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1 COOLEY GODWARD KRONISH LLP

BENJAMIN CHAPMAN (California Bar No. 234436)


2 4401 Eastgate Mall
San Diego, California 92121
3 Telephone: (858) 550-6000; Facsimile: (858) 550-6420
E-mail: bchapman@cooley.com
4
COOLEY GODWARD KRONISH LLP
5 PETER J. WILLSEY (Pro Hac Vice pending)
NISHAN KOTTAHACHCHI (California Bar No. 221612)
6 BRENDAN J. HUGHES (Pro Hac Vice pending)
777 6th Street, NW
7 Washington, D.C. 20001
Telephone:(202) 842-7800; Facsimile: (202) 842-7899
8 E-mail: pwillsey@cooley.com; nkottahachchi@cooley.com
9 Attorneys for ROSETTA STONE LTD.
10
UNITED STATES DISTRICT COURT
11
CENTRAL DISTRICT OF CALIFORNIA
12
WESTERN DIVISION
13
ROSETTA STONE LTD., a Virginia Case No.
14 corporation,
COMPLAINT FOR:
15 Plaintiff,
(1) TRADEMARK INFRINGEMENT
16 v. UNDER 15 U.S.C. §§ 1114 AND
1125(a);
17 ROCKET LANGUAGES LTD., a (2) TRADEMARK DILUTION UNDER
New Zealand registered company; 15 U.S.C. § 1125(a);
18
LIBROS MEDIA LTD., a New (3) UNFAIR COMPETITION AND
FALSE ADVERTISING UNDER 15
19 Zealand registered company; U.S.C. § 1125(a);
MATTHEW WEIDNER, an (4) UNFAIR COMPETITION AND
20 individual residing in South Carolina; FALSE ADVERTISING UNDER CAL.
ISHMAEL LOPEZ, an individual BUS. & PROF. CODE §§ 17200 and
21 residing in Illinois; and Does 1-10, 17500, ET SEQ;
(5) CONTRIBUTORY TRADEMARK
22 Defendants. INFRINGEMENT; AND
(6) VICARIOUS TRADEMARK
23 INFRINGEMENT
24

25

26 Plaintiff ROSETTA STONE LTD. complains and alleges against ROCKET


COOLEY GODWARD
KRONISH LLP
27 LANGUAGES LTD., a New Zealand registered company; LIBROS MEDIA LTD.,
ATTORNEYS AT LAW

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66488 v4/DC
COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE
1 OR MISLEADING ADVERTISING, ETC
1
a New Zealand registered company; Matthew Weidner, an individual residing in
2
South Carolina; Ishmael Lopez, an individual residing in Illinois; and Does 1 - 10
3
(collectively, “Defendants”) as follows.
4
PARTIES
5
1. Plaintiff Rosetta Stone Ltd. (“Plaintiff” or “Rosetta Stone”) is a
6
corporation organized under the laws of the Commonwealth of Virginia, with its
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principal place of business at 1101 Wilson Boulevard, Suite 1130, Arlington,
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Virginia 22209.
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2. On information and belief, Defendant Rocket Languages Ltd.
10
(“Rocket Languages”) is a corporation organized under the laws of New Zealand,
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with its principal place of business at P.O. Box 2831 Level 2-107 Cashel Street,
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Christchurch 8011, New Zealand. On information and belief, Rocket Languages
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maintains an office at 8721 Santa Monica Blvd. #1220, Los Angeles, California
14
90069, where it conducts its U.S. operations.
15
3. On information and belief, Defendant Libros Media Ltd. (“Libros
16
Media”) is a registered company organized under the laws of New Zealand, with its
17
principal place of business at P.O. Box 2831 Level 2-107 Cashel Street,
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Christchurch 8011, New Zealand. On information and belief, Libros Media
19
maintains an office at 8721 Santa Monica Blvd. #1220, Los Angeles, California
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90069, where it conducts its U.S. operations.
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4. On information and belief, Defendant Matthew Weidner
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(“Weidner”), an individual residing at 168 Spring Street, Charleston, South
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Carolina 29403, owns and operates numerous websites including, but not limited to,
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those located at http://www.spanishsoftwarereview.com and
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http://www.topratedspanish.com.
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5. On information and belief, Defendant Ishmael Lopez (“Lopez”),
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KRONISH LLP
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ATTORNEYS AT LAW
an individual residing at 2244 220th Street, Sauk Village, Illinois 60411, owns and
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66488 v4/DC COMPLAINT FOR FALSE OR MISLEADING ADVERTISING,


