Rosetta Stone V Google Amicus From UK Intellectual Property Law Society

Case: 10-2007 Document: 96-1 Date Filed: 11/24/2010 Page: 1
Appeal No. 10-2007
In The
United States Court of Appeals
For the Fourth Circuit
ROSETTA STONE, LTD.,
Plaintiff- Appellant,
- vs. -
GOOGLE INC.,
Defendant- Appellee.
______________________________________________________________________
On appeal from the

United States District Court for the Eastern District of Virginia,
at Alexandria, in 1:09-CV-00736-GBL,
before the Hon. Gerald Bruce Lee, U.S. District Judge.
___________________________________________________________
BRIEF OF AMICUS CURIAE UK INTELLECTUAL PROPERTY LAW

SOCIETY
IN SUPPORT OF NEITHER PARTY.
Charles Lee Thomason

SPALDING & THOMASON
106 N. 4th St.
Bardstown, KY 40004
Telep. (502) 349-7227
CERTIFICATE OF INTEREST
Charles Lee Thomason, counsel for amicus curiae, The UK

Intellectual Property Law Society, certifies the following:
1. The full name of every party or amicus represented by me is:

The UK Intellectual Property Law Society.
2. The name of the real party in interest represented by me is:
Same
3. All parent corporations and any publicly held companies that own
10 percent of more of the stock of the party or amicus curiae
represented by me are:
None.
4. The named of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial court
or agency or are expected to appear in this court are:
No others.
__11/19/2010___ _~s~ C.L. Thomason__________

Date: Signature of counsel
Charles Lee Thomason,
Adjunct Professor
i
TABLE OF CONTENTS
Page
Certificate of Interest ……………………………………………… i

Table of Contents ……………………………………………… ii
Table of Authorities ……………………………………………… iii
Interest of Amicus ……………………………………………… vi
Statement of the Issues ……………………………………………… 1
Summary of Points & Authorities ……………………………… 2
Argument ……………………………………………………… 4
I. Whether the Registered Trademarks, Including
When Used To Trigger Paid Search Results,
Are “As a Whole,” Functional. ………………………………… 4
II. Functionality Should Be Separate from
Fair Use and Non-Trademark Use Defenses. ………………… 9
III. Does A Policy-Based “Functionality Doctrine” Permit
Free Use of Registered Marks by Search-Engines. ………………… 13
CONCLUSION ……………………………………………………… 18
Certificate of Compliance
ii
Table of Authorities
Page
CASES
AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986) ………… 7
America Online, Inc. v. AT & T Corp.,

243 F.3d 812 (4th Cir. 2001) ………………………………………… 16
Ashley Furniture Industries, Inc. v. SanGiacomo N.A. Ltd.,

187 F.3d 363, 51 USPQ2d 1609 (4th Cir. 1999) ………… 6 – 8, 15
Dallas Cowboys Cheerleaders, Inc.

v. Pussycat Cinema, Ltd., 604 F.2d 200 (2nd Cir. 1979) ………… 7
Deltek, Inc. v. Iuvo Systems, Inc., 91 USPQ2d 1926,

2009 WL 1073196 (E.D. Va. 2009) ………………………………… 10
Flow Control Industries Inc. v. AMHI Inc.,

278 F.Supp.2d 1193, 67 USPQ2d 1452 (W.D.Wash. 2003) ……… 11
In re Morton-Norwich Prods., Inc.,

671 F.2d 1332 (C.C.P.A.1982) ………………………………… 13
KP Permanent Make-up, Inc. v. Lasting Impression I, Inc.,

543 U.S. 111, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004) ………… 5
National Federation of the Blind, Inc. v. Loompanics Enterprises, Inc.,

936 F.Supp. 1232 (D.Md. 1996) ………………………………… 12
Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,
105 S.Ct. 658, 83 L.Ed.2d 582, 224 USPQ 327 (1985) ………… 4,13
Playboy Enterp., Inc. v. Asiafocus Intern., Inc.,

1998 WL 724000 (E.D. Va. 1998) ………………………………… 11
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,

115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) ………………………… 14
iii
Page
Rescuecom Corp. v. Google Inc.,

562 F.3d 123 (2nd Cir. 2009) ………………………………………… 2
Sara Lee Corp. v. Kayser-Roth Corp.,

81 F.3d 455, 38 USPQ2d 1449 (4th Cir. 1996),
cert. den'd, 519 U.S. 976 (1996) ………………………………… 3
Shakespeare Co. v. Silstar Corp. of America,

