Appeals Court Reverses Its Own Ruling: It's NOT Trademark Infringement For Amazon To Provide Useful Search Results

from the watch-this dept

Just a few months back we had written about an odd case occurring in California between Multi-Time Machines, which makes watches, and Amazon, which sells watches, but not MTM watches. This trademark case over search results on watches took an odd turn after the 9th Circuit Court of Appeals attempted to turn back the time-piece, applying a discarded doctrine called "initial interest confusion." This doctrine made it trademark infringement for retailers to point customers looking for product X to product Y instead, particularly by using certain product placement practices. The Ninth Circuit essentially dropped the doctrine in 2011, after a series of inconsistent rulings bred all kinds of confusion. In this particular case, Amazon customers entering "MTM watches" into the search field were presented with watches made by competitors, because Amazon doesn't carry MTM watches. In other words: "We don't carry that product, but we do carry these similar products that you might be interested in." The 9th Circuit initially ruled in favor of Amazon, but the appeals court reversed that ruling and set the trial to go before a jury using, again, the initial interest confusion doctrine.

But confusion is the key word here, apparently, because that same court agreed to a request by Amazon for a rehearing. At the rehearing, Amazon reiterated that it clearly identified the manufacturers and companies in its search results and that there was no actual customer confusion to be found. The court then reversed itself, ruling that the initial court's ruling in favor of Amazon had been proper.

Multi Time Machine, Inc., manufacturer of MTM Special Ops watches, alleged that Amazon’s website infringed its trademark because of the manner in which the website responded to a shopper’s search request for the watches. Affirming the district court’s summary judgment in favor of Amazon, the panel held that Amazon’s search results page did not create a likelihood of confusion by displaying a list of several other brands of military style watches. The panel concluded that because the page clearly labeled the name and manufacturer of each product offered for sale and even included photographs of the items, no reasonably prudent shopper accustomed to shopping online would likely be confused as to the source of the products.

There are a couple of items of note here. In its ruling, the court does not come out and directly strike down the idea of initial interest confusion. In fact, despite an amicus brief offered by Public Citizen and the EFF, the ruling generally only refers to initial interest confusion when describing the basis for MTM's complaint. In other words, it essentially punted on the question. It's also worth noting that there could still be a request that the case be reheard "en banc", so the court may hit the reset button on the case entirely.

But the real fun is how the court reversed itself. Paul Alan Levy has a nice write up of the details, but essentially one of the judges simply switched teams.

The panel has now reversed itself in an opinion by Circuit Judge Barry Silverman, the author of the original dissenting opinion, and affirmed the lower court’s grant of summary judgment. In dissent, Circuit Judge Carlos Bea (the author of the now-discarded majority opinion) angrily charges that the majority “sub silentio overrules this court’s ‘initial interest confusion’ doctrine.”

The third judge, Gordon Quist, had originally sided with Bea, but upon review appears to have decided that he did so in error and now joins the new majority in favor of Amazon. Courtroom drama, does it get any better?

In the end, it seems plainly silly to handcuff an online retailer from returning useful search results to not-confused customers in favor of a trademark doctrine that appears to have been deemed useless four years previous. It's a shame the court didn't decide to take that question head on, but this is certainly better than the court's original ruling.

Filed Under: 9th circuit, ads, initial interest confusion, recommendations, trademark, watches
Companies: amazon, mtm

9th Circuit: Amazon's Search Results Too Useful, Must Be Trademark Infringement

from the watch-this dept

Let's say you were in the market for some luxury item. Hell, let's say you wanted a nice watch. Being a watch kind-of-guy, you've done enough research to know you would like an MTM Special Ops branded watch, so you walk into a jewelry store and tell them what you want. When you ask the store clerk for an MTM watch, he or she instead points you towards lots of other watches for sale. As you look around the store, you notice none of the display cases actually contain any MTM brand watches. Have you suddenly become confused as to whether the alternative watches are in fact MTM watches?