2 UNFAIR COMPETITION, TRADEMARK INFRINGEMENT,
ETC.
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operates numerous websites, including but not limited to, those located at
2
http://www.gainspanish.com/rosetta-stone/, http://www.learnspanishreviewer.com,
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and http://www.spanishscams.com/rosetta-stone/.
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6. Plaintiff is presently unaware of the true names of the Defendants
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identified in the Complaint under the fictitious names Does 1-10. On information
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and belief, Does 1-10 are unlawfully and unfairly using, without authorization,
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Plaintiff’s ROSETTA STONE® trademark, and confusingly similar variations
8
thereof, in connection with websites and other forms of on-line advertising that
9
promote, market, and sell Rocket Languages computer software. Plaintiff will
10
amend its Complaint to identify the names of the Doe Defendants as they are
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discovered.
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JURISDICTION AND VENUE
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7. This action arises under the federal trademark statute (the “Lanham
14
Act”), 15 U.S.C. § 1051 et seq., and under the common law of the State of
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California. This Court has subject matter jurisdiction over the federal trademark,
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false advertising, and unfair competition claims pursuant to 15 U.S.C. § 1121 and
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28 U.S.C. §§ 1331, 1332, 1338, and 1367. The Court has subject matter
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jurisdiction over the related California state law claims pursuant to 28 U.S.C. §§
19
1338 and 1367.
20
8. The amount in controversy between the parties exceeds $75,000.
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9. Plaintiff is informed and believes, and on that basis alleges, that this
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Court has personal jurisdiction over Defendants because they have extensive
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contacts with, and conduct business within, the State of California and this judicial
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district; Defendants have caused Rocket Languages software products to be
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advertised, promoted, and sold in this judicial district; the causes of action asserted
26
in this Complaint arise out of Defendants’ contacts with this judicial district; and
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KRONISH LLP
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ATTORNEYS AT LAW
because Defendants have caused tortious injury to Plaintiff in this judicial district.
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10. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and
2
(c) because Defendants have extensive contacts with, and conduct business within,
3
the State of California and this judicial district; Defendants have caused Rocket
4
Languages software products to be advertised, promoted, and sold in this judicial
5
district; the causes of action asserted in this Complaint arise out of Defendants’
6
contacts with this judicial district; and because Defendants have caused tortious
7
injury to Plaintiff in this judicial district.
8
FACTUAL BACKGROUND
9
ROSETTA STONE’S Business and the ROSETTA STONE® Trademark
10
11. Plaintiff is a leading developer of computer software for teaching
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and learning foreign languages. Plaintiff’s award-winning software products are
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enormously successful and are used by individuals, corporations, non-profits,
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government agencies, and schools across the United States and around the world.
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12. Since at least as early as December of 1992, Plaintiff has
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continuously used the highly distinctive trademark ROSETTA STONE® to market
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and sell its computer software products throughout the United States and the world.
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13. Plaintiff has devoted substantial time, effort, and resources to the
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development and extensive promotion of the ROSETTA STONE® mark and the
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products offered thereunder. As a result of Plaintiff’s efforts, the public has come
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to recognize and rely upon the ROSETTA STONE mark as an indication of the
21
high quality associated with Plaintiff’s foreign language software products.
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14. On September 9, 2003, the United States Patent & Trademark
23
Office (“PTO”) issued to Plaintiff, which at the time was named “Fairfield & Sons
24
Ltd.”, U.S. Trademark Registration No. 2,761,492 for the mark ROSETTA STONE
25
in connection with “computer software for teaching foreign languages; computer
26
software for learning foreign languages.” A true and correct copy of this
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KRONISH LLP
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ATTORNEYS AT LAW
registration is attached as Exhibit A.
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15. The ROSETTA STONE registration is in full force and effect on
2
the PTO’s Principal Register, and gives rise to presumptions in favor of Rosetta
3
Stone with respect to validity, ownership, and exclusive rights to use the
4
ROSETTA STONE mark throughout the United States.
5
16. In addition to its own advertising efforts, Plaintiff has been the
6
subject of many unsolicited stories in national publications and television programs
7
such as The New York Times, Wall Street Journal, The Washington Post, Fortune,
8
USA Today, Condé Nast Traveler, O Magazine, Today, and The Tonight Show
9
highlighting the quality and popularity of ROSETTA STONE foreign language
10
software products. Plaintiff has also received numerous awards and recognitions,
11
including “CODiE awards” from the Software and Information Industry
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Association for “Best Instructional Solution in Other Curriculum Areas” and “Best
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Corporate Learning Solution” in 2008, the education product of the year award
14
from MacWorld in 2008, and a listing in Inc. Magazine’s “Fastest Growing Private
15
Companies in America” in 2007.
16
17. As a result of Plaintiff’s long-term and widespread use of the
17
ROSETTA STONE mark in the United States via Internet, television, radio, and
18
print advertising, and continuous and unsolicited media coverage, the ROSETTA
19
STONE mark enjoys a high degree of consumer recognition and has become a
20
famous mark.
21
Unauthorized Use of ROSETTA STONE® in Internet Advertising
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18. On information and belief, Defendants Weidner, Lopez, and Does
23
1 – 10 (the “Affiliate Defendants”) are members of an affiliate advertising program
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approved and funded by Defendants Rocket Languages and Libros Media.
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Members of the Rocket Languages affiliate program are encouraged to promote and
