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Sunrider International Joins Amicus Brief in Support of Appeal of District Court Ruling in Rosetta Stone's Trademark Infringement Lawsuit Against Google

This appeal arises from a ruling by the U.S. District Court in Alexandria, Virginia, against Rosetta Stone (NYSE:RST), a leader in the language learning industry in the United States, in its lawsuit against Google Inc., the Internet search engine with a dominant market position in the United States and many countries around the world, based on trademark infringement and dilution. The district court ruled against Rosetta Stone's claim that Google's sale of trademarked brand names without their owners' permission as keywords to trigger paid advertisements on its search engine violates federal laws against trademark infringement and trademark dilution. Such a radical change to trademark law has negative implications for Sunrider and its millions of distributors and customers in the U.S. and beyond.

The amici parties represented by Arnold & Porter have a direct interest in ensuring that the federal courts correctly interpret and apply the federal trademark and dilution laws. The brief establishes that the district court misconstrued settled principles of trademark law in a way that effectively immunizes Google from any liability for its unauthorized sale of trademarks from which it derives substantial financial gain. As the brief points out, "The difficulty for Amici is that Google has created a major advertising market that is conducive to infringing and dilutive ads." Given Google's market dominance and significant market power as a search engine, advertisers are willing to put a high value on famous brands when they bid for those brands as keywords to generate paid advertisements as 'sponsored links'.

The brief focuses on two key aspects of the district court's ruling where it misconstrued settled tenets of trademark law. First, the district court imposed requirements on Rosetta Stone in order to prove that Google had 'diluted' its trademarks that are not required under federal trademark dilution law. The court's misconstruction of the well-established federal dilution standards has broad-reaching adverse implications for all owners of famous brands seeking to protect their brands from dilutive uses by others.

Second, the district court misapplied the narrow doctrine of "functionality" which is intended to prevent a person from claiming trademark rights in 'functional' product features that are essential to the manufacture or use of that person's products. In extending the functionality doctrine to protect Google's use trademarked words in its 'Adwords' program, the court opened the door for anyone to claim that its use of another party's famous brand name is beneficial to its business and thereby to escape liability for trademark infringement.

Sunrider and its distributors have worked for almost 30 years to promote Sunrider products worldwide, and through this amicus brief, Sunrider seeks to prevent unauthorized third parties from profiting from these efforts. Sunrider will continue to lead the industry with the most innovative, technologically advanced products available, and ensure that consumers are able to easily locate Sunrider information and purchase Sunrider products.

Sunrider International
Owen Smigelski, 310-781-3808
owen.smigelski@sunrider.com