The 9th Circuit Court thinks you might have, given its ruling in a trademark case between MTM and Amazon. The case is essentially over the scenario described above, except on Amazon's online marketplace. Users that put "MTM Special Ops" into Amazon's search field were provided with a list of competing watches in the results, because Amazon doesn't carry MTM watches. Those search results were clearly labeled with the competitor brand's names. One district court had already ruled in favor of Amazon, as MTM argued that those search results constituted trademark infringement. The 9th Circuit Court of Appeals reversed that ruling and sent the case to a jury. And this whole thing is prefaced on what's called initial interest confusion, as detailed in the link above by Eric Goldman.

The majority opinion focuses on a much-criticized trademark doctrine called initial interest confusion. The Ninth Circuit has had a dozen or so cases addressing initial interest confusion, and its handling of the doctrine has vacillated wildly. In 1999, the Ninth Circuit adopted an exceptionally (and, in my opinion, unreasonably) overbroad definition of the concept. This led to a series of tortured and inconsistent rulings until 2011, when the Ninth Circuit adopted a more constrained definition that virtually killed the doctrine.

In this case, the Ninth Circuit bypasses its 2011 definition and instead defines initial interest confusion from a 2004 ruling:

"Initial interest confusion occurs not where a customer is confused about the source of a product at the time of purchase, but earlier in the shopping process, if “customer confusion . . . creates initial interest in a competitor’s product.”"

As Goldman notes, there was a very good reason the court essentially killed off this whole doctrine in 2011. Based on that definition used above, all kinds of accepted retail practices would suddenly be found to be infringing, including the way product placement of house and alternative brands occurs in brick and mortar stores. The theory behind initial interest confusion is essentially that if a consumer was looking for brand x and only found brand y through retailing practices like product placement and/or search results, there can still be trademark infringement even if brand y is clearly labeled and the customer is clear on what they're buying prior to making the purchase. In the area of search results for online retailers, it's a really dumb doctrine, because it essentially penalizes search results for being too useful to everyone who isn't seeking one brand/product only to the exclusion of every other product on the planet. The dissenting judge in the case outlines nicely how silly the majority's ruling is.

Because Amazon’s search results page clearly labels the name and manufacturer of each product offered for sale and even includes photographs of the items, no reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products….The search results page makes clear to anyone who can read English that Amazon only carries the brands of watches that are clearly and explicitly listed on the web page. The search results page is unambiguous.

The difference between other online retailers and Amazon is that other retailers denote at the top of search results that they do not carry the MTM brand, where Amazon simply lists all the other brand watches it carries. In other words, Amazon assumes that the public is intelligent enough to read the brands on the search results and conclude that Amazon doesn't carry MTM watches. So, while the case is now headed to a jury, the fix for Amazon is technically easy, but silly to have to implement. More troubling, as Goldman notes, is both the fact that the court appears to view online retailers as having more culpability under the initial interest doctrine and the larger danger of initial interest being brought back to life by this ruling.

Initial interest confusion revitalized. I don’t believe any trademark owner has won on initial interest confusion grounds since 2011, and many trademark experts considered the doctrine dead. This opinion potentially resurrects the doctrine like a zombie. That’s an unfortunate development. The initial interest confusion doctrine is solely based on judicial intuition; no empirical research validates its existence. It’s also an overly plastic doctrine; its boundaries and definition often change from case to case. This makes it’s impossible for a defendant to rebut and hard for litigants to predict outcomes. Having a revitalized doctrine will increase defendants’ litigation costs with no commensurate social benefit.

In other words, this ruling would seem to force online retailers to treat the consuming public as though they were far more stupid than they actually are, which is a strange outcome for a court case. Punishing useful retailer search engines for being too useful and not treating the public like morons is hopefully a practice that won't make it through the jury process.

