Lost in Translation: Repairing Rosetta Stone v. Google’s Indecipherable Functionality Holding
Lost in Translation: Repairing Rosetta Stone v. Google's Indecipherable Functionality Holding
A. J. Frey 0 1
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1 A. J. Frey, Lost in Translation: Repairing Rosetta Stone v. Google's Indecipherable Functionality Holding
68 Wash. & Lee L. Rev. 1505 (2011), http://scholarlycommons.law.wlu.edu/wlulr/vol68/iss3/23
Lost in Translation: Repairing Rosetta
Stone v. Google’s Indecipherable
I. Introduction ................................................................................1506
∗ Candidate for J.D., Washington and Lee University School of Law, May 2012. I
would like to thank Professor Sarah Wiant, without whom this Note would not have been
published; my family for being my tireless cheerleaders; and my wife Chloe for her
unyielding love and support.
In the last year, two new developments—one legal and one
technological—have converged, placing the legal system at a critical juncture
as it strives towards a workable set of rules for understanding and regulating
Internet search engine technology. The August 2010 ruling by the District
Court for the Eastern District of Virginia in Rosetta Stone v. Google1 and the
October 2010 release of Google Inc.’s "Google Goggles"2 technology for the
Apple iPhone3 (which greatly expanded consumer access to Google
Goggles)4 together represent an impending paradigm shift in both the
technical means of Internet searching and the legal response to evolving
technology. The District Court’s ruling in Rosetta Stone, while correctly
decided and forward-thinking, contains fatal flaws in its analysis of
trademark law’s "functionality doctrine"; meanwhile, the increasing ubiquity
of Google’s Google Goggles technology is challenging the boundaries of
2. See infra Part II.C (explaining in more detail the Google Goggles technology,
which is a software program for smartphones that allows a user to take pictures of virtually
anything, using his or her mobile device’s camera, and use those digital images as search
inputs, in lieu of keywords, to run Google searches).
3. See Frank Reed, Google Goggles for iPhone Released, MARKETING PILGRIM (Oct.
6, 2010), http://www.marketingpilgrim.com/2010/10/google-goggles-for-iphone-released.
html (last visited Oct. 10, 2011) (announcing the release of Google Goggles for the Apple
iPhone) (on file with the Washington and Lee Law Review).
4. See MG Siegler, Search by Sight with Google Goggles, TECHCRUNCH (Dec. 7,
2009), http://techcrunch.com/2009/12/07/google-goggles (last visited Oct. 10, 2011)
(announcing the availability of Google Goggles for Android smart phones) (on file with the
Washington and Lee Law Review). The release of Google Goggles for the iPhone followed
the December 2009 release of a beta version of Google Goggles for smart phones running
the Google Android operating system. The release of Google Goggles for the iPhone is of
particular significance because it marks the point at which Google Goggles became freely
available to the majority of the smartphone-using public. See Paul Miller, Canalys: Android
Takes Q2 Smartphone Market Share Lead in US with 886 Percent Year-Over-Year Growth,
ENGADGET (Aug. 2, 2010, 10:44 AM),
http://www.engadget.com/2010/08/02/canalysandroid-takes-q2-smartphone-market-share-lead-in-us-wit (last visited Oct. 10, 2011)
(reporting the combined U.S. market share of Apple mobile devices and Android mobile
devices as 55.7% of the market) (on file with the Washington and Lee Law Review).
what it means to interface with search engines and is a portent of greater
advances to come. The convergence of these two events—the Rosetta Stone
decision and the arrival of Google Goggles—provides a dramatic lesson in
why courts must decide trademark disputes correctly if trademark law is to
remain an effective body of law to police online commerce and why the
intellectual property doctrine of functionality has no place in trademark
infringement claims on the Internet.
The argument presented in this Note is threefold. First, Rosetta Stone
was rightly decided for the wrong reasons. The district court, struggling
under the constraints of traditional trademark law doctrine to reach a result
that would allow Google to use the Rosetta Stone marks without imposing
legal liability, misinterpreted and misapplied the functionality doctrine to
provide Google with a superfluous legal justification for its actions.5
Second, although the court in Rosetta Stone was well-meaning, its use of
the functionality doctrine to validate Google’s sale of trademarks to
thirdparty online advertisers will have unintended and damaging consequences for
search engines, mark-holders, and the legal system as a whole. The emerging
technology embodied in Google Goggles provides a perfect predictive lens
through which to imagine these consequences. In short, new search
technologies militate against using the functionality doctrine in trademark
infringement claims against search engines and similar online entities. The
district court’s decision to dismiss Rosetta Stone’s trademark infringement
claims had sufficient footing on separate legal grounds without needing to
resort to use of the functionality doctrine: The doctrine has no place in
Internet-based trademark infringement claims.
Third, the fact that Rosetta Stone’s claim could have been dismissed on
other grounds alone does not negate the fact that courts struggle mightily with
trademark infringement claims against search engines and are in need of a
new legal doctrine in this context to allow fair and economically efficient use
of trademarks by online entities. The Rosetta Stone court’s sweeping
expansion of the functionality doctrine was a direct result of its inability to
utilize the better-suited "nominative fair use" doctrine adopted by the Ninth
Circuit, but thus far rejected by the Fourth Circuit.6 On appeal, the Fourth
5. See Amy E. Bivins, Google Prevails in AdWords Infringement Case Under
Keyword ‘Functionality’ Doctrine, BNA: PATENT, TRADEMARK & COPYRIGHT LAW DAILY
(Aug. 13, 2010), available at http://news.bna.com.ezproxy.wlu.edu/ptln/PTLNWB/split_
19264&split=0 ("[T]he functionality doctrine has not been raised frequently in keyword
advertising litigation, and was a somewhat novel component of the court’s decision . . . .").
6. See Brief of International Trademark Association as Amicus Curiae at 23, Rosetta
Stone Ltd. v. Google, Inc., No. 10-2007 (4th Cir. Nov. 1, 2010) [hereinafter INTA Brief]
Circuit should vacate the court’s decision and adopt the doctrine of
Part II of this Note explains the revolution in Internet searching
precipitated by Google Goggles, its relation to Google’s revenue-generating
AdWords technology,7 and the legal response that must necessarily be
forthcoming in order to make efficient use of these technologies. Part III
introduces the latest shot across Google’s bow in the battle over Google’s
AdWords technology and its use of trademarks in that technology, Rosetta
Stone v. Google. Part III’s discussion focuses primarily on the district court’s
flawed application of trademark law’s functionality doctrine: It demonstrates
that the functionality doctrine has no place in the determination of whether
Internet search companies’ use of trademarks to generate advertising revenue
is legal or fair to mark-holders. Part IV connects the court’s erroneous
functionality analysis in Rosetta Stone to the new search technology
encapsulated by Google Goggles and explains why the court’s reasoning is
wholly inadequate to deal with this emerging technology and should be
overturned on appeal. Part V of this Note proposes a way forward for the
Fourth Circuit, and for courts generally, as they struggle to regulate Google
and other Internet search companies’ use of trademarks. It concludes, first,
that both total protection for mark-holders based on traditional trademark law
and total indemnification from liability for search engines based on the
functionality doctrine are inefficient and undesirable outcomes; and second,
that the Rosetta Stone decision should be vacated and that the Fourth Circuit
should adopt the nominative use doctrine.
(urging the adoption of the nominative fair use doctrine by the Fourth Circuit). The
International Trademark Association, in its amicus brief to the Fourth Circuit in Rosetta
Stone v. Google argues that the "nominative fair use" doctrine gives the defendant the "right
to use another’s trademark . . . as long as: (1) the product or service in question is one not
readily identifiable without the use of the trademark, (2) the use of the mark . . . is
reasonably necessary to identify the product or service, and (3) the user does not do anything
that would, in conjunction with the mark, suggest sponsorship or endorsement by the
trademark holder." Id.
7. See infra Part II.B (explaining in further detail the operation of AdWords, which is
an online auction program that allows businesses to bid on and buy search terms, which
Google users input when searching, in order to have the winning bidder’s advertisements
displayed on the search results pages for certain terms).
II. Google AdWords, Google Goggles, and the Search Revolution
A. Google’s Position in the Market
In the realm of Internet search technology, one name stands above all
others in the popular consciousness: Google. Google, Inc. is a hugely
influential company, the operations of which affect every consumer of
Internet services on a daily basis and provide a plethora of services that are
indispensible to the function of the Internet as we know it.8 Google’s
breadand-butter service is, and always has been, Internet searching.9 Constantly
pioneering new means of Internet searching, Google is both the dominant
actor and the leading "norm creator"10 in the search technology sector. Using
aggregating, indexing, and ranking technology superior to that of its
competitors,11 Google has grown from a novel start-up to a household name
in Internet services in just over a decade.12
Along the way, as Google has defended its various business practices in
court, the legal system has struggled to keep up with Google’s ever-evolving,
increasingly ubiquitous technology.13 Perhaps more than any other of its
business practices, Google’s advertising programs—specifically its AdWords
8. See Inside the Googleplex, ECONOMIST, Aug. 30, 2007, at 56–58 (noting that many
Internet-users "keep their photos, blogs, videos, calendars, e-mail, news feeds, maps,
contacts, social networks, documents, spreadsheets, presentations, and credit-card
information—in short, much of their lives—on Google’s computers"); Who’s Afraid of
Google?, ECONOMIST, Aug. 30, 2007, at 9 (observing that, while other search engines do
exist, "Google, through the sheer speed with which it accumulates the treasure of
information, will be the one to test the limits of what society can tolerate").
9. See KEN AULETTA, GOOGLED: THE END OF THE WORLD AS WE KNOW IT 7 (2009)
(estimating the number of daily searches performed on Google each day to be over 3
10. Stacy L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on
the Internet, 41 HOUS. L. REV. 777, 784 (2004) (coining the term to describe courts that deal
with consumer confusion cases involving Internet search technology, noting that "the rules
they develop will determine practices on the Web and whether the Internet realizes its
potential as a vast clearinghouse of information and content").
11. See AULETTA, supra note 9, at 6 (describing Google’s "secret sauce," a complex
set of algorithms that "not only rank those [Internet] links that generate the most traffic, and
are therefore presumed to be more reliable," but also "assign a higher qualitative ranking to
more reliable sources—like for instance, a New York Times story").
12. See Googleplex, supra note 8, at 56–58
(noting that Google’s "share price has
quintupled since 2004 [the year of its IPO], making Google worth $160 billion" in 2007)
13. See Greg Lastowka, Google’s Law, 73 BROOK. L. REV. 1327, 1328–29 (2008)
("While the law should be cautious in how it regulates new technologies such as Google, as
Justice Cardozo once noted, major technological changes often call for the transformation of
program—have generated the most complex and novel legal challenges for
the courts.14 Driven by trademark-holders who accuse Google of direct and
contributory trademark infringement through its AdWords program, these
legal actions have led to a patchwork of inconsistent judicial opinions
interpreting federal trademark law and stretching the limits of traditional
trademark doctrines.15 The underlying tension in these rulings is an
economic balancing act requiring courts to weigh the commercial benefits of
strong trademark protection for mark-holders on the one hand, against the
social and economic value of consumer access to freely and quickly
accessible online information provided by search engine companies on the
Google’s track record in these trademark disputes has been mixed.17 As
search engine technology has matured, the courts seem to have reached a
14. See, e.g., Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531, 545 (E.D. Va.
2010) (involving an action against Google for the sale of trademarked terms to third-party
advertisers through Google’s AdWords advertising system); Rescuecom Corp. v. Google
Inc., 562 F.3d 123, 124 (2nd Cir. 2009) (same); Google Inc. v. Am. Blind & Wallpaper
Factory, Inc., No. C 03-5340 JF, 2007 U.S. Dist. LEXIS 32450, at *3–5 (N.D. Cal. Apr. 18,
2007) (same); Gov’t Employees Ins. Co. ("GEICO") v. Google, Inc., 330 F. Supp. 2d 700,
702 (E.D. Va. 2004) (same).
15. See Dogan & Lemley, supra note 10, at 802 ("[A] handful of courts have widened
the net of trademark infringement to encompass search engines . . . and others who help
competitors reach their audiences through nontraditional ‘uses’ of established marks.").
16. See id. at 786–92 (discussing the general economic rationale behind the law of
trademarks, including the reduction of "search costs" and the protection of "goodwill").
