ACT Et Al Amicus Brief in Rosetta Stone V Google

Case: 10-2007 Document: 37-1 Date Filed: 11/01/2010 Page: 1
RECORD NUMBER: 10-2007
United States Court of Appeals

for the
Fourth Circuit
ROSETTA STONE LTD.,
Appellant,
– v. –
GOOGLE INC.,
Appellee.
ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA AT ALEXANDRIA
BRIEF OF AMICI CURIAE IN SUPPORT

OF APPELLANT ROSETTA STONE LTD.
RANDALL K. MILLER ROBERTA L. HORTON

ARNOLD & PORTER LLP TRICIA A. CROSS
1600 Tysons Boulevard BRENT S. LABARGE
Suite 900 ARNOLD & PORTER LLP
McLean, Virginia 22102 555 Twelfth Street, N.W.
(703) 720-7000 Washington, DC 20004
(202) 942-5000
Counsel for Amici Curiae
COUNSEL PRESS • VA – (800) 275-0668

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

DISCLOSURE OF CORPORATE AFFILIATIONS AND OTHER INTERESTS
Only one form needs to be completed for a party even if the party is represented by more than
one attorney. Disclosures must be filed on behalf of all parties to a civil, agency, bankruptcy or
mandamus case. Corporate defendants in a criminal or post-conviction case and corporate amici
curiae are required to file disclosure statements. Counsel has a continuing duty to update this
information.
No. _______
10-2007 Caption: __________________________________________________
Rosetta Stone Ltd. v. Google Inc.
Pursuant to FRAP 26.1 and Local Rule 26.1,

The Association for Competitive
______________________
Technology amicus
who is _______________________, makes the following disclosure:
(name of party/amicus) (appellant/appellee/amicus)
1. Is party/amicus a publicly held corporation or other publicly held entity? YES NO
2. Does party/amicus have any parent corporations? YES NO
If yes, identify all parent corporations, including grandparent and great-grandparent
corporations:
3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

other publicly held entity? YES NO
If yes, identify all such owners:
4. Is there any other publicly held corporation or other publicly held entity that has a direct
financial interest in the outcome of the litigation (Local Rule 26.1(b))? YES NO
If yes, identify entity and nature of interest:
5. Is party a trade association? (amici curiae do not complete this question) YES NO
If yes, identify any publicly held member whose stock or equity value could be affected
substantially by the outcome of the proceeding or whose claims the trade association is
pursuing in a representative capacity, or state that there is no such member:
6. Does this case arise out of a bankruptcy proceeding? YES NO

$*!4)1"!,().2,*4!%.4!20312))!%.(!2+)!-)-&)01!/*!%.4!'0)(,2/015!'/--,22))#
CERTIFICATE OF SERVICE
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11/1/2010
I certify that on _________________ the foregoing document was served on all parties or their
counsel of record through the CM/ECF system if they are registered users or, if they are not, by
serving a true and correct copy at the addresses listed below:
/s/ Brent S. LaBarge

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Burlington Coat Factory
______________________
Warehouse Corporation amicus
1. Is party/amicus a publicly held corporation or other publicly held entity? YES ✔ NO
2. Does party/amicus have any parent corporations? ✔ YES NO
corporations: Parent: Burlington Coat Factory Investment Holdings, Inc.;
Grandparent: Burlington Coat Factory Holdings, Inc.
other publicly held entity? YES ✔ NO
financial interest in the outcome of the litigation (Local Rule 26.1(b))? YES ✔ NO
6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

If yes, identify any trustee and the members of any creditors’ committee:
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11/1/2010

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________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

______________________ amicus
Business Software Alliance who is _______________________, makes the following disclosure:
1. Is party/amicus a publicly held corporation or other publicly held entity? YES 4 NO
2. Does party/amicus have any parent corporations? YES 4 NO
corporations:

other publicly held entity? YES 4 NO
financial interest in the outcome of the litigation (Local Rule 26.1(b))? YES 4 NO
6. Does this case arise out of a bankruptcy proceeding? YES 4 NO

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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Chanel, Inc.
______________________ amicus
2. Does party/amicus have any parent corporations? YES ✔ NO
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

______________________
Coach, Inc. amicus
1. Is party/amicus a publicly held corporation or other publicly held entity? 4 YES NO
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Government Employees
______________________
Insurance Company amicus
2. Does party/amicus have any parent corporations? 4 YES NO
corporations:
Parent: GEICO Corporation. GEICO Corp. is an indirect subsidiary of Berkshire Hathaway Inc.

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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

______________________ amicus
Harrah's Entertainment, Inc. who is _______________________, makes the following disclosure:
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

S.A.S. Jean Cassegrain
______________________ amicus
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Longchamp USA, Inc.
______________________ amicus
corporations:
S.A.S. Jean Cassegrain

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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

National Football League
______________________ amicus
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Oakley, Inc.
______________________ amicus
corporations:
Luxottica U.S. Holdings Corp.
other publicly held entity? ✔ YES NO
Luxottica Group S.p.A.

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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

The Professional Golfers'
______________________
Association of America Amicus
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

______________________
Rolls-Royce Amicus
North America, Inc. who is _______________________,
amicus makes the following disclosure:
1. Is party/amicus a publicly held corporation or other publicly held entity? YES NO
2. Does party/amicus have any parent corporations? YES NO
corporations:
Rolls-Royce North America Holdings, Inc.; Rolls-Royce plc; Rolls-Royce Group plc
other publicly held entity? YES NO
Rolls-Royce Group plc is publicly traded on the London Stock Exchange
financial interest in the outcome of the litigation (Local Rule 26.1(b))? YES NO
6. Does this case arise out of a bankruptcy proceeding? YES NO

$*!4)1"!,().2,*4!%.4!20312))!%.(!2+)!-)-&)01!/*!%.4!'0)(,2/015!'/--,22))#
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I certify that on11/1/2010
November 1, 2010
_________________ the foregoing document was served on all parties or their

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Sunkist Growers, Inc.
amicus
______________________ who is _______________________, makes the following disclosure:
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

The Sunrider Corporation
______________________ amicus
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

______________________ amicus
Swarovski North America Ltd who is _______________________, makes the following disclosure:
corporations:
Parent: Swarovski U.S. Holdings Limited; Grandparent: Swarovski International Holding AG

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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Tiffany & Co.
______________________ amicus
1. Is party/amicus a publicly held corporation or other publicly held entity? ✔ YES NO
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

TiVo Inc.
______________________ amicus
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

Tumi, Inc.
______________________ amicus
corporations:
Parent: Tumi II, LLC; Grandparent: Tumi I, Inc.

