finally,
Google recognizes that uncertainty on the part of consumers in brick-and-mortar
stores can trigger trademark liability, but argues that uncertainty on the part of
Internet consumers is insufficient “because it can be difficult to tell by looking at
an online ad the exact nature of the advertised product.” GB at 36-37.
Although Google appears to recognize the flaws in the District
Court’s analysis, its own analysis suffers from the same infirmities: Google
characterizes as “undisputed” numerous facts that Rosetta Stone disputed, presents
the facts in the light most favorable to Google, downplays the evidence presented
by Rosetta Stone, and, ultimately, asks this Court to weigh the facts and find in
Google’s favor.
Among other things, Google asks this Court to ignore (i) the search-
results pages that appear on Google’s website when a user queries a Rosetta Stone
Mark; (ii) Google’s own extensive involvement in the sponsored link campaigns of
its customers; (iii) Google’s own internal studies showing user confusion; and (iv)
Google’s carefully designed business model by which it profits every time a user
2
“clicks” on any sponsored link that appears, as a result of Google’s auction and
selection, when a user queries a Rosetta Stone Mark. Because triable issues of
material fact exist with respect to these issues, and many others, the District
Court’s rulings should be reversed.
ARGUMENT
I. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE DIRECT

TRADEMARK INFRINGEMENT CLAIMS.
Google does not dispute that the first four elements of direct
trademark infringement are met and that the only open issue is whether Google
used the Rosetta Stone Marks in a manner likely to confuse consumers. Rosetta
Stone proffered significant evidence of confusion to the District Court, precluding
summary judgment to Google. RSB at 19-42. Google’s brief does not support a
different conclusion.
A. Rosetta Stone’s Direct Liability Claim Is Not Premised On Initial

Interest Confusion.
Google’s argument that Rosetta Stone’s direct infringement claim
“depends by its nature on initial interest confusion,” which Google asserts is not
actionable in this Circuit, GB at 15-17, is flawed in two respects. 1 Most
1
“Initial interest confusion in the internet context derives from the unauthorized
use of trademarks to divert internet traffic, thereby capitalizing on a trademark
holder’s goodwill.” Austl. Gold, Inc. v. Hatfield, 436 F.3d 1228, 1239 (10th Cir.
2006). It “occurs when a customer is lured to a product by the similarity of the
mark, even if the customer realizes the true source of the goods before the sale
(cont'd)
3
importantly, Rosetta Stone’s claim does not depend on initial interest confusion.
Rather, regardless of “initial interest confusion,” Rosetta Stone demonstrated that
Google’s use of the Rosetta Stone Marks is “likely to confuse an ‘ordinary
consumer’ as to the source or sponsorship of the goods.” Anheuser-Busch, Inc. v.
L & L Wings, Inc., 962 F.2d 316, 318 (4th Cir. 1992) (citation omitted).
For example, Rosetta Stone presented the testimony of five consumers
who were misled by sponsored links on Google search-results pages for “Rosetta
Stone” into believing the sponsored link was endorsed or affiliated with Rosetta
Stone and that they were purchasing genuine Rosetta Stone product. JA(41)-4592-
4593, 4614-4615, 4724-4727, 4778-4781, 4804-4805. This testimony does not
show merely “initial interest confusion”; it proves actual confusion regarding the
source or sponsorship of the purchased goods. Likewise, the other confusion
evidence presented – Google’s internal studies, the testimony of Google’s
Trademark Counsel, an expert confusion study, and testimonial evidence of
consumer confusion – all demonstrate confusion as to the source or sponsorship of
the goods. RSB at 26-37.
________________________
(cont'd from previous page)
is consummated.” Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812
(7th Cir. 2002). “What is important is not the duration of the confusion, it is the
misappropriation of . . . goodwill.” Id. at 812-13.
4
Indeed, Rosetta Stone did not even mention initial interest confusion
in its opening brief until page 34, where it noted that, “[i]n addition to providing
evidence of actual confusion,” its expert confusion study “also supports an
independent finding of ‘initial interest’ confusion.” RSB at 34 n.11 (emphasis
added). Thus, a fundamental premise of Google’s brief – that only initial interest
confusion is at issue – is incorrect.
Second, as Rosetta Stone explained in its opening brief, while this
Court declined to endorse initial interest confusion on the facts before it in
Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005), it has not rejected the
doctrine. Id. at 316-18. Rather, Lamparello left open the question of whether the
doctrine applies in cases, such as this, where the defendant uses the plaintiff’s mark
for its own financial gain. Id. at 318 n.16.
Rosetta Stone submits that the cases that have applied the doctrine in
such situations were correctly decided, see id.; RSB at 34 n.11; supra note 1, and
that initial interest confusion should be recognized here because Google profits
from the diversion of users to sponsored links and is therefore plainly
misappropriating Rosetta Stone’s goodwill for its own financial gain. See
Promatek, 300 F.3d at 812-13; Dkt. 78-1. Regardless whether the Court adopts the
doctrine, however, Rosetta Stone also has presented extensive evidence of
traditional confusion.
5
B. Confusion Is Presumed As A Matter Of Law.