Filed Under: 9th circuit, initial interest confusion, merchandizing, search results, trademark
Companies: amazon, mtm

Once Again, Buying Competitive Keywords Is Not Trademark Infringement

from the killing-initial-interest-confusion-doctrine dept

Here are some things I hate:

• duplicitous litigants, such as plaintiffs who buy competitive keyword advertising yet sue competitors for doing the same thing
• economically irrational and socially wasteful litigation, such as plaintiffs who spend over a million dollars in legal fees on a problem that, at most, is worth tens of thousands of dollars
• pugnacious litigation over incredibly weak trademarks, like so-called trademarks that are simply 1-800 plus a generic noun
• trademark doctrines that have no rigorous definition or scientific support, like the initial interest confusion doctrine
• technologically unsavvy judges that guess about how consumers use the Internet when those assumptions have been proven false in the literature
• appellate courts that eviscerate a legal doctrine without expressly saying the doctrine is dead, leaving the legal doctrine as a zombie to plague the courts for many years

(Why yes, I did wake up on the wrong side of the bed this morning).

With this list in mind, you can see why I hate the 1-800 Contacts v. Lens.com lawsuit. 1-800 Contact has spent enormous amounts on legal fees—at least $650k as of 2010--pursuing Lens.com for competitive keyword ads that had generated $20 in profit for Lens.com (no, that's not a typo) and, at maximum, a few tens of thousands of dollars in revenue for Lens.com affiliates. All of this litigation is predicated on the initial interest confusion doctrine, an overly amorphous doctrine that no one can define or find any scientific support for, and which has been has been a loser in court for many years. To top it off, 1-800 Contacts had hypocritically engaged in competitive keyword advertising itself. Glass house and stones, etc.

After 6 years in court, the case isn’t over yet. This week, the Tenth Circuit affirmed most of the district court’s opinion and emphatically rejected most of 1-800 Contacts' lawsuit against Lens.com for the competitive keyword advertising it and its affiliates did. However, a small issue got remanded for a jury trial, so the parties will get the pleasure of wasting many tens of thousands of dollars more to conduct the jury trial unless they can finally find a way to settle. Hooray for litigation that create massive deadweight social losses!

Background

Lens.com bought AdWords keyword advertising on the following keywords: “1-800 contact lenses”; “1800 contact lenses”; “800 contact lenses”; “800comtacts.com”; “800contacta.com”; “800contavts.com”; “800contaxts.com”; “800contzcts.com”; and “800conyacts.com.” In addition, Lens.com had 10,000 affiliates through Commission Junction. Two Lens.com affiliates, Dusty Goggans and Ryan McCoy, bought the keyword “1800Contacts” and similar terms; and McCoy ran at least one ad that displayed “1800 Contacts” in the ad copy.

1-800 Contacts sued Lens.com in 2007. In 2010, the district court destroyed 1-800 Contacts' arguments, handing Lens.com a complete win. On appeal, the Tenth Circuit upholds most of the lower court's ruling.

Is Buying Competitive Keyword Advertising Trademark Infringement?

1-800 Contacts argued that Lens.com created initial interest confusion by buying 1-800 Contacts' trademarks. The Tenth Circuit adopted one of the nation's most favorable definitions of initial interest confusion in its horrible 2006 case Australian Gold v. Hatfield. That case said initial interest confusion “results when a consumer seeks a particular trademark holder’s product and instead is lured to the product of a competitor by the competitor’s use of the same or a similar mark.” If this is just a restatement of bait-and-switch law, fine, but it’s generally believed the Tenth Circuit standard covered more than bait-and-switch. Bait-and-switch requires an initial falsity to bait the hook but the 10th Circuit's standard didn't mention falsity, and there’s no intrinsic falsity in a typical competitive keyword ad buy where the competitor's trademark is used to trigger ad copy.

By embracing the initial interest confusion in 2006, the Tenth Circuit was a late adopter to that party. Since then, the Ninth Circuit pivoted away from initial interest confusion doctrine in the Network Automation case (cited in this opinion), and other courts have cast doubts on the doctrine.