17. See cases cited supra note 14 (involving trademark infringement or dilution
actions against Google for the sale of trademarked terms to third-party advertisers through
Google’s AdWords advertising system). Rosetta Stone’s trademark infringement claims
against Google were dismissed, and Rosetta Stone has appealed to the Fourth Circuit. See
Don Jeffrey, Rosetta Stone Appeals Loss to Google in Trademark Case over Web Searches,
BLOOMBERG (Sept. 1, 2010, 4:34 PM),
visited Oct. 10, 2011) ("Rosetta Stone Inc. appealed a judge’s ruling that Google Inc. didn’t
infringe its trademarks by selling the language-software maker’s marks to rivals for use as
search keywords.") (on file with the Washington and Lee Law Review). Rescuecom’s
infringement claim against Google was dismissed by the trial court; however, the Second
Circuit reversed the trial court, finding that Google’s AdWords practices constituted "use in
commerce." Rescuecom Corp. v. Google Inc., 562 F.3d 123, 124 (2009). Google settled its
litigation with American Blinds in what was widely seen as a victory for Google. See Linda
Rosencrance, American Blinds Drops Trademark Infringement Suit Against Google,
COMPUTERWORLD (Sept. 4, 2007, 12:00 PM), http://www.computerworld.com/s/article/
ws_ts_head (last visited Oct. 10, 2011) (noting that American Blinds dropped the suit
without Google having "to pay any money to settle the dispute") (on file with the
Washington and Lee Law Review). The court in GEICO denied Google’s motion to dismiss
the claims against it, but ultimately found for Google "on the issue of infringement, finding
loose consensus that Google’s sale of trademarked terms to third parties does
fall within the Lanham Act’s definition of "use in commerce,"18 potentially
subjecting Google to liability for trademark infringement claims.19
Additionally, courts have expanded the traditional reach of the trademark
infringement cause of action by developing the doctrine of "initial interest
confusion,"20 which can function as an almost separate cause of action in
Internet cases21 and has the potential to further mire Google and other
Internet search providers in trademark infringement litigation.22 The legal
theories underlying trademark infringement actions against Google are
discussed in more detail in Parts III and V.
B. Google AdWords
Foremost among the legal challenges to Google’s search business have
been actions based in trademark law that attack Google’s primary source of
that GEICO failed to demonstrate a likelihood of consumer confusion." Lastowka, supra
note 13, at 1387.
18. 15 U.S.C. § 1125(a)(1) (2000). The Lanham Act (15 U.S.C. §§ 1051–1127) sets
out the federal cause of action for trademark infringement. One element of an infringement
claim is proof that a defendant "uses" a mark "in commerce," "on or in connection with any
goods or services." Id. "Use in commerce" is defined as "the bona fide use of a mark in the
ordinary course of trade, and not merely to reserve a right in a mark." 15 U.S.C. § 1127
19. See, e.g., GEICO, 330 F. Supp. 2d at 704 (denying Google’s motion to dismiss;
finding that plaintiff GEICO adequately alleged trademark use). Along with the trademark
infringement cause of action, courts have also used the "trademark dilution" cause of action
as a means of protecting trademark owners, but the focus of this Note will be solely on
trademark infringement. For a thorough explanation of the developing doctrine of trademark
dilution, including the 2006 passage of the Trademark Dilution Revision Act, see Lastowka,
supra note 13, at 1367–70; see also Trademark Dilution Revision Act, 15 U.S.C.
§ 1125(c)(2) (2000) (establishing two types of federal dilution harm, "dilution by blurring"
and "dilution by tarnishment"); Lastowka, supra note 13, at 1367 ("Dilution’s controversial
innovation is that it protects marks without the need for plaintiffs to demonstrate consumer
20. See 4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:6 (4th ed.)
("Infringement can be based upon confusion that creates initial customer interest, even
though no actual sale is finally completed as a result of the confusion.").
21. See Eric Goldman, Deregulating Relevancy in Internet Trademark Law, 54 EMORY
L.J. 507, 564 (2005) ("Courts have also been unclear whether IIC [initial interest confusion]
supports a determination of a ‘likelihood of consumer confusion,’ or if IIC creates a different
measurement for infringement, such as a ‘likelihood of initial interest confusion.’").
22. See id. at 559 ("With its doctrinal flexibility, [initial interest confusion] has
become the tool of choice for plaintiffs to shut down junior users who have not actually
engaged in misappropriative uses.").
revenue, online advertising.23 Google’s substantial advertising revenue24 is
generated primarily through its AdWords technology.25 AdWords is an
online auction system that allows third-party advertisers to purchase from
Google, as "triggers," individual words or phrases that Internet users might
input when using Google to search.26 AdWords constitutes just one of the
many mechanisms Google uses to generate advertising revenue through
commercial use of its search engine, although it is by far the most
The AdWords system works by displaying sponsored search results
separately from "organic" search results on the search results webpage.28
When a Google user searches for a trigger term, the organic search results
generated by Google’s algorithms are accompanied by "sponsored links"
(advertisements) to the right and top of the results page.29 These sponsored
23. See cases cited supra note 14 (citing cases involving trademark infringement or
dilution actions against Google for the sale of trademarked terms to third-party advertisers
through Google’s AdWords advertising system).
24. See AULETTA, supra note 9, at xi ("Google’s advertising revenues—more than
twenty billion dollars a year—account for 40 percent of all the advertising dollars spent
online."); Google Inc., Annual Report (Form 10K) at 41 (Feb. 12, 2010), available at
Google’s revenue from advertising to be 97% of its total revenue in 2009)
25. See Duncan Ross, Beginner’s Guide to Google AdWords, SYDNEY MORNING
HERALD, Apr. 28, 2009, available at http://www.smh.com.au/news/technology/biztech/
beginners-guide-to-google-adwords/20090615-c9n1.html (providing, in layman’s terms, a
brief overview of Google’s AdWords technology aimed at small business-owners who might
be interested in utilizing AdWords to advertise their businesses).
26. See Google, How Search Ads Works, YOUTUBE (Jan. 18, 2010),
http://www.youtube.com/watch?v=ka4tCkYXHiE (last visited Oct. 10, 2011) (explaining
the function of AdWords). For a more detailed explanation of the way in which AdWords
technology operates and the arguments for and against Google’s use of AdWords, see
Ashley Tan, Note, Google AdWords: Trademark Infringer or Trade Liberalizer?, 16 MICH.
TELECOMM. & TECH. L. REV. 473, 474–80 (2010).
27. See Lastowka, supra note 13, at 1348 (discussing a second prominent advertising
method for Google, its "AdSense" technology). AdSense is a "program whereby website
owners are paid by Google to provide advertising space on their websites where AdWords
advertisements are displayed." Id. at 1349. In this regard, AdSense is effectively an
outgrowth of Google’s AdWords program.
28. See How Search Ads Work, supra note 26 (noting that Google’s organic search
results are always displayed on the left-hand side of the results page, while advertisements
are displayed, if at all, on the top and right-hand side of the page).
29. See id. (explaining Google’s commitment to transparency and ease of use on its
search results page and noting that it is in the company’s self-interest to allow users to easily
distinguish between organic and sponsored results). Google is extremely diligent and
inflexible about the on-screen graphical boundaries between organic and sponsored search
results: The company maintains as part of its stated mission the goal of making clear to
users which results are organic and which are sponsored. But cf. Lastowka, supra note 13, at
links are displayed because advertisers have purchased specific search terms
from Google, through a competitive bidding system, which are then tethered
to the advertisers’ sponsored results.30 Trigger words can be terms in
common usage, like "fly fishing," or they might be trademarked terms, like
"Orvis."31 Thus, a competitor company to Orvis may purchase the term
"Orvis" as a Google AdWord so that when a user searches for "Orvis," the
competitor’s advertisement will appear on the right-hand side of the search
results page, allowing users to click on it and view the competitor’s website.32
The ability of third-party advertisers to buy terms with trademark
meanings did not always exist. In 2004, Google made a conscious decision
to stop restricting the sale of trademarked terms to only the holders of those
marks.33 Before its initial public offering in 2004, Google announced that it
would accept "bids for terms that corresponded with the names of brands"
from any bidder, not just the holder of the brand’s trademark.34 Shortly after
Google announced its decision, the first of many trademark infringement and
dilution suits against the company was brought by the insurance carrier
GEICO for selling its brand name, "Geico," as an AdWords trigger term.35
Since 2004, Google has faced several more legal challenges to its sale of
terms with trademark meanings to advertisers other than the mark-holders,
the most recent of which is Rosetta Stone v. Google, discussed at length in
1345 ("The left/right distinction is very important to Google, but studies have shown it is not
important to the average user.").
30. See Lastowka, supra note 13, at 1339–40 (detailing the operation and origin of
Google’s bidding system and noting that it was a business model originally developed by
one of Google’s competitors, GoTo.com, which Google later acquired).
31. See id. at 1343–44 (using another example, the search term "Nike," to illustrate the
distinction between sponsored and organic results and providing screenshots of sample
Google results pages to clarify the explanation).
32. See id. at 1344 ("In the right column, various AdWords advertisements for the
search term ‘Nike’ are listed. These include advertisers that sell Nike footwear as well as
other brands of sneakers.").
33. See Stefanie Olsen, Google Plans Trademark Gambit, CNET NEWS (Apr. 13,
2004), http://news.cnet.com/2100-1038_3-5190324.html (last visited Oct. 10, 2011)
("Google plans to stop limiting sales of trademarks in its popular keyword advertising
program, a high-stakes gamble that could boost revenue but also create new legal problems
for the company.") (on file with the Washington and Lee Law Review).
Lastowka, supra note 13, at 1360.
35. See GEICO, 330 F. Supp. 2d at 701 (involving an action by an insurance company
against Google for the sale of a trademarked term, in this case "Geico," to third-party
advertisers through Google’s AdWords advertising program).
36. See Stephanie Yu Lim, Comment, Can Google Be Liable For Trademark
Infringement? A Look at the "Trademark Use" Requirement as Applied to Google AdWords,
C. Google Goggles
With AdWords as its core revenue-generating engine, Google has
continued to expand the channels by which consumers of Internet search
services can access its search engine and thereby be exposed to advertising
content.37 Not traditionally a company to rest on its laurels, Google has
recently thrown the world of Internet search technology into flux once again
with a potentially paradigm-shifting expansion of its search technology.38
Historically, the dominant, indeed the sole, way to input information into an
Internet search engine has been through either text or voice input (which is
then converted to text).39 Until quite recently, in order to search for
something using a conventional search engine, an Internet user would have
needed to input the desired search term in textual form—for instance the
word "Pepsi"—into the search engine’s text bar, and then the search engine
would return a list of relevant results.40 Google’s latest search technology,
Google Goggles, has expanded the way Internet users can search by
eliminating the need for textual input.41 Now, using the Google Goggles
software, those with smartphones and other mobile devices can search based
directly on images—pictures taken with a device’s camera—with the images
themselves functioning as the inputs into the search engine.42 The technology
14 UCLA ENT. L. REV. 265, 270–81 (2007) (providing a comprehensive survey of previous
legal challenges to Google’s practice of selling trademarked terms as AdWords triggers).
37. See Harry McCracken, The Undiscovered Google: 7 Services You Need to Try,
FOX NEWS (Mar. 9, 2010),
http://www.foxnews.com/scitech/2010/03/09/undiscoveredgoogle-services-need-try (last visited Oct. 10, 2011) (listing some of the lesser known and
emerging services provided by Google, including Google Fast Flip, Google Product Search,
Google Squared, and Google Voice) (on file with the Washington and Lee Law Review).
38. See Claudine Beaumont, Google Launches Google Goggles Visual Search,
TELEGRAPH (Dec. 7, 2009, 6:30 PM), http://www.telegraph.co.uk/technology/google
/6752725/Google-launches-Google-Goggles-visual-search.html (last visited Oct. 10, 2011)
(announcing the worldwide launch of Google’s "Google Goggles" visual search technology)
(on file with the Washington and Lee Law Review).