Google also erroneously argues that confusion cannot be presumed
because the presumption of confusion that arises when a defendant intentionally
copies a protected mark applies “only where defendants have copied a mark to sell
their own counterfeit or competing goods.” GB at 39. This Court, however, has
stated that the presumption arises “when the copier inten[ds] to exploit the good
will created by an already registered trademark.” Shakespeare Co. v. Silstar Corp.
of Am., 110 F.3d 234, 237 (4th Cir. 1997) (quotation omitted). Rosetta Stone
presented evidence demonstrating that Google intended to exploit the goodwill
created by the Rosetta Stone Marks (and other trademarks it sells) in 2004, when it
decided to permit its customers to bid on the Marks, and again in 2009, when it
decided to permit certain customers to use the Marks in their sponsored links.
JA(41)-4265, 4297, 4382-4383, 4565, 4676; JA(46)-5235, 5366.
Google misses the point when it argues that the presumption of
confusion “does not apply here” because “Google does not provide competing or
counterfeit goods.” GB at 40. Google regularly displays on its search-results
pages sponsored links for counterfeit goods and allows those sponsored links to
use the Rosetta Stone Marks as keyword triggers and in their text. These
sponsored links, and thus Google’s search-results pages, are presumptively
confusing. RSB at 19-21.
6
Google, moreover, completely ignores the two other circumstances in
which confusion has been presumed, both of which are present here: (i) using
identical marks on the same goods; and (ii) using a trademark in whole or in part in
an Internet domain name. Id.
Because confusion should have been presumed, the District Court’s
conclusion that Google’s practices are not likely to confuse consumers cannot be
sustained.
C. Google’s Use Of The Rosetta Stone Marks Results In A

Likelihood Of Confusion.
Google also mistakenly argues that Rosetta Stone cannot show that
Google’s use of the Rosetta Stone Marks results in a likelihood of confusion. GB
at 17-40. In so arguing, Google distorts its practices, mischaracterizes disputed
facts as undisputed, and asks the Court to view the facts in the light most favorable
to Google. Properly considered, the record demonstrates that, at a minimum,
genuine issues of material fact exist which cannot be resolved on summary
judgment.
1. Google’s Practices Must Be Considered In Context And

Cannot Be Analyzed Piecemeal.
As a threshold matter, Google’s analysis distorts reality because
Google presents its sponsored links in artificial isolation and out of context,
addressing separately “ads that do not violate Google’s policies,” GB at 18-33, and
7
“ads for counterfeit products,” GB at 33-40. Google thus frames the confusion
question in a piecemeal fashion that has no relation to what appears on Google’s
search-results pages. In fact, these sponsored links routinely appear together on
Google’s search-results pages as demonstrated by the following screenshot
(JA(33)-1436-1441), which includes sponsored links to the Rosetta Stone webpage
(www.RosettaStone.com), two counterfeit sites (www.rosettaonsale.com and
www.learningsofts.com), and reseller sites (Barnes & Noble, Staples, and J&R
Music and Computer World):
8
As this Court has stated, in analyzing confusion, it must “examine the
allegedly infringing use in the context in which it is seen by the ordinary
consumer.” CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 271 (4th Cir.
2006) (citation omitted); see also Johnson & Johnson Vision Care, Inc. v. 1-800-
Contacts, Inc., 299 F.3d 1242, 1248 (11th Cir. 2002) (“a court must analyze the
message conveyed in full context” and “must view the face of the statement in its
entirety, rather than examining the eyes, nose, and mouth separately and in
isolation from each other” (quotation omitted)). The foundation of Google’s
presentation thus is flawed – the Court may not look at each sponsored link, but
must consider Google’s search-results pages as a whole.
Google also obfuscates its trademark practices by emphasizing its
stated trademark policies. Google asserts that the Court first should consider
whether the use of the Rosetta Stone Marks to refer to the company or its products
is actionable, then determine whether the use of the Marks in sponsored link text
constitutes infringement, and finally assess whether keyword bidding infringes the
Marks. GB at 17-40.
In fact, Google does not restrict its sale of the Rosetta Stone Marks to
purchasers that are lawfully referring to Rosetta Stone or its products – in practice,
it allows anyone to bid on and buy the Marks and to have their sponsored links
displayed when a user queries Rosetta Stone. JA(39)-3957. Likewise, although
9
Google’s trademark policies purport to restrict the actual use of the Rosetta Stone
Marks in sponsored link text to customers that are lawfully referring to Rosetta
Stone or its products, in practice, Google conducts negligible diligence and
regularly allows counterfeiters to display sponsored links that use the Marks in
their text, including counterfeiters who have been previously identified to Google
by Rosetta Stone. See JA(41)-4655-4656, 4661-4663, 4698, 4706-4708, 4755-
4757.2 Moreover, because sponsored links using the Rosetta Stone Marks appear
on search-results pages when a user queries a Rosetta Stone Mark, Google’s
practice of auctioning trademarks as keywords cannot be divorced from its practice
of allowing customers to use the purchased trademarks in sponsored link text.
2. All Nine Factors Relevant To The Likelihood-Of-Confusion

Analysis Favor Confusion.
The District Court erroneously considered just three of the nine
factors analyzed in determining whether a likelihood of confusion exists. RSB at
21-26. It considered the three “disputed” factors – actual confusion, intent, and
consumer sophistication – but ignored the remaining six undisputed factors. As
explained in Rosetta Stone’s opening brief, all nine factors favor confusion.
2
Google merely looks for the presence of certain words or phrases, such as
“counterfeit,” in the sponsored link text or the advertiser’s website – a practice
that, to say the least, a jury might find not to be a serious effort to avoid
allowing counterfeiters to use trademarks in sponsored link text. See JA(41)-
4655-4656, 4661-4663, 4698, 4706-4708, 4755-4757.
10
(a) The Undisputed Factors Are Relevant To Google’s