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sell Rocket Languages foreign language software products - which directly compete
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KRONISH LLP
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ATTORNEYS AT LAW
with Plaintiff’s products - on websites that the affiliate members create and manage.
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5 UNFAIR COMPETITION, TRADEMARK INFRINGEMENT,
ETC.
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Affiliate members garner a 75% commission from every Rocket Languages product
2
sold through their websites. Rocket Languages and Libros Media pay the
3
commission to affiliate members through a payment processor named
4
ClickBank/Keynetics, Inc.
5
19. On information and belief, the Affiliate Defendants work with
6
Defendants Rocket Languages and Libros Media in marketing, promoting, and
7
selling Rocket Languages software products.
8
20. In order to increase sales of Rocket Languages products,
9
Defendants engage in a number of activities that infringe, dilute, and tarnish
10
Plaintiff’s ROSETTA STONE® trademark, and constitute false advertising and
11
unfair competition. For example, Defendants purchase and use, without
12
authorization, Plaintiff’s ROSETTA STONE® trademark, or confusingly similar
13
variations thereof, as a “keyword” in several Internet keyword advertising
14
programs, including Google’s AdWords program and Yahoo!’s Marketing
15
Solutions program. As a result, when a consumer types in “ROSETTA STONE”,
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or a similar variation such as “ROSETTA”, “ROSETTA SPANISH”, or
17
“ROSETTA GERMAN”, as a search term on the Google and Yahoo! Internet
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search engines, he is confronted with a list of advertisements from Defendants that
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either directly offer Rocket Languages products or purport to offer information and
20
reviews of various foreign language software products. A true and correct copy of
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Google search results for the term “ROSETTA STONE” on April 8, 2008 and June
22
19, 2008 are attached as Exhibit B.
23
21. Defendants also routinely use Plaintiff’s ROSETTA STONE
24
trademark, and confusingly similar variations thereof, in the header and text of the
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resulting sponsored links that appear when one types in “ROSETTA STONE” or a
26
variation thereof as a search term in an Internet search engine. Examples of
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KRONISH LLP
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“sponsored link” advertisements featuring ROSETTA SPANISH and ROSETTA
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ETC.
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GERMAN, each a confusingly similar variation of the ROSETTA STONE
2
trademark, are attached as Exhibit C. Consumers who click the links in such
3
advertisements, in the hopes of purchasing ROSETTA STONE products, are taken
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to websites operated by Defendants that instead offer competing products from
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Rocket Languages.
6
22. In addition to running advertisements that confuse consumers
7
regarding the source of software products available through linked websites,
8
Defendants run advertisements that dilute and tarnish the ROSETTA STONE mark
9
and the reputation of Plaintiff and its products. For example, the sponsored link
10
advertisement for http://www.topratedspanish.com, owned by Defendant Weidner,
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states, “Rosetta Spanish A Scam?” in the header of the advertisement and “Read
12
These Reviews Before Buying Rosetta Spanish!” in the text of the advertisement.
13
The sponsored link advertisement for http://www.mylanguagereviews.com, owned
14
by one of the Doe Defendants, states, “Is Rosetta Spanish a Scam?” in the header of
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the advertisement and “Don't Buy Rosetta Spanish Before You Read This” in the
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text of the advertisement. Examples of these advertisements are attached as Exhibit
17
D. Such unauthorized uses of “Rosetta Spanish”, a confusingly similar variation of
18
the ROSETTA STONE mark, damage the goodwill associated with the ROSETTA
19
STONE mark and the reputation of Plaintiff and its products.
20
23. The Affiliate Defendants employ yet another tactic designed to
21
boost sales of Rocket Languages products. Specifically, the Affiliate Defendants
22
use their websites to post “comparison reviews” of ROSETTA STONE products
23
and other competing foreign language software products, including Rocket
24
Languages products. These “comparison reviews” give the consumer the false
25
impression that they are unbiased, and fail to disclose that the sources of the
26
reviews are in fact paid by Defendants Rocket Languages and Libros Media to
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KRONISH LLP
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ATTORNEYS AT LAW
market Rocket Languages software. These reviews invariably rate Rocket
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ETC.
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Languages products higher than ROSETTA STONE products and solicit the
2
consumer to buy Rocket Languages products. A true and correct copy of the
3
http://www.topratedspanish.com webpage is attached as Exhibit E. A true and
4
correct copy of the http://www.mylanguagereviews.com webpage is attached as
5
Exhibit F.
6
24. The websites owned and managed by the Affiliate Defendants also
7
often portray false and misleading information about ROSETTA STONE products,
8
which is intended to confuse consumers and persuade them to purchase competing
9
Rocket Languages software instead of ROSETTA STONE software. For example,
10
the websites at TopSpanishReviews.com and topratedspanish.com falsely claim that
11
a free trial of ROSETTA STONE software is not being offered by Plaintiff;
12
however, a free online demonstration of Plaintiff’s software is available from the
13
ROSETTA STONE website. A copy of the http://www.topspanishreviews.com
14
webpage is attached as Exhibit G.
15
25. The websites at http://www.mylanguagereviews.com and
16
http://www.topratedspanish.com go even further to confuse consumers. Hyperlinks
17
available on these websites purportedly direct consumers to the official ROSETTA
18
STONE website. However, when a consumer clicks one of these hyperlinks, he is
19
immediately directed to an advertisement for Rocket Languages products and is
20
bombarded by solicitations to purchase the Rocket Languages products.
21
26. Defendants’ unauthorized use of Plaintiff’s ROSETTA STONE®
22
mark, and confusingly similar variations thereof, as keywords and in the header and
23
text of the resulting sponsored links, is likely to confuse, mislead, and deceive
24
consumers as to the source of products available through the Defendants’ websites.
25
Moreover, the false statements and purported “comparison reviews” provided by
26
the Affiliate Defendants are likely to mislead consumers as to the quality and
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KRONISH LLP
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ATTORNEYS AT LAW
characteristics of genuine ROSETTA STONE products.
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27. On information and belief, Defendants Rocket Languages and
2
Libros Media know or should know that the Affiliate Defendants are engaging in all