39. See Goldman, supra note 21, at 511 (explaining that, conventionally, "[s]earch
engines [would] allow a searcher to enter a keyword into a search box and make a query
against a database of content").
works by breaking down images into "object-based signatures."43 Google’s
search engine "then compares those signatures against every item it can find
in its image database" and returns relevant webpage results to the user, just as
if the search had been done using conventional text input.44 In other words,
instead of typing the word "Pepsi" into Google’s search bar, an individual
with a smartphone can simply take a picture of the Pepsi logo on a can of
Pepsi, and Google will return search results based on that logo.45
While still in its technological infancy, Google Goggles and its
successors have the potential to expand drastically the available potential
inputs for Internet search engines. No longer are users confined to textual
keywords for their searches; now, images, and in time sounds, music,46 video
content, and even tastes and smells will be available channels for generating
search engine results.47 Of course, with this sweeping expansion of search
43. JR Raphael, A Hands-On Tours: Google Goggles Visual Search, PC WORLD
(Dec. 7, 2009), http://www.pcworld.com/article/183933/a_handson_tour_google_goggles_
visual_search.html (last visited Oct. 10, 2011) (on file with the Washington and Lee Law
45. See id. (noting that "Google Goggles doesn’t work well with food, cars, plants, or
animals," but that "[d]evelopers say the app will soon be able to recognize plants by their
leaves, even suggest chess moves by ‘seeing’ an image of your current board"). The Google
Goggles software currently works best with business cards, logos, book covers, wine labels,
pieces of art, and the like. Id. The ultimate goal for the program is for Goggles to have the
capability to recognize any image with the aid of Google’s enormous database of digital
46. See Carrie-Ann Skinner, Shazam Launches BlackBerry Music Recognition App,
PC ADVISOR (Apr. 9, 2009), http://www.pcadvisor.co.uk/news/index.cfm?NewsID=113645
(last visited Oct. 10, 2011) (announcing the launch of music recognition software for the
BlackBerry mobile device) (on file with the Washington and Lee Law Review). Software
that allows users to identify songs by holding their computers or mobile devices up to a
source of music have existed for a number of years, and while Google has not been at the
forefront of this particular technology, there is every reason to believe that a marriage of
song-recognition software and search engine technology is in the near future. See Fabrizio
Pilato, AT&T Wireless Launches First Music Recognition Software in the U.S., MOBILE
MAG. (Apr. 15, 2004, 1:01 AM),
http://www.mobilemag.com/2004/04/15/att-wirelesslaunches-first-music-recognition-service-in-the-us (last visited Oct. 10, 2011) (announcing
one of the first music recognition software offerings by a U.S. cellular phone company) (on
file with the Washington and Lee Law Review).
47. See, e.g., Nick Bilton, Bits: Video Search Company Gets Investor Attention, N.Y.
TIMES (Dec. 21, 2010, 11:00 AM),
http://bits.blogs.nytimes.com/2010/12/21/video-searchcompany-gets-investor-attention (last visited Oct. 10, 2011) ("3VR Security, based in San
Francisco, Calif., says it has solved that problem with technology that automatically catalogs
video footage so that it can be searched at a later date, just like looking up a query on
Google.") (on file with the Washington and Lee Law Review); Stephen Williams,
Gadgetwise: Discovered While Nosing Around CES . . . ., N.Y. TIMES (Jan. 14, 2011, 7:14
/01/14/discovered-while-nosing-around-c-emethods comes a tempest of legal challenges for courts to contend with.
What rights, if any, will trademark and copyright holders have to keep
Google from using their corporate logos or brand images as visual triggers for
a new, evolved AdWords (or perhaps "AdPics") program? Should trademark
law restrict Google or others from allowing their consumers to use sights,
sounds, and words as inputs into its search engine? Does public policy weigh
in favor of giving search engines unfettered use of protected content in the
name of generating relevant search results? Most importantly, is the body of
trademark law equipped to decide these questions?
Although the rapid evolution of search engine technology leaves many
legal problems to be resolved, they are largely beyond the scope of this
Note.48 The latest legal challenge to Google’s AdWords program does,
however, offer a vision of what future legal responses to this changing
technology may look like if courts insist on misapplying and contorting
existing intellectual property law doctrines to fit the novel facts presented by
Internet cases of this type. After presenting the facts and legal analysis of
Rosetta Stone v. Google in Part III of this Note, Part IV’s discussion centers
around the dangers to both the body of trademark law and the right of free
access to relevant online information caused by further flawed legal
reasoning of the type present in Rosetta Stone. Part V proposes a solution
that keeps Google’s challenged practices within traditional trademark law
analysis but ensures continued broad access to the wealth of information
Google’s technology provides.
III. Rosetta Stone v. Google
A. Facts of the Case: Google’s AdWords; Rosetta Stone’s Marks
Rosetta Stone is a Virginia corporation that creates "technology-based
language learning products and services"49 and is internationally known as
s/?scp=1&sq=CES%20smell&st=cse (last visited Oct. 10, 2011) (discussing an emerging
technology that coordinates the release of specific smells into a consumer’s home based on
digital signals embedded in television and video programming) (on file with the Washington
and Lee Law Review).
48. See Goldman, supra note 21, at 552 (noting that "[f]ederal trademark law applies
to Internet conduct in three principal ways: trademark infringement, trademark dilution, and
anti-cybersquatting"). As Professor Goldman points out, "all three laws have important
implications for Internet search." Id. However, the focus of this Note is chiefly on
49. Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531, 535 (E.D. Va. 2010).
one of the premier makers of language learning software in the world.50
After learning that Google had begun selling keywords that Rosetta Stone
had registered as trademarks51 to third-party advertisers through the AdWords
program, the company brought claims of trademark infringement and dilution
against Google in the District Court for the Eastern District of Virginia.52
The claims were made on the grounds that Google was "actively
assisting . . . advertisers to mislead consumers and misappropriate Rosetta
Stone’s trademarks by using the trademarks (1) as keyword triggers for paid
advertisements and (2) within the title and text of paid advertisements on
Google’s website."53 Rosetta Stone alleged that, by giving third-party
the right to use the Rosetta Stone Marks or words, phrases, or terms
similar to those Marks as keyword triggers that cause Sponsored Links
to be displayed, Google [was] helping these advertisers misdirect web
users to websites of companies that (i) compete with Rosetta Stone,
(ii) sell language education programs from Rosetta Stone’s competitors,
(iii) sell counterfeit Rosetta Stone products, or (iv) are entirely unrelated
to language education.54
Both parties moved for summary judgment, and the court ruled in
Google’s favor on all relevant trademark issues, finding that Google was
"not directly, vicariously, or contributorily liable for its sale of trademarks
as advertising keywords."55 Rosetta Stone has appealed the ruling to the
50. See Alex Madrigal, My First Night with Rosetta Stone, THE ATLANTIC (Jan. 12,
2011, 11:01 AM),
/01/my-first-nightwith-rosetta-stone/69384 (last visited Oct. 10, 2011) (noting that Rosetta Stone is "by far the
most heavily marketed and well-known" language software) (on file with the Washington
and Lee Law Review); Ernest Scheyder, Rosetta Stone Suit vs. Google Dismissed, REUTERS
(Apr. 29, 2010, 6:09 PM), http://www.reuters.com/article/idUSTRE63S5DD20100429 (last
visited Oct. 10, 2010) ("Rosetta sells software to help users learn one of 31 languages,
including Farsi, French and Irish.") (on file with the Washington and Lee Law Review).
54. Id. at 539.
55. Bivins, supra note 5. The court held that: (1) Google’s practice of auctioning
Fourth Circuit Court of Appeals, where it is currently pending.56 The
district court’s decision in favor of Google has been controversial and has
drawn both criticism and praise from interested parties,57 many of whom
have joined the action as amici, filing numerous briefs with the appeals
court.58 The critiques of the district court’s decision are too numerous to fit
within the scope of this Note,59 but the one which has drawn perhaps the
most critical attention is the district court’s ruling that Google’s use of the
Rosetta Stone marks was protected by trademark law’s functionality
B. The Court’s Decision
Before delving into the district court’s functionality analysis, it is
important to frame it within the court’s broader opinion. The district
marks as keyword triggers for links sponsored by third-party advertisers did not constitute
direct trademark infringement; (2) functionality doctrine protected Google’s use of the
marks; (3) Google was not liable for contributory trademark infringement; (4) Google was
not liable for vicarious trademark infringement; and (5) Google could not be held liable for
trademark dilution. Rosetta Stone, 730 F. Supp. 2d at 534. The court granted Google’s
motion for summary judgment on the trademark infringement claim because "no reasonable
trier of fact could find that Google’s practice of auctioning Rosetta Stone’s trademarks as
keyword triggers to third-party advertisers creates a likelihood of confusion as to the source
or origin of Rosetta Stone’s products." Id. at 540.
See generally Rosetta Stone Ltd. v. Google Inc., No. 10-2007 (4th Cir. filed Sept.
57. Sheri Qualters, Showdown over Web Searches, NAT’L L.J. (Dec. 20, 2010),
http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=1202476363617 (last visited Oct. 10,
2011) (noting that various interested parties have filed briefs challenging the district court’s
analysis of "likelihood of confusion," "trademark dilution," "functionality doctrine," and
"contributory infringement," among other issues) (on file with the Washington and Lee Law
58. See id. (reporting that "[m]ore than three dozen technology and consumer products
companies and trade groups" have joined as amici, including "Coach Inc., Ford Motor Co.
and Tiffany & Co and technology companies such as TiVo Inc. and Viacom Inc.").
59. See id. (enumerating the errors of the district court’s ruling). Criticisms of the
district court’s ruling include claims that it decided the "functionality doctrine" issue
wrongly, that it failed to find Google liable for "contributory trademark infringement," that it
failed to apply the doctrine of "nominative fair use," and that it misapplied the nine-factor
test for analyzing "consumers’ likelihood of confusion" by "ignoring six factors" and
"erroneously" analyzing the other three. Id.
60. See Bivins, supra note 5 (noting that the International Trademark Association
called the district court’s analysis a "‘radical interpretation of the functionality doctrine’
to . . . focus on whether Google’s use of the Rosetta Stone mark served a functional role in
court’s holding—that Google’s use of the Rosetta Stone marks is protected
by virtue of the functionality doctrine—came in the final section of its
direct trademark infringement analysis, after its conclusion that Google’s
use of the mark was noninfringing on other grounds.61 Mapping the
traditional cause of action for direct trademark infringement,62 the court
found the parties’ sole dispute to be over the existence of "consumer
confusion" related to Google’s use of the marks.63 Furthermore, of the
traditional "nine factors" used to judge consumer confusion, "only three of
the nine confusion factors [were] in dispute."64 Examining the issues of
"(1) defendant’s intent; (2) actual [consumer] confusion; and (3) the
consuming public’s sophistication,"65 one by one, the court found that
"Google’s use of the Rosetta Stone marks [did] not amount to direct
In particular, on the issue of Google’s intent, the court found that
"Google [was] not attempting to pass off its goods or services as Rosetta
Stone’s."67 Rebuffing one of Rosetta Stone’s main contentions, the court
61. See Rosetta Stone, 730 F. Supp. 2d at 545 ("Notwithstanding a favorable finding
for Google under the relevant infringement elements, the functionality doctrine protects
Google’s use of the Rosetta Stone Marks as keyword triggers.").
62. See 15 U.S.C. § 1125 (2000) (setting forth the federal cause of action for
trademark infringement). Under the Lanham Act, a cause of action for trademark
infringement requires a plaintiff to prove five elements: "that (1) it possesses a mark;
(2) defendant used the mark; (3) defendant’s use of the mark occurred in commerce;
(4) defendant used the mark in connection with the sale, offering for sale, distribution, or
advertising of goods or service; and (5) defendant used the mark in a manner likely to
confuse consumers as to the source or origin of goods or service." Rosetta Stone, 730 F.
Supp. 2d at 540 (citing People for the Ethical Treatment of Animals v. Doughney, 263 F.3d
359, 364 (4th Cir. 2001)).
63. See Rosetta Stone, 730 F. Supp. 2d at 540. As the court pointed out, the traditional
measure of "consumer confusion" within a trademark infringement claim consists of a "nine
factor" test. The factors can include: (1) strength or distinctiveness of the mark;
(2) similarity of the two marks to consumers; (3) similarity of the goods and services the
marks identify; (4) similarity between the facilities used by the mark-holders; (5) similarity
of advertising used by the mark-holders; (6) defendant’s intent; (7) actual confusion;
(8) quality of defendant’s product; (9) sophistication of the consuming public. See id.
