|Page’s innovations are pushing patents, trade marks and copyright
Last year, Managing IP chose Google copyright counsel Fred von Lohmann as one of the Top 50 for his role in the long-running Google Book Search settlement and Viacom v YouTube cases. But in just a year's time, the internet company has become one of the key forces shaping US IP law around patents and trade marks as well. Whether mostly beating out Oracle over patent and copyright claims in California, being sued by Rosetta Stone for trade mark infringement, buying up Motorola's patents after being blocked from buying the more desirable Nortel portfolio, throwing its weight around to help kill IP-friendly legislation, surviving a big lawsuit brought by Viacom or trying to salvage its library project in New York court, the company has been front and centre on some of the most cutting-edge IP topics of the year. While it's not likely that co-founder and CEO Larry Page ever set out to be voted the most influential person of the year in IP, we think the trends his company is setting warrant the title.
Google's claim to IP fame was for a long time its attempt to digitise and make publicly available thousands of copyrighted books without the permission of individual authors via the Google Book Search project. Then, Google-owned YouTube got into a scuffle with Viacom over $1 billion of infringing video clips. Those fights are still on, but in the past year the search engine has also entered the smartphone patent wars, the trade mark keyword ad debate and begun to flex its financial muscles on the policy side in relation to legislation geared to IP enforcement online. These are new frontiers for IP owners and practitioners alike, and Google's involvement as the largest internet company in the world is helping to shape the way courts will approach the issues in years to come.
In Rosetta Stone v Google, a US appeals court in April reversed much of a district court's ruling in favour of Google in a case that will help to shape the law around the use of trade marks as keywords and in sponsored ads. Most concerning to trade mark owners was the district court's interpretation of the functionality doctrine. The court said that trade marked keywords are functional when entered into Google's search engine because they serve an indexing function for Google and an advertising function that benefits consumers. But in the latest ruling, the US Court of Appeals for the Fourth Circuit said that "the functionality doctrine simply does not apply in these circumstances". It was a blow to Google, but the ruling also conceded that Google may be able to establish its use of Rosetta Stone's marks is not infringing on remand under some other analysis. What the district court and subsequent appellate court say next could finally bring some clarity to the muddy issue of trade mark use on the internet.
"More noteworthy may be how Google has recently become pro-active in its approach to IP"
For his part, Rosetta Stone's general counsel and corporate secretary Michael Wu wishes Google would do more. "I think from our perspective they should do the right thing," said Wu in an interview with Managing IP in May. "I think it's much easier for them to protect up front rather than brand owners having to monitor and then report instances of infringement." In his interview last year von Lohmann countered that "Google and YouTube have gone to great lengths to work with IP owners" and said the problem "is that some businesses still view the internet as a risk, rather than an opportunity".
More noteworthy than the various cases it is juggling though may be how Google has recently become pro-active in its approach to IP. Google upped its 2011 lobbying budget to $9.68 million compared to $5.2 million in 2010, and was an active presence during the Stop Online Piracy (SOPA) and Protect IP Act (PIPA) controversy in Congress. It has also been buying up patent portfolios to help ward off litigation around Android, a move Page has said the company was forced into. As the number one search engine on the internet grows, so will its need to join the IP game.
Interview: Michael Wu, Rosetta Stone, May 2012
Rosetta Stone ruling could "stem the tide" on functionality, April 2012
Google dealt another blow with Rosetta Stone ruling, April 2012
SOPA vote delayed as lobbyists apply pressure, December 2011
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