Welcome to our Media & Marketing law blog, which is dedicated to developments and commentary in media and marketing matters, including trademark, copyright and advertising.
Perry J. Narancic focuses his practice on representing both businesses and individuals throughout the San Francisco Bay Area in technology, intellectual property and business matters, especially in trade secret, copyright, trademark, patent, securities and other business litigation. He is a principal of litigation boutique LexAnalytica, PC.
MEDIA & MARKETING LAW BLOGon Trademark, Copyright and Advertising
A recent federal court decision in California helps clarify the law on the use of trademarks in electronic commerce. In Multi Time Machine v. Amazon.com, the Court considered whether Amazon’s search results featuring competing products infringe the trademarks of a trademark owner whose marks were used as a search query. In that case, the plaintiff Multi Timer Machine made high-end military-style watches under the brand “MTM Special Ops”. These watches were sold by a limited number of authorized distributors, and were not offered on Amazon.com. When a user of Amazon.com entered “MTM Special Ops”, Amazon’s search results showed no such products for sale – but did display competing products such as “Luminox Men’s 8401 Black Ops Watch.”
Amazon’s search results featured “mtm special ops” several times in the search interface, right above the area where Amazon presented competing products. Amazon claimed that these results were automatically generated using a smart search query that displayed other products that users might be interested in, based on what other users may also have searched. But MTM complained that Amazon’s use of its trademark in the search results was likely to cause initial confusion between MTM’s watches – and those of competitors whose products appeared immediately below the “mtm special ops” search query. “Initial interest” confusion occurs when a defendant uses the plaintiff’s trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion. This theory is grounded in the view that such a defendant is impermissibly capitalizing on the goodwill associated with the trademark.
The Court held that, in this case, there could be no initial interest confusion because of the clear labelling on the search results. Other Ninth Circuit cases seems to adopt a similar analysis for the use of keywords in online advertising. In Network Automation, Inc. v. Advanced Systems Concepts, Inc., the Court considered if Network Automation infringed the Advanced Systems’ trademark when it used the trademark as a Google Adword. In the keyword context, the Court held that likelihood of confusion will ultimately turn on what a consumer saw on a screen and reasonably believed in the given context. The court considered a number of factors, and ultimately relied on a number of facts in reaching its ruling: (a) Google clearly delineated that the competitors’ ad was a “sponsored” ad, and (b) the sponsored link was prominently separated from the search results. These factors suggested that no reasonable consumer would be confused by Network Automation’s use of Advanced Systems trademarks are Google Adwords.
The Multi Time and Network Automation cases suggest that it will be very difficult for trademark owners to stop competitors from using their marks as keywords, unless the competitors use the trademarks in question in a visible way.