Professor Goldman notes that "[e]ach federal circuit has developed its own set of factors to
consider" for determining the likelihood of consumer confusion. Goldman, supra note 21, at
552–53. Because the number of factors varies from circuit to circuit, the consumer
confusion test is commonly referred to as "the multifactor likelihood of consumer confusion
test" or "MFLOCC test." Id. For a summary of the common factors included in the
MFLOCC test from circuit to circuit, see 4 MCCARTHY, supra note 20, § 24:29.
Rosetta Stone, 730 F. Supp. 2d at 540–41.
65. Id. at 541.
66. Id. at 545.
67. Id. at 541.
stated that "evidence of [Google’s] financial gain alone is insufficient
evidence of intent" to "trade on the Rosetta Stone Marks."68 Addressing the
issue of actual consumer confusion, the court made two findings that
derailed Rosetta Stone’s argument: First, the court discounted Rosetta
Stone’s reliance on prior case law,69 which it found distinguishable because
"Rosetta Stone and Google are not direct competitors in the
languagelearning software market."70 Second, the court concluded that survey
evidence submitted by Rosetta Stone purporting to demonstrate actual
consumer confusion was "de minimis."71
Finally, on the issue of consumer sophistication, the court found the
relevant segment of consumers to be "not the public at-large, but only
potential buyers of [Rosetta Stone’s] products," whose sophistication the
court concluded to be higher than average based on the nature and price of
Rosetta Stone’s product.72 The court’s finding that the "expertise and
sophistication" of Rosetta Stone’s potential customers tended "to
demonstrate that they are able to distinguish between the Sponsored Links
and organic results displayed on Google’s results page" was the final nail in
the coffin of Rosetta Stone’s consumer confusion case.73
Given the thorough and decidedly unequivocal treatment the court
gave to Rosetta Stone’s direct trademark infringement case in the first half
of its opinion, it is all the more surprising that Judge Lee felt the need to
venture into the dim and shadowy realm of the functionality doctrine—an
area usually reserved for trade dress analysis—to press his point. And yet,
this is exactly what he did. After forcefully concluding that Rosetta Stone
had no claim against Google for infringement based on consumer
confusion, the court further indemnified Google against Rosetta Stone’s
attacks by holding that Google’s use of the Rosetta Stone marks was
functional, and thus noninfringing.74
68. Id. The court made explicit an argument that Google has long advanced: "In fact,
it is in Google’s own business interest, as a search engine, not to confuse its users by
preventing counterfeiters from taking advantage of its service. Google’s success depends on
its users finding relevant responses to their inquiries." Id. at 542.
69. See Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 459 (4th Cir. 1996)
(resolving a protracted trademark contest between the holders of the marks "L’eggs" and
70. Rosetta Stone, 730 F. Supp. 2d at 543.
72. Id. at 544.
73. Id. at 545.
74. See id. ("Notwithstanding a favorable finding for Google under the relevant
infringement elements, the functionality doctrine protects Google’s use of the Rosetta Stone
C. Examining the Application of the Functionality Doctrine to Word Marks
In supporting its application of the functionality doctrine to word
marks,75 the court in Rosetta Stone relied primarily on two cases for
precedent.76 The first was Sega Enterprises v. Accolade,77 in which "the
Ninth Circuit held the use of an initialization sequence that caused
plaintiff’s trademark to be displayed on the screen was . . . a functional
Marks as keyword triggers.").
75. See Stoller v. Sutech U.S.A., Inc., Opp’n No. 91117894, 2005 TTAB LEXIS 464,
at *7 (Oct. 26, 2005) (referring to trademarks that are words or phrases "shown in standard
character form"). The term "word mark" is used merely to identify a trademark that is solely
textual. For instance, the word "Pepsi" is a word mark: It is a word that has a trademark
meaning. The iconic blue and red Pepsi logo found on every can of Pepsi brand soda is a
trademark but not a word mark. To confuse the issue further, a term such as "Rosetta Stone"
is a word mark because it has a trademark meaning. However, unlike "Pepsi," the term
"Rosetta Stone" has nontrademark meaning as well—for instance, it may also refer to the
physical, historical artifact. See 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 3:2 (4th ed.) ("[T]he meaning of a word or symbol is not necessarily fixed for all time as it
is first used, or as it is defined in the dictionary, but may grow and develop new meaning and
nuances according to its use.").
76. See Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531, 546 (E.D. Va. 2010)
("The keywords, therefore, have an essential indexing function because they enable Google
to readily identify in its databases relevant information in response to a web user’s query.");
see also Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531
(9th Cir. 1992)
that use of the plaintiff’s trademark initialization sequence to achieve compatibility was
functional because interoperability could not be achieved without the trademark sequence);
Compaq Computer Corp. v. Procom Tech., Inc., 908 F. Supp. 1409, 1423 (S.D. Tex. 1995)
(finding that the word "Compaq" inserted in computer code for purposes of compatibility
77. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531
(9th Cir. 1992)
(holding that defendant’s use of plaintiff’s trademarked "initialization sequence" in its video
game cartridges was a functional use). In Sega, the court dealt with the issue of whether
Sega, a videogame cartridge and console manufacturer, could "enjoin competing cartridge
manufacturers from gaining access to its [gaming consoles]" through the use of an
"initialization code" that was necessary for all cartridges to function in Sega consoles, but
that also caused Sega’s trademark to briefly appear onscreen when a game started. Id. at
1514. The court held that "when there is no other method of access to the [console] that is
known or readily available to rival cartridge manufacturers, the use of the initialization code
by a rival does not violate the [Lanham] Act even though that use triggers a misleading
trademark display." Id. The U.S. District Court for the Northern District of California had
granted Sega a preliminary injunction against Accolade to compel it to stop selling games
that used Sega’s initialization code. Id. The Court of Appeals reversed. Id. In overturning
the district court, the Ninth Circuit noted that the burden of "proving nonfunctionality [was]
on Sega," and that Sega failed to "produce sufficient evidence regarding the existence of a
feasible alternative" to Accolade’s use of its initialization code. Id. at 1532. As a result, the
court concluded that the district court erred in granting Sega "preliminary injunctive relief
under the Lanham Act," but the court left the door open to the possibility that Sega might be
able to "meet its burden of proof at [a future] trial." Id.
display of the trademark because using the initialization sequence was
the only feasible means for providing compatibility with plaintiff’s
product."78 The second case was Compaq Computer Corp. v. Procom
Technology,79 in which the District Court for the Southern District of Texas
"merely held that a specific use of a word mark was functional because it
was the only commercially viable way for the defendant to make its product
compatible with the plaintiff’s computer program."80
In making its comparison to Compaq and Sega, the Rosetta Stone court
made two assertions. First, it stated that Google’s use of trademarked terms
as AdWords triggers was "no different than the use of a Google search
query to trigger organic search results relevant to the user’s search."81 In
doing so, the court declined to treat Google’s use of trademarks as triggers
for organic search results and its use of trademarks as AdWords triggers as
separate functions.82 The second step in the court’s logic was to conclude
that "keywords"—both in the context of organic and sponsored results—
78. Autodesk, Inc. v. Dassault Systèmes Solidworks Corp., 685 F. Supp. 2d 1001,
1009 (N.D. Cal. 2009).
79. See Compaq Computer Corp. v. Procom Tech., Inc., 908 F. Supp. 1409, 1423
(S.D. Tex. 1995) (holding that Procom Technology’s use of manufacturer Compaq’s
trademarked "vendor identification" to enable Procom’s hardware products to interface with
Compaq’s did not violate the Lanham Act because Procom’s use of the trademark was
"purely functional"). The Compaq court considered whether Procom’s inclusion of
competitor Compaq’s "vendor ID"—a code which "allows computers to identify themselves
electronically to each other"—in its server hard drives’ software constituted trademark
infringement under the Lanham Act on the grounds that Compaq’s vendor ID contained
within it the word "Compaq." Id. at 1416. Procom used the Compaq vendor ID in its hard
drives so that they would be compatible with Compaq servers and would be recognized by
Compaq’s server maintenance software, which informed customers when server hard drives
were worn out and in need of replacement. Id. at 1415–16. The court noted that Compaq’s
placement of its trademark, "Compaq," in its vendor ID was a voluntary decision and that
Compaq should have recognized the potential for this action to "exclud[e] competitors from
the market" or else force them to defend their use of the vendor ID in court. Id. at 1423.
The court found that, while Procom technically "used" the Compaq trademark in commerce,
the use was a "purely functional" one. Id. Importantly, the court found that the Lanham Act
does not protect functional product features and that "[t]his is true even when the functional
feature is a trademark." Id. The court noted that the use of Compaq’s trademark in the
vendor ID provided "compatibility" for Procom’s products, and that Compaq had not
"established that there is any other commercially feasible method of achieving this desired"
compatibility. Id. Ultimately, the court held that Procom was not liable for "trademark
infringement or unfair competition," but found it liable for contributory copyright
infringement based on other features of its products not discussed here. Id. at 1423–26.
Autodesk, 685 F. Supp. 2d at 1009 (emphasis in original).
Rosetta Stone, 730 F. Supp. 2d at 546. 82. See id. (stating that "[i]n both cases, a search term like ‘Rosetta Stone’ will return a string of Sponsored Links and organic links on Google’s search results page").
serve an "essential indexing function," within the framework of Google’s
search technology.83 Implicit in the court’s analysis was the assumption
that the sale of keywords to third parties through AdWords was the only
commercially feasible way84 for Google to display "paid advertisements on
its website."85 However, while relying on Sega and Compaq for support,
the court did not explicitly claim that Google’s use of the protected marks
was the only feasible way for Google to generate advertising revenue;
instead, the court found that, were Google forbidden from using trademarks
as triggers for AdWords, it might be forced to invent a more costly, less
effective way of generating advertising revenue.86 This small difference
between the Rosetta Stone court’s findings and the holdings of Sega and
Compaq belies a fundamental misunderstanding of these two cases and
establishes the foundation for the court’s erroneous conclusion that
Google’s use of the Rosetta Stone marks was protected functional use.
The great weight of trademark law’s doctrinal authority points to the
idea that, in almost all instances, word marks—that is, words or phrases,
"shown in standard character form,"87 that have been registered as
trademarks—cannot be deemed "functional."88 Sega and Compaq, the only
two cases the Rosetta Stone court cited for precedent in its functionality
holding, comprise substantially the entire canon of case law supporting the
idea that a word mark can be functional.89 Compaq and Sega constitute a
83. See id. ("The keywords, therefore, have an essential indexing function because
they enable Google to readily identify in its databases relevant information in response to a
web user’s query.").
84. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531
(9th Cir. 1992)
(determining that in order to find a product feature functional a court should consider the
several factors, including the "availability of alternative designs; and whether a particular
design results from a comparatively simple or cheap method of manufacture," meaning a
"commercially feasible alternative" exists (citations omitted)).
Rosetta Stone, 730 F. Supp. 2d at 546.
86. See id. ("Google would be required to create an alternative system for displaying
paid advertisements on its website—a system which is potentially more costly and less
effective in generating relevant advertisements.").
87. Stoller v. Sutech U.S.A., Inc., Opp’n No. 91117894, 2005 TTAB LEXIS 464, at
*7 (T.T.A.B. Oct. 26, 2005).
88. See, e.g., Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020,
1030–31 (9th Cir. 2004) ("Nothing about the marks used to identify PEI’s products is a
functional part of the design of those products."); Autodesk, Inc. v. Dassault Systèmes
Solidworks Corp., 685 F. Supp. 2d 1001, 1008 (N.D. Cal. 2009) ("[I]t is not apparent how a
word mark could be essential to the use or purpose of an article or affect its cost or
89. See Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531, 546 (E.D. Va. 2010)
(citing Compaq and Sega as precedent for rule that functionality doctrine can apply to word
alternatives analysis for aesthetic design features. It clearly leaves legal
space for nonfunctional aesthetic design features.146
Scholarly opinion and court rulings have come to conflicting conclusions as
to the true effect of the new aesthetic versus non-aesthetic feature
distinction in functionality cases, even in the conventional area for the
functionality defense—trade dress law.147 Some scholars have interpreted
Traffix as a minor tweak to an already misunderstood body of
jurisprudence, while others view Traffix as having obliterated what was
coalescing into a clearly understood, albeit still developing doctrine.148
Without offering an opinion on the ultimate impact of the Traffix ruling on
functionality analysis in trade dress cases, one can safely speculate that
removal of the doctrine from the trade dress context into the relatively
uncharted realm of Internet-based trademark infringement claims will raise
many more questions than it resolves.149
The fact is that the functionality doctrine is in a state of turmoil, even
within its historical "home base" of trade dress law.150 This uncertainty in
the doctrine militates against appropriating it now, as the Rosetta Stone
court did, to resolve the unsettled issues surrounding the rights of
trademark-holders in infringement actions against search engine companies
146. Id. at 328–29.
147. See, e.g., Walker & Zanger, Inc. v. Paragon Indus., 465 F. Supp. 2d 956, 965
(N.D. Cal. 2006) opinion corrected and superseded by 549 F. Supp. 2d 1168 (N.D. Cal.