Unfortunately, the Tenth Circuit doesn't have the fortitude to knock out the doctrine entirely. Instead, it offers this broad legal interpretation:

initial-interest confusion would arise as follows: a consumer enters a query for “1-800 Contacts” on Google; sees a screen with an ad for Lens.com that is generated because of Lens.com’s purchase of one of the nine Challenged Keywords; becomes confused about whether Lens.com is the same source as, or is affiliated with, 1-800; and therefore clicks on the Lens.com ad to view the site. Lens.com has exploited its use of 1-800’s mark to lure the confused consumer to its website.

Normally I would strenuously object to this standard, but the Tenth Circuit then did a tricky sleight of hand with its evidentiary standards. Typically, trademark law measures consumer confusion through consumer surveys asking for their confusion about product source. Cases have usually held that 20%+ consumer confusion in those surveys is probative of confusion while <10% consumer confusion is probative of no legally actionable confusion.

Here, the court says that clickthrough rate (CTR) is a proxy for a consumer confusion survey--and the 10%/20% presumptions apparently apply. What this means in practice is that if the ad doesn't get well over a 10% clickthrough rate, then the low clickthrough rate will be probative of an absence of consumer confusion. But NO ad EVER gets 10%+ clickthrough rate (and certainly nowhere close to the 20% rate that would be decisively plaintiff-favorable); it’s big news when an ad clears 3% CTR.

With respect to the ads without the 1-800 Contacts trademark in the ad copy, Lens.com got a 1.5% CTR and its affiliates got less than 1% CTR (0.6-0.7%). Because the CTR was dramatically below the 10% threshold that's probative of a lack of consumer confusion, there was no actionable initial interest confusion either by Lens.com or its affiliates.

So this evidentiary standard should be dispositive in other initial interest confusion cases. If other courts follow the same logic, no competitive keyword ad could ever possibly create initial interest confusion because even the best performing ad’s CTR will be below the legally recognized threshold of consumer confusion.

Naturally, if plaintiffs can find other evidence to support initial interest confusion, I don't think this ruling precludes those arguments. But since no one knows what initial interest confusion is, and defendants can always introduce their single-digit CTR, I think we're done with the argument that keyword ads create initial interest confusion, at least in the Tenth Circuit.

Unfortunately, because the Tenth Circuit didn't expressly kill the doctrine outright, it's going to keep appearing in plaintiff arguments for many years hence. That means parties will waste a lot more money in litigation because the Tenth Circuit couldn't just say what it meant. SIGH.

In addition to grousing about the zombie-fication of the initial interest confusion, I have to kvetch about this passage from the opinion (emphasis added):

even if consumers in general may not much care what retailer supplies their contact lenses, the consumers relevant to this suit are looking for a particular retailer. Presumably they have narrowed their search because they have already selected 1-800 as the preferred retailer and are searching for its website or perhaps commentary on its performance. Given the purpose of the search, the shoppers will be attentive to click on those results that will connect them with sites relating to 1-800. In addition, once the consumers see the results page, the substantial dissimilarity between “1-800 Contacts” and “Lens.com” (or its other websites) can be expected to greatly reduce the chance that the consumers will think that the parties are related enterprises; the similarity of the search term and 1-800’s mark is of minor relevance.

Perhaps in the abstract, one who searches for a particular business with a strong mark and sees an entry on the results page will naturally infer that the entry is for that business. But that inference is an unnatural one when the entry is clearly labeled as an advertisement and clearly identifies the source, which has a name quite different from the business being searched for.

Kudos to the Tenth Circuit for recognizing that ad copy educates consumers and helps searchers improve their search process. Big demerits, however, for assuming that a search for "1-800 Contacts" signals that the searchers are, in fact, looking for 1-800 Contacts (or even information about it). This is demonstrably false, as the Hyman/Franklyn study showed and as I explained in 2005. The Network Automation opinion made this identical error. Why are appellate judges so tempted to assume searcher intent from the search keyword?