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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)

information.
No. _______
10-2007 Caption: __________________________________________________

United Continental Holdings, Inc.
______________________ amicus
corporations:


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11/1/2010

_______________________________ 11/1/2010
________________________
(signature) (date)
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................................................................... ii
I. IDENTITY OF AMICI ....................................................................................1
II. INTEREST OF AMICI CURIAE AND AUTHORITY TO FILE .................8

III. ARGUMENT .................................................................................................12
A. The District Court Imposed Improper Requirements for a Dilution
Claim ...................................................................................................12
1. Likelihood of Dilution, Not the Actual Harm Standard

Espoused by the District Court, is the Correct Measure...........13
a. Dilution by Blurring Does Not Require a Showing of

Actual Harm....................................................................14
b. Dilution by Tarnishment Likewise Does Not Require a

Showing of Actual Harm ................................................17
2. Dilution May Lie Even if the Parties Are Not

Competitors ...............................................................................18
3. A Dilution Claim may be Actionable Even if the

Defendant Does Not Use the Mark on its Own Goods or
Services .....................................................................................19
B. The District Court Has Misapplied the Functionality Defense ...........20
1. The District Court’s Ruling is Contrary to the Principles

Underlying the Functionality Doctrine .....................................22
2. The District Court Erred in Applying the Functionality

Doctrine to Non-functional Trademarks ...................................24
3. Words and Phrases Serve Neither a Utilitarian Nor an
Aesthetically Functional Purpose .............................................26
IV. CONCLUSION..............................................................................................30
i
TABLE OF AUTHORITIES
Page(s)
C ASES:
Am. Online, Inc. v. AT & T Corp.,
243 F.3d 812 (4th Cir. 2001) ..............................................................................28
Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.,

457 F.3d 1062 (9th Cir. 2006) ................................................................22, 25, 26
Boston Prof. Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc.,
510 F.2d 1004 (5th Cir.1975) .............................................................................25
Brunswick Corp. v. British Seagull Ltd.,

35 F.3d 1527 (Fed. Cir. 1994) ............................................................................19
Compaq Computer Corp. v. Procom Technology, Inc.,

908 F. Supp. 1409 (S.D. Tex. 1995) .............................................................28, 29
Designer Skin, L.L.C. v. S & L Vitamins, Inc.,
560 F. Supp. 2d 811 (D. Ariz. 2008) ..................................................................24
Ford Motor Co. v. Lloyd Design Corp.,
184 F. Supp. 2d 665 (E.D. Mich. 2002) .............................................................25
Home Builders Ass’n of Greater St. Louis v. L&L Exhibition Mgmt., Inc.,
226 F.3d 944 (8th Cir. 2000) ..............................................................................26
In re Armament Sys. & Procedures, Inc.,
Serial No. 75/107678, 2005 WL 2451651 (T.T.A.B. Sept. 12, 2005) ............... 26
Jay Franco & Sons, Inc. v. Franek,
615 F.3d 855 (7th Cir. 2010) ........................................................................22, 23
Kellogg Co. v. Exxon Corp.,
209 F.3d 562 (6th Cir. 2000) ..............................................................................17
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,
507 F.3d 252 (4th Cir. 2007) .......................................................................passim
Moseley v. V Secret Catalogue, Inc.,

537 U.S. 418 (2003) ......................................................................................12, 16
ii
Playboy Enters., Inc. v. Netscape Commc’ns Corp.,

354 F.3d 1020 (9th Cir. 2004) ............................................................................24
Playboy Enters., Inc. v. Welles,

279 F.3d 796 (9th Cir. 2002) ..............................................................................23
Rosetta Stone Ltd. v. Google Inc.,

No. 1:09 CV 736 (GBLT/TCB),
2010 WL 3063152 (E.D. Va. Aug. 3, 2010) ...............................................passim
Sega Enters. Ltd. v. Accolade, Inc.,
977 F.2d 1510 (9th Cir. 1992) ......................................................................28, 29
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,
588 F.3d 97 (2d Cir. 2009) .................................................................................16
Stoller v. Sutech U.S.A., Inc.,
199 F. App’x 954 (Fed. Cir. 2006) .....................................................................26
Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc.,
87 F.3d 654 (4th Cir. 1996) ................................................................................27
TrafFix Devices, Inc. v. Mktg. Displays, Inc.,

532 U.S. 23 (2001) ........................................................................................19, 22
V Secret Catalogue, Inc. v. Moseley,

605 F.3d 382 (6th Cir. 2010) ..................................................................12, 13, 14
Visa Int’l Serv. Ass’n v. JSL Corp.,
610 F.3d 1088 (9th Cir. 2010) ......................................................................13, 18
Vuitton et Fils S.A. v. J. Young Enters., Inc.,

644 F.2d 769 (9th Cir. 1981) ..............................................................................25
STATUTES:
15 U.S.C. § 1125 ...............................................................................................passim
O THER AUTHORITIES:
Google AdWords Third Party Authorization Request,
https://services.google.com/inquiry/aw_tmauth (last visited Oct. 29,
2010). ..................................................................................................................21
iii
Google AdWords: Traffic Estimator,

https://adwords.google.com/o/Targeting/Explorer?__c=1000000000&__u
=1000000000&ideaRequestType=KEYWORD_STATS#search.none
(last visited Oct. 28, 2010) ....................................................................................9
Google, Inc., 2009 Annual Report, available at

http://investor.google.com/financial/2009/filings-archives.html ...................9, 10
H. R. Rep. No. 104-374 (1995),

reprinted in 1996 U.S.C.C.A.N. 1029 ................................................................18
H.R. Rep. No. 105-194 (1997).................................................................................26