Practices And Favor Confusion.
Google does not contest that factors 1 (strength and distinctiveness of
the mark), 2 (similarity of the marks), 3 (similarity of the goods and services the
marks identify), 4 (similarity of the facilities the parties use in their businesses), 5
(similarity of the advertising the parties use) and 8 (quality of the defendant’s
product) all favor a finding of confusion. Instead, Google argues that these
“traditional” factors are “irrelevant to the question of whether referential use in
online ad text is likely to confuse.” GB at 21-22.
Once again, Google seeks to establish a special rule of immunity for
its practices, under the guise of a carve-out for “online ad text,” that has no basis in
the law, and certainly no warrant in the Lanham Act. To the extent Google seeks
to raise a “fair use” defense, see 15 U.S.C. § 1115(b)(4), it can present that defense
at trial, where a fact-finder can resolve the disputed issues. But Google’s fair use-
based objection (i.e., the permissibility of “referential use” in text) cannot be
converted into a broad shield of statutory immunity that protects it against the
consequences, for example, of its extensive publication of the Rosetta Stone Marks
in the sponsored links of counterfeiters.3 Google’s effort to reject the relevance of
3
For this reason, concerns about free expression raised in amicus briefs
supporting Google from advocacy groups are misplaced. Dkt. 113, 114.
Congress addressed these concerns in the fair use provision of the Lanham Act,
(cont'd)
11
the six undisputed factors, all of which strongly favor confusion, is no more
persuasive than the District Court’s analysis ignoring them.
(b) Evidence Of Actual Confusion Defeats Summary

Judgment.
Factor 7 (actual confusion) also favors a finding of confusion as
Rosetta Stone presented abundant evidence of actual consumer confusion. RSB at
26-37. Through its artificial, piecemeal presentation of its practices, Google
understates and misconstrues this evidence. In discussing “ads that do not violate
Google’s policies,” Google addresses only the expert confusion study and
Google’s internal studies. GB at 22-28. When it discusses “ads for counterfeit
products,” Google addresses the testimonial evidence of actual confusion. GB at
34-37. When it discusses its use of the Rosetta Stone Marks as keywords, Google
returns to the confusion studies. GB at 43-45. The actual confusion evidence
cannot be considered in such a fragmented fashion. Considered together, this
evidence supports the conclusion that Google’s use of the Rosetta Stone Marks is
likely to cause consumer confusion.
First, five consumers were confused by sponsored links displayed on
Google’s search-results pages for “Rosetta Stone,” leading them to do business
________________________
(cont'd from previous page)
15 U.S.C. § 1115(b)(4), which Google has not advanced as a basis for summary
judgment.
12
with companies they believed were sponsored by Rosetta Stone and to buy what
they thought was genuine Rosetta Stone product but that, in fact, was counterfeit
software. JA(41)-4592-4595, 4614-4620, 4724-4727, 4778-4784, 4804-4807;
JA(33)-698.
Tacitly conceding that the District Court erroneously weighed the
testimony of these consumers, Google does not contest the substance of their
testimony. GB at 34-35. Google instead argues only that “five instances of
confusion is de minimis.” Id. at 34. Relying on George & Co., LLC v.
Imagination Entertainment Ltd., 575 F.3d 383 (4th Cir. 2009), Google suggests
that in weighing this evidence, the Court should consider the “100,000,000 ads
displayed on Google.com since 2004 in response to search queries that contained
the Rosetta Stone marks.” GB at 34.
Google’s effort to substitute an alternative ground for the District
Court’s holding, however, falls short. Google seeks to compare the number of
Rosetta Stone’s actual confusion witnesses (the maximum number permitted by the
District Court’s deposition limits) to the largest possible universe Google can
invoke – the total number of sponsored links (without even mentioning that
multiple sponsored links appear on a single page). Google’s suggested universe
says nothing about the actual number of sales to other entities (including
13
counterfeiters) through the relevant sponsored links, or about the number of users
who responded to, or engaged with, the sponsored links.
In light of the fact that individuals review Google’s search-results
pages at the privacy of their computers (without interaction with salespersons), it is
significant that Rosetta Stone was able to identify any consumers who were
actually confused by Google’s search-results pages. As the Third Circuit has
recognized, “[w]ithout knowing how many, or what percent of, incidents go
unreported, anecdotal evidence of confusion cannot usefully be compared to the
universe of potential incidents of confusion. The rarity of such evidence makes
even a few incidents ‘highly probative of the likelihood of confusion.’” Kos
Pharm., Inc. v. Andrx Corp., 369 F.3d 700, 720 (3d Cir. 2004) (emphasis added)
(citation omitted). While Google notes that Kos is not controlling, GB at 35, it
does not address the logic of Kos and ignores Sara Lee Corp. v. Kayser-Roth Corp.,
81 F.3d 455 (4th Cir. 1996), in which this Court made the same point: “[I]ndeed,
we can but wonder how often the experiences related by the trial witnesses have
been repeated – but not reported – in stores across the country.” Id. at 466-67.
Given the circumstances of the witnesses’ actual confusion, the
weight of the witnesses’ testimony, the other confusion evidence presented by
Rosetta Stone (which was absent in George & Co.), and Google’s factual rebuttal,
14
the confusion testimony, at a minimum, should be submitted to a jury for
consideration and evaluation.
Second, Dr. Kent D. Van Liere tested consumer confusion arising
from Google’s practices and concluded that “17 percent of consumers demonstrate
actual confusion.” JA(46)-5459. The District Court erroneously discounted the
Van Liere report based on an impermissibly narrow reading of Section 1114(1)(a).
RSB at 33-34. Google apparently agrees, as it does not rely on the District Court’s
reasoning. GB at 24-27. Instead, Google identifies supposed flaws in the survey
design and methodology. Id. These alleged deficiencies bear on the weight a fact-
finder could give the survey; they provide no basis for discarding this evidence of
confusion at the summary judgment stage. See, e.g., Schering Corp. v. Pfizer Inc.,
189 F.3d 218, 228 (2d Cir. 1999) (“[E]rrors in methodology [] properly go only to
the weight of the evidence[.]”).
Google also asks this Court to reinterpret the Van Liere report,
asserting that “the survey data reveals that participants were not actually confused
by Sponsored Links.” GB at 26. Google argues that Dr. Van Liere’s conclusions
are “suspect,” characterizes the verbatim responses of the survey participants,
questions the way Dr. Van Liere counted confusion and subtracts from Dr. Van
Liere’s results the sponsored links that Google deems “purely referential.” Id.
While Google would be free to argue these points to a jury, summary judgment
15
requires that the Van Liere report be viewed in the light most favorable to Rosetta
Stone. See, e.g., Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 124 (4th Cir.
1990).4
Third, Google’s own studies show that Google’s practices are
confusing. One set of studies demonstrates that Internet users frequently cannot
distinguish between sponsored links and organic search results (especially with
regard to the sponsored links at the top of the search-results pages). JA(41)-4298-
4360; JA(46)-5257-5275. Google states without any support that these studies
“shed[] no light on the question of whether a user is confused as to the source or
sponsorship of the products sold by either a Sponsored Link or an organic one.”
GB at 29. This assertion contradicts Google’s assurances to its users that its
organic search engine identifies the most relevant sites in response to user queries.
JA(2)-28. A user who is “unable to differentiate [the top sponsored links] from
organic search results,” JA(41)-4298-4360; JA(46)-5257-5275, necessarily