3
of the activities alleged in this Complaint, and that the activities of the Affiliate
4
Defendants serve to confuse and lure potential ROSETTA STONE customers to
5
websites used by Affiliate Defendants for the purpose of promoting and selling
6
products from Rocket Languages.
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28. Plaintiff has not consented to, sponsored, endorsed, or approved of
8
Defendants’ use of the ROSETTA STONE® trademark or any variations thereof in
9
connection with the manufacture, marketing, or sale of any products or services.
10
29. On information and belief, Defendants’ actions are willful and
11
reflect an intent to confuse consumers and profit from the goodwill and consumer
12
recognition associated with Plaintiff’s mark.
13
30. The Rocket Languages foreign language software products that
14
Defendants are marketing and selling are offered through the same channels of
15
distribution and to the same target customers as Plaintiff’s ROSETTA STONE®
16
foreign language software products.
17
31. Plaintiff sent demand letters to Defendants Rocket Languages and
18
Libros Media on or about August 28, 2007 and April 8, 2008 informing them of
19
Plaintiff’s valuable trademark rights and demanding that they cease all use of the
20
ROSETTA STONE trademark.
21
32. Plaintiff sent demand letters to Defendant Lopez on or about
22
September 26, 2007 and April 8, 2008, and to Defendant Weidner on or about April
23
3, 2008 and April 8, 2008, informing them of Plaintiff’s valuable trademark rights
24
and demanding that they cease all use of the ROSETTA STONE trademark.
25
33. As of the date of this Complaint, Defendants continue to use the
26
ROSETTA STONE® trademark, and confusingly similar variations of the
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ATTORNEYS AT LAW
ROSETTA STONE trademark, without authorization. Defendants’ failure to
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comply with Plaintiff’s demands demonstrates a deliberate intent to continue
2
wrongfully competing with Plaintiff and to willfully infringe Plaintiff’s rights in the
3
ROSETTA STONE® trademark.
4
FIRST CAUSE OF ACTION
5 (Federal Trademark Infringement under 15 U.S.C. §§ 1114 and 1125(a)
6 against all Defendants)
7
34. Plaintiff realleges and incorporates herein the allegations
8
contained in paragraphs 1- 33 of this Complaint.
9
35. The actions of Defendants described above and specifically,
10
without limitation, their unauthorized use of the ROSETTA STONE® trademark,
11
and confusingly similar variations thereof, in commerce to advertise, promote,
12
market, and sell Rocket Languages foreign language software products throughout
13
the United States including California, constitute trademark infringement in
14
violation of 15 U.S.C. §§ 1114 and 1125(a).
15
36. The actions of Defendants, if not enjoined, will continue. Plaintiff
16
has suffered and continues to suffer damages in an amount to be proven at trial
17
consisting of, among other things, diminution in the value of and goodwill
18
associated with the ROSETTA STONE® mark, and injury to Plaintiff’s business.
19
Plaintiff is therefore entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
20
37. Pursuant to 15 U.S.C. § 1117, Plaintiff is entitled to recover
21
damages in an amount to be determined at trial, profits made by Defendants on
22
sales of Rocket Languages foreign language software products, and the costs of this
23
action. Furthermore, Plaintiff is informed and believes, and on that basis alleges,
24
that the actions of Defendants were undertaken willfully and with the intention of
25
causing confusion, mistake, or deception, making this an exceptional case entitling
26
Plaintiff to recover additional treble damages and reasonable attorneys’ fees
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KRONISH LLP
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ATTORNEYS AT LAW
pursuant to 15 U.S.C. § 1117.
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SECOND CAUSE OF ACTION
2
(Federal Trademark Dilution under 15 U.S.C. §1125(c) against all Defendants)
3
38. Plaintiff realleges and incorporates herein the allegations
4
contained in paragraphs 1 - 37 of this Complaint.
5
39. The actions of Defendants described above and specifically,
6
without limitation, their unauthorized use of the famous ROSETTA STONE®
7
trademark, and confusingly similar variations thereof, in commerce to advertise,
8
market, and sell Rocket Languages foreign language software products throughout
9
the United States including California, are likely to cause dilution by blurring and
10
tarnishment in violation of 15 U.S.C. § 1125(c).
11
40. The actions of Defendants, if not enjoined, will continue. Plaintiff
12
has suffered and continues to suffer damages in an amount to be proven at trial
13
consisting of, among other things, diminution in the value of and goodwill
14
associated with the ROSETTA STONE® mark, and injury to Plaintiff’s business.
15
Plaintiff is therefore entitled to injunctive relief pursuant to 15 U.S.C. § 1116 and
16
15 U.S.C. 1125(c).
17
41. On information and belief, the actions of Defendants described
18
above were and continue to be deliberate and willful. Plaintiff is therefore entitled
19
to recover damages in an amount to be determined at trial, profits made by
20
Defendants on sales of Rocket Languages foreign language software products, and
21
the costs of this action pursuant to 15 U.S.C. § 1117.
22
THIRD CAUSE OF ACTION
23
(Federal Unfair Competition and False Advertising under 15 U.S.C. §1125(a)
24
against all Defendants)
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42. Plaintiff realleges and incorporates herein the allegations
26
contained in paragraphs 1- 41 of this Complaint.
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43. Defendants’ actions described above and specifically, without
2
limitation, Defendants’ use of the ROSETTA STONE® trademark, and confusingly
3
similar variations thereof, in commerce to advertise, market, and sell Rocket
4
Languages foreign language software products throughout the United States
5
including California; their use of misleading “comparison reviews”; their
6
misrepresentations regarding Rosetta Stone’s foreign language software products;
7
and Defendants Rocket Languages and Libros Media’s knowledge, participation,
8
and inducement thereof, constitute unfair competition and false advertising in
9
violation of 15 U.S.C. § 1125(a).
10
44. Consumers are likely to be misled and deceived by Defendants’
11
representations regarding Plaintiff’s foreign language software products.
12
45. Defendants knew or should have known that their statements were
13
false or likely to mislead.
14
46. As an actual and proximate result of Defendants’ willful and
15
intentional actions, Plaintiff has suffered damages in an amount to be determined at
16
trial, and unless Defendants are enjoined, Plaintiff will continue to suffer
17
irreparable harm and damage to its business, reputation, and goodwill.
18
47. Pursuant to 15 U.S.C. § 1117, Plaintiff is entitled to damages for
19
Defendants’ Lanham Act violations, an accounting for profits made by Defendants
20
on sales of Rocket Languages foreign language software products, as well as
21
recovery of the costs of this action. Furthermore, Plaintiff is informed and believes,
22
and on that basis alleges, that Defendants’ conduct was undertaken willfully and
23
with the intention of causing confusion, mistake or deception, making this an
24
exceptional case entitling Plaintiff to recover additional damages and reasonable
25
attorneys’ fees pursuant to 15 U.S.C. § 1117.
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FOURTH CAUSE OF ACTION
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ATTORNEYS AT LAW