H.R. Rep. No. 109-23 (2005),
reprinted in 2006 U.S.C.C.A.N. 1091 ....................................................12, 13, 15
iv
I. IDENTITY OF AMICI
1. The Association for Competitive Technology (“ACT”), with offices in
Washington, D.C. and Belgium, Brussels, is an international grassroots advocacy
and education organization representing more than 3,000 small and mid-size
information technology firms from around the world. ACT is the only
organization focused on the needs of small business innovators from around the
world. ACT, established in 1998, advocates for an environment that inspires and
rewards innovation. ACT also provides resources through the INNOVATORS
NETWORK™ to help its members leverage their intellectual assets to raise capital,
create jobs and continue innovating.
2. Burlington Coat Factory Warehouse Corporation (“BCF”) is a
privately-held company that has, since 1972, operated a chain of retail stores
selling men’s, women’s and children’s apparel, accessories, gifts, infantile
furniture and home products under the registered service mark BURLINGTON
COAT FACTORY®. At the present time, there are over 435 brick-and-mortar
stores operating under that registered mark in 44 states. Since 1995, BCF has also
actively sold the same product categories on the internet through its website
www.coat.com.
3. The Business Software Alliance (“BSA”) is an association of the
world’s leading software and hardware technology companies. On behalf of its
1
members, BSA promotes policies that foster innovation, growth, and a competitive
marketplace for commercial software and related technologies. BSA members rely
on trademark, copyright and patent protection to establish property rights in their
critical assets and provide essential legal protection for their substantial
investments in those assets. As a group they hold a significant number of
trademarks, copyrights and patents. Because intellectual property policy is vitally
important to promoting the innovation that has kept the United States at the
forefront of software development, BSA members have a strong stake in the proper
functioning of the U.S. intellectual property system.
4. Chanel, Inc. (“Chanel”) manufactures and distributes high quality
luxury goods worldwide under multiple famous marks. Chanel is the owner and/or
exclusive licensee of all rights in and to the registered mark CHANEL® and
several highly recognizable design marks for use on shoes, boots and sunglasses.
5. Coach, Inc. (“Coach”) was founded more than sixty years ago as a
family-run workshop in Manhattan. Since then, Coach has manufactured,
marketed and sold fine leather products, including handbags, wallets, accessories,
footwear, jewelry and watches. Coach sells its goods through its own specialty
retail stores, department stores, catalogs and via an Internet website
www.coach.com throughout the United States. Coach has used a variety of
2
trademarks, including the famous COACH® mark, many of which are owned by
its subsidiary, Coach Services, Inc.
6. Benjamin G. Edelman is a professor at the Harvard Business School.
Among other projects, he has analyzed the auction mechanisms used in online
advertising platforms, and he has uncovered online advertising fraud inflating
advertisers’ costs. His clients include: AOL; the National Association of
Broadcasters; Microsoft; The New York Times; and Universal Music Group.
Professor Edelman holds an A.B. (summa cum laude), J.D., and Ph.D. in
Economics from Harvard University.
7. Government Employees Insurance Company (“GEICO”) is a
Maryland corporation and is a subsidiary of Berkshire Hathaway, Inc. GEICO was
founded in 1936 as an automobile insurer that dealt directly with its customers
without the involvement of intermediaries. GEICO is the third-largest insurer of
private-passenger automobiles in the United States. GEICO uses a number of
trademarks with the most well-known being the mark GEICO®. GEICO spends
hundreds of millions of dollars each year promoting and advertising its brand.
8. Harrah’s Entertainment, Inc. (“Harrah’s”) is the world’s largest
provider of branded casino entertainment. Since its beginning in Reno, Nevada,
more than 70 years ago, Harrah’s has grown through development of new
properties, expansions and acquisitions, and now operates casinos on four
3
continents. The company’s properties operate primarily under the HARRAH’S®,
CAESARS® and HORSESHOE® brand names; Harrah’s also owns the WORLD
SERIES OF POKER® and a majority interest in the London Clubs International
family of casinos. Harrah’s Entertainment is focused on building loyalty and value
with its customers through a unique combination of great service, excellent
products, unsurpassed distribution, operational excellence and technology
leadership.
9. S.A.S. Jean Cassegrain is a family-owned corporation based in Paris,
France. The company’s wholly-owned U.S. based subsidiary, Longchamp U.S.A.,
Inc., markets and distributes luxury goods including handbags, luggage,
accessories and clothing throughout the United States. S.A.S. Jean Cassegrain is
the owner of several United States trademark registrations for the
LONGCHAMP® and LE PLIAGE® marks, and others. LONGCHAMP®
products are sold worldwide through LONGCHAMP® specialty boutiques, fine
department stores and via the Internet at www.longchamp.com.
10. The National Football League (the “NFL”) is an unincorporated
association of thirty-two Member Clubs, each of which owns and operates a
professional football team. NFL football is, and for many years has been, the most
popular spectator sports in the United States. The NFL brand of professional
football, and the identifying names, logos, uniform designs and other indicia
4
associated with the NFL, are enormously popular with both sports fans and the
general public. The NFL owns numerous famous marks, including trademarks
consisting of or incorporating NFL® and SUPER BOWL®.
11. Oakley, Inc. (“Oakley”) was founded in 1975 and revolutionized the
sunglass market in the 1980’s with its sports-oriented eyewear. Oakley
manufactures and sells high quality sunglasses, apparel, watches, bags and
accessories and has enjoyed enormous commercial success over the last three and a
half decades. Domestically, it sells its products to a network of authorized retailers
and also sells direct to consumers through its own branded stores and via its
website. Oakley has many registered trademarks, including its famous ellipsoid
“O” and the OAKLEY® house mark.
12. Founded nearly a century ago in 1916, The Professional Golfers’
Association of America (“The PGA of America”) is the world’s largest sports
organization, encompassing 28,000 golf professionals. The PGA of America
conducts the PGA CHAMPIONSHIP® tournament, one of golf’s four “Majors,”
and also organizes the U.S. RYDER CUP® team in its matches against European
golfers.
13. Rolls-Royce North America Inc. is a U.S. affiliate of Rolls-Royce plc,
a publicly-traded English company (together, “Rolls-Royce”). Rolls-Royce is a
world-leading provider of power systems and services for use on land, at sea and in
5
the air and has established strong positions in four global markets – civil
aerospace, defense aerospace, marine and energy. Rolls-Royce owns and uses
many trademarks worldwide and the ROLLS-ROYCE® name and mark is one of
the most recognized global brands. Rolls-Royce North America Inc licenses
trademarks from its UK affiliates.
14. Founded in 1893, Sunkist Growers, Inc. (“Sunkist”) is a non-profit
agricultural marketing cooperative that is owned by its grower-members. Sunkist-
branded fresh fruit and over 600 licensed products bearing the Sunkist trademark
are sold around the world. Sunkist owns more than 125 federal trademark
registrations and over 1700 registrations worldwide for a variety of goods and
services.
15. The Sunrider Corporation (“Sunrider”) is a privately held Utah
corporation. Sunrider was founded in 1982, and is a manufacturer and direct seller
of herbal health, beauty, food, and household products. Sunrider’s products are
sold in 42 countries. Sunrider owns and uses a wide variety of trademarks
including SUNRIDER®, CALLI®, and KANDESN®.
16. Swarovski North America Limited (“Swarovski”) is a Rhode Island
corporation that manufactures, markets and sells fine cut crystal, jewelry and
decorative objects throughout North America under the well-known
6
SWAROVSKI® brand. Swarovski licenses the SWAROVSKI® trademark from
its affiliate.
17. Tiffany & Co. is the publicly held parent corporation of Tiffany and
Company (“Tiffany”). Under license from its affiliate Tiffany (NJ) LLC, Tiffany
uses various well-known trademarks, including, TIFFANY®, TIFFANY & CO.®,
and T&CO.® for the manufacture and sale of fine jewelry, gifts, leather goods and
accessories.
18. TiVo, Inc. (“TiVo”) is the developer of the world’s first digital video
recorder and today markets its products and related services internationally. The
famous TIVO® name is protected by numerous U.S. and foreign trademark
registrations, and TiVo markets its products and provides access to its services at
www.tivo.com. TiVo has received numerous awards for its products and services.
The TIVO® box offers one of the world’s largest selections of movies, music and
video for download, including through Netflix, Blockbuster, Amazon, and
YouTube. The TIVO® experience should not be confused with a generic DVR.
19. Tumi, Inc. (“Tumi”) is a privately held corporation. Tumi sells high-
end travel and business cases, business products, and small leather goods and
accessories. Tumi is recognized as one of the world’s leading brands of travel,
business and lifestyle accessories, and TUMI® products are available in leading
department stores and specialty stores throughout the United States and around the
7
world. In addition to department and specialty stores, and Tumi retail stores,
Tumi’s products are available online at Tumi’s website, www.tumi.com. Tumi is
the owner of nearly fifty federally registered trademarks, including numerous
marks consisting of or incorporating the famous TUMI® mark.
20. United Continental Holdings, Inc. is a publicly-traded Delaware
corporation, and is the parent company of both Continental Airlines, Inc. and
United Air Lines, Inc. United Continental Holdings, Inc., through its subsidiaries
Continental and United, is engaged in the business of transporting passengers,
cargo and mail and owns and uses the famous CONTINENTAL AIRLINES® and
UNITED AIRLINES® trademarks both in the United States and throughout the
rest of the world.
II. INTEREST OF AMICI CURIAE AND AUTHORITY TO FILE