2007) (discussing the Ninth Circuit’s functionality jurisprudence); Eco Mfg. LLC v.
Honeywell Int’l, Inc., 357 F.3d 649, 654–55 (7th Cir. 2003) ("Traffix rejected an equation of
functionality with necessity; it is enough that the design be useful.");
Eppendorf-NethelerHinz GmbH v. Ritter GmbH, 289 F.3d 351, 356 (5th Cir. 2002) ("Traffix supersedes the
definition of functionality previously adopted by this court."); see also WILLIAM LANDES &
RICHARD POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 198 (2003)
(discussing aesthetic functionality); 1 MCCARTHY, supra note 75, §§ 7:81, 7:82 (describing
the aesthetic functionality distinction as "unwarranted and illogical"); STEPHEN F. MOHR &
GLENN MITCHELL, FUNCTIONALITY OF TRADE DRESS: A REVIEW AND ANALYSIS OF U.S. CASE
LAW 151 (3d ed. 1997) (noting that, before Traffix, most courts analyzed both aesthetic and
utilitarian functionality in the same way).
148. See Thurmon, supra note 136, at 246 (noting that some courts "have read Traffix
as radically changing the law" by "equat[ing] functionality with utility, a standard very
different from the competition-based standard used prior to Traffix").
149. See Qualters, supra note 57 (quoting intellectual property law practitioners and
parties to Rosetta Stone’s appeal who expressed concern that the district court’s legal "errors
threaten to affect how [Internet trademark infringement] cases are resolved" and noted that
courts need to "address what the [legal] standards should be" in these types of cases).
150. See INTA Brief, supra note 6, at 9 (emphasizing that "the functionality doctrine is
used to determine whether the plaintiff’s trade dress serves a useful or functional role"
(emphasis added)); supra note 139 and accompanying text (discussing the uncertainty
surrounding the functionality doctrine after the Traffix decision).
and other online entities. With the functionality doctrine ill-suited to
Internet-based infringement claims and ill-defined, even in its proper
context, the courts must turn to a new doctrine to balance properly the
rights of trademark-holders against the those of Internet search companies
V. A New Way Forward: Recasting Rosetta Stone v. Google
A. Identifying an Alternative to Functionality
This Note’s central premise is that Rosetta Stone was rightly decided
using the wrong legal justification. As discussed in Part III, the court’s
functionality analysis was superfluous when considered as part of its
complete holding.151 Moreover, the analysis was flawed in its application
of legal doctrine and carried with it destabilizing consequences for
markholders and search engine operators alike.152 To explain fully why, in light
of the preceding critique of the court’s method, its overall result was
correct, one must first establish what the Rosetta Stone court was
attempting to achieve with its ruling.
The court’s ultimate disposition of the relevant infringement issues
shows that Judge Lee was attempting to give Google, and other search
engine operators in its position, a limited right to freely use word marks,
like the marks owned by Rosetta Stone, without fear of legal liability.153
The court appeared to make an economic judgment that it is more efficient
to let Google use such marks with relative freedom—because of the benefit
to searchers from free, reliable organic search results—than it is to let
mark-holders extend their trademark rights so far as to disallow search
engine operators to use trademarks in a so-called "functional manner."154
Unfortunately, as discussed in Part IV, the court’s ruling missed its mark
151. Supra Part III.B.
152. Supra Part IV.A.
153. See INTA Brief, supra note 6, at 14 ("[T]he District Court appears to have been
trying to recognize that some use of Rosetta Stone’s trademarks, as trademarks, might be
appropriate both for Google and its advertisers . . . so that they could communicate they are
resellers of Rosetta Stone’s products, or are making fair, comparative advertising
claims . . . .").
154. See Dogan & Lemley, supra note 10, at 811 ("Like functionality or genericness,
the key is to balance the search costs that will be imposed if we forbid relevant advertising
against the search costs that might result from permitting that advertising and potentially
and went too far.155 By placing Google’s use of the Rosetta Stone marks
under the umbrella of the functionality doctrine, the court in effect
indemnified every search engine company from trademark infringement
liability, provided the company can show that it uses the mark in a manner
"essential" to its search process.156 A reworking of the district court’s
conclusion is necessary to ensure that, in future trademark infringement
actions against search engines, the rights of mark-holders, search
companies, and consumers are equitably balanced.157
In order to bring about the intended, but unrealized, effect of Judge
Lee’s ruling, the crucial first step is to accurately characterize the nature of
Google’s specific "use" of trademarks in the situation presented by Rosetta
Stone.158 Acknowledging a growing trend in the federal courts, it is
assumed for the purposes of this argument that a search engine’s use of
trademarks in search-driven keyword advertising constitutes "use in
commerce" under the Lanham Act.159 Assuming the general use of
trademarks in search engine advertising is "use in commerce," the issue
becomes how to specifically characterize trademark use by search
engines.160 The INTA Brief submitted to the Fourth Circuit in the Rosetta
Stone appeal provides a starting point for arguing that Google and other
search engines’ use of trademarks is best characterized as "nominative fair
155. Supra Part IV.A.
156. See supra notes 129–35 and accompanying text (speculating that future search
engine technology will render the Rosetta Stone court’s functionality analysis ineffective to
protect mark-holders from search engines’ infringing uses of their trademarks).
157. See Dogan & Lemley, supra note 10, at 779–82 (noting that, especially in the
Internet context, recent court decisions have favored the interests of mark-holders too
heavily over those of consumers, "search engines, directories, and other parties that use
marks as classification tools").
158. See Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531, 539 (E.D. Va. 2010)
("Rosetta Stone . . . alleg[es] that Google, through its AdWords Program, is helping third
parties to mislead consumers and misappropriate the Rosetta Stone Marks by using them as
keyword triggers for Sponsored Links and using them within the text or title of the
159. See Lastowka, supra note 13, at 1395 (noting that courts outside the Second
Circuit have found arguments to the contrary "unpersuasive"). Contra Goldman, supra note
21, at 593–94 (proposing that "[s]earch providers could be immunized from [infringement]
liability using a rigorous definition of trademark ‘use’ under the Lanham Act" and arguing
that "[s]earch providers do not ‘use’ a trademark regardless of the editorial role" they play).
160. See Goldman, supra note 21, at 554–58 (explaining that most trademark uses by
search engines are "referential" or "associative").
161. INTA Brief, supra note 6, at 6.
B. Nominative Fair Use: A Better Path to the Right Result
The doctrine of nominative fair use, originally developed by the Ninth
Circuit, protects an otherwise infringing party’s
right to use another’s trademark, such as in comparative advertising, as
long as: (1) the product or service in question is one not readily
identifiable without the use of the trademark, (2) the use of the mark or
marks is only so much as is reasonably necessary to identify the product
or service, and (3) the user does not do anything that would, in
conjunction with the mark, suggest sponsorship or endorsement by the
As the Ninth Circuit explained in New Kids on the Block v. News America
Publishing,163 "[a] trademark is a limited property right in a particular word,
phrase, or symbol."164 Trademark-holders do not hold property rights in
their marks "in gross"165—the right in a trademark is, by definition, limited
to "[p]reventing producers from free-riding on their rival’s marks."166 The
doctrine of nominative use comes into play "where [a] mark is used only ‘to
describe the goods or services of [a] party, or their geographic origin.’"167
The doctrine’s purpose is to prevent trademarks from functioning as
"exclusive rights" to a word or forbidding "a trademark registrant to
appropriate a descriptive term for his exclusive use and so prevent others
from accurately describing a characteristic of their goods."168
The nominative fair use doctrine was applied in New Kids on the Block
to protect defendant newspaper companies’ use of the trademarked name
"New Kids on the Block" to describe plaintiff mark-holders, a popular
band, in fan surveys published by the newspaper companies.169 Fans were
asked to vote for the band member they found "the sexiest" by calling the
newspapers’ "900 area code number[s]" to cast their votes.170 The
newspapers, which made a profit on each call to the 900 numbers, then
printed the results of the telephone survey, which required repeatedly using
the band’s trademarked name.171
The Ninth Circuit, affirming the district court’s ruling on the
trademark infringement issues,172 found no evidence that the defendants did
anything to suggest endorsement of the surveys by New Kids on the
Block.173 Neither did the defendants, in the circuit court’s view, make any
more reference to the plaintiffs’ trademarks than was "necessary to identify
[plaintiffs] as the subject of the polls."174 The thrust of the Ninth Circuit’s
argument with respect to the nominative fair use defense was that "a
problem closely related to genericity and descriptiveness is presented when
many goods and services are effectively identifiable only by their
trademarks."175 The court expressed concern that, were a "trademark
holder . . . allowed exclusive rights in such use, the language would be
depleted in much the same way as if generic words were protectable."176
The Ninth Circuit’s solution to the problem was to endorse the doctrine of
nominative fair use, ensuring that descriptive uses of trademarks would be
granted broad protection in the future.177
Since the Ninth Circuit’s New Kids on the Block decision, the
nominative fair use doctrine has been reaffirmed and refined in that
circuit,178 explicitly adopted in the Third Circuit,179 adopted in part in the
171. See id.
172. See id. at 309 ("Summary judgment was proper as to the first seven causes of
action because they all hinge on a theory of implied endorsement; there was none here as the
uses in question were purely nominative.").
173. See id. at 308 ("While plaintiffs’ trademark certainly deserves protection against
copycats and those who falsely claim that the New Kids have endorsed or sponsored them,
such protection does not extend to rendering newspaper articles, conversations, polls and
comparative advertising impossible.").
175. Id. at 306.
177. See id. at 308 (holding that descriptive use of a trademarked name is "nominative
fair use" and thus noninfringing).
178. See Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1029 (9th
Cir. 2004) (finding the New Kids test for nominative fair use to be controlling, but noting
that "[w]e apply a slightly different test for confusion in the nominative use, as opposed to
the fair use, context").
179. See Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 222 (3d Cir.
2005) ("Today we adopt a two-step approach in nominative fair use cases.").
Fifth and Sixth Circuits,180 and adopted in principle, though not in name, in
the Second Circuit.181 The holding of the Second Circuit in Tiffany v.
eBay182 is of particular relevance for the issue of search engine advertising
because it represents the most recent instance of an appellate court’s
applying the nominative fair use doctrine (in principle at least) to an
Internet-based defendant.183 The Second Circuit’s holding also represents
an attractive option for the Fourth Circuit as it considers the Rosetta Stone
appeal—the possibility of hewing to the spirit of the nominative use
doctrine without explicitly following the Ninth Circuit’s holding in New
Kids on the Block.184
In Tiffany, the Second Circuit considered whether defendant Internet
auction company’s use of plaintiff jewelry manufacturer’s trademark in
"advertisements on its website and in connection with sponsored links
purchased from search engines" violated trademark laws.185 Plaintiff
Tiffany and Co., a world-renowned jeweler, was concerned that eBay was
encouraging the sale of counterfeit Tiffany products on its website through
the advertisement of its members’ ongoing auctions of purportedly genuine
Tiffany-brand merchandise.186 Tiffany sued eBay alleging "trademark
infringement, trademark dilution, and false advertising," and the district
court found "in favor of eBay on all claims."187 Restating the basic
180. See PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243, 256 (6th Cir.
2003) (declining to follow the Ninth Circuit’s analysis directly and applying the
conventional "likelihood of confusion" test instead); Pebble Beach Co. v. Tour 18 I Ltd., 155
F.3d 526, 546 n.13 (5th Cir. 1998) (adopting the Ninth Circuit’s nominative fair use test in
181. See Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 102–03 (2d Cir. 2010) ("We have
recognized that a defendant may lawfully use a plaintiff’s trademark where doing so is
necessary to describe plaintiff’s product and does not imply a false affiliation or
endorsement by the plaintiff of the defendant.").