4
The factual nature of Google’s criticisms is obvious. For example, Google
ignores two important facts: (i) the CouponCactus and Amazon.com sponsored
links appeared in the top two spaces, which Google’s own studies show tend to
confuse consumers, thus strongly supporting Rosetta Stone’s position that the
top two sponsored links are especially confusing; and (ii) at the time of Dr. Van
Liere’s study, neither CouponCactus nor Amazon.com was a legitimate bidder
on the Rosetta Stone Marks (facts that would be presented at trial). Thus,
Google’s re-writing of the expert’s report to claim a confusion result of “-3%”
is a product of its own invention, and Rosetta Stone strongly disputes it.
Google may not, on appeal, edit an expert report to create a straw man as an
alternative ground for defending the grant of summary judgment.
16
believes that the top sponsored link is the top – i.e., most relevant – organic search
result.5
A second set of studies shows that Internet users are confused by the
use of trademarks in sponsored link text. JA(41)-4364-4377. Google says that
these studies are irrelevant because they “tested neither the limited use of
trademarks permitted by Google’s 2009 policy nor any ads using Rosetta Stone’s
marks.” GB at 28. Rosetta Stone, however, does not challenge Google’s carefully
drafted policies; it challenges Google’s real-world practices. Moreover, the
conclusions reached in Google’s studies were not mark-specific, and Google relied
on them in initially deciding not to permit customers to use trademarks in
sponsored link text. JA(41)-4578, 4669, 4672.
Fourth, Google’s former and current Chief Trademark Counsel could
not tell that three of the sponsored links displayed on a Google search-results page
for “Rosetta Stone” were not resellers of genuine Rosetta Stone software. JA(46)-
5699-5707, 5805-5811. Google argues that these witnesses were not confused –
they were merely uncertain. GB at 36. But this Court expressly recognized in
Sara Lee that “uncertainty” as to origin is evidence of actual confusion. 81 F.3d at
466.
5
Google recently changed its practices and now uses the term “ads” instead of
“sponsored links” on its search-results pages.
17
Google attempts to distinguish Sara Lee, asserting that the “uncertain”
witnesses there were “consumers in stores, ready to make a purchase, with access
to the actual products.” GB at 36. Here, again, Google seeks a special carve-out
that is not authorized by law. Google’s practices never involve consumers in
stores with access to the actual products. They involve consumers faced with
search-results pages similar to those shown to Google’s Trademark Counsel.
Nothing in the Lanham Act removes the resulting confusion from the scope of the
statute. Google also argues that the witness testimony in Sara Lee was “coupled
with numerous other instances of actual confusion and surveys showing thirty to
forty percent confusion.” GB at 36. So, too, here – Rosetta Stone proffered
numerous other instances of actual confusion and a survey showing actionable
confusion. RSB at 26-37.
(c) Intent And Consumer Sophistication Favor Confusion.