Amici are a diverse group of companies that provide consumer goods and
services, including luxury items, food and health products, insurance services, and
entertainment services. Amici’s trademarks -- many of which are internationally
famous -- are among their key assets. Amici also include an association of the
world’s leading software and hardware technology companies, an association
representing more than 3,000 small and mid-size information technology firms,
and a Harvard professor who is an expert in the Internet area.
8
Amici have a direct interest in seeing that the courts properly interpret the
federal trademark dilution law, which is designed to protect famous marks even
against third party uses that are not likely to cause confusion. The district court’s
misinterpretation of the federal dilution standard, if endorsed by this Court, could
frustrate Amici’s ability to pursue successful dilution claims in this Circuit.
Likewise, Amici have a strong interest in seeing the district court’s
misconstruction of the functionality defense reversed. This narrow defense
prevents a plaintiff from establishing trademark rights in “functional” product
features that are essential to the use of a product or affect its cost or quality, or
otherwise confer a significant competitive advantage. A functionality analysis is
commonly applied to nontraditional features, such as color or design. It is rarely, if
ever, applied to word marks as the district court did here. That court further
misapplied the doctrine by focusing on Google’s use of the Rosetta Stone word
marks in its search engine. The court erroneously held that Google’s use was
protected by the functionality defense, instead of analyzing whether Rosetta
Stone’s word marks themselves were functional. Under the court’s view, every
corporate defendant could escape liability whenever a defendant’s business
functions more efficiently by using others’ trademarks.
This case is important to Amici because of the way in which Google sells
keywords, including Amici’s famous marks. The district court described Google’s
9
search engine as “aggregat[ing] information and provid[ing] advertising space” in
a manner “akin to a newspaper or magazine selling advertising space.” Rosetta
Stone Ltd. v. Google Inc., No. 1:09 CV 736 (GBLT/TCB), 2010 WL 3063152, at
*7 (E.D. Va. Aug. 3, 2010). This analogy is incorrect. Rather, Google offers an
“AdWords” program that functions as an auction and Google then selects the
bidder it prefers. Google allows third parties to bid on “keyword” terms, including
others’ famous trademarks, to trigger their advertisements as “Sponsored Links”
when an Internet visitor types a mark into Google’s search engine. As a result, a
brand owner may find itself bidding against others, including competitors, so that it
can display advertisements triggered by its own marks.
The AdWords program generates significant revenues for Google based on
the value that purchasers place on keywords, including Amici’s marks. For
example, Google’s publicly available “Traffic Estimator” tool, which helps would-
be keyword purchasers estimate the daily costs of advertisements associated with
given keywords,1 estimates that the daily cost of amicus Oakley’s OAKLEY® as a
keyword to be $920.53. 2 By Google’s own estimates, based on one advertisement
alone, it stands to make $6,443.71 per week and $335,072.92 per year from the
1
See Google, Inc., 2009 Annual Report 9, available at
http://investor.google.com/financial/2009/filings-archives.html.
2
Google AdWords: Traffic Estimator, https://adwords.google.com/o/Targeting/
Explorer?__c=1000000000&__u=1000000000&ideaRequestType=KEYWORD_S
TATS#search.none (last visited Oct. 28, 2010).
10
sale of that mark as a key word. The estimated daily cost for amicus National
Football League’s NFL® mark is $1,782.51 according to Google’s Traffic
Estimator. Based on that estimate, Google would generate $12,477.57 per week
and $648,833.64 per year from selling NFL® as a keyword. Over the last three
years, Google’s advertising revenues exceeded $60 billion. See Google, Inc., 2009
Annual Report 41. Indeed, more than 95% of the company’s total revenue was
generated from advertising. Id. at 37.
The difficulty for Amici is that Google has created a major advertising
market that is conducive to infringing and dilutive ads. Although not all of the
keywords Google sells are trademarks (some are generic terms), the fact that
Google is able to sell well-known marks as keywords for significant amounts
illustrates the value that third parties put on famous marks, including Amici’s
marks. Hence, Amici are concerned, among other things, that their marks will be
diluted through Google’s program. The district court’s conclusion that Google
makes a so-called “functional” use of otherwise nonfunctional and protectable
marks when it sells these marks as keyword advertising triggers only compounds
the harm. This finding effectively insulates Google’s sale of trademarks from any
kind of liability, regardless of the renown of the brand or any resulting confusion
or dilution.
11
Amici submit this brief, with the consent of all parties, pursuant to
Rule 29(a) of the Federal Rules of Appellate Procedure.
III. ARGUMENT
A. The District Court Imposed Improper Requirements for a Dilution
Claim
The district court misinterpreted the Trademark Dilution Revision Act of
2006 (“TDRA”) in a way that has broad-reaching implications, not only for
Rosetta Stone, but also for Amici and other owners of famous marks. First, the
district court erred by requiring a trademark owner both to demonstrate actual
harm and to show that the trademark owner’s brand awareness has decreased (or
did not increase) as a result of the defendant’s unauthorized use of its mark.
Additionally, contrary to the plain language of the statute, the district court held
that a claim for dilution requires the defendant to use the contested mark on its own
goods or services. 2010 WL 3063152, at *16.
These requirements are conspicuously absent from the statute. The TDRA
requires only that the plaintiff own “a famous mark that is distinctive,” and that,
after the mark has become famous, the defendant “commences use of a mark or
trade name in commerce that is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark, regardless of the presence or absence of actual or
likely confusion, of competition, or of actual economic injury.” 15 U.S.C.
12
§ 1125(c)(1); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d
252, 264-65 (4th Cir. 2007).
1. Likelihood of Dilution, Not the Actual Harm Standard