182. See id. (holding, based on nominative fair use-like analysis, that defendant’s use of
plaintiff’s trademark in online advertising was a noninfringing use).
183. See id. at 96–97 ("eBay is the proprietor of www.ebay.com, an Internet-based
marketplace that allows those who register with it to purchase goods from and sell goods to
184. See id. at 102 (noting that the Second Circuit has "referred to the [nominative fair
use] doctrine, albeit without adopting or rejecting it" and concluding that the court "need not
address the viability of the doctrine to resolve Tiffany’s claim" in favor of eBay).
186. See Tiffany, 600 F.3d at 95 ("Tiffany has instituted this action against eBay,
asserting various causes of action . . . arising from eBay’s advertising and listing practices.").
187. Id. at 95–101.
principles of the nominative fair use defense, the Second Circuit held that
eBay’s use of the Tiffany marks was noninfringing use "so long as there is
no likelihood of confusion about the source of [the] defendant’s product or
the mark-holder’s sponsorship or affiliation."188
Without addressing "the viability of the doctrine to resolve Tiffany’s
claim," the court concluded: (1) that "a defendant may lawfully use a
plaintiff’s trademark where doing so is necessary to describe the plaintiff’s
product and does not imply a false affiliation of endorsement by the
plaintiff of the defendant"; (2) that "eBay used the [plaintiff’s] mark to
describe accurately the genuine Tiffany goods offered for sale on its
website"; and (3) that "none of eBay’s uses of the mark suggested that
Tiffany affiliated itself with eBay or endorsed the sale of its products
through eBay’s website."189
In affirming the lower court’s trademark infringement ruling in favor
of eBay, the Second Circuit discussed at length the nature of the "use" eBay
was making of Tiffany’s mark. eBay used the Tiffany mark in
advertisements on its own site and on search engine sites, like Google and
Yahoo!, to advertise the fact that eBay featured a number of merchants who
traded in Tiffany merchandise.190 Tiffany’s main complaint about eBay’s
use of the mark came down to the fact that eBay "knowingly" advertised
members’ sales of counterfeit Tiffany products.191 Tiffany insisted that
eBay was aware that a "significant portion" of the allegedly "Tiffany"
sterling silver jewelry listed on its site was counterfeit and that eBay
profited from every transaction completed through its website, including
sales of counterfeit Tiffany goods.192 Therefore, Tiffany argued, eBay was
using the Tiffany mark to mislead consumers into thinking the items for
sale on eBay’s site were genuine, to encourage sales, and to generate more
revenue for itself.193
188. Id. at 102 (citing Merck Co. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d
402, 413 (S.D.N.Y. 2006)). The court noted that "[t]he Third Circuit treats the doctrine as an
affirmative defense, while the Ninth Circuit views the doctrine as a modification to the
likelihood-of-confusion analysis of the plaintiff’s underlying infringement claim." Id. at 102
n.7 (citations omitted).
189. Id. at 102–04.
190. Id. at 100–01.
191. Id. at 98.
193. See id. ("Reducing or eliminating the sale of all second-hand Tiffany goods,
including genuine Tiffany pieces, through eBay’s website would benefit Tiffany in at least
one sense: It would diminish the competition in the market for genuine Tiffany
The Second Circuit concluded that Tiffany’s trademark infringement
claim against eBay suffered from a critical factual weakness: eBay had
taken numerous precautions and countermeasures to discourage the sale of
counterfeit Tiffany products on its website and actively policed its sellers,
going so far as to ban specific sellers from the site if they were deemed to
be trafficking in counterfeit merchandise.194 Moreover, neither the fact that
eBay generated revenue from "all sales of goods on its site"195 nor the fact
that eBay may have had a "generalized knowledge"196 that there were
counterfeit Tiffany goods being sold on its site was evidence of eBay’s
wrongdoing because eBay "took affirmative steps to identify and remove
illegitimate Tiffany goods" from its site.197 In short, the court concluded
that, on the issue of trademark infringement, Tiffany was going after the
wrong party.198 eBay, though making use of the Tiffany mark to identify
sellers of Tiffany goods on its site, was using the mark merely to refer to
Tiffany goods by name. This allowed its users to locate quickly and
efficiently the goods on eBay’s website.199 While counterfeiters could be
held liable to Tiffany for trademark infringement, eBay could not because
its use was nominative and fair, and thus protected.200
Together, New Kids on the Block, Tiffany, and other recently decided
nominative fair use cases201 stand for the principle that the "use of a
trademark term to refer to a product originating from the trademark owner
194. See id. ("Although eBay was generating revenue from all sales of goods on its
site . . . the district court found eBay to have ‘an interest in eliminating counterfeit Tiffany
merchandise from eBay . . . to preserve the reputation of its website as a safe place to do
195. Id. at 98.
196. Id. at 107.
197. Id. at 103.
198. See id. ("We conclude that eBay’s use of Tiffany’s mark in the described manner
did not constitute direct trademark infringement.").
199. See id. ("eBay used the mark to describe accurately the genuine Tiffany goods
offered for sale on its website.").
200. See id. at 102 (affirming the district court’s holding that defendant’s use of
plaintiff’s mark "was protected by the doctrine of ‘nominative fair use’").
201. See 1 IAN C. BALLON, E-COMMERCE & INTERNET LAW § 6.14 (2010) ("While
not all circuits have specifically considered nominative fair use, it is fair to assume that even
in the absence of controlling case law all circuits would recognize the concept of
nontrademark use."); see also Univ. Commc’ns Sys., Inc. v. Lycos, Inc., 478 F.3d 413, 424 (1st
Cir. 2007) (recognizing the concept of non-trademark use); Century 21 Real Estate Corp. v.
Lendingtree, Inc., 425 F.3d 211, 222 (3d Cir. 2005) (same); PACCAR Inc. v. TeleScan
Tech., L.L.C., 319 F.3d 243, 256 (6th Cir. 2003) (same); Pebble Beach Co. v. Tour 18 I Ltd.,
155 F.3d 526, 547 (5th Cir. 1998) (same).
is not actionable."202 And Tiffany specifically concludes that trademark
law, through the nominative use doctrine, "embraces the right of online
services to engage in keyword advertising."203 In light of this burgeoning
recognition of an online entity’s right to use trademarks in a nominative
way, the facts of Rosetta Stone require fresh reconsideration to determine
whether Google’s use of the Rosetta Stone marks is a nominative fair use.
C. Google’s Use Is Nominative
In order to demonstrate that Google’s use—and by extension all search
engines’ use—of Rosetta Stone’s marks is nominative, Google’s actions
must be weighed against the standard test for nominative fair use, which,
for purposes of this argument, will be the standard articulated in New Kids
on the Block and presented for the Fourth Circuit’s consideration in the
INTA amicus brief.204 In order for Google’s use of the Rosetta Stone marks
to be nominative fair use:
(1) [T]he product or service in question [may] not [be] readily
identifiable without the use of the trademark, (2) the use of the mark or
marks [may be] only so much as is reasonably necessary to identify the
product or service, and (3) the user [may] not do anything that would, in
conjunction with the mark, suggest sponsorship or endorsement by the
Google’s "use" of a search term (or other input), trademark or
otherwise, begins when a user enters it into Google’s search engine.206 At
this point, Google’s search algorithms compare the search input against
databases of possible Internet results, using complex mathematical formulas
and data generated by billions of searches to return organic search results to
202. eBay Brief, supra note 185, at 8 (citations omitted).
203. Id. at 4.
204. See INTA Brief, supra note 6, at 15 (outlining the nominative fair use test as
articulated by the Ninth Circuit in New Kids on the Block).
206. See THOMAS A. POWELL, WEB DESIGN: THE COMPLETE REFERENCE 276–77 (2d ed.
2002), available at http://www.webdesignref.com/chapters/09/ch9-01.htm#01 ("Depending
on the search facility being used, the query formed by the user may vary greatly. A simple
query might include only keywords, like ‘Robot Butler.’ More complex queries might
include Boolean queries like ‘Robot AND Butler.’").
the user that have the highest likelihood of being relevant to his or her
search query.207 In addition to organic search results, Google returns
advertising in the form of sponsored links that correspond to the user’s
search input and are thus deemed by Google more likely to be related to the
user’s search needs or interests.208 In its search process, Google uses inputs
from the "real world" to generate search results on the Internet: It
references real-world names, brands, photos, logos—many of them
trademarked or copyrighted—because its users input these marks into its
Just like eBay, or the newspaper companies in New Kids on the Block,
Google needs to be able to describe and compare various trademark and
non-trademark inputs, given to it by users, in order to conduct its
business.210 Google must be able to respond to users’ search inputs, many
of which will carry trademark meaning.211 Focusing purely on its organic
search results, Google’s use of marks is clearly nominative because Google
operates as an online index of "real world" concepts.212 The search engine
is using trademarked terms and comparing those terms against a database of
possible relevant results.213 The products and services that users name with
their inputs—be they Orvis, Pepsi, John Deere, or Tiffany—cannot be
readily described without use of the marks.214
207. See id. at 277 ("[T]he search engine builds as big a haystack as possible, then tries
to organize the haystack somehow, and finally lets the user try to find the proverbial needle
in the resulting haystack of information by entering a query on a search page.").
208. See How Search Ads Work, supra note 26 (explaining the process by which
"sponsored links" are generated and displayed on Google’s search results page).
209. See eBay Brief, supra note 185, at 2 (noting that search engines "give users the
ability to locate and purchase an almost unlimited array of products and services and to
access information on any conceivable topic by simply typing a search term—a keyword or
keywords—and pushing a button").
210. See Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531, 546 (E.D. Va. 2010)
("If Google is deprived of [the] use of the Rosetta Stone Marks, consumers would lose the
ability to rapidly locate potentially relevant websites that promote genuine Rosetta Stone
products at competitive prices.").
211. See eBay Brief, supra note 185, at 5 (explaining that "consumers searching for a
specific company, good, service, or other piece of information without knowing the exact
website address for that information will likely use a search engine to identify and locate it").
212. See Lastowka, supra note 13, at 1400 ("Google’s index is dynamically created by
its algorithms in response to user queries.").
213. See Rosetta Stone, 730 F. Supp. 2d at 546 (noting that Google’s organic use of
keywords, including trademarks, "enable[s] Google to readily identify in its database
relevant information in response to a web user’s query").
214. See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306
("[O]ne might refer to ‘the two-time world champions’ or ‘the professional basketball
Indeed, the Rosetta Stone court’s justification for its functionality
holding expressly condones Google’s use of the Rosetta Stone marks on the
grounds that Rosetta Stone and its products cannot be readily identified
without the use of its marks. The court calls Google’s use of "trademarked
keywords, including the Rosetta Stone Marks, to identify relevant
Sponsored Links . . . no different than the use of a Google search query to
trigger organic search results relevant to the user’s search."215
"[A]dvertisers," the court continues, "rely on keywords to place their
products and services before interested consumers," and because consumers
search using names in common usage, such as a brand’s trademarked name,
Google must use certain trademarks as keywords in order for its search
engine to operate correctly.216
Google’s sponsored results, driven by its AdWords program, are
merely an alternative method for returning relevant search results to
searchers.217 Whereas organic results are driven by algorithms, sponsored
results are driven by the market.218 The highest bidders’ advertisements are
the ones that will appear on any given search results page.219 In either case,
however, a trademark used by a searcher to generate results is used to
describe the thing itself.220 Its use to generate market-driven search results
is no more or less a commercial use of the mark on Google’s part than it is
when used to generate organic search results.221 Trademark law does not
team from Chicago,’ but it’s far simpler (and more likely to be understood) to refer to the
215. Rosetta Stone, 730 F. Supp. 2d at 546.
216. Id. Contrary to the court’s conclusion, this state of affairs does not render
Google’s use "functional." Id.
217. See Lastowka, supra note 13, at 1401–02 (using the analogy of white and yellow
pages in a physical phonebook to describe Google’s left and right-hand search results
218. See Tan, supra note 26, at 476–77 ("In effect, an account holder ‘bidding’ on a
keyword is competing for it with all other account holders who wish to use that keyword—
an account holder’s financial power thus plays a significant role in determining the degree of
exposure his ad will receive.").
