NEWS Rosetta Stone ruling leaves Google exposed


Google has suffered a setback in the keywords dispute with Rosetta Stone after a US court overturned much of a decision favouring the Internet powerhouse.


The US Court of Appeals for the Fourth Circuit largely


court, which had said Google did not infringe Rosetta Stone’s trademarks by selling them as keywords that triggered sponsored links.


Rosetta Stone, which provides language-learning soſtware, filed a lawsuit in 2009 for trademark


disagreed with a Virginia district


infringement. In August 2011, the US District Court for the Eastern District of Virginia ruled in favour of Google and dismissed all of Rosetta Stone’s trademark claims.


But on April 9, 2012, the Fourth Circuit remanded three of those claims: direct trademark infringement, contributory infringement and trademark dilution. Te remaining two are vicarious infringement and unjust enrichment.


Te functionality doctrine, which prevents trademark protection from extending to the


functional features of a product or packaging, was the central area of disagreement. Te district court said keywords containing trademarks were


functional when entered into Google’s


search engine, partly because they provided an indexing function for Google. But the appeals court disagreed, saying the functionality doctrine “simply” did not apply. It said the district court failed to consider whether the Rosetta Stone marks were functional as the company used them.


Nick Rose, a partner at Field Fisher Waterhouse LLP, said: “This is good news for trademark owners because it means that infringers will not be able to fall back on the functionality defence where they claim that their use of someone else’s well-known trademark is useful or beneficial in some way, or


allows their


business to operate better, thereby allowing them to avoid liability.”


Concerning trademark dilution, the appeal court said the district court had used the wrong legal standard. It said only a likelihood of


dilution was required—not an actual


economic loss or reputational injury, which had been relied on.


The case has been remanded back to the district court, which must reassess Rosetta Stone’s claims over direct and contributory infringement, and dilution (see feature on page 36). 


EU data protection body warns over ACTA


An independent data protection body in the EU has warned that proposed anti-counterfeiting and piracy legislation could breach privacy provisions under the European Convention on Human Rights (ECHR).


Te controversial Anti-Counterfeiting Trade Agreement (ACTA) would threaten privacy and data protection if it were not properly implemented, according to the European Data Protection Supervisor (EDPS).


In a statement, the EDPS said measures allowing the indiscriminate or widespread monitoring of Internet users’ behaviour concerning small- scale, trivial infringement would be in breach of Article 8 of the ECHR, as well as the Data Protection Directive and Articles 7 and 8 of the Charter of Fundamental Rights.


Te watchdog said that ACTA, an international trade agreement harmonising international standards for IP enforcement, “lacked precision”. Tis means its


8


measures could have “unacceptable side effects on fundamental rights of individuals”, the EDPS said.


It said many of ACTA’s voluntary cooperation measures would entail a processing of personal data by Internet service providers that goes beyond EU legislation, and that the agreement, which 22 EU member states including the UK have signed, does not contain sufficient limitations and safeguards. Tese include effective judicial protection, due process, the principle of the presumption of innocence and the right to privacy and data protection.


Giovanni Buttarelli, of the EDPS, said that although more


international cooperation is


needed to enforce IP rights, this should not come at the expense of individuals’ fundamental rights.


Proponents of ACTA have said the treaty


addresses Internet piracy only to a small extent, mainly focusing on reducing the sale and distribution of hard counterfeit goods.


Trademarks Brands and the Internet Volume 1, Issue 2


But its opponents have come out in force, with widespread protests and condemnation from politicians. David Martin, the MEP responsible for suggesting which way European parliament lawmakers should vote, has said ACTA should be rejected.


A debate on the EU’s adoption of the treaty is expected in June 2012. 


www.worldipreview.com


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