Espoused by the District Court, is the Correct Measure
The district court harkened back to the “actual harm” test for establishing
dilution. The standard for showing dilution under federal law, however, has
changed over time as Congress and the courts have struggled to find the right
balance. Although dilution was initially a creature of state statute, Congress
enacted the first federal anti-dilution law in 1995 to establish a national standard
for trademark dilution. In Moseley v. V Secret Catalogue, Inc., 537 U.S. 418
(2003) (“V Secret I”), the Supreme Court interpreted that statute as requiring proof
of actual dilution, not just a likelihood of harm. V Secret Catalogue, Inc. v.
Moseley, 605 F.3d 382, 387 (6th Cir. 2010) (“V Secret II”). Yet Congress
determined that this standard “‘creates an undue burden for trademark holders who
contest diluting uses and should be revised.’” Id. (quoting H.R. Rep. No. 109-23,
at 5 (2005), reprinted in 2006 U.S.C.C.A.N. 1091, 1092).
Accordingly, Congress enacted the TDRA in 2006. H.R. 683, 109th Cong.
(2006). Describing the purpose of the TDRA, the House Judiciary Committee
Report stated that “the new language in the legislation [provides] . . . specifically
that the standard for proving a dilution claim is ‘likelihood of dilution’ . . . .” V
Secret II, 605 F.3d at 387 (quoting H.R. Rep. No. 109-23, at 9). The “likely to
13
cause dilution” language “significantly change[d] the meaning of the law from
‘causes actual harm’ under the preexisting law.” Id. at 388. As a result, mark
owners are no longer required to show actual dilution of their trademarks;
likelihood of dilution is sufficient. Id. at 387.
On its face, the statute applies both to dilution by “blurring” and dilution by
“tarnishment,” two claims that Rosetta Stone asserted. As shown below, actual
harm is not required in either case.
a. Dilution by Blurring Does Not Require a Showing of

Actual Harm
Blurring occurs “when a mark previously associated with one product also
becomes associated with a second.” Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d
1088, 1090 (9th Cir. 2010). 3 Although the district court correctly refers to the
likelihood of dilution standard, 2010 WL 3063152, at *16, it nonetheless required
Rosetta Stone to show proof of actual harm. It held that:
[s]ince Rosetta Stone has not shown that its Marks suffered a loss of
distinctiveness or reputation, which it claims resulted from Google’s
policy of auctioning the Marks as keyword triggers, it is not entitled to
judgment as a matter of law.
3
The TDRA directs a court to consider all factors set forth in the dilution statute,
15 U.S.C. § 1125(c)(2)(B), in assessing a blurring claim -- something the Rosetta
Stone court failed to do. Louis Vuitton, 507 F.3d at 266. Although certain factors
in a blurring analysis may not be relevant to a given case, “a trial court must offer a
sufficient indication of which factors it has found persuasive and explain why they
are persuasive so that the court’s decision may be reviewed,” id., something the
Rosetta Stone court also did not do.
14
Id. at *17 (emphasis added). As explained, however, the requirement that the
plaintiff suffer actual dilution was removed in the TDRA and replaced with a
“likely to cause dilution” standard. V Secret II, 605 F.3d at 387. Because “[t]he
word ‘likely’ or ‘likelihood’ means ‘probably,’” a plaintiff need not show that its
marks actually suffered a loss of distinctiveness to establish a claim for dilution by
blurring. See id. If the law were otherwise, the dilution standard would be too
stringent.
To take a real-world example, an individual applied with the Patent and
Trademark Office to register RYDER SIPPY CUP for drinking vessels (Serial No.
77/888,108 (now abandoned)). Amicus PGA of America should not have been
hindered in asserting a dilution claim against this applicant if it could not have
shown actual harm, i.e., that the distinctiveness of the RYDER CUP® mark had
actually declined as a result of the RYDER SIPPY CUP mark.
The district court’s reliance on Louis Vuitton in asserting that, in this Circuit,
no claim for dilution lies where “defendants’ product only increases public
identification of the plaintiffs’ marks,” likewise is misplaced. 2010 WL 3063152,
at *17 (citing Louis Vuitton, 507 F.3d at 264). Louis Vuitton considered whether
the defendant’s use of CHEWY VUITON and CV marks on dog toys was “likely
to impair the distinctiveness” of the plaintiff’s famous LOUIS VUITTON and LV
marks. 507 F.3d at 265. Critical to the Louis Vuitton court’s analysis was the
15
defendants’ use of the plaintiff’s marks as a parody. 507 F.3d at 267. The Louis
Vuitton court explained that a successful parody simultaneously mimics the famous
mark and communicates that it is not the famous mark, but is only satirizing it. Id.
Accordingly, that court posited that “by making a famous mark the object of the
parody, a successful parody might actually enhance the famous mark’s
distinctiveness by making it an icon.” Id. (emphasis added). The “might actually
enhance” language that the district court lifted from Louis Vuitton related solely to
the effect of a parody, id. at 267, 268, and has no place in a blurring analysis that
does not involve a parody.
The district court also found no dilution because Rosetta Stone’s “brand
awareness has only increased” over time. 2010 WL 3063152, at *16. This,
however, is not the right test. Heightened brand recognition over time might well
happen for famous marks as a result of mark owners’ own advertising efforts --
despite dilutive actions by Google or anyone else. Yet dilution, by its very nature,
“is the gradual diminution or whittling away of the famous mark,” which is
described as “death by a thousand cuts -- where significant injury is caused by the
cumulative effect of many small acts of dilution.” H.R. Rep. No. 109-23 at 25
(emphasis added) (prepared statement of Rep. Howard Berman). Rosetta Stone
and Amici should not have to wait until dilutive conduct actually decreases brand
awareness before taking action. See, e.g., V Secret I, 537 U.S. at 436 (Kennedy, J.,
16
concurring) (“A holder of a famous mark threatened with diminishment of the
mark’s capacity to serve its purpose should not be forced to wait until the damage
is done and the distinctiveness of the mark has been eroded.”), superseded by
statute on other grounds, TDRA, Pub. L. No. 109-312, 120 Stat. 1730.
b. Dilution by Tarnishment Likewise Does Not Require a

Showing of Actual Harm
The district court’s analysis of dilution by tarnishment suffers a similar fate.
Tarnishment is the “association arising from the similarity between a mark or trade
name and a famous mark that harms the reputation of the famous mark.” 15
U.S.C. § 1125(c)(2)(C). It may occur when the famous mark is “linked to products
of shoddy quality, or is portrayed in an unwholesome or unsavory context, with the
result that the public will associate the lack of quality or lack of prestige” with the
famous mark. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 110
(2d Cir. 2009) (internal quotation marks omitted).
In analyzing tarnishment, the district court again imposed the requirement
that the plaintiff suffer actual harm to its reputation as an element of the TDRA. It
reasoned that because Rosetta Stone had not shown that its reputation had been
harmed, it could not state a claim for dilution by tarnishment. 2010 WL 3063152,
at *17. This is not the law, and would be a dangerous precedent for Amici who
could not show actual customer complaints that they had received as a result of
inferior products or services.

17
2. Dilution May Lie Even if the Parties Are Not Competitors

The district court held that Google could not be liable for dilution simply
because Google, unlike Rosetta Stone, does not sell language teaching programs.
2010 WL 3063152, at *16. Effectively, the court found no dilution because the
parties are not competitors. Contrary to this holding, the dilution statute
specifically provides that a trademark owner may obtain injunctive relief
“regardless of the presence or absence of . . . competition.” 15 U.S.C. § 1125(c)(1)
(emphasis added); see also Kellogg Co. v. Exxon Corp., 209 F.3d 562, 576 (6th
Cir. 2000) (district court erred in dismissing plaintiff’s claim for dilution of cartoon
tiger mark because parties’ products were dissimilar; FTDA allows for relief on
dilution grounds regardless of whether or not parties are competitors).
Indeed, the federal dilution statute is not designed to address directly
competitive goods (a traditional infringement action does that), but to prohibit the
use of famous marks on different goods or services in a manner that is likely to
cause dilution. Classic examples cited in the original statute’s legislative history
include “the use of DUPONT shoes, BUICK aspirin, and KODAK pianos.” H.R.
Rep. No. 104-374, at 3 (1995), reprinted in 1996 U.S.C.C.A.N. 1029, 1030.4
4
Moreover, through its AdWords program, Google literally is creating
associations between famous trademarks and third party products, thereby
associating the products of third parties, via “Sponsored Links,” with the famous
marks. Thus, there may be many products, “not just one, competing for
18
3. A Dilution Claim may be Actionable Even if the Defendant

Does Not Use the Mark on its Own Goods or Services
The district court also stated: “Rosetta Stone does not argue that Google
uses a mark similar to the Rosetta Stone [m]arks on Google’s own goods or
services.” 2010 WL 3063152, at *16. In so finding, the court cited language from
the “fair use defense” in the TDRA’s “Exclusions” section: “a claim for dilution is
not actionable if it involves ‘[a]ny fair use . . . of a famous mark by another person
other than as a designation of source for the person’s own goods or services,
including in connection with . . . advertising or promotion that permits consumers
to compare goods or services.” Id. (quoting 15 U.S.C. § 1125(c)(3)(A)).
This language, however, is not apt. Although the fair use defense exempts
from liability certain conduct for comparative advertising purposes where the
defendant does not use the mark on its own goods or services, the dilution statute
itself makes clear that it applies to both competitive and non-competitive goods
and services, a point that the district court overlooked.
The district court attempted to explain away Rosetta Stone’s authorities,
stating that Rosetta Stone relied on “cases involving defendants who used
plaintiffs’ marks to capitalize on the plaintiffs’ fame and boost the defendants’ own
goods and services.” 2010 WL 3063152, at *16. Yet this is precisely what
association” with that mark. Visa, 610 F.3d at 1091. “This is the quintessential
harm addressed by anti-dilution law.” Id.
19
Google’s AdWord program does. It sells not only generic words but also others’
famous trademarks as keywords to attract advertisers. While Google may not be
using these marks to identify its own goods or services, it is using them in
commerce to capitalize on their fame and boost its own revenues.
B. The District Court Has Misapplied the Functionality Defense

The district court also erred in concluding that “the functionality doctrine
protects Google’s use of the Rosetta Stone Marks as keyword triggers.” 2010 WL
3063152, at *11. The functionality doctrine prevents a plaintiff from establishing
trademark rights in product features that are essential to the use of a product, affect
its cost or quality, or otherwise confer a “significant non-reputation-related”
competitive advantage. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23,
33 (2001) (emphasis added). Thus, courts have cited this doctrine in denying trade
dress protection for a dual-spring mechanism that made road signs more wind
resistant, id. at 30, as well as for the color black that reduced the perceived size of
an outboard boat engine, Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527,
1532 (Fed. Cir. 1994).
Under the functionality doctrine, the Rosetta Stone word marks are not
functional product features. They are neither essential to the use of the plaintiff’s
software learning system, nor do they affect its cost or quality or otherwise give
Rosetta Stone a non-reputation-related competitive advantage. The same is true of
20
Amici’s word marks. Because the Rosetta Stone word marks are solely a
designation of source for Rosetta Stone’s software, this should have been the
beginning and end of the district court’s functionality inquiry.
The district court, however, did not analyze whether Rosetta Stone’s marks
are functional. Instead, the court found that these word marks, when used as
keywords in Google’s AdWords advertising program, made this program more
“functional.” This finding necessarily barred Rosetta Stone from recovering on its
infringement and dilution claims against Google.
The functionality doctrine, however, is not based on this type of balancing.
It does not look at whether a plaintiff’s nonfunctional mark makes a defendant’s
product or service more useful. Indeed, in any given case, virtually every
defendant’s use of another’s mark with that defendant’s product would have a
“function” or purpose.
Moreover, a functionality analysis properly relates to nontraditional product
features, such as design or color, rather than to word marks. It should have no
relevance in a case involving the Rosetta Stone word marks or Amici’s word
marks.
The district court’s creation of a new “functionality doctrine” has negative
ramifications for Amici, all of whom rely on word trademarks to designate the
source of their products and services. Amici do not dispute that Internet users
21
should be free to type a word or phrase into Google’s search engine to obtain
information. It may be beneficial to have advertisements triggered by a trademark
owner’s marks, such as advertisements for the brand owner itself, its licensees,
authorized retailers, and franchisees. By contrast, if the advertising content is
infringing, dilutive, or promotes counterfeit goods, it benefits only the infringer.
The district court’s application of the functionality doctrine assumes that
permissible advertising cannot continue without also tolerating infringing content.
Google’s AdWords program, however, is already very sophisticated. For example,
it allows trademark owners to identify and pre-approve advertisements by third
parties (e.g., licensees, retailers). 5 Given the sophistication of Google’s AdWords
program, the legal issues raised by Rosetta Stone or Amici should not present true
obstacles. The sale of keywords to trigger advertising should thus not be shielded
by the functionality doctrine, particularly when that doctrine has no place in this
case.
1. The District Court’s Ruling is Contrary to the Principles

Underlying the Functionality Doctrine
The district court’s conception of “functionality” is fundamentally at odds
with the two established types of functionality: utilitarian functionality and
aesthetic functionality. See TrafFix, 532 U.S. at 33. Utilitarian functionality
5
See Google AdWords Third Party Authorization Request,
https://services.google.com/inquiry/aw_tmauth (last visited Oct. 29, 2010).
22
provides that a product feature is functional “if it is essential to the use or purpose
of the article or if it affects the cost or quality of the article.” Id. at 32 (emphasis
added) (internal quotation marks omitted); see also Jay Franco & Sons, Inc. v.
Franek, 615 F.3d 855, 857 (7th Cir. 2010) (“So if a design enables a product to
operate, or improves on a substitute design in some way (such as by making the
product cheaper, faster, lighter, or stronger), then the design cannot be trademarked
. . . .”).
Aesthetically functional product features -- namely, features that would
confer a “significant non-reputation-related” competitive advantage -- are also
unprotectable. TrafFix, 532 U.S. at 33 (emphasis added); see also Au-Tomotive
Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006). In
Franek, for example, the court denied trademark protection for the circular shape
of a beach towel because “consumers want the shape regardless of who
manufactures it.” 615 F.3d at 861 (emphasis added).
The Rosetta Stone marks, like Amici’s marks, are words that do not have
any specific feature affecting the cost or quality of the goods or services with
which they are used. They neither make the plaintiff’s software more useful nor
imbue it with any “non-reputation-related” competitive advantage.
23
2. The District Court Erred in Applying the Functionality Doctrine

