It is not too early to wax nostalgic about the Internet
and trademark infringement. It seems so long ago that the Ninth Circuit, in
discussing metatags and initial interest confusion, said:
Using another's trademark in
one's metatags is much like posting a sign with another's trademark in front of
one's store. Suppose West Coast's competitor (let's
call it "Blockbuster") puts up a billboard on
a highway reading - "West Coast Video: 2 miles
ahead at Exit 7" - where West Coast is really
located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around
looking for it. Unable to locate West Coast, but seeing
the Blockbuster store right by the highway entrance, they may simply rent
there. Even consumers who prefer West Coast may find it
not worth the trouble to continue searching for West Coast
since there is a Blockbuster right there. Customers are not confused in the
narrow sense: they are fully aware that they are purchasing from Blockbuster and
they have no reason to believe that Blockbuster is related to, or in any way
sponsored by, West Coast. Nevertheless, the fact that
there is only initial consumer confusion does not alter the fact that
Blockbuster would be misappropriating West Coast's acquired goodwill.
Brookfield
Communs. v. W. Coast Entm't Corp., 174 F.3d 1036 (9th Cir.
Cal. 1999) [enhanced version available to lexis.com subscribers]
Fast forward to the new millennium, and confusion sets
in, especially when discussing the infringability of keywords. Since Brookfield, several analogies have been
offered to illustrate keywords in the context of initial interest confusion. A
few include:
For example, consider the
following scenario: I walk into Macy's and ask for the Calvin Klein section and
am directed upstairs to the second floor. Once I get to the second floor, on my
way to the Calvin Klein section, I notice a more prominently displayed line of
Charter Club clothes, Macy's own brand, designed to appeal to the same people
attracted by the style of Calvin Klein's latest line of clothes. Let's say I
get diverted from my goal of reaching the Calvin Klein section, the Charter
Club stuff looks good enough to me, and I purchase some Charter Club shirts
instead. Has Charter Club or Macy's infringed Calvin Klein's trademark, simply
by having another product more prominently displayed before one reaches the Klein
line? Certainly not.
Playboy
Enters. v. Netscape Communs. Corp., 354 F.3d 1020 (9th Cir.
Cal. 2004) (Berzon, Circuit Judge, concurring) [enhanced version / unenhanced version available from lexisONE Free Case Law]
keyword purchasing may, in
many cases, be analogized to a drug store that "typically places its own
store-brand generic products next to the trademarked products they emulate in
order to induce a customer who has specifically sought out the trademarked
product to consider the store's less-expensive alternative." The generic
product capitalizes on the recognizable brand name but the consumer benefits by
being offered a lower-cost product. At no point is the consumer confused about
the alternatives presented to her. The goodwill invested in the protected mark
remains undisturbed while the consumer reaps the benefit of competing goods.
Trademark infringement would seem to be unsupportable in this scenario. Mere
diversion, without any hint of confusion, is not enough.
Hearts
on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass.
2009) [enhanced version] (citing 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. N.Y.
2005) [enhanced version / unenhanced version] and refusing to dismiss plaintiff's
keyword infringement claim)
Here, Plaintiff contends
Lens.com advertisements constitute a similar "bait and switch" that
spawns confusion. Plaintiff asserts that whenever a Lens.com advertisement
appears when a consumer enters the search term "1800Contacts," it is
akin to a consumer asking a pharmacist for Advil and the pharmacist handing the
consumer Tylenol. This analogy mischaracterizes how search engines function. A
more correct analogy is that when a consumer asks a pharmacist for Advil, the
pharmacist directs the consumer to an aisle where the consumer is presented
with any number of different pain relievers, including Tylenol. If a consumer
truly wants Advil, he or she will not be confused by the fact that a bottle of
Tylenol is on a shelf next to Advil because of their different appearances.
1-800
Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS
132389 (D. Utah Dec. 14, 2010) [enhanced version] (holding that "the mere purchase of a
trademark as a keyword cannot alone result in consumer confusion")
The aforementioned examples appear to point to keywords as
non-infringing, but analogies do not necessarily make the law. However, the
Ninth Circuit recently addressed the issue, and instead of presenting another analogy,
the court presented specifics regarding keyword infringement.
Last week's decision in Network Automation, Inc. v. Advanced Sys. Concepts, 2011 U.S. App.