110 F.3d 234 (4th Cir. 1997) ………………………………………… 10
Tools USA and Equipment Co. v. Champ Frame Straightening Equip., Inc.,
87 F.3d 654, 658 (4th Cir. 1996) ……………………………… 5,6,10
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23,

121 S.Ct. 1255, 1259, 149 L.Ed.2d 164 (2001) ………………… 13
Triton Marine Fuels Ltd., S.A. v. M/V Pacific Chukotka,

575 F.3d 409 (4th Cir. 2009) ………………………………………… 6
Two Pesos, Inc. v. Taco Cabana, Inc.,

932 F.2d 1113, 19 USPQ2d 1253 (5th Cir. 1991) ………………… 10
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753,
120 L.Ed.2d 615, 23 USPQ2d 1081 (1992) ………………… 5-7,10,13
Union Carbide Corp. v. Ever-Ready, Inc.,

531 F.2d 366 (7th Cir. 1976) ………………………………………… 7
Universal Furn. Intern., Inc. v. Collezione Europa USA,

618 F.3d 417 (4th Cir. 2010) ………………………………………… 3
Valu Engineering, Inc. v. Rexnord Corp.,

278 F.3d 1268 (Fed. Cir. 2002) ………………………………………… 4
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,

120 S.Ct. 1339, 146 L.Ed.2d 182, 54 USPQ2d 1065 (2000) ……... 6,8
iv
FEDERAL STATUTES
15 U.S.C. §1052(e)(5) & (f) ………………………………………...….… 3,4,6
15 U.S.C. §1115(b)(4) …………………………………………..…… 3,9
15 U.S.C. §1115(b)(8) ……………………………………………………… 14
Page
OTHER AUTHORITIES
Trademark Manual of Examining Procedure, §1202.02(a)
TMEP, Fourth Edition (April 2005) ………………………………………… 14
Devoe, Applying Liability Rules To Metatag Cases

and Other Instances of Trademark Infringement
on the Internet,
90 Boston Univ. L. Rev. 1221 (June 2010) ………………………… 11
Wong, The Aesthetic Functionality Doctrine and

