|The AmeriKitten bewildered by the|
amount of IP judgments landing
at her paws this week
1. the strength or distinctiveness of the plaintiff’s mark as actually used in the marketplace;
2. the similarity of the two marks to consumers;
3. the similarity of the goods or services that the marks identify;
4. the similarity of the facilities used by the markholders;
5. the similarity of advertising used by the markholders;
6. the defendant’s intent;
7. actual confusion;
8. the quality of the defendant’s product; and
9. the sophistication of the consuming public.
|The District Court's application of |
the "functionality doctrine"
found no favor in the Court of Appeals
“The keywords . . . have an essential indexing function because they enable Google to readily identify in its databases relevant information in response to a web user’s query . . . [T]he keywords also serve an advertising function that benefits consumers who expend the time and energy to locate particular information, goods, or services, and to compare prices.”
“As the case progresses on remand, Google may well be able to establish that its use of Rosetta Stone’s marks in its AdWords program is not an infringing use of such marks; however, Google will not be able to do so based on the functionality doctrine. The doctrine does not apply here, and wereject it as a possible affirmative defense for Google.”
“The only question in this appeal is whether, viewing the evidence and drawing all reasonable inferences from that evidence in a light most favorable to Rosetta Stone, a reasonable trier of fact could find in favor of Rosetta Stone, the nonmoving party. Of course, the Tiffany court did not view the evidence through the lense of summary judgment; rather, Tiffany involved an of judgment rendered after a lengthy bench trial. Because of its procedural posture, the district court in Tiffany appropriately weighed the evidence sitting as a trier of fact.
Accordingly, Tiffany is of limited application in these circumstances, and the district court’s heavy reliance on Tiffany was misplaced. We conclude that the evidence recited by the district court is sufficient to establish a question of fact as to whether Google continued to supply its services to known infringers. Accordingly, we vacate the district court’s order to the extent it grants summary judgment in favor of Google on Rosetta Stone’s contributory infringement claim.”
|10 points if you can spot Virginia|
|What judges wear when they conduct de novo reviews|