LEXIS 4488 (9th Cir. Cal. Mar. 8, 2011) [enhanced version / unenhanced version] is important for several reasons. At
the outset, the Ninth Circuit aligned itself with Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. N.Y. 2009) [enhanced version / unenhanced version] by holding that:
Previously we have assumed,
without expressly deciding, that the use of a trademark as a search engine
keyword that triggers the display of a competitor's advertisement is a
"use in commerce" under the Lanham Act. We now agree with the Second
Circuit that such use is a "use in commerce" under the Lanham Act.
The court then held that in resolving the question of
infringement, the test in AMF, Inc. v. Sleekcraft
Boats, 599 F.2d 341 (9th Cir. Cal. 1979) [enhanced version] had to be applied in a flexible manner,
keeping in mind that the eight factors it recited were not exhaustive, and that
only some of them were relevant to determining whether confusion was likely in
the case at hand. The Sleekcraft
factors include:
[1] strength of the
mark;
[2] proximity/relatedness
of the goods;
[3] similarity of the
marks;
[4] evidence of
actual confusion;
[5] marketing
channels used;
[6] type of goods and
the degree of care likely to be exercised by the purchaser;
[7] defendant's
intent in selecting the mark; and
[8] likelihood of
expansion of the product lines.
In finding
the Sleekcraft factors to be a
nonexhaustive list of factors relevant to determining the likelihood of
consumer confusion, the court reigned in Brookfield's "Internet
trinity" or "Internet troika," refusing to enshrine (1)
similarity of the marks, (2) relatedness of the goods or services, and (3)
simultaneous use of the Web as a marketing channel, as the three most important
factors for trademark infringement on the Internet. The court held that:
Depending on the facts of
each specific case arising on the Internet, other factors may emerge as more
illuminating on the question of consumer confusion. In Brookfield, we
used the "troika" factors to analyze the risk of source confusion
generated by similar domain names, but we did not wholesale adopt them in the
metatag analysis. Subsequent courts similarly have found the "troika"
helpful to resolve disputes involving websites with similar names or
appearances. ...
Given
the multifaceted nature of the Internet and the ever-expanding ways in which we
all use the technology, however, it makes no sense to prioritize the same three
factors for every type of potential online commercial activity. The
"troika" is a particularly poor fit for the question presented here.
The potential infringement in this context arises from the risk that while
using Systems' mark to search for information about its product, a consumer
might be confused by a results page that shows a competitor's advertisement on
the same screen, when that advertisement does not clearly identify the source
or its product.
In determining the proper inquiry for this particular
trademark infringement claim, we adhere to two long stated principles: the Sleekcraft factors (1) are non-exhaustive, and
(2) should be applied flexibly, particularly in the context of Internet
commerce. Finally, because the sine qua non of trademark infringement is
consumer confusion, when we examine initial interest confusion, the owner of
the mark must demonstrate likely confusion, not mere diversion.
The court then went on to examine the eight Sleekcraft
factors, and of particular interest, the court, in examining the purchasers'
degree of care, pondered a default standard of greater care. The court stated:
We have recently
acknowledged that the default degree of consumer care is becoming more
heightened as the novelty of the Internet evaporates and online commerce
becomes commonplace. ...
We further explained that we
expect consumers searching for expensive products online to be even more sophisticated.
Therefore the district court
improperly concluded that this factor weighed in Systems' favor based on a conclusion reached by our
court more than a decade ago in Brookfield
and GoTo.com [v. Walt Disney Co., 202 F.3d 1199 (9th Cir. Cal. 2000)] [enhanced version] that Internet users on the whole exercise
a low degree of care. While the statement may have been accurate then, we
suspect that there are many contexts in which it no longer holds true.
Moreover, in adhering to the non-exhaustiveness of the Sleekcraft
factors, the court expanded its examination of keyword infringement by looking beyond Sleekcraft to include "Other Relevant Factors." These other factors were listed as:
In the keyword advertising
context the "likelihood of confusion will ultimately turn on what the
consumer saw on the screen and reasonably believed, given the context." In
Playboy, we found it important that
the consumers saw banner advertisements
that were "confusingly labeled or not labeled at all." We noted that
clear labeling "might eliminate the likelihood of initial interest
confusion that exists in this case."
The appearance of the
advertisements and their surrounding context on the user's screen are similarly
important here. ... Google and Bing have
partitioned their search results pages so that the advertisements appear in
separately labeled sections for "sponsored" links. The labeling and
appearance of the advertisements as they appear on the results page includes
more than the text of the advertisement, and must be considered as a whole.