Contributory Infringement for Affiliates' Ad Buys With the Trademark in the Ad Copy

Although the court's disposition of the initial interest confusion resolves the ads triggered by 1-800 Contact's trademarks that don't display the trademarks in the ad copy, there still remains the ads by Lens.com's affiliate which contained the trademark in the ad copy. In a discussion that goes on way too long, the court ultimately rejects Lens.com's vicarious trademark liability, an agency-based doctrine. This should have been an easy call because there's absolutely no way affiliates mediated through Commission Junction are Lens.com's agents. The court notes the possibility that Commission Junction was Lens.com's agent and the affiliates were sub-agents. Give me a break. Still, the court says that the affiliate displaying the trademark in the ad copy acted outside the scope of any agency. The court says:

The issue is not whether McCoy had authority to act on Lens.com’s behalf at all, but merely whether he had actual authority to publish an ad displaying a variation of 1-800’s mark in its text....McCoy never believed, reasonably or otherwise, that Lens.com authorized him to place the ads. Thus, the subjective component of actual authority was absent.

Nice save of a completely faulty premise.

Nevertheless, the appellate court reopens the contributory infringement issue. The court is bothered by the fact that Lens.com waited 3 months between when it got 1-800 Contacts' lawsuit and asked the Commission Junction affiliate (McCoy) to stop advertising with 1-800 Contacts' trademark in the ad copy. The court says:

if Lens.com could have stopped the use of ads using 1-800’s mark by simply requiring CJ to send an email blast to its affiliates forbidding such use, then Lens.com’s failure to proceed in that manner after learning of such ads could constitute contributory infringement.….When modern technology enables one to communicate easily and effectively with an infringer without knowing the infringer’s specific identity, there is no reason for a rigid line requiring knowledge of that identity, so long as the remedy does not interfere with lawful conduct.

This standard doesn't ensure a 1-800 Contacts jury win. It's not clear to me that Lens.com could have fixed the problem just by sending an email. Still, even if Lens.com loses this portion of the case, this is a small fraction of the overall conduct 1-800 Contacts was complaining about. I believe the damages exposure for the remaining ads in question is relatively small. It would be more rational for the parties to settle up rather than spend the money to take this question to the jury, but nothing about this litigation has been rational to date, so I'd be surprised if rationality suddenly made an appearance now.

Implications

I must sound like a Johnny One Note, but I'll say it again. Keyword advertising litigation is dead, dead, DEAD. It may not have been dead when 1-800 Contacts brought the lawsuit in 2007, but the intervening 6 years have proven that keyword advertising lawsuits are not easy to win and are economically irrational.

In this case, it's been clear all along that 1-800 Contacts' wasn't suing because it wanted to protect its brand. Instead, its apparent motivation all along has been to shut down competitors, by draining them of cash if necessary. I'm sure both parties have spent well over $1M on this litigation--money that the incumbent (1-800 Contacts) can afford more easily than newer entrants (like Lens.com). Thus, it's devastating to Lens.com that both courts have denied its attorneys' fees. Given that 1-800 Contacts got a small victory on appeal, the fee denial is consistent with trademark law, but the consequence is that 1-800 Contacts can get away with lawfare for anti-competitive objectives.

And 1-800 Contact’s fear of competition has manifested itself in other ways, including similar suits against other competitors and repeated attempts to game its state legislature. Lens.com did bring an antitrust claim against 1-800 Contacts for this litigation; that case has been on hold awaiting this Tenth Circuit ruling. We'll have to see if Lens.com now can make any headway to hold 1-800 Contacts accountable for its legal choices.

Prior Blog Posts on This Case

• Just How Egregiously Must a Trademark Plaintiff Act Before a Court Awards Attorneys' Fees to the Defendant?--1-800 Contacts v. Lens.com
• Blog post on district court ruling
• How Much Does 1-800 Contacts Hate Competitive Keyword Advertising? $1.1M Worth!?

I’ve also blogged numerous times on 1-800 Contacts.