Finally, factors 6 (intent) and 9 (consumer sophistication) favor a
finding of confusion. RSB at 37-42. Regarding intent, Google misstates the
question presented, asserting that Rosetta Stone “lack[s] any evidence that Google
intended accurate references to Rosetta Stone products to be confusing.” GB at 29.
The challenged practices, however, extend far beyond “accurate references to
Rosetta Stone products.” They include, for example, Google’s repeated sale of the
18
Rosetta Stone Marks to counterfeiters even after Rosetta Stone complained about
those very counterfeiters to Google. JA(33)-693-2257.
In any event, the record shows that Google implemented its trademark
policies despite (i) its own studies showing high levels of confusion and (ii)
thousands of complaints about the infringing nature of its conduct. RSB at 38.
Google’s only substantive response concerning the studies amounts to an argument
for viewing them in Google’s favor, GB at 29-30, contrary to the summary
judgment standard. As to the complaints, Google reargues its motion to strike
them, id. at 30-31, which the District Court correctly denied, finding them
“relevant to establishing Google’s knowledge and intent for purposes of Rosetta
Stone’s trademark infringement claim.” JA(28)-605. Google also asserts that,
even if admissible, the jury could not draw any conclusions from these complaints
“without a mini-trial on each.” GB at 30-31. The presentation of the complaints to
the jury, however, is a matter for the District Court to handle at trial; it does not
provide a sound basis for affirming summary judgment to Google.
With respect to consumer sophistication, Google simply ignores the
evidence demonstrating that the relevant segment of the consuming public is
confused by Google’s sponsored links. JA(41)-4298-4360, 4591, 4612, 4723,
4777, 4803; JA(46)-5447-5502, 5699-5707, 5805-5811. Google does not address
19
these facts – or the District Court’s failure to consider them – in its brief. GB at
32-33.
II. THE FUNCTIONALITY DOCTRINE HAS NO APPLICATION TO GOOGLE’S USE

OF THE ROSETTA STONE MARKS.
The functionality doctrine concerns features in the trademark owner’s
product that are not protected under trademark law – it does not create immunity
from a trademark infringement claim for alleged infringers who claim that certain
features are functional to their own products. RSB at 42-45. Three of the amicus
briefs filed in support of Rosetta Stone, including the brief filed by the
International Trademark Association, advance the same position, explaining in
great detail the flaws in the District Court’s analysis of the functionality doctrine.
Dkt. 33-1, 37-1, 38-1.
Google does not meaningfully address the analysis presented by
Rosetta Stone and these amici, except to say that “no legal principle” justifies
narrowly construing the doctrine. GB at 42. Rosetta Stone and the amici, however,
do not seek to narrowly construe the doctrine: the doctrine itself has no application
to the facts here. As the Ninth Circuit held when faced with the exact argument
adopted by the District Court, “[t]he fact that the marks make defendants’
computer program more functional is irrelevant.” Playboy Enters., Inc. v.
Netscape Commc’ns Corp., 354 F.3d 1020, 1031 (9th Cir. 2004).
20
Google mentions this decision in a footnote, stating that the Ninth
Circuit “briefly touched upon functionality” in Playboy, but suggests the decision
is questionable because the Ninth Circuit did not address the purported
“inconsistencies” with its prior decision in Sega Enterprises Ltd. v. Accolade, Inc.,
977 F.2d 1510 (9th Cir. 1992). GB at 41 n.5.
However, there is no inconsistency between Playboy and Sega. In
Playboy, as here, the alleged infringer argued that using the trademark owner’s
trademark would make the alleged infringer’s product more functional. In Sega,
the alleged infringer argued that the trademark owner’s trademark was a functional
feature that must be included in a video game program in order for the game to
operate on the trademark owner’s video game system.
In short, all the authorities cited by both parties (and the amici)
support the same conclusion: the Rosetta Stone Marks are not functional within
the meaning of the functionality doctrine. The functionality doctrine therefore
provides no basis for affirming summary judgment in Google’s favor.
III. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE SECONDARY

TRADEMARK INFRINGEMENT CLAIMS.
The District Court erroneously granted summary judgment to Google
on its secondary trademark infringement claims. RSB at 46-51. Indeed, the
District Court itself expressly recognized the facts that precluded summary
21
judgment. Id. Google’s response does not support its assertion that these facts
should not be presented to a jury.
A. Google Is Not Entitled To Summary Judgment On Contributory