the Law of Trade Dress Protection,
83 Cornell L. Rev. 1116 (1998) ………………………………… 17
v
Interest of Amicus
The undersigned counsel for Amicus Curiae the UK Intellectual
Property Law Association respectfully submits this brief pursuant to
Rule 29, FED. R. APP. PROC.
No part of this brief was authored by counsel for any of the parties
to the appeal. No person or entity, other than the amicus listed here,
made any financial contribution to the preparation or submission of this
amicus brief.
Amicus curiae is a voluntary association of law students, having
an academic interest in emerging issues and developments in the laws
respecting intellectual property.
The undersigned counsel is an Adjunct Professor at The University
of Kentucky College of Law, Lexington, KY.
All parties have consented to the filing of a brief from this amicus.
vi
Statement of the Issues.
This case asks: on what ground, in law or governing precedent,
does the lower court’s summary judgment on the functionality defense
rest; and, should the decisional law extend the functionality defense to
words, federally registered as trademarks and being used in internet
commerce, on the basis of trade dress concerns about utilitarian features,
competitive necessity, extension of a limited monopoly, cost or quality.
The defenses of functionality, non-trademark use, and fair use are
grounded in the trademark statute, precedent, and competition policy. It
should be asked whether the decision below – that “the functionality
doctrine protects Google’s use of the Rosetta Stone Marks as keyword
triggers” – aligns with the statutory limits on trademark registerability
and fair use, and with 4th Circuit precedent on the functionality doctrine.
1
SUMMARY OF POINTS & AUTHORITIES.
The district court held “that the functionality doctrine prevents a
finding of infringement” and it “protects Google’s use of the Rosetta
Stone Marks as keyword triggers.” Limits on Lanham Act protections,
suited to products marked with functional trade dress, were applied to
registered trademarks sold as “Adwords.”
The “principal theory” was that control over an “essential,”
functional use of a trademark will “inhibit legitimate competition.” A
“monopoly on functional uses” of the Rosetta Stone trademarks was
denied, in favor of “encouraging competition” and providing “a highly
useful means of searching the internet.”
Review here will answer whether the functionality doctrine should
delineate limits on a trademark registrant's rights, or be an imprimatur
on the paid “Adwords” business model.1 The ruling below impacts a
key segment of interstate, internet commerce and it carves away the zone
of protection for federally registered trademarks.
Amicus offers a perspective, broadened from the four corners of
the district court's ruling, and suggests that the panel’s de novo review
1
As another Circuit noted, in reversing a Rule 12(b)(6) dismissal of a comparable
claim, “Whether Google's actual practice is in fact benign or confusing is not for us to
judge at this time.” Rescuecom Corp. v. Google Inc., 562 F.3d 123, 131 (2nd Cir. 2009).
2
consider the Lanham Act and 4th Circuit caselaw on the functionality
and trademark fair use doctrines.2
Elemental to this amicus’ analysis are:
[A] registerability - whether the Rosetta Stone trademarks are “as a
whole,” functional per 15 U.S.C. §1052(e)(5) & (f);
[B] trademark fair use - whether the Adwords program is a “use,
otherwise than as a mark” per 15 U.S.C. §1115(b)(4); and
[C] the trademark policies of competitive necessity, disallowing
monopolies, etc., that undergird the rationale of the district court.
2
The panel’s review entails “no deference to the district court's findings if they are
derived as a result of the court's misapplication of the law.” Sara Lee Corp. v. Kayser-
Roth Corp., 81 F.3d 455, 460, 38 USPQ2d 1449 (4th Cir. 1996), cert. den'd, 519 U.S. 976
(1996); for conclusions “influenced by legal error, review is de novo.” Universal Furn.
Intern., Inc. v. Collezione Europa USA, 618 F.3d 417, 427 (4th Cir. 2010) (issues, inter
alia, of whether “superfluous nonfunctional adornments” were conceptually separable
from “furniture's utilitarian function”).
3
I.
Whether the Registered Trademarks, Including
When Used To Trigger Paid Search Results,
Are “As a Whole,” Functional.
The Lanham Act sets the standard for whether the Rosetta Stone
trademarks are “functional.” The analysis should “begin with the
language employed by Congress and the assumption that the ordinary
meaning of that language accurately expresses the legislative purpose.”
Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.3
To deserve the protections due a registered trademark, the wording
must not comprise matter “expressly excluded in subsections (a), (b), (c),
(d), (e)(3), and (e)(5) of” §1052 of the Lanham Act. In relevant part, that
sub-section (e)(5) of §1052, provides that “No trademark …shall be
denied registration …unless it – (e) Consists of a mark which …(5)
comprises any matter that, as a whole, is functional.”4
Any “matter,” here a word mark, which is functional “as a
whole,” may be refused the protections of the Lanham Act.5
3
469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582, 224 USPQ 327 (1985).
4
The Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201,
112 Stat. 3064, 3069, effective October 30, 1998, amended the law expressly to prohibit
registration on either the Principal or Supplemental Register of matter that is functional.
5
“Under this provision, a mark that comprises ‘any matter that, as a whole, is
functional’ is not entitled to trademark protection.” Valu Engineering, Inc. v. Rexnord
Corp., 278 F.3d 1268, 1274 (Fed. Cir. 2002).
4
Whether the Rosetta Stone trademarks are registerable, and thus
entitled to the protections of the Lanham Act, depends first on the
statutory standards.6
The operative phrase is for matter that is functional “as a whole.”
Limiting the inquiry to whether such matter is “functional,” or not,
tends to bypass the statutory measure it being functional “as a whole.” If
one concludes that a trademark has uses or features that are functional,
then the further step would assess: is it “as a whole,” functional. No part
of a statute, as enacted by Congress, may be deemed surplusage.7 The
legislated text “as a whole” must be applied and given its intended
meaning. Otherwise, that part of the statutory text becomes an open or
