Summary:

Rosetta Stone v. Google, one of the most important trademark cases of the digital age, is pending in a Virginia federal appeals court, and G…

Rosetta Stone v. Google, one of the most important trademark cases of the digital age, is pending in a Virginia federal appeals court, and Google (NSDQ: GOOG) is fighting a remarkable battle to keep thousands of pages of documents secret. The documents could contain information that’s potentially damaging to Google about how frequently customers are confused by trademarked searches, which is a central question in the case.

The company is trying to block an effort by the non-profit Public Citizen to unseal heaps of documents in the case. The battle over these sealed documents won’t affect what Rosetta Stone has access to, so it shouldn’t really affect the outcome of the case. But Google is fighting to keep sealed at least 800 pages of documents that could damage it from a PR perspective.

While the great majority of documents in civil lawsuits are supposed to be open to the public by law, but it frequently doesn’t actually pan out that way. It’s not unusual for big companies litigating against each other to seal evidence without review by either the public or the judge in the case; but Paul Levy of Public Citizen, working together with two lawyer-bloggers who frequently write about trademark litigation against Google, is trying to open up this docket and hopes it will have some effect on other heavily sealed civil lawsuits. Writing about “the extreme facts of the Rosetta / Google trademark case” back in December, Levy noted that out of 15 volumes of documents that have been submitted as the case record to the appeals court, a full 13 are sealed in their entirety.

Even portions of the actual argument briefs-in which each side explains why it thinks it should win the case-had key parts redacted, until Levy and his allies intervened in the case. The parties agreed to un-redact those documents, but Google is objecting to unsealing the full “Joint Appendix,” which contains the evidence at issue in this case. At a minimum, Levy has argued that nearly 6,000 pages of documents in the Joint Appendix that Google hasn’t claimed are confidential should be unsealed immediately.

A Google spokesperson declined to comment about its effort to keep the documents sealed.

Rosetta Stone doesn’t like the idea that when users type “Rosetta Stone” into Google, many results come back that aren’t connected to the company at all. Some of those are from competitors, while others offer fake Rosetta Stone software, the company alleges. (Google has maintained that it takes prompt action against advertisers who proffer counterfeit products.)

Many brand owners have sued Google over this practice, and the sale of search keywords that are also trademarks was considered a controversial and cutting-edge area of trademark law as recently as a few years ago. But now the practice has become more accepted, in part because Google hasn’t lost a single lawsuit over this issue (although none have persisted as long as Rosetta Stone has.) In fact, Microsoft (NSDQ: MSFT) just said that next month, its competing Bing search engine would start selling trademarked keywords as well-whether trademark owners like it or not-in order to “follow industry standards.”

What could the documents in the case reveal? The most potentially damaging information that could come out would be data about how frequently consumers are confused by trademarked searches. That’s because the standard for winning trademark lawsuits is typically being able to show that there is a likelihood that consumers will be confused by a trademark-infringing practice. For example, Ben Edelman, a Harvard professor of marketing and frequent Google critic, has noted that documents already unsealed in the Rosetta Stone case show relatively high levels of consumer confusion. They also show that thousands of trademark owners have complained to Google about its practice.

Defenders of the sale of trademarked keywords say that it’s a beneficial, pro-consumer practice that allows searchers to see what competing companies have to offer-or what a critic has to say about a particular trademark. Remarkably, one of the defenders of the practice of selling trademark keywords is Public Citizen itself. The group supports Google’s position in this case, and even filed a brief in its favor. But that doesn’t mean that Levy accepts the way Google is litigating the case. “It’s an extraordinary case of sealing,” he said. “It’s an important trademark case, and the public ought to be able to understand the basis for both sides, and the court of appeals ruling.”

Google has already exported its practice of marketing trademarked keywords worldwide. And now that its biggest competitor has adopted the practice of selling trademarked keywords as well, at this point, a victory by Rosetta Stone would be a big upset to search marketing.

By Joe Mullin

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