Infringement.
Rosetta Stone submitted facts showing that Google engaged in
contributory infringement by intentionally inducing others to infringe and
continuing to supply its products to customers it knew or had reason to know were
engaging in trademark infringement. RSB at 46-50. Regarding intentional
inducement, Google does not dispute that Rosetta Stone presented evidence
showing Google’s awareness of the infringing nature of its sponsored links and
Google’s encouragement of its customers to bid on trademarks as keywords and to
use trademarks, including the Rosetta Stone Marks, in sponsored link text. RSB at
46-47. Instead, Google argues that these facts are not sufficient to demonstrate the
“specific intent” necessary to support liability under an intentional inducement
theory because “trademark inducement findings are rare and easily
distinguishable.” GB at 47. The fact that such findings may be rare or
distinguishable, however, does not mean that Rosetta Stone failed to proffer
evidence requiring the question of Google’s intent to be submitted to a jury.
General Analytics Corp. v. CAN Ins. Cos., 86 F.3d 51, 54 (4th Cir. 1996)
(“[D]etermining intent is fact-intensive[.]”).
22
Regarding continuing to supply product to known infringers, Rosetta
Stone proffered specific evidence demonstrating exactly such conduct by Google.
JA(33)-693-2257; JA(35)-2299-2317; JA(62). Google concedes as much, but
argues that such evidence is insufficient under Tiffany (NJ) Inc. v. eBay, Inc., 600
F.3d 93 (2d Cir. 2010), cert. denied, 562 U.S. --- (Nov. 29, 2010), to establish the
“level of specific knowledge required to support a finding of contributory
trademark liability.” GB at 49.
In Tiffany, the Second Circuit affirmed the district court’s decision,
following a fully litigated bench trial, that eBay was not liable for the sale of
counterfeit Tiffany products on its website because Tiffany “failed to demonstrate
that eBay was supplying its service to individuals who it knew or had reason to
know were selling counterfeit Tiffany goods.” 600 F.3d at 109. As Google
recognizes, the Second Circuit concluded that “eBay’s general knowledge of
infringement was not sufficient to impose contributory liability.” GB at 49
(emphasis added); see also Tiffany, 600 F.3d at 107. Here, in contrast, Rosetta
Stone proffered evidence showing Google’s specific knowledge that particular
individuals were selling counterfeit Rosetta Stone goods and Google’s continued
23
sale of the Rosetta Stone Marks to such individuals. See JA(29)-640-641; JA(33)-
693-2257; JA(35)-2299-2317; JA(62).6
In addition, in Tiffany the Second Circuit considered the district
court’s findings regarding eBay’s extensive efforts to combat counterfeiting,
consisting of, among other things, “some 4,000 employees ‘devoted to trust and
safety’ issues, including over 200 who ‘focus exclusively on combating
infringement’ and 70 who ‘work exclusively with law enforcement.’” 600 F.3d at
98. In sharp contrast, Rosetta Stone showed that the resources Google devotes to
attempting to combat counterfeiters are negligible – although it has 19,835
employees, Google devotes just 150 man hours per week (less than four employees)
to “dealing with counterfeiting.” JA(36)-2319; JA(46)-5354.
Finally, contrary to Google’s assertion that there is “no dispute” about
“whether Google responded to Rosetta Stone’s notices regarding ads for
counterfeit products,” GB at 50-51, Rosetta Stone showed that it frequently takes
days, and sometimes weeks, for Google to respond to notices of counterfeit
6
To the extent Tiffany stands for the proposition that “general” knowledge may
never be sufficient for secondary trademark liability, it conflicts with venerable
principles and precedents. See, e.g., Coca-Cola Co. v. Snow Crest Beverages,
Inc., 64 F. Supp. 980, 989-90 (D. Mass. 1946) (Wyzanski, J.), aff’d, 162 F.2d
280 (1st Cir.), cert. denied, 332 U.S. 809 (1947) (knowledge of widespread
infringing activity may be sufficient for secondary trademark liability), cited
with approval in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854
(1982).
24
sponsored links and there have been many instances where Google has taken no
action with respect to them. JA(33)-694-698, 703-2261.
Tiffany provides no basis to resolve these disputed facts on summary
judgment.
B. Google Is Not Entitled To Summary Judgment On Vicarious

Infringement.
With respect to vicarious infringement, Rosetta Stone presented
evidence showing that Google controls the selection and appearance of the
sponsored links that appear on its search-results pages and the use of the Rosetta
Stone Marks in those links. JA(41)-4153-4154, 4392-4397, 4420-4489, 4492,
4658-4659. Google asserts that it does not “act in concert to create counterfeit
goods” and that it “has no control over counterfeiters’ websites,” but it does not
address its joint ownership and control of the infringing sponsored links. GB at
52-53 (emphasis added). Accordingly, summary judgment in Google’s favor was
erroneous. See GEICO v. Google, Inc., 330 F. Supp. 2d 700, 705 (E.D. Va. 2004).
IV. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE

TRADEMARK DILUTION CLAIM.
The District Court erroneously granted summary judgment to Google
on dilution based on its conclusions that (i) because Google does not sell language
learning software, its use of the Rosetta Stone Marks constitutes a “fair use” within
the meaning of the dilution statute and (ii) Rosetta Stone cannot demonstrate
25
dilution because its brand awareness has increased since 2004. RSB at 53-57. As
explained in Rosetta Stone’s brief and in the briefs filed by amici, neither of these
conclusions is sustainable under established trademark principles. See id.; Dkt. 37-
1 at 12-20; Dkt. 38-1 at 17-27.
In its response, Google avoids characterizing its argument as a “fair
use” argument, and thereby triggering a fair use analysis that cannot be resolved on
summary judgment on this record. RSB at 53-54.7 Instead, Google argues that it
cannot be held liable for dilution because it “does not use the Rosetta Stone marks
on Google’s own goods and services.” GB at 54. But 15 U.S.C. § 1125(c)(1) does
not require that the defendant use the plaintiff’s mark on its own goods and
services; it requires that the defendant use the plaintiff’s mark in commerce. See
Dkt. 38-1 at 19-23. Google does not dispute that it uses the Rosetta Stone Marks
in commerce.
To support its argument, Google cites only Tiffany. There, the Second
Circuit held that because eBay did not sell the goods at issue, “it did not itself
engage in dilution.” Tiffany, 600 F.3d at 112. Unlike eBay, however, Google uses
the Rosetta Stone Marks – it sells the Rosetta Stone Marks to third parties and
selects and displays a limited number of sponsored links on its search-results pages
7
Indeed, Google concedes that at least some of its uses of the Rosetta Stone
Marks are not fair uses under the dilution statute. See GB at 54.
26
when a user queries a Rosetta Stone Mark. Indeed, prior to Tiffany, the Second
Circuit held that Google’s use of trademarks constitutes a use in commerce under
the Lanham Act. Rescuecom Corp. v. Google Inc., 562 F.3d 123, 129-30 (2d Cir.
2009). Google’s reliance on Tiffany therefore is misplaced.8
Google also downplays the District Court’s conclusion that Rosetta
Stone’s increased brand recognition precluded a finding of trademark dilution as a
matter of law, claiming that the Court was merely acknowledging an interesting
“trend.” GB at 55. The purported absence of actual dilution, however, was the
basis for the District Court’s ruling. JA(29)-652. As explained in Rosetta Stone’s
brief and the briefs of various amici, a plaintiff need not prove actual dilution to
succeed on a trademark dilution claim. RSB at 54-56; Dkt. 37-1 at 13-17; Dkt. 38-
1 at 23-27.
Because the District Court focused only on the current strength of the
Rosetta Stone Marks, it failed even to consider the cases in which courts have
found dilution where, as here, the defendant has used the plaintiff’s mark and the
plaintiff’s mark has been linked to counterfeit products. See, e.g., PETA v.
Doughney, 113 F. Supp. 2d 915, 920 (E.D. Va. 2000), aff’d, 263 F.3d 359 (4th Cir.
2001); Diane Von Furstenberg Studio v. Snyder, No. 1:06cv1356 (JCC), 2007 U.S.
8
To the extent Tiffany stands for the proposition that a defendant that does not
itself sell the goods at issue cannot be held liable for trademark dilution, see GB
at 54, it conflicts with the plain language of § 1125(c)(1).
27
Dist. LEXIS 66633, at *11 (E.D. Va. Sept. 10, 2007).9 Google argues that PETA
and Von Furstenberg are inapposite because they involved defendants that used the
plaintiffs’ trademarks to promote “their own goods and services.” GB at 54-55.
Google again misses the mark. These cases stand for the proposition that either
using the plaintiff’s mark or linking the plaintiff’s mark to counterfeit products
may be sufficient to prove dilution. As discussed above, Rosetta Stone has
presented evidence that Google uses the Rosetta Stone Marks in each of these ways.
Google argues, alternatively, that summary judgment may be affirmed
because “Rosetta Stone” was not a famous mark in 2004. GB at 56-57. Google
suggests that, because “Rosetta Stone” had not achieved general fame in April
2004, when Google started its practice of auctioning trademarks, Google cannot be
held liable for any blurring or tarnishment of the Rosetta Stone Marks that has
resulted from Google’s practices since then. Id. Google’s argument is without
merit.
9
Google’s assertion that Rosetta Stone somehow “waived” any argument based
on the District Court’s failure to properly analyze dilution is groundless. GB at
55. Rosetta Stone plainly raised this issue in its briefing below, citing both the
statute and relevant case law. JA(32)-688-689; JA(44)-5158-5160; JA(52)-
6522-6523. Moreover, “the [statute] directs the court to consider all factors
relevant to the issue, including six factors that are enumerated in the statute.”
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 266 (4th
Cir. 2007).
28
Rosetta Stone presented evidence that “Rosetta Stone” was a famous
mark in 2004. JA(9)-202-204; JA(34)-2263-2276. Moreover, Google began using
the Rosetta Stone Marks in sponsored link text in 2009 – when even Google
recognizes the Rosetta Stone Marks were famous. JA(41)-4676. Finally, this case
involves Google’s auction and sale of the Rosetta Stone Marks on an ongoing basis.
Google thus “commences” use of the Rosetta Stone Marks in commerce each time
it auctions the Rosetta Stone Marks to its customers.
V. THE DISTRICT COURT ERRED IN DISMISSING ROSETTA STONE’S UNJUST

ENRICHMENT CLAIM.
The District Court erroneously dismissed Rosetta Stone’s unjust
enrichment claim for two reasons: (i) the Amended Complaint alleged facts that
plausibly stated an unjust enrichment claim and (ii) the Communications Decency
Act (“CDA”) does not bar the claim. RSB at 57-60.
Regarding the sufficiency of the pleading, Google argues that the
Amended Complaint’s assertions that Rosetta Stone “conferred involuntarily a
benefit on Google” and that Google “should reasonably have expected to
compensate Rosetta Stone” for that benefit are “‘conclusory, unwarranted
deductions of fact, or unreasonable inferences’ that need not be accepted as true.”
GB at 60 (citation omitted). Google is simply incorrect. The Amended Complaint
alleges facts supporting both of them. Specifically, the Amended Complaint
alleges that Google (i) used the Rosetta Stone Marks without Rosetta Stone’s
29
authorization; (ii) sold the Marks as keyword triggers for third-party advertising;
and (iii) retained profits from those sales without paying Rosetta Stone for the
value of its intellectual property. JA(8)-196-197. These facts support the
assertions that Google asks this Court to reject.
Google further argues that Rosetta Stone did not have a reasonable
expectation of compensation because “Rosetta Stone did not plead any facts to
support a claim that Google typically paid trademark owners for AdWords
revenue” or that “Google led Rosetta Stone to believe Google would pay for use of
Rosetta Stone’s trademarks as keywords.” GB at 60. In other words, Google
argues that because it brazenly uses all trademarks without any subjective intention
of paying for the value that it receives in doing so, no one can state a claim against
it for unjust enrichment. That is not the law.
Where, as here, a defendant seizes a benefit without authorization, the
plaintiff need only demonstrate that the defendant should reasonably have expected
to pay the plaintiff for the benefit taken. RSB at 58. The Amended Complaint
alleges facts plausibly suggesting that Google reasonably should have expected to
pay Rosetta Stone for the benefits it reaped from its sale of the Rosetta Stone
Marks. JA(8)-196-197. Indeed, the record shows that Google (i) began selling
trademarks as keywords in 2004 because it determined that it could achieve a
“[s]ignificant potential revenue impact,” JA(41)-4265, and (ii) knew that it might
30
have to pay trademark owners for auctioning their marks as it warned investors of
the potential adverse financial consequences that might result from lawsuits by the
trademark owners, JA(41)-4297.10
Regarding the CDA, Google seeks to cloak itself in the Act’s
protections because it has structured its AdWords program so that it gets paid when
a user actually clicks on a sponsored link. GB at 57-58. But how Google gets paid
is beside the point as the practice at issue here is Google’s auction and sale of
trademarks as keywords – conduct to which the CDA does not apply regardless of
Google’s contingent payment arrangement. RSB at 58-59.
Finally, even if the CDA were applicable, dismissal of the unjust
enrichment claim was improper given the extensive allegations of Google’s active
participation in creating the content of the sponsored links. RSB at 59-60. In
responding to this argument, Google discusses only its Keyword Tool, asserting
that the tool “does not create the content of the advertisements.” GB at 59.
Rosetta Stone’s allegations, however, cannot be read so narrowly. JA(8)-181-182.
Indeed, Rosetta Stone presented extensive evidence of Google’s direct
involvement in creating content, including evidence that Google tells its customers
to “put the keywords that trigger the ad in the ad’s headline and description” and to
10
Thus, Google’s assertion that “Rosetta Stone did not argue any additional
factual points” in connection with summary judgment briefing, GB at 61, is
incorrect.
31
“highlight[] the brand name” in their “display URL.” JA(41)-4492; JA(46)-5617.
Thus, Google is not merely a passive publisher of content provided by its
customers. Accordingly, the District Court was erroneous in ruling, as a matter of
law, that Google is immune from liability under the CDA.
CONCLUSION
This Court should reverse the District Court’s orders and remand this
case for trial.
Dated: December 13, 2010 Respectfully submitted,
Skadden, Arps, Slate, Meagher & Flom LLP
/s/ Clifford M. Sloan