unconsidered boundary to the defense of functionality.
Caselaw from this Circuit has noted that the “critical functionality
inquiry is not whether each individual component …is functional, but
rather whether …[it] as a whole is functional.” Tools USA and Equipment
Co. v. Champ Frame Straightening Equip., Inc., 87 F.3d 654, 658 (4th Cir.
6
It “is also clear that eligibility for protection under § 43(a) depends on
nonfunctionality.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct.
2753, 120 L.Ed.2d 615, 23 USPQ2d 1081 (1992).
7
KP Permanent Make-up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118-19,
125 S.Ct. 542, 160 L.Ed.2d 440 (2004) (“Where Congress includes particular language
…, it is generally presumed that Congress acts intentionally and purposely”).
5
1996)(italicized in original).8 Furthermore, the functionality doctrine has
been interpreted in this Circuit to require that a plaintiff show that
protected trade dress “is primarily non-functional.” Ashley Furniture
Industries, Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363, 368 (4th Cir. 1999).9
Due regard for the statutory text, and specifically the “as a whole”
standard in §1052 (e)(5)10, are essential in the assessment here of whether
the functionality defense limits or negates the Lanham Act protections
for the “matter” comprising the Rosetta Stone registered trademarks.
The “as a whole” approach indicates that protectable “matter”
may be comprised of individual elements that are entirely functional,
combined with non-functional aspects, which overall is registerable as a
trademark. The composition of elements should not be dissected, but
8
The inquiry should consider whether consumers’ online searches are legally
distinguishable from searches in printed catalogs for products of interest. In Tools USA,
each litigants’ catalogs for mail order parts were used by many of the same customers.
9
Citing, Two Pesos, Inc. v. Taco Cabana, Inc., supra, at 769. Note however, that
the Two Pesos decision, which predates the 1998 amendment that added the text in
§1052(e)(5), does not use the modifier “primarily.” Indeed, (e)(5) uses “primarily” three
times, but not in respect to functionality; note, the “statute generally excludes, from those
word marks that can be registered ... words that are ...'primarily geographically
descriptive' ...see § 2(e)(2).” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,
213, 120 S.Ct. 1339, 146 L.Ed.2d 182, 54 USPQ2d 1065 (2000).
10
"If the language is plain and `the intent of Congress is clear and unambiguously
expressed by the statutory language at issue, that would be the end of our analysis.’
[citation omitted]. `It is well established that ‘when the statute's language is plain, the
sole function of the courts-at least where the disposition required by the text is not
absurd-is to enforce it according to its terms.’” [citation omitted]. Triton Marine Fuels
Ltd., S.A. v. M/V Pacific Chukotka, 575 F.3d 409, 416-17 (4th Cir. 2009).
6
rather the “matter” is viewed in its totality.11 Dissection, or a piecework
examination, would reside on a fallacy that purely functional elements
may never be combined into “matter” that “as a whole” is protectable.12
The ‘trademark use,’ ‘source-identifying,’ and ‘functional use’
findings made by the district court might be grouped as:
(1) that the “fame, reputation, and goodwill of” the Rosetta Stone
trademarks connects to advertising in “a variety of media, including
television, radio, newspapers, magazines, direct mail, and telephone
directories,” as well as, from doing “a substantial amount of its business
over the Internet using many web-based services,” [slip op., I.A.];
(2) that the way that “Google's popular search engine aggregates
information and provides advertising space …[is] akin to a newspaper or
magazine selling advertising space,” [slip op., III.A.1.];
11
See Ashley Furniture, supra, 187 F.3d at 373 (stating “trade dress is the “total
image” of a product, and thus the relevant inquiry is not whether the individual
components of a design are common or not”); Union Carbide Corp. v. Ever-Ready, Inc.,
531 F.2d 366, 379 (7th Cir. 1976) (“[D]issecting marks often leads to error. Words which
would not individually become a trademark may become one when taken together.”)
12
The seminal Supreme Court decision in Two Pesos, Inc. v. Taco Cabana, supra,
extended trade dress protection to a combination of elements – “artifacts, bright colors,
paintings and murals” - all of which were in fact functional; see also Ashley Furniture
Indus., Inc., 187 F.3d at 373 (noting that “[i]f this were not so ..., then product design
could never be protectable”); AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1538 (11th Cir.
1986)(“That individual elements of packaging are functional does not, however, render
the package as a whole unprotectible”); and, Dallas Cowboys Cheerleaders, Inc. v.
Pussycat Cinema, Ltd., 604 F.2d 200, 204 (2nd Cir. 1979) (cheerleader outfits had purely
functional elements, but the outfit as a whole, was protectable and not functional).
7
(3) the way that “Google uses trademarked keywords, including
the Rosetta Stone Marks, to identify relevant Sponsored Links,” and
“Google's particular use of trademarked keywords as triggers for paid
advertisements,” is functional. [slip op., III.B.].
With all such uses, functional or otherwise, detailed in fact and
appropriately categorized, an assessment then can be made whether the
trademarks are “as a whole,” functional.13 The gauge of that statutory
phrase must devolve on guidance from the caselaw about matter that is
“primarily” functional, Ashley Furn., supra, and with due regard to the
“predominate” uses of the trademarked “words.” Samara Bros., supra.
Implied in the “whole” measure is whether the “matter” is functional per
se, such as the dual-spring in TrafFix, or is it matter with a use or uses
that are functional. As importantly, the statutory test acknowledges that
a word mark, which is both source-identifying and useful, may or may
not be functional “as a whole.” §1052 provides that “No trademark by
which the goods of the applicant can be distinguished from the goods of
others” shall be denied registration “unless it– (e) …comprises any
matter that, as a whole, is functional.” The test should address the
matter in its entirety, with less emphasis on a single function or usage.