Related Blog Posts

For more on keyword advertising legal developments, see my recent Forbes posts on trademark infringement and keyword advertising:

• Suing Over Keyword Advertising Is A Bad Business Decision For Trademark Owners
• Florida Proposes to Ban Competitive Keyword Advertising by Lawyers
• More Confirmation That Google Has Won the AdWords Trademark Battles Worldwide
• Google's Search Suggestions Don't Violate Wisconsin Publicity Rights Law
• Amazon's Merchandising of Its Search Results Doesn't Violate Trademark Law
• Buying Keyword Ads on People's Names Doesn't Violate Their Publicity Rights
• With Its Australian Court Victory, Google Moves Closer to Legitimizing Keyword Advertising Globally
• Yet Another Ruling That Competitive Keyword Ad Lawsuits Are Stupid--Louisiana Pacific v. James Hardie
• Another Google AdWords Advertiser Defeats Trademark Infringement Lawsuit
• With Rosetta Stone Settlement, Google Gets Closer to Legitimizing Billions of AdWords Revenue
• Google Defeats Trademark Challenge to Its AdWords Service
• Newly Released Consumer Survey Indicates that Legal Concerns About Competitive Keyword Advertising Are Overblown

Also see my two related law review articles:

• Deregulating Relevancy in Internet Trademark Law (2005)
• Brand Spillovers (2009)

Filed Under: initial interest confusion, keyword advertising, trademark
Companies: 1-800 contacts, lens.com

Tiananmen Square Activist Loses Trademark Bullying Case Against Critic, But Ruling Is Weak

from the could-be-better dept

We've been covering the absolutely ridiculous lawsuit of educational software firm Jenzabar against documentary filmmakers Long Bow for a few years now. The short version is that Long Bow made a documentary about some of the activists from the Tiananmen Square uprising, that was somewhat critical of them -- including a protest organizer named Ling Chai. Chai later moved to the US and founded an educational software company called Jenzabar. She has regularly played up her history as a Tiananmen Square organizer in getting PR for the company. The filmmakers called into question some of her actions back during the protests, and also set up a webpage, associated with the movie, critical of Chai. Chai sued for defamation -- which was quickly thrown out. However, she also had Jenzabar sue for trademark infringement, because the page about her on Long Bow's site mentioned Jenzabar in the title and in the meta tags.

The case has gone on for over 3 years now, with an initial ruling against Jenzabar, saying that there was no trademark issue because there was no likelihood of confusion. Jenzabar, however, continued to pour money into the case, appealing the ruling, and claiming that they should still win based on the obsolete theory of initial interest confusion, which suggests there can be trademark infringement even if someone is only misled initially, and quickly realizes the situation. In this case, Jenzabar argued -- somewhat ridiculously -- that initial interest confusion might apply to someone doing a Google search on Jenzabar, and then go to the Long Bow page, believing that it was associated with the company, only to discover, upon loading, that it was not. If such a theory were valid, it would be a huge tool for trademark bullies to take down all sorts of critical commentary about their companies or products.

Thankfully, the appeals court has now affirmed the initial ruling, saying that there is no trademark infringement issue here at all. Unfortunately, it chose to do so somewhat narrowly, lending credence to some of the troubling theories raised by Jenzabar. That is, rather than just recognizing that this case is a clear attempt to abuse trademark law to stifle critical speech, the court decided to go through a full "five factors" test to determine if something is trademark infringement via initial interest confusion.

There are serious problems with the court going this route. The folks over at the Digital Media Law Project (who filed an amicus brief in the case) have highlighted some of the concerns:

But by choosing to approach the trademark infringement question in the way that it did, the court perpetuated certain problems that we flagged in our brief. Applying the standard infringement factors to critical speech forces to the court to come to some awkward conclusions about how the factors should apply, and leaves open some potentially odd results in future cases. This analytic tension in applying a likelihood of confusion analysis to critical speech permeates the majority’s analysis. Some highlights follow below:

Similarity of the parties' goods: This is a classic factor in trademark infringement analysis, and when applied to two market rivals using similar marks to sell their goods it makes a great deal of sense: the more similar the goods are, the more likely a consumer may be confused looking at those goods. But here the application makes no sense whatsoever.