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(Statutory Unfair Competition and False Advertising under California
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Business and Professions Code §§ 17200 and 17500 et seq. against all
3
Defendants)
4
48. Plaintiff realleges and incorporates herein the allegations
5
contained in paragraphs 1 – 47 of this Complaint.
6
49. Defendants’ actions described above and specifically, without
7
limitation, Defendants’ use of the ROSETTA STONE® trademark, and confusingly
8
similar variations thereof, in commerce to advertise, market, and sell Rocket
9
Languages foreign language software products throughout the United States and
10
California; their use of misleading “comparison reviews”; their misrepresentations
11
regarding Plaintiff’s foreign language software products; and Defendants Rocket
12
Languages and Libros Media’s knowledge, participation, and inducement thereof,
13
constitute trademark infringement, false advertising, and unfair competition in
14
violation of the laws of the State of California.
15
50. By these actions, Defendants have engaged in false advertising
16
and unfair competition in violation of the statutory law of the state of California,
17
Cal. Bus. & Prof. Code §§ 17200 and 17500, et seq., and, as a result, Plaintiff has
18
suffered and will continue to suffer damage to its business, reputation, and
19
goodwill.
20
51. As a direct and proximate result of Defendants’ willful and
21
intentional actions, Plaintiff has suffered damages in an amount to be determined at
22
trial and, unless Defendants are restrained, Plaintiff will continue to suffer
23
irreparable damage.
24
FIFTH CAUSE OF ACTION
25
(Contributory Trademark Infringement against Rocket Languages and Libros
26
Media)
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ATTORNEYS AT LAW