13
“Although the words and packaging can serve subsidiary functions ...their
predominant function remains source identification.” Samara Bros., supra, at 212.
8
II.
Functionality Should Be Separate from
Fair Use and Non-Trademark Use Defenses.
The summary judgment ruling may be read as merging aspects of a
functionality analysis with considerations that are appropriate to a fair
use defense. The marks were used for “indexing,” not to identify. It was
argued to the lower court that companies fairly can make “referential”
use of the Rosetta Stone trademarks.14 The Lanham Act, in 15 U.S.C.
§1115(b)(4), provides as a fair use, or non-trademark use defense:
[t]hat the use of the name, term, or device

charged to be an infringement is a use,
otherwise than as a mark, …
The lower court found that “organic search results” obtained by
the non-trademark use of search terms, and search results triggered by
use of trademarks purchased as ‘Adwords,’ were uses that were “no
different”.15 The crux of that finding derives syllogistically from:
“organic search results” using keywords are permissible; the Rosetta
Stone marks are useful keywords; and so, ‘Adwords’ search results using
the Rosetta Stone trademarks are permissible.
14
Defendant’s brief in support of cross-motion argued that “resellers can lawfully
make referential use” of trademarks. Dkt. #167, pg. 11 of 27.
15
Defendant urged the lower court to find no “legally meaningful distinction
between the indexing function of [plaintiff’s] marks in organic search results and
Sponsored Links” triggered by Adwords. Dkt. #167, pg. 12 of 27.
9
Review here should inquire whether the consumers’ “organic”
searches being equated to competitors’ use of “Adwords” to attract
consumers is (i) adding fair use facets to the defense of functionality,16
or, (ii) grounding a summary judgment upon a ‘trial by analogy.’ Quare
too whether a Rule 56 motion or a jury should decide whether “organic”
and “Sponsored” searches are “no different”; and, if an “organic” search
is a comparable alternative to ‘Adwords’, then is the latter “essential.”17
Any analogy is bounded by what circumstances are considered,
and those excluded from a comparison of what uses are “no different.”
For example, courts in this Circuit have ruled against competitors that
have embedded in their websites, the trademarks of others, as ‘metatags’
visible to search engines.
In Deltek, Inc. v. Iuvo Systems, Inc., 91 U.S.P.Q.2d 1926, 2009 WL
1073196 (E.D. Va. 2009), defendants’ business specialized in working
with computer systems that used plaintiff's products. Defendants' had
16
Fair-use of functional trade dress was considered earlier in Shakespeare Co. v.
Silstar Corp. of America, 110 F.3d 234, 243 (4th Cir. 1997) (sustained “Silstar's fair-use
defense” of having “in good faith and not as a means of source-identification” sought to
“use a functional feature” which was “registered as a mark”), cert. den'd, 522 U.S. 1046,
118 S.Ct. 688, 139 L.Ed.2d 634 (1998).
17
In this Circuit, “one test for functionality is the availability to competitors of
alternative options.” Tools USA, supra at 659. “With the doctrine of functionality, the
law secures for the marketplace a latitude of competitive alternatives.” Taco Cabana
Int'l., Inc., 932 F.2d 1113, 19 USPQ2d 1253 (5th Cir. 1991), aff'd supra, 505 U.S. 763.
10
embedded “Deltek trademarks as metatags to identify the subject or
content of their website and … as hidden keywords for Internet search
engines.” A preliminary injunction issued against defendants “using as
metatags for any website associated with the Defendants' business
activities any [of plaintiff's] Deltek trademarks or trade names.”
In accord is Playboy Enterp., Inc. v. Asiafocus Intern., Inc., 1998 WL
724000 (E.D. Va. 1998) where the defendants embedded plaintiff's
trademarks in their Web sites’ computer source code so as to be visible
only to “search engines.”
In both cases, the Lanham Act did prevent using trademarks in
ways, which may assist consumers and competitors, and in a manner not
altogether different than the ‘Adwords’ and paid keyword advertising.18
The lower court favorably noted a remark about the “pity, if the law, in
its over-exuberant giddiness …should kill […search engines].”19
18
“One important distinction between cases involving metatags and cases involving
keyword advertising is that in the metatag cases, the trademarks could influence the
actual results of a search. In the keyword advertising setting, however, the use of the
trademarks in the advertising program (such as Google's AdWords) only affects the
advertising that appears alongside the search results. These ads are not actually part of the
search. Although there is a practical distinction between the two situations, it is unclear
how courts may view these distinctions.” (fn. cites omitted). Daniel Devoe, Applying
Liability Rules To Metatag Cases and Other Instances of Trademark Infringement on the
Internet, 90 Boston Univ. L. Rev. 1221, 1253 (June 2010).
19
Cf.: “Through the use of the skoflo.com domain name and the related metatags,
defendants were able to bring their products to the attention of internet users who were
11
All can agree that the Lanham Act, and new uses of trademarks on
search engines, as metatags, on Facebook pages, etc., require adaptation
of established IP law principles to achieve fairness. Such adaptation,
however, needs to maintain separateness between the statutory defenses
of functionality and non-trademark fair use.20 In all cases, due regard
must be given to whether the material facts are genuinely not in dispute.
attempting to search for plaintiff's products.” Flow Control Industries Inc. v. AMHI Inc.,
278 F.Supp.2d 1193 (W.D.Wash. 2003).
20
See, e.g., National Federation of the Blind, Inc. v. Loompanics Enterprises, Inc.,
936 F.Supp. 1232, 1239 (D.Md. 1996) (statutory fair use defense “extends only to the use
of a term by the alleged infringer to describe its own products or services”).
12
III.
Does A Policy-Based “Functionality Doctrine” Permit
Free Use of Registered Marks by Search-Engines.
Congress determined that “sound public policy requires that
trademarks should receive nationally the greatest protection that can be
given them.” Park 'N Fly, Inc., supra, 469 U.S. at 193. The legislative
history of the Lanham Act indicates several policies intended to be
served:
To protect trade-marks, therefore, is to protect the

