Rosetta Stone LTD v. Google Inc.

Filing 103

MOTION for Partial Summary Judgment by Rosetta Stone LTD. (Attachments: # 1 Proposed Order)(Allen, Warren)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
____________________________________
ROSETTA STONE LTD.,
)
)
Plaintiff,
)
)
vs.
)
)
GOOGLE INC.,
)
)
Defendant.
)
____________________________________)

Civ. Action No. 1:09-cv-00736(GBL/TCB)

ROSETTA STONE LTD.’S MOTION FOR PARTIAL
SUMMARY JUDGMENT AS TO LIABILITY

Pursuant to Rule 56 of the Federal Rules of Civil Procedure and Local Rule 56, Plaintiff
Rosetta Stone Ltd. moves this Court for partial summary judgment as to liability on all its claims
against Google Inc. (“Google”). Specifically:


Google is directly liable for trademark infringement because Google uses Rosetta
Stone’s trademarks in commerce, in connection with the sale, offering for sale,
and advertising of goods and services, and in a manner that is likely to confuse –
and that in fact has confused – consumers.



Google is liable for the trademark infringement of its advertisers because it (i)
intentionally induces its advertisers to infringe Rosetta Stone’s marks;
(ii) continues to sell advertising space to entities that it knows or has reason to
know are engaging in trademark infringement; and (iii) has the legal right to stop
or limit the infringing conduct, and the practical ability to do so, yet fails to
prevent the ongoing infringement of Rosetta Stone’s marks that occurs on
Google’s search-results pages.



Google is liable for trademark dilution under the Lanham Act because Google’s
conduct has resulted in the blurring and tarnishment of Rosetta Stone’s famous
marks.



Google has been unjustly enriched under Virginia law because it knowingly uses
and sells Rosetta Stone’s trademarks for its own profit without compensating
Rosetta Stone.

The grounds and authorities in support of this motion are set forth in Rosetta Stone Ltd.’s
Memorandum of Law in Support of Its Motion for Partial Summary Judgment As To Liability
along with the supporting Declarations and Exhibits.
Respectfully submitted,
March 26, 2010
Of Counsel:
Mitchell S. Ettinger
(Pro hac vice)
Clifford M. Sloan
(Pro hac vice)
Jennifer L. Spaziano
(Pro hac vice)
Skadden, Arps, Slate, Meagher & Flom, LLP
1440 New York Avenue, N.W.
Washington, D.C. 20005-2111

/s/
Warren T. Allen II
Virginia Bar Number 72691
Attorney for Plaintiff Rosetta Stone Ltd.
Skadden, Arps, Slate, Meagher & Flom, LLP
1440 New York Avenue, N.W.
Washington, D.C. 20005-2111
[phone]
[phone]
[e-mail]

CERTIFICATE OF SERVICE
I hereby certify that on March 26, 2010 I will electronically file the foregoing with the
Clerk of the Court using the CM/ECF system which will then send a notification of such filing
(NEF) to the following:
Jonathan D. Frieden
ODIN, FELDMAN & PETTLEMAN, P.C.
9302 Lee Highway, Suite 1100
Fairfax, VA 22031
[e-mail]
Counsel for Defendant, Google Inc.
True and correct copies of documents filed under seal will be sent via electronic mail to:
[e-mail]
[e-mail]

March 26, 2010
Date

/s/
Warren T. Allen II (Va. Bar No. 72691)
Attorney for Rosetta Stone Ltd.
Skadden, Arps, Slate, Meagher & Flom LLP
1440 New York Avenue, N.W.
Washington, D.C. 20005-2111
Telephone: [phone]
Facsimile: [phone]
[e-mail]