Eric Goldman, author of one of the bona-fide-deserving, regularly updated, ABA-Blawg-100-listed and actually fairly indispensable Technology & Marketing Law Blog updates us on a beat I’ve written on a whole bunch but given up hope on following comprehensively. It is, however, a topic that anyone involved in trademark use on the Internet must stay on top of: Keyword advertising litigation.
Here’s the latest, a report on a case called Morningware, Inc. v. Hearthware Home Products, Inc., 2009 WL 3878251 (N.D. Ill. Nov. 16, 2009), which involves a fairly novel question of what happens when one advertiser uses the phrase “Why buy an imitation?” in the small copy space Google ads allow you, along with the brand name of the competitor — suggesting the competitor is imitating the advertiser.
Eric walks you through the opinion, which he acknowledges is unremarkable in many respects. But these observations are the ones I was particularly motivated to cut and paste here:
The advertiser also argued for a 12(b)(6) motion to dismiss on lack of consumer confusion grounds. While I understand the advertiser’s hope, I think it’s hard to convince a judge that the trademark owner failed to allege sufficient confusion in the complaint. This is especially true when plaintiffs invoke the stupid “initial interest confusion” doctrine, which has no doctrinal contours and therefore is simply impossible for defendants to refute at the motion-to-dismiss stage (obligatory cite to my anti-initial interest confusion rant from 2005). Citing to the abysmal 2002 Promatek case, the court says the plaintiff alleged enough initial interest confusion to survive the 12(b)(6).
Thanks, as ever, on that point Eric! (Obligatory cite to my anti-initial interest confusion rant from 2003 here.) Actually there were two points — I just get excited whenever he starts talking about initial interest confusion. The first point is a good one, too: Judges really don’t like to dismiss a trademark infringement complaint on 12(b)(6) grounds.* Really good judges do, but they unfortunately are not in abundance in as many times and places as would be wished.
This paragraph is worth repeating too, as a summation of “what’s going on” this area of litigation:
I keep getting calls from reporters operating under the misimpression that trademark owner-vs.-search engine keyword advertising lawsuits are more common than trademark owner-vs.-keyword advertiser lawsuits. While the lawsuits against search engines certainly get way more press coverage, in reality they are relatively rare. I don’t have an exact count of pending lawsuits, but only 10 immediately come to my mind (9 against Google and the AA v. Yahoo case). In contrast, trademark owner-vs.-advertiser lawsuits are so numerous that I don’t blog on every complaint I see, and most trademark owners are wise enough to leave the search engines out of their litigation.
Defendants, on the other hand — “who you gonna call”?
* The awfulness of this fact on legal, policy and justice grounds cannot be contained in this post, but is essentially the topic of about one fifth of the LIKELIHOOD OF CONFUSION® blog.