public from deceit, to foster fair competition, and to
secure to the business community the advantages of
reputation and good will by preventing their diversion
from those who have created them to those who have
not. This is the end to which this bill is directed.21
An expressed policy rationale of the district court was encouraging
“legitimate competition” by disallowing functional marks that unfairly
inhibit competitors. This was drawn from trade dress caselaw that
considers whether functional matter, which is protectable only for a
limited time, may become monopolized indefinitely using the trademark
laws. The policies against extending monopoly rights for useful features
are long-standing. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1336
21
S.Rep. No. 1333, 79th Cong., 2d Sess., 4, reprinted in 1946 U.S. Code Cong. &
Admin. News 1274, 1275, quoted in Two Pesos, supra, fn. 15.
13
(C.C.P.A.1982) (“requirement of ‘nonfunctionality’ ... has as its genesis
the judicial theory that there exists a fundamental right to compete
through imitation of a competitor's product, which right can only be
temporarily denied by the patent or copyright laws”).22
Working from precepts made precedential in the TrafFix and
Qualitex decisions,23 the district court ruled that trademarks, when used
as paid search triggers, were functional, being matter that is “essential to
the use or purpose of the article,” or that which “affects the cost or
quality of the article” and where its “exclusive use … would put
competitors at a significant non-reputation-related disadvantage.” The
ruling on functionality also cited a policy that “benefits consumers
…searching the internet for products and competitive prices.”24
The functionality “doctrine” is a non-statutory limitation that
serves policy goals devoted to encouraging fair competition.25 On that
22
As is noted in the Trademark Manual of Examining Procedure, §1202.02(a)(ii):
“The functionality doctrine, which prohibits registration of functional product features, is
intended to encourage legitimate competition by maintaining the proper balance between
trademark law and patent law.” The matter at issue here has no patentable aspects.
23
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 121 S.Ct. 1255,
1259, 149 L.Ed.2d 164 (2001); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,
170, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)
24
Cf. “In principle, trademark law, by preventing others from copying a source-
identifying mark, `reduce[s] the customer's costs of shopping and making purchasing
decisions.’” Qualitex, 514 U.S. at 164-65, quoting MCCARTHY ON TRADEMARKS.
25
The 1998 amendments to the Lanham Act that added “functional” as a basis to
deny registration, also added it among the “defenses or defects” to infringement claims,
14
basis, one can ask whether limiting the sale of ‘Adwords’ would so
“foreclose competition from the relevant market,” that the trademarked
terms should “be considered functional and could not be protected”
against use as ‘Adwords.’ Ashley Furn., supra, 187 F.3d at 376.
When functional uses, unrelated to the reputation-based
protections for trademarks, conflict with the policies against “inhibiting
legitimate competition,” then the protections accorded to non-functional
marks are disallowed. The lower court ruled that the trademark owner’s
reputation was not diminished by competitive use of ‘Adwords.’ That
conclusion benefits consumerism, competition, and search engines. It is
‘every mark for itself’ once the “organic” search results and “Sponsored
Links” are displayed for interested consumers, who then readily can
make more-informed decisions about available products.
To reach its conclusion that the policies served by the functionality
doctrine were being advanced, the lower court made several qualitative
findings. The ‘Adwords’ program enables legitimate competitors,
without a license from the trademark owner, to buy the use of registered
trademarks to trigger ‘Sponsored Links’ that are displayed along with the
“organic search” results. Legally limiting “advertisers’ ability to bid” for
15 U.S.C. §1115(b)(8). It may be asked to what extent those amendments incorporate, or

