This is big, but stay calm. Though I hardly can.
I took some heat a little while ago for suggesting, contrary to my generally skeptical view of what constitutes trademark use in commerce (a legal premise of infringement), that there’s something very flabby about the argument that the use of trademark-protected words as search terms by competitors can never be infringement. (I never said it always is.) And until now, district courts in the Second Circuit have held that the use of trademarks as a term was not “trademark use.” I may have had theoretical issues with that tendency, but it worked to the (short-lived) benefit of my clients S&L Vitamins.
But today Reuters reported that the Second Circuit has rejected a ruling by a U.S. District Court in New York dismissing Rescuecom’s litigation against Google. The case had been dismissed on the grounds that Google Adwords program did not constitute a “use in commerce” by Google of Rescuecom’s trademarks. Wrong, said the Circuit. Here‘s the opinion; below are some thoughts and some excerpts, with some links added by me.
Fundamentally, the Circuit says District Courts have read too much into its ruling in 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 19 2005), which it urges was laced with caveats and very fact specific:
The present case contrasts starkly with [two] important aspects of the 1-800 decision. First, in contrast to 1-800, where we emphasized that the defendant made no use whatsoever of the plaintiffâ€™s trademark, here what Google is recommending and selling to its advertisers is Rescuecomâ€™s trademark. Second, in contrast with the facts of 1-800 where the defendant did not â€œuse or display,â€ much less sell, trademarks as search terms to its advertisers, here Google displays, offers, and sells Rescuecomâ€™s mark to Googleâ€™s advertising customers when selling its advertising services. In addition, Google encourages the purchase of Rescuecomâ€™s mark through its Keyword Suggestion Tool. . . .
Google, supported by amici, argues that 1-800 suggests that the inclusion of a trademark in an internal computer directory cannot constitute trademark use. Several district court decisions in this Circuit appear to have reached this conclusion. See e.g., S&L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 199-202 (E.D.N.Y. 2007) (holding that use of a trademark in metadata did not constitute trademark use within the meaning of the Lanham Act because the use â€œis strictly internal and not communicated to the publicâ€); Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402, 415 (S.D.N.Y. 2006) (holding that the internal use of a keyword to trigger advertisements did not qualify as trademark use). This over-reads the 1-800 decision. First, regardless of whether Googleâ€™s use of Rescuecomâ€™s mark in its internal search algorithm could constitute an actionable trademark use, Googleâ€™s recommendation and sale of Rescuecomâ€™s mark to its advertising customers are not internal uses.
Furthermore, . . . [w]e did not imply in 1-800 that an alleged infringerâ€™s use of a trademark in an internal software program insulates the alleged infringer from a charge of infringement, no matter how likely the use is to cause confusion in the marketplace. If we were to adopt Google and its amiciâ€™s argument, the operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion. This is surely neither within the intention nor the letter of the Lanham Act.
Good as far as it goes, right? First, “Googleâ€™s recommendation and sale of Rescuecomâ€™s mark to its advertising customers are not internal uses.” Does this make Google not merely potentially secondarily liable, but liable liable? Second, 1-800 was never meant as a broad rule that no keyword advertising can ever be infringing.
But this is the part I really liked, because I have always found the argument that keyword ads are “merely product placement” to be ridiculous:
An example of product placement occurs when a store-brand generic product is placed next to a trademarked product to induce a customer who specifically sought out the trademarked [sic] product to consider the typically less expensive, generic brand as an alternative. . . . From the fact that proper, non-deceptive product placement does not result in liability under the Lanham Act, it does not follow that the label â€œproduct placementâ€ is a magic shield against liability, so that even a deceptive plan of product placement designed to confuse consumers would similarly escape liability. It is not by reason of absence of a use of a mark in commerce that benign product placement escapes liability; it escapes liability because it is a benign practice which does not cause a likelihood of consumer confusion. In contrast, if a retail seller were to be paid by an off-brand purveyor to arrange product display and delivery in such a way that customers seeking to purchase a famous brand would receive the off-brand, believing they had gotten the brand they were seeking, we see no reason to believe the practice would escape liability merely because it could claim the mantle of â€œproduct placement.â€ The practices attributed to Google by the Complaint, which at this stage we must accept as true, are significantly different from benign product placement that does not violate the Act. . . .
What Rescuecom alleges is that by the manner of Googleâ€™s display of sponsored links of competing brands in response to a search for Rescuecomâ€™s brand name (which fails adequately to identify the sponsored link as an advertisement, rather than a relevant search result), Google creates a likelihood of consumer confusion as to trademarks. If the searcher sees a different brand name as the top entry in response to the search for â€œRescuecom,â€ the searcher is likely to believe mistakenly that the different name which appears is affiliated with the brand name sought in the search and will not suspect, because the fact is not adequately signaled by Googleâ€™s presentation, that this is not the most relevant response to the search. Whether Googleâ€™s actual practice is in fact benign or confusing is not for us to judge at this time. We consider at the 12(b)(6) stage only what is alleged in the Complaint.
We conclude that the district court was mistaken in believing that our precedent in 1-800 requires dismissal.
There are two things LIKELIHOOD OF CONFUSION® loves about this conclusion.
One is that neither the reasoning nor the rule of law are dependent on the spurious notion of initial interest confusion (“IIC”). The court is saying it cannot say, as a a matter of law, that there could not be a LIKELIHOOD OF CONFUSION such that a consumer could end up buying something different from he thinks he is buying, because of the error as to implied affiliation. The court is not saying here that it is enough, as in the IIC scenario, that the consumer might, God forbid, be “diverted” by having the opportunity to think about a competing product, despite the absence of deception. There Second Circuit sees no need to posit a marketplace monopoly on impression, allusion or reference to say that some keyword advertising could be an infringement.
And the second one is that, bless their hearts, the panel also hints to judge and counsel to get to work and make an empirical record, and thereby address what is perhaps the sorriest aspect of our present Lanham Act jurisprudence: the seeming permit for judges to “wing it,” or let juries wing it, when deciding if there is a LIKELIHOOD OF CONFUSION. The key words, again, are “Whether Googleâ€™s actual practice is in fact benign or confusing is not for us to judge at this time.” In other words, the question of confusion is not a legal determination — it it were, the court could have reversed the judgment below, instead of remanding it.
“Prove confusion.” This is the whole of the law. The rest is commentary. Now go and litigate!
UPDATE: Rescue.com declines my invitation to “go litigate”; drops the lawsuit.