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52. Plaintiff realleges and incorporates herein the allegations
2
contained in paragraphs 1 - 51 of this Complaint.
3
53. The actions of Defendants Rocket Languages and Libros Media
4
described above and specifically, without limitation, their knowledge, participation,
5
and inducement of the unauthorized use of the ROSETTA STONE® trademark,
6
and confusingly similar variations thereof, in commerce to advertise, market, and
7
sell Rocket Languages foreign language software products throughout the United
8
States and California, constitute contributory trademark infringement in violation of
9
federal law and the common law of the State of California.
10
54. The actions of Defendants Rocket Languages and Libros Media, if
11
not enjoined, will continue. Plaintiff has suffered and continues to suffer damages
12
in an amount to be proven at trial consisting of, among other things, diminution in
13
the value of and goodwill associated with the ROSETTA STONE® mark, and
14
injury to Plaintiff’s business.
15
55. On information and belief, the actions of Defendants Rocket
16
Languages and Libros Media described above were and continue to be deliberate
17
and willful.
18
SIXTH CAUSE OF ACTION
19
(Vicarious Trademark Infringement against Rocket Languages and Libros
20
Media)
21
56. Plaintiffs reallege and incorporate herein the allegations contained
22
in paragraphs 1- 55 of this Complaint.
23
57. The actions of Defendants Rocket Languages and Libros Media
24
described above and specifically, without limitation, their knowledge, participation,
25
and inducement of the unauthorized use of the ROSETTA STONE® trademark,
26
and confusingly similar variations thereof, in commerce to advertise, market, and
COOLEY GODWARD
KRONISH LLP
27
ATTORNEYS AT LAW
sell Rocket Languages foreign language software products throughout the United
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66488 v4/DC COMPLAINT FOR FALSE OR MISLEADING ADVERTISING,