supplant, the functionality “doctrine,” in the case of words registered as trademarks.
15
use of others’ trademarks as ‘Adwords’ could deprive competitors of an
ability to compete with the trademark owner for consumers seeking to
compare products and “competitive prices.” These are consumers that
employ the trademarks “to substitute for” generic descriptors, such as
‘language learning software.’ Trademarks provide an “essential indexing
function,” which internet shoppers may use to find desired products, not
unlike the old ‘yellow pages’. Denying that option could decrease the
quality of search results, impede search engines from providing the most
salient “advertisements,” and even make search engines “more costly.”
These findings and conclusions were buttressed with caselaw from
outside this Circuit, and again, with stated policies that are advanced or
defeated by the functionality doctrine. In an internet commerce case,
this Circuit took note of what is decisive when trademark rights intersect
with trademark policies:
“At bottom, the law of trademarks intends to protect

the goodwill represented by marks and the valid property
interests of entrepreneurs in that goodwill against those
who would appropriate it for their own use. But it
likewise protects for public use those commonly used
words and phrases that the public has adopted, denying
to any one competitor a right to corner those words and
phrases by expropriating them from the public ‘linguistic
commons.’ Enforcing these conflicting policies creates
line-drawing problems that are not always easily solved.”
America Online, Inc. v. AT & T Corp., 243 F.3d 812, 821
16
(4th Cir. 2001) (“`You Have Mail’ is used in its commonly

understood way-i.e., functionally to convey the common
meaning of words”).
When a policy-driven functionality doctrine is applied to the “use
of trademarked terms as triggers for paid advertisements,” then all the
more line-drawing problems ensue as another policy facet is added.
Examples relevant to search engine commerce are: what is the
measure for “legitimate competition” and what degree of it being
“inhibited” will exempt a use from the Lanham Act protections; whose
“competitors”26 and “consumers,” in what “relevant market,” and
whose “use” deserves to be considered before a registrant’s right to
exclusive use of its trademark in commerce is constrained by policy.27
In most areas of competition law, broad policy-driven
considerations often need to be developed on a full record.
26
In part A.2.of its ruling, the district court determined that the parties “are not
direct competitors in the language-learning-software market.”
27
Various policy-based tests for functionality are set out in Wong, The Aesthetic
Functionality Doctrine and the Law of Trade Dress Protection, 83 Cornell L. Rev. 1116,
1132-1152 (1998), such as “consumer motivation,” “effective competition,” etc.
17
CONCLUSION
The ruling on functionality was dispositive of the claim that use of
the registered trademarks was infringing. Briefing on the functionality
defense was not extensive. Amicus respectfully submits additional
points and authorities on the issue, including pertinent references to the
Lanham Act and relevant precedent from this Circuit Court.
The ruling here on functionality, as applied to registered word
marks, may have application beyond the geographic bounds of this
Circuit. For these reasons, amicus has presented this brief to assist the
panel which will decide the matter.
Respectfully submitted,
__19 NOV 2010___ ___~s~ Charles Lee Thomason___________

Date: Charles Lee Thomason28
Attorney for Amicus UK IP Law Society
SPALDING & THOMASON
106 N. 4th St.
Bardstown, KY 40004
Tel. (502) 349-7227
Thomason@spatlaw[dot]com
28
Counsel, who is an Adjunct Professor at the University of Kentucky College of
Law, acknowledges the work and efforts of law students, Gwen Junge, Jerrad Howard,
Christine de Briffault, Alison Sparks, Mawerdi Hamid, and Lilia Kim, as well as the
organizational efforts of David Cameron, President of the UKIPLS.
18
Certificate of Compliance
1. This brief complies with the type-volume limitation of

Federal Rule of Appellate Procedure 32(a)(7)(B).
This brief contains 4070 words, excluding the parts of the

brief exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii).
2. This brief complies with the typeface requirement of Federal

Rule of Appellate Procedure 32(a)(5) and the type style requirements of
Federal Rule of Appellate Procedure 32(a)(6).
This brief has been prepared in a proportionally spaced

typeface using MS Word 2002 in Calisto MT 14 point typeface.
__11/19/2010___ _~s~ C.L. Thomason__________

Date: Charles Lee Thomason
Attorney for Amicus Curiae
UK IP Law Society
viii
Certificate of Service
The undersigned certifies that copies of the foregoing Brief of
Amicus UK Intellectual Property Law Society was served electronically,
upon counsel whose appearances are indicated on the Court’s PACER
database, as of November 22, 2010, namely:
Clifford M. Sloan, Esq.