219. See Lastowka, supra note 13, at 1339 (noting that Google modeled its AdWords
program on the technology developed by GoTo.com (which Google eventually acquired),
which "ranked [search results] according to the amount of money each purchaser paid" for
220. See id. at 1362 (explaining that, outside of a word’s trademark use, the
trademarkholder does not "own any interest in the word . . . in the abstract").
221. See id. at 1345–46.
Google’s left-hand column is, in fact, subject to market forces in ways that can
make it similar to the right hand column. Businesses seeking consumer traffic
give mark-holders the right to restrict the use of their marks to describe
their products, and nothing about the descriptive use of such names in the
search engine context changes that result.222
2. Reasonable Necessity
The nominative use doctrine’s requirement that search engines use
only so much of the mark as is reasonably necessary will put some
limitation on search engine practices as search technology develops.223
This differentiates the nominative use defense from the functionality
doctrine as applied by the Rosetta Stone court.224 Instead of giving search
engine companies carte blanche to use any form of trademark they can turn
into a search input, the nominative use doctrine puts the burden on search
companies to demonstrate that there is not a more limited way to use the
trademark to generate search results.225 In the Rosetta Stone case, the use
Google was making out of Rosetta Stone marks was as limited as
possible—sales of the marks as textual keywords—but future search
engines will use marks in a more expansive way.226
For instance, a future court might determine that allowing searchers to
use images of a unique product design or video of a compelling
realize that both columns are simply lists of links. Being first in the left-hand
column may provide more traffic to a site than paying for an AdWords
Id.; see also David Segal, The Dirty Little Secrets of Search, N.Y. TIMES, Feb. 13, 2011, at
BU1 (reporting on the hugely profitable "search engine optimization" or "SEO" industry,
which advises companies on ways to increase their websites’ rank in Google’s organic
222. See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308
("[W]here the defendant uses a trademark to describe the plaintiff’s product, rather
than its own, we hold that a commercial user is entitled to a nominative fair use
defense . . . .").
223. See id. (allowing a defendant to claim the nominative fair use defense when "only
so much of the mark or marks may be used as is reasonably necessary to identify the product
224. See supra notes 124–35 and accompanying text (arguing that the Rosetta Stone
court’s conception of the functionality doctrine gives search engines an unrestricted right to
appropriate trademarks as search inputs).
225. See Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 102 (2d Cir. 2010) (treating the
nominative fair use doctrine as an affirmative defense to direct trademark infringement,
placing the burden on the defendant to show that its use of plaintiff’s mark was protected).
226. See supra Part II.C (predicting the use of images, sounds, video, and other sensory
inputs as search triggers).
advertisement as search inputs is more use than "reasonably necessary" to
identify the trademark. This is not to say that generating organic search
results from such inputs would be forbidden, only that there might be
limitations imposed on which inputs could be sold as "triggers" for
sponsored links.227 In this way, search engines’ search functions can
remain effective, mark-holders can retain some control of their trademarks
in the search engine context, and consumers can continue to rely on the
availability of relevant and efficient search results, regardless of the
trademark or non-trademark nature of their queries.228
Given the current limits on search technology, which require the vast
majority of users to search using keywords exclusively, Google’s "use" of
trademarks remains largely limited to what is reasonably necessary to
identify the product or service queried—keywords.229 As discussed above,
it is easy to view Google’s use of trademarks to generate organic results as
a nominative use,230 and there is no reason to treat sponsored links
differently. Google’s incidental generation of advertising revenue by way
of the search services it provides is not, under the conventional nominative
use doctrine, a factor weighing against its successful deployment of the
nominative fair use defense.231 As the New Kids on the Block and Tiffany
courts held, a trademark-holder does not have the right to direct the
disposable income of all possible consumers to products or services
licensed by the mark-holder alone.232 The fact that a nominative user
generates a profit from the use of a trademark is not dispositive, or indeed
even indicative, evidence of trademark infringement.233 Advertising,
227. See Lastowka, supra note 13, at 1409 ("Trademark law cannot describe an optimal
index to the Internet, given the fact that much of the information users seek and the problems
they encounter are not matters where trademark law has much application.").
228. See id. (noting that "allowing trademark law to dominate the indexical value of
search results poses serious risks: [T]rademark meanings might usurp other understandings
229. See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308
(holding that defendants who use mark-holders’ trademarks "only to the extent
necessary to identify them," as for instance "the subject of [a] poll," and do not use a
markholder’s "distinctive logo or anything else that isn’t needed to make the announcements
intelligible," meet the limited use requirement).
230. Supra notes 213–16 and accompanying text.
231. See New Kids, 917 F.2d at 309 ("Where, as here, the use does not imply
sponsorship or endorsement, the fact that it is carried on for profit and in competition with
the trademark holder’s business is beside the point." (citations omitted)).
232. See id. ("[T]rademark laws do not give [plaintiffs] the right to channel their fans’
enthusiasm (and dollars) only into items licensed or authorized by them.").
233. See Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 496 (S.D.N.Y. 2008)
through sponsored links, is both a source of revenue for Google and an
alternative index of search results for searchers.234 So long as Google keeps
its organic and sponsored search results clearly separated and is held
accountable by consumers for its results-generating methods, there is no
cognizable legal difference between Google’s use of trademarks in organic
and sponsored results.235
3. No Indication of Endorsement or Sponsorship
Google and other search engines that use keyword advertising are not
engaging in practices that would suggest sponsorship or endorsement by
mark-holders. The fact that a portion of all search results are "generated
from the search engine’s algorithm" while the rest are "paid advertisements
that are identified separately on the search results page" does not alter the
nominative use analysis discussed above.236 Search advertisements are, by
virtue of the AdWords program, placed "in front of consumers who identify
themselves as interested in certain products or services offered by the
advertisers’ companies."237 Additionally, mark-holders who bring
infringement claims against search engines like Google for selling
trademarked search terms to advertisers misunderstand both the motivations
of the average Internet-searcher and the relationship between search
engines and third-party advertisers.238
Individuals search for many reasons: If searchers input a query for
"Starbucks," does that mean they are necessarily searching with the intent
aff’d in part, rev’d in part Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010)
("[T]rademark owners cannot prevent others from making a descriptive use of their
trademark. While a trademark conveys an exclusive right to the use of a mark in
commerce . . . that right generally does not prevent one who trades a branded product from
accurately describing it by its brand name . . . .").
234. See Lastowka, supra note 13, at 1344–45 (explaining the distinction between
algorithm-driven, left-hand search results and market-driven, right-hand search results).
235. See id. at 1409 (noting that Google and other search engines must be held
accountable for the way in which search results are displayed and identified and recognizing
that "[a]llowing Google to completely control the indexical function of its search results
might lead to public harm").
236. eBay Brief, supra note 185, at 5.
238. See Goldman, supra note 21, at 513 ("Search processes are complex and defy
simplistic analysis. Some searches are very simple and directed; other searches are
openended and meandering. Thus, any attempt to describe a universal search process is
of purchasing Starbucks products as a direct result of their search?
Oftentimes, the answer is no.239 To understand why this is so, it is
necessary "to make a distinction between two different kinds of searches—
informational and commercial."240 As its name suggests, in an
informational search, a searcher is looking for information about a concept
and does not necessarily seek to transact any consumer business.241 The
strictures of trademark law should have no bearing on these searches
because "consumer confusion" is an impossibility: The searcher is not a
"consumer."242 This is not to say, however, that an informational search
cannot regard a commercial product or involve a trademark. To borrow an
example from Professor Goldman’s exhaustively thorough treatment of this
phenomenon—which he labels "objective opaqueness"—imagine that a
searcher enters the term, "Canon PowerShot S400" (the name of a high-end
camera) into a search engine.243 The user, and in turn the search engine, use
the trademarks "Canon" and "PowerShot" to effectuate the search; the
search seems commercial, but perhaps the searcher is already the proud
owner of a PowerShot S400 and is merely searching for instructions on
home camera-repair techniques.244
On the other hand, the searcher may desire to buy a PowerShot S400,
in which case the search could properly be labeled commercial and the
searcher a potential consumer. Once again, though, the full picture is
obscured. The searcher may be in the market for a used PowerShot from a
third-party camera retailer or perhaps a leather case for his previously
purchased PowerShot.245 In neither context does Canon, as the
trademarkholder, have a right to restrict the use of its mark.246 With no way of
239. See id. at 521 ("Simply put, one cannot make any legally-supportable inferences
about searcher objectives based on the keywords used.").
240. Segal, supra note 221, at BU1 (quoting Mark Stevens, the owner of a "black hat"
search optimization company).
241. See Goldman, supra note 21, at 522–24 (listing a variety of possible informational
search objectives, including for example "prepurchase information," "postpurchase
information," "community information," "employment related information," "dictionary
uses," and "typographical errors").
243. See id. at 521 ("This Article refers to our inability to infer searcher’s objectives
from their keywords as ‘objective opaqueness.’").
244. See id. at 522 ( noting that "[t]he searcher may . . . be looking for postpurchase
assistance, including customer support or repair or servicing information").
245. See id. (detailing the many search objectives a searcher might have when
searching for the name of a product aside from directly purchasing the product from the
246. See Lastowka, supra note 13, at 1362 (explaining that, outside of a word’s
knowing searchers’ search objectives, the line between a commercial search
and an informational one becomes blurred, and the result is a glut of
timeconsuming factual survey evidence (of questionable utility) to prove
likelihood of confusion247 in trademark infringement claims against search
The foregoing digression into the nature of searcher behavior shows
that trademarks, as keywords, serve a search engine’s essential commercial
and non-commercial functions alike. Trademarks, when used as keywords,
are not necessarily used in their commercial, trademark context. As
discussed above, searcher intent is virtually impossible to discern with
precision, and the use of trademarks in AdWords advertising "comprehends
a number of lawful, pro-competitive practices, such as the sale or resale of
products bearing the trademarks; the sale of components, replacement parts,
and compatible products; and the provision of non-competitive information
about the goods or services corresponding to the trademarks."249 To deem
use of these marks "inherently unlawful solely because third parties may
make infringing uses of those trademarks in their advertisements" puts too
much power in the hands of mark-holders and hurts consumers of Internet
Google’s use of the Rosetta Stone marks fits neatly into the
nominative fair use exception developed by the Ninth Circuit in New Kids
on the Block.251 More broadly though, Google’s use is representative of an
increasingly ubiquitous kind of trademark use particular to the Internet.252
trademark use, the trademark-holder does not "own any interest in the word . . . in the
247. 1 MCCARTHY, supra note 75, § 2:8 ("[T]he keystone . . . is the avoidance of a
likelihood of confusion in the minds of the buying public. Whatever route one travels . . .
the signs give direction to the same enquiry—whether defendant’s acts are likely to cause
248. See Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531, 542–43 (E.D. Va.
2010) (noting that the parties agreed that evidence of "actual confusion" was the "best
evidence of likelihood of confusion" and that "Rosetta Stone’s evidence of actual confusion"
consisted of "testimonies of five individuals out of more than 100,000 impressions over six
249. eBay Brief, supra note 185, at 6.
250. Id. at 4.
251. See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 309
(holding that a use that describes the trademark, is limited in scope, and does not
imply sponsorship or endorsement by mark-holder is "nominative fair use" and noting that
"the fact that it is carried on for profit and in competition with the trademark holder’s
business is beside the point").
252. Brief of Appellee at 21, Rosetta Stone Ltd. v. Google Inc., No. 10-2007 (4th Cir.
Nov. 29, 2010) (arguing that "referential [trademark] uses are inherently protected" in the
As technology evolves, Internet entities are claiming commercial roles that
were once predominantly the domain of "brick and mortar" entities.253 The
Rosetta Stone case demonstrates that courts need to carefully apply a mix of
traditional and evolving trademark doctrines to keep the law effective and
equitable when it comes to protecting the rights of mark-holders, search
engine companies, and consumers.254 The nominative fair use doctrine
achieves this balance.
D. A Roadmap for the Fourth Circuit
Adopting the nominative fair use doctrine will bring the Fourth Circuit
to the forefront of Internet intellectual property law and show that the
Circuit understands the needs of the diverse stakeholders in the web-based
economy. While an explicit adoption of the Ninth Circuit’s New Kids on
the Block standard is unnecessary to achieve what this Note contends is the
correct result, the Fourth Circuit should, at the least, follow in the footsteps
of the Second Circuit and acknowledge the validity of the principles
underlying the nominative fair use doctrine.255
Like the Ninth Circuit, the Fourth Circuit has previously recognized as
"important" the notion "that trademarks not be transformed from rights
against unfair competition to rights to control language."256 If the Fourth
Circuit reverses the district court’s trademark infringement holding in favor
of Google, it risks "perpetuat[ing] [the] monopolies" that mark-holders
continuously seek to gain on the use of their marks.257 Alternatively, if the
Fourth Circuit upholds the district court’s ruling in its entirety, including its
search engine context and that "there is no need to evaluate the traditional fair use factors or
adopt a multi-factored test as in New Kids on the Block").