The court here notes (quite correctly) that Jenzabar sells educational software systems and Long Bow makes documentary films. Those two fields are unrelated, and thus the court held that this factor favors Long Bow. That is convenient for Long Bow, but in this context it is irrelevant. Consumers looking at critical speech are not any more likely to be confused as to the origin of the speech because it comes from a market competitor. To hold this as relevant is to say that Reed Elsevier or the New York Times would be more successful in attacking critical speech on trademark grounds, because those publishing criticism usually do so at media and publishing companies.

Paul Levy, from Public Citizen, who represented Long Bow in the case, raises a few other concerns about the ruling, including that this decision to go through the detailed factors test will allow trademark bullies and others pursuing SLAPP-type litigation to increase the time and expense for those they are suing -- a clear concern for Long Bow in this case:

Long Bow Group burned though more than $250,000 in legal fees on preliminary motions and discovery, and veered close to bankruptcy before it found public interest lawyers who were willing to assume responsibility for the litigation; the Appeals Court upheld summary judgment after a review of a joint appendix more than 2700 pages long. Unlike other recent decisions that dismissed claims of “initial interest confusion” out of hand, such as because the Internet critic was not benefitting financially, or because “momentary confusion [is] dispelled the moment the Internet user reaches [underlying] site,” the Appeals Court conducted a lengthy analysis of the summary judgment record to reach that conclusion. To be sure, many of the undisputed facts on which the court relied are likely to be found in most cases where a critic’s page about a trademark holder has appeared prominently in the search results. In the end, the only evidence Jenzabar had was the search result itself, and the Appeals Court properly ruled that this is simply not enough to avoid summary judgment. Yet if avoidance of a trial depends on a painstaking analysis of a detailed summary judgment record—and if future abusive trademark litigants can avoid early summary judgment by arguing that they hope to compile a better record through extensive (and expensive) discovery—there will be many Internet critics who will find the cost of a legal defense too great a barrier to continued exercise of their free speech rights.

This is a huge concern. Levy also notes that, if Jenzabar appeals (and all indications are that it will do so), he will seek to get the higher court to affirm on the grounds that "the theory of initial interest confusion is itself a bankrupt doctrine."

Levy raises one other problem with the ruling. We had talked about how Jenzabar had found an "expert witness" who argued that Google relied on keyword metatags to determine search rankings, in an effort to prove that Long Bow's use of "jenzabar" in its metatags impacted Google results. There was, however, a big problem with this claim: Google has stated publicly for years that it does not use keyword metatags. When this was pointed out, Jenzabar insisted that public statements from Google employees to this point were hearsay. Unfortunately, the court still seemed willing to entertain the testimony:

Another aspect of the decision that may take litigation in this area a step backward is the apparent acceptance of a confusing expert’s affidavit as being sufficient to create an issue about whether inclusion of a trademark in a keyword meta tag can raise the search ranking of a page containing that meta tag.  The Appeals Court acknowledged official statements by Google, cited by the Ninth Circuit and the McCarthy treatise, to the effect that search engines no longer take account of the keyword meta tag, but if a wealthy litigant can avoid summary judgment by hiring an expert witness who is willing to say whatever he needs to say to get paid (and we thought that the expert very carefully tiptoed around the issue of the impact of keyword meta tags, rather than addressing them directly), the social utility of the truth as a bar to litigation is substantially reduced.

In the end, while it's clearly a good thing that the summary judgment against Jenzabar was upheld, there are some problems with the ruling. Given the expectation that the case will be appealed, hopefully the Supreme Judicial Court will correct some of these flaws.

Filed Under: documentary, free speech, initial interest confusion, ling chai, slapp, tiananmen square, trademark
Companies: jenzabar, long bow