SKADDEN, ARPS, SLATE, MEAGHER & FLOM, LLP
1440 New York Avenue, NW
Washington, DC 20005-2107
Lead Counsel for Appellant
Margaret M. Caruso, Esq.

QUINN EMANUEL URQUHART & SULLIVAN LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Lead Counsel for Appellee
__11/23/2010___ _~s~ C.L. Thomason__________

Date: Charles Lee Thomason
vii

Rosetta Stone V Google Amicus From UK Intellectual Property Law Society

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Rosetta Stone V Google Amicus From UK Intellectual Property Law Society

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Case: 10-2007 Document: 96-1 Date Filed: 11/24/2010 Page: 1

Appeal No. 10-2007

On appeal from the

BRIEF OF AMICUS CURIAE UK INTELLECTUAL PROPERTY LAW

Charles Lee Thomason

Charles Lee Thomason, counsel for amicus curiae, The UK

1. The full name of every party or amicus represented by me is:

2. The name of the real party in interest represented by me is:

__11/19/2010___ _~s~ C.L. Thomason__________

Certificate of Interest ……………………………………………… i

America Online, Inc. v. AT & T Corp.,

Ashley Furniture Industries, Inc. v. SanGiacomo N.A. Ltd.,

Dallas Cowboys Cheerleaders, Inc.

Deltek, Inc. v. Iuvo Systems, Inc., 91 USPQ2d 1926,

Flow Control Industries Inc. v. AMHI Inc.,

In re Morton-Norwich Prods., Inc.,

KP Permanent Make-up, Inc. v. Lasting Impression I, Inc.,

National Federation of the Blind, Inc. v. Loompanics Enterprises, Inc.,

Playboy Enterp., Inc. v. Asiafocus Intern., Inc.,

Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,

Rescuecom Corp. v. Google Inc.,

Sara Lee Corp. v. Kayser-Roth Corp.,

Shakespeare Co. v. Silstar Corp. of America,

TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23,

Triton Marine Fuels Ltd., S.A. v. M/V Pacific Chukotka,

Two Pesos, Inc. v. Taco Cabana, Inc.,

Union Carbide Corp. v. Ever-Ready, Inc.,

Universal Furn. Intern., Inc. v. Collezione Europa USA,

Valu Engineering, Inc. v. Rexnord Corp.,

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,

15 U.S.C. §1052(e)(5) & (f) ………………………………………...….… 3,4,6

15 U.S.C. §1115(b)(4) …………………………………………..…… 3,9

15 U.S.C. §1115(b)(8) ……………………………………………………… 14

Devoe, Applying Liability Rules To Metatag Cases

Wong, The Aesthetic Functionality Doctrine and

The undersigned counsel for Amicus Curiae the UK Intellectual

Property Law Association respectfully submits this brief pursuant to

Rule 29, FED. R. APP. PROC.

made any financial contribution to the preparation or submission of this

Amicus curiae is a voluntary association of law students, having

an academic interest in emerging issues and developments in the laws

respecting intellectual property.

The undersigned counsel is an Adjunct Professor at The University

of Kentucky College of Law, Lexington, KY.

Statement of the Issues.

This case asks: on what ground, in law or governing precedent,

does the lower court’s summary judgment on the functionality defense

words, federally registered as trademarks and being used in internet

commerce, on the basis of trade dress concerns about utilitarian features,

competitive necessity, extension of a limited monopoly, cost or quality.

The defenses of functionality, non-trademark use, and fair use are

grounded in the trademark statute, precedent, and competition policy. It

should be asked whether the decision below – that “the functionality

doctrine protects Google’s use of the Rosetta Stone Marks as keyword

triggers” – aligns with the statutory limits on trademark registerability

SUMMARY OF POINTS & AUTHORITIES.

The district court held “that the functionality doctrine prevents a

finding of infringement” and it “protects Google’s use of the Rosetta

Stone Marks as keyword triggers.” Limits on Lanham Act protections,

suited to products marked with functional trade dress, were applied to

registered trademarks sold as “Adwords.”

The “principal theory” was that control over an “essential,”

functional use of a trademark will “inhibit legitimate competition.” A

11/19/2010_ _~s~ C.L. Thomason__________