253. See 4 MCCARTHY, supra note 20, § 25:70.25 (explaining that "retailer placement
of goods and retail promotions like coupons are traditional forms of legitimate advertising
and that in cyberspace shopping, on-line intermediaries like GOOGLE and YAHOO have
stepped into the role of the brick and mortar retailer").
254. See Lastowka, supra note 13, at 1390 ("What is needed in this arena is a doctrine
that keeps the role of trademark law in search results very limited, but does not abdicate the
state’s role entirely.").
255. See Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 102 (2d Cir. 2010) (noting that
the Second Circuit has "referred to the [nominative fair use] doctrine, albeit without adopting
or rejecting it" and concluding that the court "need not address the viability of the doctrine to
resolve Tiffany’s claim" in favor of eBay).
256. CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000) (citations
257. Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 611 F.2d 296, 300 (9th Cir. 1979).
functionality doctrine analysis, it will be legitimizing "a radical
reinterpretation of the functionality doctrine" with far-reaching and
destabilizing consequences for mark-holders and consumers.258 Put bluntly,
such a ruling would give Google and other search engine companies a
license to run roughshod over the rights of mark-holders in the Internet
Whether it chooses to explicitly follow New Kids on the Block or not, a
clear statement of the Fourth Circuit’s endorsement of nominative fair use
principles is vital to resolve current uncertainty surrounding the validity of
this doctrine in the Circuit.260 Because "at least two district courts" in the
Fourth Circuit have expressed doubts about the current validity of the
nominative fair use doctrine in the Circuit, an unequivocal endorsement of
its principles is necessary to clear up the present state of ambiguity.261
Having clearly established a nominative use defense to trademark
infringement, the Fourth Circuit should, on remand, "direct the District
Court to consider whether Google’s keyword practices are protected under
the nominative fair use doctrine (rather than the functionality doctrine)."262
A finding on remand that Google’s use of the Rosetta Stone marks is
nominative fair use will not leave Rosetta Stone and other mark-holders
without legal recourse. A trademark-holder wishing to prevent infringing
uses of its mark in the search engine advertising context has an obvious
target for its legal action: the infringing third-party advertiser. As the
Second Circuit’s Tiffany decision explains, the true wrongdoer in the case
of misleading or infringing Internet advertising is the advertiser itself.263 A
paradigmatic example of the effectiveness of targeting advertisers rather
than search engines is Binder v. Disability Group, Inc.,264 a case recently
258. INTA Brief, supra note 6, at 9.
259. Supra Part IV.
260. See Lorillard Tobacco Co. v. S & M Brands, Inc., 616 F. Supp. 2d 581, 588–89
(E.D. Va. 2009) (suggesting that the nominative fair use doctrine may not be applicable in
the Fourth Circuit); Nat’l Fed’n of the Blind v. Loompanics Enters., 936 F. Supp. 1232,
1241 (D. Md. 1996) (same).
261. INTA Brief, supra note 6, at 15; see also cases cited supra note 260.
262. Id. at 14–15.
263. See Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 114 (2d Cir. 2010) ("It is true
that eBay did not itself sell counterfeit Tiffany goods; only the fraudulent vendors did, and
that is in part why we conclude that eBay did not infringe Tiffany’s mark.").
264. See Binder v. Disability Grp., Inc., No. CV 07-2760-GHK, 2011 U.S. Dist. LEXIS
7037 at *4 (C.D. Cal. Jan. 25, 2011) (holding defendants liable for trademark infringement
based on their use of plaintiffs’ trademark in "AdWords linked to their websites").
decided in the Central District of California.265 In Binder, plaintiff law firm
brought a trademark infringement action against defendants for using
Google AdWords to purchase plaintiff’s trademark—"Binder and
Binder"—as a trigger term and display misleading and potentially
confusing advertisements that appeared as sponsored links when users
searched for the term "Binder and Binder."266 Analyzing the defendants’
advertisements under a standard multi-factor likelihood of confusion test,267
the District Court found that the advertisements were infringing and
awarded the plaintiff damages and attorney’s fees, based on the exceptional
nature of the trademark infringement at issue.268
Binder stands for the notion that leaving search engine companies out
of AdWords-based trademark infringement actions does not preclude
markholders from vigorously protecting their marks and winning judgments
against infringing online advertisers.269 The Fourth Circuit should adopt the
nominative fair use doctrine to direct the focus of trademark infringement
actions onto the parties responsible for the infringing advertising and allow
search engines to continue using trademarks in a descriptive, noninfringing
The Fourth Circuit now charts a course between perilous shoals, with
the threat of overly robust intellectual property rights for mark-holders on
one side and the danger of total indemnification for search engines in
trademark infringement actions on the other. Although not a perfect
solution, the doctrine of nominative fair use should guide the court’s
way.270 By ruling that search engines have a right to use trademarks in both
organic and sponsored search results, the court will ensure that
markholders are not inadvertently granted a total monopoly on the online use of
their trademarks.271 Simultaneously, by virtue of the nominative fair use
265. See id. at *3–4 (noting that plaintiffs brought suit solely against defendant
advertisers and not against Google, the search engine operator that sold defendant the
AdWords trigger terms).
266. Id. at *5.
267. See supra note 64 and accompanying text (discussing the multi-factor likelihood
of confusion test for trademark infringement claims, also known as the "MFLOCC test").
268. See Binder, 2011 U.S. Dist. LEXIS 7037, at *32 ("An award of reasonable
attorney’s fees and costs may be made in ‘exceptional cases’ of trademark infringement.").
269. See id. at *38 ("We further award Plaintiffs enhanced damages in the amount of
double the lost profits of a total of $292,235.20.").
270. See INTA Brief, supra note 6, at 15 ("This appeal thus provides [the Fourth
Circuit] with an appropriate opportunity to expressly consider the nominative fair use
271. See Dogan & Lemley, supra note 10, at 788 ("Overly restrictive trademark law has
doctrine’s requirement that protected trademark use be limited to
"reasonable necessity," the court will provide mark-holders a tool with
which to keep search engines from ignoring trademark rights.272 The stated
goal of this Note’s proposal for the Fourth Circuit is balance: The rights of
mark-holders must be balanced against the rights of search engine
companies and consumers.273 The nominative fair use doctrine represents
the best judicial expression of that balance to date. The Fourth Circuit
should join the Second, Third, and Ninth Circuits in leading the legal
system’s charge forward into the new digital age.
The Rosetta Stone case comes at a unique moment for the legal system
as it strives to keep pace with the never-ceasing march of Internet
technology. The implications of the Fourth Circuit’s ruling will reach far
beyond its immediate jurisdiction. As Google and its competitors grow and
evolve, the trademark infringement issues facing courts will only become
more complex—a fact made starkly clear by the arrival of Google Goggles
and its successor technologies.
The district court’s Rosetta Stone holding represents a good faith effort
to confront the emerging trademark issues that accompany the rapid
advance of search technology. While the spirit of the court’s decision is in
the right place, its resolution of the trademark infringement issue through
reliance on a misreading of the functionality doctrine renders the legal
analysis of the court’s ruling an unfit foundation for future precedent in
search engine cases.
The Fourth Circuit is now poised to repair the district court’s legal
errors while preserving the progressive spirit of Judge Lee’s ruling. The
appeals court has the tools—in the form of the nominative fair use
doctrine—to do this; it merely needs to commit to being a leader in the
arena of Internet-based intellectual property law. Regardless of the Fourth
Circuit’s decision in this case, it is this Note’s contention that the
the potential to stifle competition rather than facilitate it. Particularly when trademark
holders have economic power, giving them absolute control over the uses of their marks
could erect significant [competitive] barriers . . . .").
272. See Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 102 (2d Cir. 2010) ("[O]nly so
much of the mark or marks may be used as is reasonably necessary to identify the product or
service . . . .").
273. Supra notes 254–59 and accompanying text.
nominative fair use doctrine represents the legal regime of the future in the
area of Internet-based trademark infringement cases. Both Internet search
technology, and the legal response to that technology are barreling along at
remarkable speed; it is up to the Fourth Circuit to decide whether to keep
II. Google AdWords , Google Goggles, and the Search Revolution ..................................................................................1509 A. Google 's Position in the Market.......................................... 1509 B. Google AdWords.................................................................1511 C. Google Goggles...................................................................1514
III. Rosetta Stone v. Google .............................................................1516 A. Facts of the Case: Google's AdWords; Rosetta Stone's Marks......................................................................1516 B. The Court's Decision .......................................................... 1518 C. Examining the Application of the Functionality Doctrine to Word Marks .....................................................1521 D. Functional Features or Functional Use?..............................1525
IV. Rosetta Stone v. Google's Unintended Consequences ...............1528 A. The "New" Functionality Doctrine's Infinite Scope ........... 1528 B. The Functionality Doctrine's Uncertain Future ..................1531
V. A New Way Forward: Recasting Rosetta Stone v . Google .......1534 A . Identifying an Alternative to Functionality ......................... 1534 B. Nominative Fair Use: A Better Path to the Right Result...................................................................................1536 C. Google's Use Is Nominative ............................................... 1541 1 . Identifiability ................................................................ 1541 2 . Reasonable Necessity ................................................... 1544 3. No Indication of Endorsement or Sponsorship............. 1546
D. A Roadmap for the Fourth Circuit ...................................... 1549 1. See Rosetta Stone Ltd . v. Google Inc., 730 F. Supp . 2d 531 , 534 - 35 (E.D. Va.
2010 ) (holding that Google did not infringe Rosetta Stone's trademarks by using them as
keywords in its AdWords online advertising program) . 40 . See Google , How Search Works, YOUTUBE (Mar. 4 , 2010 ), http://www.youtube.
com/watch?v=BNHR6IQJGZs&feature=channel (last visited Oct . 10 , 2011 ) (noting that the
conventional way to search with Google is to "type in [one's] search . . . and hit return") . 41 . See Google , Google Goggles, YOUTUBE (Dec. 6 , 2009 ), http://www.youtube.com/
watch?v=Hhgfz0zPmH4&feature=player_embedded (last visited Oct . 10 , 2011 ) (giving a
brief video overview of Google Goggle's capabilities and uses ). 42 . See id. (demonstrating the uses of a Google Goggles-enabled smartphone , which
the images) . 51. See Rosetta Stone , 730 F. Supp . 2d at 535 (establishing that Rosetta Stone holds
Learning Success , Rosettastone.com, and Rosetta World"). 52. See id. at 534-35 (summarizing the five main issues before the District Court,
Scheyder , supra note 50.
Rosetta Stone , 730 F. Supp . 2d at 534 . 162. Id. at 15-16 (citing New Kids on the Block v. News Am . Publ'g, Inc., 971 F.2d
302 , 306 - 08 ( 9th Cir . 1992 )). 163 . See New Kids on the Block v . News Am. Publ'g, Inc., 971 F.2d 302 , 308 (9th Cir.
1992 ) (holding that a newspaper company's use of a popular musical band's trademarked
Aktiengesellschaft v . Church , 411 F.2d 350 , 352 ( 9th Cir . 1969 ) (holding, on similar
grounds, that Volkswagen could not prevent an automobile repair shop from using its mark) . 164. New Kids, 971 F.2d at 306. 165. Dogan & Lemley, supra note 10, at 788. 166. New Kids, 971 F.2d at 305 . 167. Id. at 306 (citing 15 U.S.C. § 1115 ( b)(4) (emphasis added)) . 168 . Id . (citing Soweco Inc . v. Shell Oil Co., 617 F.2d 1178 , 1185 ( 5th Cir . 1980 )). 169 . Id. at 304- 05 . 185 . Brief of eBay Inc. and Yahoo! Inc. as Amici Curiae Supporting Respondents at 6,
Rosetta Stone Ltd . v. Google, Inc., No. 10 -2007 (4th Cir. Nov. 1 , 2010 ), 126 - 1 [hereinafter