14 UNFAIR COMPETITION, TRADEMARK INFRINGEMENT,
ETC.
1
States and California, constitute vicarious trademark infringement in violation of
2
federal law and the common law of the State of California. Defendants Rocket
3
Languages and Libros Media each have the ability to control the actions of the
4
Affiliate Defendants, fund the advertising activities of the Affiliate Defendants, and
5
derive a direct financial benefit from the illegal acts of the Affiliate Defendants.
6
58. The actions of Defendants Rocket Languages and Libros Media, if
7
not enjoined, will continue. Plaintiff has suffered and continues to suffer damages
8
in an amount to be proven at trial consisting of, among other things, diminution in
9
the value of and goodwill associated with the ROSETTA STONE® mark, and
10
injury to Plaintiff’s business.
11
59. On information and belief, the actions of Defendants Rocket
12
Languages and Libros Media described above were and continue to be deliberate
13
and willful.
14

15

16
PRAYER FOR RELIEF
17
WHEREFORE, Plaintiff prays that this Court enter judgment against
18
Defendants as follows:
19
A. That Plaintiff be granted injunctive relief under 15 U.S.C. § 1051 et
20
seq.; California Business and Professions Code §§ 17200 and 17500 et seq.; and
21
federal law and California common law of contributory trademark infringement and
22
vicarious trademark infringement; specifically, that Defendants and all of their
23
respective officers, agents, servants, representatives, employees, attorneys, and all
24
other persons acting in concert with them be enjoined from:
25
1. using the ROSETTA STONE® mark, or any mark confusingly
26
similar to the ROSETTA STONE mark, in connection with the marketing,
COOLEY GODWARD
KRONISH LLP
27
ATTORNEYS AT LAW