Attorneys for Appellant
32
UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT
No. 10-2007 Caption: Rosetta Stone Ltd. v. Google Inc.
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Dated: December 13, 2010 /s/ Clifford M. Sloan

Counsel for Appellant
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/s/ Clifford M. Sloan

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Case: 10-2007 Document: 137 Date Filed: 12/13/2010 Page: 1

APPEAL NO. 10-2007

ROSETTA STONE LTD.,

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

APPELLANT’S REPLY BRIEF

Counsel for Appellant

I. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON

A. Rosetta Stone’s Direct Liability Claim Is Not Premised On

B. Confusion Is Presumed As A Matter Of Law .......................................6

C. Google’s Use Of The Rosetta Stone Marks Results In A

1. Google’s Practices Must Be Considered In Context And

2. All Nine Factors Relevant To The Likelihood Of

(a) The Undisputed Factors Are Relevant To Google’s

(b) Evidence Of Actual Confusion Defeats Summary

(c) Intent And Consumer Sophistication Favor

II. THE FUNCTIONALITY DOCTRINE HAS NO APPLICATION TO

III. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON

A. Google Is Not Entitled To Summary Judgment On Contributory

B. Google Is Not Entitled To Summary Judgment On Vicarious

IV. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON

V. THE DISTRICT COURT ERRED IN DISMISSING ROSETTA

Coca-Cola Co. v. Snow Crest Beverages, Inc.,

Diane Von Furstenberg Studio v. Snyder, No. 106cv1356 (JCC),

George & Co., LLC v. Imagination Entertainment Ltd.,

Johnson & Johnson Vision Care, Inc. v. 1-800-Contacts, Inc.,

Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)................................................5

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,

PETA v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000),

Playboy Enters., Inc. v. Netscape Commc’ns Corp.,

Statutes and Rules Page(s)

15 U.S.C. § 1125.............................................................................................. passim

established in Rosetta Stone’s opening brief (“RSB”). As to each of its claims,

otherwise, the District Court violated settled principles of summary judgment,

misconstrued fundamental trademark tenets, and created a special, unwarranted,

and unprecedented rule of immunity for Google.

In its response (“GB”), Google largely abandons the District Court’s

Stone openly acknowledges numerous permissible uses of its Marks, including on

broadly prohibits trademark use that is “likely to cause confusion, or to cause

mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Google likewise argues that the

“traditional” likelihood-of-confusion factors, which this Court has applied for

Google recognizes that uncertainty on the part of consumers in brick-and-mortar

Internet consumers is insufficient “because it can be difficult to tell by looking at

an online ad the exact nature of the advertised product.” GB at 36-37.

Although Google appears to recognize the flaws in the District

characterizes as “undisputed” numerous facts that Rosetta Stone disputed, presents

Court’s rulings should be reversed.

I. GOOGLE IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE DIRECT

Stone proffered significant evidence of confusion to the District Court, precluding

A. Rosetta Stone’s Direct Liability Claim Is Not Premised On Initial

Google’s argument that Rosetta Stone’s direct infringement claim

actionable in this Circuit, GB at 15-17, is flawed in two respects. 1 Most

Rather, regardless of “initial interest confusion,” Rosetta Stone demonstrated that

Google’s use of the Rosetta Stone Marks is “likely to confuse an ‘ordinary

consumer’ as to the source or sponsorship of the goods.” Anheuser-Busch, Inc. v.

For example, Rosetta Stone presented the testimony of five consumers

4593, 4614-4615, 4724-4727, 4778-4781, 4804-4805. This testimony does not

source or sponsorship of the purchased goods. Likewise, the other confusion

evidence presented – Google’s internal studies, the testimony of Google’s

Trademark Counsel, an expert confusion study, and testimonial evidence of

consumer confusion – all demonstrate confusion as to the source or sponsorship of

the goods. RSB at 26-37.

evidence of actual confusion,” its expert confusion study “also supports an

independent finding of ‘initial interest’ confusion.” RSB at 34 n.11 (emphasis