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AWS rejects Elasticsearch trademark lawsuit claims

AWS' response to Elasticsearch's trademark infringement lawsuit denies the allegations, but experts say a settlement is likely and justifiably in the cards.

AWS has responded to an Elasticsearch trademark lawsuit with broad denials of its claims, but experts said an eventual settlement is not only likely, but also the best outcome for customers.

The company sued AWS on Sept. 27 on grounds of false advertising and trademark infringement related to AWS' Open Distro for Elasticsearch, its version of the popular distributed analytics and search engine. Elasticsearch Inc., or Elastic, originated and serves as chief maintainer of the open source project.

AWS, with the participation of Expedia and Netflix, launched Open Distro for Elasticsearch in March. The companies said this move was necessary because Elastic's version includes too much proprietary code inside the main open source code line. Open Distro for Elasticsearch is fully open source and licensed under Apache 2.0, according to AWS.

The Elasticsearch trademark lawsuit contends that branding for both the original Amazon Elasticsearch Service, which AWS has sold since 2015, and Open Distro for Elasticsearch violates its trademark, and that customers are "likely to be confused as to whether Elastic sponsors or approves AESS [Amazon Elasticsearch Service] and Open Distro."

AWS filed its response to Elasticsearch's complaint last week in U.S. District Court for the Northern District of California. The company denies all wrongdoing, demands a jury trial and offers a series of defensive arguments, one being that Elastic trademark infringement claims "are barred at least in part" under the fair use doctrine. Another asserts that Elastic gave AWS a license to use the term "Elasticsearch."

Overall, AWS' response to the Elasticsearch trademark lawsuit is fairly boilerplate, said Jeremy Peter Green, a New York-based attorney specializing in trademark law who reviewed it and Elastic's original complaint.

Click here to read the complaint.

"In the trademark world, different lawyers have different ways of doing this [but] usually law firms just have templates for these," Green said.

For example, another AWS defense cites the doctrine of unclean hands, a legal concept that means a complainant shouldn't be awarded relief if they have committed legal breaches of their own in a dispute.

This, too, is standard practice, according to Green. "There's always a chance that during the discovery process, something will show up," he said. "You're just hedging your bets by accusing them of everything."

Green has been evaluating options for managed Elasticsearch as part of a trademark search engine he plans to develop. AWS does seem to have sowed some consumer confusion, which is the basis of trademark infringement law, Green said.

"I like Elastic's case here, from the perspective as both an attorney and consumer," he said. Elastic's initial complaint calls for treble damages and attorney's fees, a figure that could be significant if it wins at trial.

Both of these companies have a major incentive to come to some kind of settlement.
Jeremy Peter GreenTrademark attorney

It is likely that the parties will settle, Green added. "I think [Elastic has] a good enough case that it would be silly for [AWS] to throw a lot of money at it."

Many Elasticsearch users also host their clusters on AWS anyway, which blurs the competitive lines. "Both of these companies have a major incentive to come to some kind of settlement," Green said.

Experienced enterprise IT buyers are aware of the potential repercussions of intellectual property battles, according to Holger Mueller, an analyst at Constellation Research in Cupertino, Calif. "But ultimately, it is in the interest of the sparring vendors to settle and keep customers going," he said.

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