28
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66488 v4/DC COMPLAINT FOR FALSE OR MISLEADING ADVERTISING,


15 UNFAIR COMPETITION, TRADEMARK INFRINGEMENT,
ETC.
1
promotion, advertising, sale, or distribution of any foreign language software
2
products or services;
3
2. directly or indirectly engaging in false advertising or promotions
4
of Rocket Languages foreign language software products;
5
3. making or inducing others to make any false, misleading or
6
deceptive statement of fact, or representation of fact in connection with the
7
promotion, advertisement, packaging, display, sale, offering for sale, manufacture,
8
production, circulation or distribution of Rocket Languages foreign language
9
software products by making false representations regarding Plaintiff’s foreign
10
language software products;
11
B. That Defendants file, within ten (10) days from entry of an injunction,
12
a declaration with this Court signed under penalty of perjury certifying the manner
13
in which Defendants have complied with the terms of the injunction;
14
C. That Defendants be ordered to correct any erroneous impression
15
persons may have derived concerning the nature, characteristics, or qualities of
16
either Rocket Languages foreign language software products or Plaintiff’s
17
ROSETTA STONE® products, including without limitation:
18
1. the sending of a registered letter (with a copy to Plaintiff) to all
19
internet search engines, including but not limited to, Google and Yahoo!, requesting
20
that Defendants’ keyword advertising and sponsored advertisements be removed
21
from their search engines;
22
2. the placement of corrective advertising on Defendants’ websites
23
informing consumers of their prior misrepresentations regarding Plaintiff’s software
24
products;
25
3. the removal of all false and misleading “comparison reviews” of
26
Plaintiff’s product from Affiliate Defendant websites;
COOLEY GODWARD
KRONISH LLP
27
ATTORNEYS AT LAW

28
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66488 v4/DC COMPLAINT FOR FALSE OR MISLEADING ADVERTISING,


16 UNFAIR COMPETITION, TRADEMARK INFRINGEMENT,
ETC.
1
E. That Defendants be adjudged to have violated 15 U.S.C. § 1125(a) by
2
unfairly competing against Plaintiff by using false, deceptive or misleading
3
descriptions or representations of fact that misrepresent the nature, quality and
4
characteristics of Plaintiff’s foreign language software products;
5
F. That Defendants be adjudged to unlawfully and unfairly compete
6
against Plaintiff under the laws of the State of California, Cal. Bus. & Prof. Code
7
§ 17200, et seq.;
8
G. That Defendants be adjudged to have competed unlawfully and
9
unfairly against Plaintiff by engaging in false or misleading advertising under the
10
laws of the State of California, Cal. Bus. & Prof. Code § 17500, et seq.;
11
I. That Plaintiff be awarded damages pursuant to 15 U.S.C. § 1117(a),
12
sufficient to compensate it for the damage caused by Defendants’ false and
13
misleading statements;
14
J. That Plaintiff be awarded Defendants’ profits derived by reason of said
15
acts, or as determined by said accounting;
16
K. That such damages and profits be trebled and awarded to Plaintiff and
17
that it be awarded its costs, attorneys’ fees and expenses in this suit under 15 U.S.C.
18
§ 1117, as a result of Defendants’ willful, intentional, and deliberate acts in
19
violation of the Lanham Act;
20
L. That Plaintiff be awarded damages in an amount sufficient to
21
compensate it for the damage caused by Defendants’ unfair competition and false
22
advertising under California Business and Professions Code §§ 17200 and 17500 et
23
seq. and contributory trademark infringement and vicarious trademark infringement
24
under federal law and California common law;
25
M. That Plaintiff be granted prejudgment and post judgment interest;
26
N. That Plaintiff be granted costs associated with the prosecution of this
COOLEY GODWARD
KRONISH LLP
27
ATTORNEYS AT LAW
action; and
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66488 v4/DC COMPLAINT FOR FALSE OR MISLEADING ADVERTISING,


17 UNFAIR COMPETITION, TRADEMARK INFRINGEMENT,
ETC.
1
O. That Plaintiff be granted such further relief as the Court may deem
2
just.
3

4
Dated: July 2, 2008 COOLEY GODWARD KRONISH LLP
5

6
Peter J. Willsey (Pro Hac Vice pending)
7 Nishan Kottahachchi (CA Bar No. 221612)
Brendan J. Hughes (Pro Hac Vice pending)
8 Benjamin Chapman (CA Bar No. 234436)
9 Attorneys for Plaintiff
ROSETTA STONE LTD.
10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26
COOLEY GODWARD
KRONISH LLP
27
ATTORNEYS AT LAW

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W A S H I N G T O N , D .C.

66488 v4/DC COMPLAINT FOR FALSE OR MISLEADING ADVERTISING,


18 UNFAIR COMPETITION, TRADEMARK INFRINGEMENT,
ETC.

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