to Non-functional Trademarks
Rather than focusing on whether the plaintiff’s asserted mark is a functional
product feature, the district court instead considered whether Google’s use of
Rosetta Stone’s marks in its AdWords advertising program made Google’s
program more useful. This is not the appropriate test. The proper inquiry is
whether the plaintiff’s asserted mark is in fact a functional product feature that
everyone, including the defendant, should be free to use, or whether the plaintiff
can claim trademark rights in that asserted mark as a designation of source.
As noted above, there is no functional component of the Rosetta Stone
marks for Google to use. Nevertheless, the district court ruled that the
functionality doctrine applied “to a search engine, [because] courts have
recognized its role as a valuable information provider.” 2010 WL 3063152, at *12.
As support, the district court cited Playboy Enterprises, Inc. v. Welles, 279 F.3d
796 (9th Cir.2002) and Designer Skin, L.L.C. v. S & L Vitamins, Inc., 560 F. Supp.
2d 811 (D. Ariz. 2008). Yet, neither of these cases even references the
functionality doctrine.
In fact, the Ninth Circuit has already considered, and rejected, application of
the functionality doctrine in a case similar to this case, Playboy Enterprises, Inc. v.
Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004). The Netscape
case arose from an Internet search engine’s practice of allowing “advertisers to

24
target individuals with certain interests by linking advertisements to pre-identified
terms” (Playboy’s PLAYBOY® and PLAYMATE® marks). Id. at 1022-23.
Thus, when an Internet user typed “playboy,” or “playmate,” into the search
engine, advertisements for Playboy’s competitors would appear on the search
results page. Id. at 1023. The Ninth Circuit rejected out of hand defendant’s claim
that it was making a proper “functional use” of Playboy’s marks, finding: “The
fact that the marks make defendant’s computer program [i.e., a particular search
engine] more functional is irrelevant.” Id. at 1031.
Google sells Rosetta Stone’s marks to advertisers to use as keywords to
trigger their advertisements because of their value as trademarks. The district court
found that these trademark keywords are “especially important as advertisers rely
on the keywords to place their products and services before interested consumers.”
2010 WL 3063152, at *12. This consideration, however, is irrelevant under the
functionality doctrine. See Au-Tomotive Gold, 457 F.3d at 1074 n.9 (“[T]his
argument has no traction here because the [plaintiffs’] mark is not a functional
feature that places a competitor at a ‘significant non-reputation-related
advantage.’”).
Numerous other courts have reached the same conclusion. See Vuitton et
Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 774 (9th Cir. 1981) (rejecting
argument that, because Louis Vuitton’s marks were “related to the reasons
25
consumers purchase [the] product,” these marks were thus functional because
without using the marks, counterfeiter could not compete with Louis Vuitton in
selling Louis Vuitton-marked purses); Boston Prof. Hockey Ass’n, Inc. v. Dallas
Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1013 (5th Cir.1975) (defendant’s sales
of professional hockey franchise’s logo are not “functional” and can be protected);
Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 675-76 (E.D. Mich.
2002) (a car maker’s trademarks are not functional aspects of defendant’s car
accessories).
3. Words and Phrases Serve Neither a Utilitarian Nor an

Aesthetically Functional Purpose
Properly applied, the functionality doctrine should be limited to the realm of
trade dress, colors, and other nontraditional marks, and should not be applied to
word marks. 6 From a utilitarian perspective, Rosetta Stone’s software would
continue to teach foreign languages regardless of the presence or absence of
Rosetta Stone’s marks; these words serve no utilitarian function. See Au-Tomotive
Gold, 457 F.3d at 1073.
6
Indeed, the 1999 addition of an express reference to the functionality doctrine in
the federal trademark statute was motivated exclusively by trade dress
considerations: “The need to be able to assert functionality as a defense and as a
ground for cancellation has grown with the increase in trade dress applications,
where registration is sought for three dimensional features and colors, many of
which have utilitarian aspects.” H.R. Rep. No. 105-194, at 22 (1997).
26
Other Circuits, as well as the Trademark Trial and Appeal Board, which
determines registrability of marks, have refused to do precisely what the district
court did here -- extend the utilitarian functionality doctrine to words and phrases.
See, e.g., Stoller v. Sutech U.S.A., Inc., 199 F. App’x 954, 958 (Fed. Cir. 2006)
(functionality doctrine “has no bearing on an application to register a word mark”);
Home Builders Ass’n of Greater St. Louis v. L&L Exhibition Mgmt., Inc., 226 F.3d
944, 949 (8th Cir. 2000) (“The names of [trade shows] are not ‘functional’”); In re
Armament Sys. & Procedures, Inc., Serial No. 75/107678, 2005 WL 2451651, at
*3 (T.T.A.B. Sept. 12, 2005) (noting that functionality doctrine “pertains to the
configuration of a product or its trade dress and is inapplicable to a mere word
mark.”).
This Circuit reached a similar conclusion in Tools USA & Equipment Co. v.
Champ Frame Straightening Equipment Inc., 87 F.3d 654, 659 (4th Cir. 1996).
There, defendant argued that the phrase “Attention Body Shop Managers”
appearing in the trade dress of plaintiff’s catalog was functional because the phrase
was directed to potential customers. Rejecting this contention, the court held:
This argument misconceives the functionality inquiry, which looks for

