On November 15, the Supreme Court granted certiorari in Google LLC v. Oracle America, Inc., No. 18-956. The two questions presented before the Court are (1) whether “copyright protection extends to a software interface,” and (2) whether, as the jury found, that Google’s “use of a software interface in the context of a creating a new computer program constitutes fair use.”
Continue Reading Certiorari Granted in Google LLC v. Oracle America, Inc.

Earlier this week, Google Inc. and Rosetta Stone Inc. settled their dispute over whether the sale of Rosetta Stone’s name to third parties for search-engine advertising constitutes an infringing use of Rosetta Stone’s trademark.  Google’s AdWords advertising platform permits third parties to purchase “sponsored links” that are shown to users whose online searches include certain keywords.  Rosetta Stone filed suit in 2009, alleging both direct and secondary trademark infringement based on Google’s sale of its name as a keyword used for this purpose.  Although the terms of the settlement have not been made public, Rosetta Stone announced that they will work together with Google to “meaningfully collaborate to combat online ads for counterfeit goods and prevent misuse and abuse of trademarks on the Internet.” 

In 2010, the Eastern District of Virginia granted Google summary judgment in the dispute, but the Fourth Circuit vacated that decision earlier this year.  In evaluating the direct infringement claim, the Court focused on the question of whether Google’s actions were likely to cause consumer confusion.  Even though Google itself was not passing off any goods or services as Rosetta Stone’s, the Fourth Circuit  concluded that a reasonable trier of fact could find that Google “intended to create confusion” based on “knowledge that confusion was very likely to result from its use of the marks.”  The court also cited evidence that consumers had in fact purchased counterfeit Rosetta Stone software from sponsored links that they mistakenly believed were authorized by Rosetta Stone.  The Fourth Circuit further held that evidence that Google allowed known infringers and counterfeiters to bid on Rosetta Stone’s marks as keywords was sufficient to withstand summary judgment on the contributory infringement claim.
Continue Reading Google Settles Search Engine Advertising Litigation With Rosetta Stone—But Sponsored Advertising Disputes Will Likely Persist

A long-running copyright infringement action by the Authors Guild (a non-profit authors’ organization) against Google has been temporarily placed on pause.  On Monday, the U.S. Court of Appeals for the Second Circuit granted Google’s unopposed motion for a stay pending its interlocutory appeal of class certification in The Authors Guild, Inc., et al. v. Google

A copyright-infringement lawsuit challenging the Google Books service will proceed in a New York federal district court, even while an appeals court considers whether the suit can proceed as a class action.

In an order filed Wednesday, Judge Denny Chin declined Google’s request to stay the district-court proceedings. Judge Chin granted class-action status to the plaintiffs in May, certifying a class consisting of “[a]ll persons residing in the United States who hold a copyright interest in one or more Books reproduced by Google as part of its Library Project.”  Google seeks to challenge the certification on the basis (i) that the proposed class representatives cannot adequately represent absent class members who benefit from the Google Books project (an “intra-class conflict”) and (ii) that Google’s principal “fair use” defense is unique to each individual work, defeating the Rule 23(b)(3) requirement that common issues predominate.

Continue Reading District Court: Google Books Case Will Proceed While Class Certification Is Appealed

Google may appeal a New York federal district court’s decision to grant class-action status to a copyright-infringement lawsuit challenging the Google Books service, the U.S. Court of Appeals for the Second Circuit ruled Tuesday.  The Authors Guild, Inc. v. Google, Inc., No. 12-2402 (2d Cir. Aug. 14, 2012).

Google launched its Google Books Library Project in 2004, when it reached agreements with several major research libraries allowing Google to digitally scan the libraries’ collections, which Google then displayed in an online, searchable database. Many works in the Google Books database remain under copyright and were scanned and displayed without permission from copyright holders.


Continue Reading Appeals court allows Google to challenge class certification in Google Books suit