Rosetta Stone v Google Amicus From UK Intellectual Property Law Society

8/8/2019 Rosetta Stone v Google Amicus From UK Intellectual Property Law Society

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Appeal No. 10-2007

In The

United States Court of Appeals

For the Fourth CircuitROSETTA 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

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


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CERTIFICATE OF INTEREST

Charles Lee Thomason, counsel for amicus curiae, The UKIntellectual 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 own10 percent of more of the stock of the party or amicus curiaerepresented by me are:

None.

4. The named of all law firms and the partners or associates thatappeared 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 counselCharles Lee Thomason,Adjunct Professor



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TABLE OF CONTENTS

Page

Certificate of Interest iTable 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



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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 (2

ndCir. 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



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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 (4

th

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



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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 Casesand 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



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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.



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Statement of the Issues.

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

does the lower courts 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 Googles 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.



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SUMMARY OF POINTS & AUTHORITIES.

The district court held that the functionality doctrine prevents a

finding of infringement and it protects Googles 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 panels 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 tojudge at this time. Rescuecom Corp. v. Google Inc., 562 F.3d 123, 131 (2

nd Cir. 2009).



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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 panels 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 separablefrom furniture's utilitarian function).



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I.

Whether the Registered Trademarks, IncludingWhen 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 notcomprise 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).



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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 onnonfunctionality. 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).



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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

8The 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 in1052(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 geographicallydescriptive' ...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 unambiguouslyexpressed 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).



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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 SeeAshley 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 designcould neverbe 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 purelyfunctional elements, but the outfit as a whole, was protectable and not functional).



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(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.



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II.

Functionality Should Be Separate fromFair 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 devicecharged 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 Defendants 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 [plaintiffs] marks in organic search results andSponsored Links triggered by Adwords. Dkt. #167, pg. 12 of 27.



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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.



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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 thetrademarks 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 unclearhow 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



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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 useof a term by the alleged infringer to describe its own products or services).



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III.

Does A Policy-Based Functionality Doctrine PermitFree 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 thepublic from deceit, to foster fair competition, and tosecure to the business community the advantages ofreputation and good will by preventing their diversionfrom those who have created them to those who havenot. 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.



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(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 todeny registration, also added it among the defenses or defects to infringement claims,



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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 owners

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, orsupplant, the functionality doctrine, in the case of words registered as trademarks.



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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 protectthe goodwill represented by marks and the valid propertyinterests of entrepreneurs in that goodwill against thosewho would appropriate it for their own use. But itlikewise protects for public use those commonly usedwords and phrases that the public has adopted, denyingto any one competitor a right to corner those words andphrases by expropriating them from the public linguisticcommons. Enforcing these conflicting policies createsline-drawing problems that are not always easily solved.

America Online, Inc. v. AT & T Corp., 243 F.3d 812, 821



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(4th Cir. 2001) (`You Have Mail is used in its commonlyunderstood way-i.e., functionally to convey the commonmeaning 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

competitors26 and consumers, in what relevant market, and

whose use deserves to be considered before a registrants 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.



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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 Thomason28Attorney for Amicus UK IP Law SocietySPALDING &THOMASON106 N. 4th St.Bardstown, KY 40004Tel. (502) 349-7227Thomason@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.



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viii

Certificate of Compliance

1. This brief complies with the type-volume limitation ofFederal Rule of Appellate Procedure 32(a)(7)(B).

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

2. This brief complies with the typeface requirement of FederalRule of Appellate Procedure 32(a)(5) and the type style requirements ofFederal Rule of Appellate Procedure 32(a)(6).

This brief has been prepared in a proportionally spacedtypeface using MS Word 2002 in Calisto MT 14 point typeface.

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

Date: Charles Lee ThomasonAttorney for Amicus Curiae

UK IP Law Society



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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 Courts PACER

database, as of November 22, 2010, namely:

Clifford M. Sloan, Esq.SKADDEN, ARPS, SLATE, MEAGHER & FLOM, LLP1440 New York Avenue, NWWashington, DC 20005-2107Lead Counsel for Appellant

Margaret M. Caruso, Esq.QUINN EMANUEL URQUHART & SULLIVAN LLP555 Twin Dolphin Drive, 5th FloorRedwood Shores, CA 94065Lead Counsel for Appellee

__11/23/2010___ _~s~ C.L. Thomason__________

Date: Charles Lee Thomason


Rosetta Stone v Google Amicus From UK Intellectual Property Law Society

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