features that are not merely useful, but rather essential to the use or
purpose of the article, so that their exclusive use by one party would
put competitors at a significant non-reputation-related disadvantage.
[Defendant] has shown nothing more than that the words “Attention
Body Shop Managers” might be useful. There are certainly other
means to direct the catalog to the attention of the shop manager,
27
without using the exact wording, the same typeface, and a location
like that used in the Tools USA catalog.
Id. at 659 (internal quotation marks omitted). Here, too, while it may be “useful”
for Google to permit its customers to bid directly on trademarks such as
CONTINENTAL AIRLINES® instead of descriptors or generic words (e.g., “air
travel” or “flights”), a “useful” purpose for some may be an impermissibly and
unlawfully confusing purpose for certain others.
Nor does the doctrine of aesthetic functionality apply to word marks. See id.
(finding phrase “Attention Body Shop Managers” nonfunctional under both
aesthetic and utilitarian functionality standards). Although words and phrases
conceptually can confer certain “non-reputation-related” competitive advantages,
other well-established doctrines prevent this from happening without the need to
resort to a doctrine developed in the context of colors and trade dress. For
example, “generic” words -- i.e., words “used in a context that suggests only their
common meaning” -- are ineligible for trademark protection. Am. Online, Inc. v.
AT & T Corp., 243 F.3d 812, 820 (4th Cir. 2001).
The cases that the district court cited -- Sega Enterprises Ltd. v. Accolade,
Inc., 977 F.2d 1510 (9th Cir. 1992) and Compaq Computer Corp. v. Procom
Technology, Inc., 908 F. Supp. 1409 (S.D. Tex. 1995) -- are not to the contrary.
The district court cites to these cases for the proposition that “keywords . . . have
an essential indexing function” and that their use in Google’s AdWords advertising
28
program is thus protected by the functionality doctrine. 2010 WL 3063152, at *12.
Neither of these cases provide support for the district court’s statement, however.
Both cases involve mark owners who essentially forced competitors to
mislabel the competitor’s own products with the plaintiff’s marks to achieve
interoperability with plaintiff mark owners’ products. These cases are readily
distinguishable, and should not form the basis for articulating sweeping changes in
the functionality doctrine.
Under Sega’s unique facts, both parties agreed that there was the potential
for confusion; the task before the court was to allocate any responsibility for that
confusion. Sega, 977 F.2d at 1528. The plaintiff’s video game cartridges all
contained computer code triggering a message stating that the games were
“produced by or under license from” Sega. Id. at 1515. Sega licensees and
competitors such as defendant Accolade needed to include this computer code in
their own video game cartridges to ensure that the cartridges would actually
operate on Sega’s video game consoles. The Ninth Circuit found that the mark
owner -- Sega -- bore responsibility for any resulting confusion, because Sega used
its mark as an essential element of a functional device. Id. at 1529.
Similarly, in Compaq, plaintiff’s computer server would alert users of an
impending failure of a hard drive connected to that server only if the server
recognized the hard drive as one produced by plaintiff. Thus, to take advantage of
29
this prefailure warning system, plaintiff’s competitors needed to label their own
hard drives with plaintiff’s mark. As in Sega, the Court assigned responsibility to
the trademark owner because “Compaq should have known the competitors would
be discouraged from developing competitive products because of the risk of
mislabeling.” Compaq, 908 F. Supp. at 1423.
In stark contrast to both Sega and Compaq, Rosetta Stone and Amici have
done nothing more than develop branded products and/or services and released
them in the marketplace. There is no interoperability at issue in this case. Google
does not need to use Rosetta Stone’s marks to achieve interoperability with its own
search engine or advertising services. The only “functions” these trademarks serve
are as source indicators.
IV. CONCLUSION
For the reasons stated above, Amici urge this Court to reverse the district
court’s grant of summary judgment in Google’s favor on Rosetta Stone’s dilution
claim, and hold that the functionality doctrine has no application to this case.
30
Dated this 1st day of November, 2010
Respectfully submitted,
/s/ Randall K. Miller

Randall K. Miller
ARNOLD & PORTER LLP
1600 Tysons Boulevard
Suite 900
McLean, VA 22102
703.720.7000
Roberta L. Horton
Tricia A. Cross
Brent S. LaBarge
ARNOLD & PORTER LLP
555 Twelfth Street, N.W.
Washington, DC 20004
202.942.5000
Attorneys for Amici Curiae
31
UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT
Rosetta Stone LTD v. Google Inc
No. _______
10-2007 Caption: __________________________________________________
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New Roman). Do NOT use sans serif typeface such as Arial or any font which does
not have the small horizontal or vertical strokes at the ends of letters). Specify
software name and version, typeface name, and point size below (for example,
WordPerfect 8, CG Times, 14 point):
MS Word 2007, Times New Roman, 14 point

____________________________________________________
G Twelve point, monospaced typeface (such as Courier or Courier New). Specify

software name and version, typeface name, and point size below (for example,
WordPerfect 8, Courier, 12 point):
____________________________________________________
2. EXCLUSIVE of the corporate disclosure statement; table of contents; table of citations;

statement with respect to oral argument; any addendum containing statutes, rules, or
regulations; and the certificate of service, the brief contains (SELECT AND COMPLETE
ONLY ONE):
G ____________ Pages (give specific number of pages; may not exceed 30 pages for
opening or answering brief or 15 pages for reply brief); OR
G
✔ 6,822
____________ Words (give specific number of words; may not exceed 14,000 words
for opening or answering brief or 7,000 for reply brief)--Some word processing
programs, including certain versions of Microsoft Word, do not automatically count
words in footnotes, making it necessary to manually add the word count from
footnotes to obtain the total word count; OR
G ____________ Lines of Monospaced Type (give specific number of lines; may not
exceed 1,300 lines for opening or answering brief or 650 for reply brief; may be used
ONLY for briefs prepared in monospaced type such as Courier or Courier New).
I understand that a material misrepresentation may result in the Court’s striking the brief and
imposing sanctions. If the Court so requests, I will provide an electronic version of the brief.
/s/ Randall K. Miller 11/1/2010
Signature of Filing Party Date
I hereby certify that on November 1, 2010, I electronically filed the
foregoing with the Clerk of Court using the CM/ECF System, which will
send notice of such filing to the following registered CM/ECF users:
Clifford M. Sloan Jonathan D. Frieden

Mitchell S. Ettinger ODIN, FELDMAN & PETTLEMAN, P.C.
Jennifer L. Spaziano 9302 Lee Highway, Suite 1100
SKADDEN, ARPS, SLATE, Fairfax, VA 22031
MEAGHER & FLOM LLP
1440 New York Avenue NW Margret M. Caruso
Washington, DC 20005 QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Attorneys for Appellant 555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Attorneys for Appellee
/s/ Catherine B. Simpson

Counsel Press LLC
1011 East Main Street
Suite LL-50
Richmond, Virginia 23219
(804) 648-3664
Filing and service were performed by direction of counsel


APPEARANCE OF COUNSEL FORM
BAR ADMISSION & ECF REGISTRATION: & 7-3 (!4% ,-2 " % % ,!$ + )22% $ 2-.0!# 2)# % " % &-0% 2(% -3 02( )0# 3 )2
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THE CLERK WILL ENTER MY APPEARANCE IN APPEAL NO. @@@@@@@@@@@@@@@@@@@@@@@@@@@@@@

10-2007 AQ
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1600 Tysons Boulevard; Suite 900
McLean, VA 22102-4865
@@@@@@@@@@@@@@@@@@@@@@@@@@@@@@@@@@ randall.miller@aporter.com
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$ $ 0% 11 +!)*!$ $ 0% 11 .0),2 -027.%
OR, I, ______________________________________, AM NOT PARTICIPATING IN THIS CASE.

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ACT Et Al Amicus Brief in Rosetta Stone V Google

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ACT Et Al Amicus Brief in Rosetta Stone V Google

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Case: 10-2007 Document: 37-1 Date Filed: 11/01/2010 Page: 1

RECORD NUMBER: 10-2007

United States Court of Appeals

ROSETTA STONE LTD.,

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

BRIEF OF AMICI CURIAE IN SUPPORT

RANDALL K. MILLER ROBERTA L. HORTON

Counsel for Amici Curiae

COUNSEL PRESS • VA – (800) 275-0668

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

6. Does this case arise out of a bankruptcy proceeding? YES NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

6. Does this case arise out of a bankruptcy proceeding? YES 4 NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

6. Does this case arise out of a bankruptcy proceeding? YES 4 NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

6. Does this case arise out of a bankruptcy proceeding? YES 4 NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

3. Is 10% or more of the stock of a party/amicus owned by a publicly held corporation or

6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,

6. Does this case arise out of a bankruptcy proceeding? YES ✔ NO

/s/ Brent S. LaBarge

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Pursuant to FRAP 26.1 and Local Rule 26.1,