For
a better understanding of these issues, read:
2-7A Gilson on Trademarks § 7A.09 Banner Ad and Sponsored Link
Confusion: Keywords or "Keying" (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)
Internet
users conduct searches on search engines by entering various terms, like
"children's toys" or "Tiger Woods" or "minivan,"
and the search engines provide a list of web sites that allegedly contain and
therefore have a relationship to the terms entered by the Internet users. Many
search engines, which are typically free to Internet users, sell banner
advertisements ....
Google Set To Change Its Trademark Policy Throughout Canada And
Most Of Europe
On September 14, 2010, Google is set
to change its controversial AdWords policy for Canada, the United Kingdom,
Ireland and most of the rest of Europe.1 In recent years, Google has
systematically altered its AdWords trademark policy - both geographically and
in substance - with a tendency toward expanding the circumstances in which an
online advertiser is allowed to utilize an unrelated party's trademark.
Up in the Air of Cyberspace - Keyword Advertising and Trademark
Infringement
Is the use of your trademark as a
keyword in online advertising an infringement on your trademark?
The issue of whether the search engine
provider that sells the keyword is liable for trademark infringement is still
up in the air in the United States. In
Rescuecom Corp. v. Google Inc. the Court of Appeals for the Second Circuit
recently ruled that the sale by Google of a keyword is "use in
commerce" of a trademark.
Anne Gilson LaLonde on Rescuecom v. Google and the Meaning of
"Use in Commerce"
In Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. N.Y. 2009),
the Second Circuit held that Google had used Rescuecom's trademark in commerce
when it recommended and sold the mark as a keyword to Rescuecom's competitors.
In this Commentary, Anne Gilson LaLonde explains the facts and holding of Rescuecom in the context of other
keyword buy cases, discusses the legal issues underlying such cases, and
explores definitions of "use in commerce." She writes:
Gold on Designer Skin, LLC v. S & L Vitamins, Inc., 560 F.
Supp. 2d 811 (D. Az. 2008)
S & L Vitamins, an internet
reseller, used the trademarks of Designer Skin, a manufacturer, in the metatags
of its website and as search engine keywords. S & L also displayed
thumbnail images of Designer Skin's products on its websites. Consequently,
Designer Skin filed a trademark action against S & L. In this Commentary,
Andrew Gold analyzes Designer Skin, LLC v. S & L Vitamins, Inc., 560 F.
Supp. 2d 811 (D. Az. 2008), which granted S & L summary judgment, and
discusses the element of initial interest confusion. He writes
Gold on First Sale Doctrine, Disclaimers and Metatags: Standard
Process, Inc. v. Banks
In Standard Process, Inc. v. Banks, 2008 U.S. Dist. LEXIS 31993
(E.D. Wisc. 2008), a chiropractor bought dietary supplements from a
manufacturer and sold them on his website, despite the fact that he had agreed
not to sell the products on the internet. The manufacturer terminated the
chiropractor's account. When the manufacturer sued for trademark infringement
and false designation of origin, the chiropractor won. How did this happen?
Andrew M. Gold, a partner in the firm of Bogatin, Corman & Gold, analyzes
the case and discusses the First Sale Doctrine. He writes:
Andrew J. Reitz on The Use of a Trademark in Metatags in a
Descriptive Manner
The United States District Court for
the District of Minnesota recently denied a party's motion for injunctive
relief concerning the use of a party's registered trademark and trade name,
noting that Plaintiff's changes to his website comport with the guidelines
found to be appropriate concerning the use of metatags. In exploring the
ramifications of Gregerson v. Vilana Fin., Inc., No. 06-1164 ADM/AJB, 2006 U.S.
Dist. LEXIS 81731 (D. Minn. Nov. 7, 2006), and offering guidelines for practitioners
concerning the potential liability associated with metatags, Andrew J. Reitz
writes:
Joseph N. Welch II on Google v. American Blind & Wallpaper;
Settled Case Doesn't End National Keyword Debate
On
April 3rd, 2008, the Second Circuit is scheduled to hear oral argument in
Rescuecom v. Google (docket no. 06-4881-cv), which is another step in
litigation over whether the sale of keywords is actionable under the Lanham
Act. Last year, Google, Inc. and American
Blind & Wallpaper Factory, Inc. settled Google's Northern District of
California suit (docket no. 5:03-cv-05340-JF) in which Google sought a
declaratory judgment that Google's sale of American Blind's trademarks as
keywords was not trademark infringement. This commentary by Joseph N. Welch II
examines the state of the law following the American Blind settlement and
discusses the impact of the favorable settlement for Google. Mr. Welch writes: