The Internet Law Resource Center™ is the complete information solution for practitioners in cyberlaw. Follow the latest developments on ICANN’s gTLD program, keyword advertising, online privacy,...
Oct. 21 — Amazon.com Inc. didn't create consumer confusion by offering competitors' products as options when consumers entered search terms for high-end watches the e-commerce retailer doesn't carry, the U.S. Court of Appeals for the Ninth Circuit said in a Oct. 21 reversal.
“The search results page makes clear to anyone who can read English that Amazon carries only the brands that are clearly and explicitly listed on the web page,” Judge Barry G. Silverman said, writing for the 2-1 majority.
The decision appears to be a victory for online retailers and advertisers. The court's previous opinion arguably opened the door to trademark infringement lawsuits based on a fairly open-ended definition of diverting consumers from one product to another.
The Ninth Circuit initially ruled that the likelihood of “initial interest confusion” from the practice was a fact question for a jury, denying Amazon's request for summary judgment. Amazon requested an en banc rehearing in front of all Ninth Circuit judges, but instead the initial three-judge panel filed a superseding opinion reversing its own July 6 determination.
Judge Carlos T. Bea dissented, saying the majority added an element to finding a likelihood of consumer confusion under the Lanham Act, 15 U.S.C. § 1114, that doesn't appear in the statutory text. “The majority reads the statute to contain language that it does not, essentially reading the clause ‘at point of sale' into the end of § 1114(1)(a),” Bea said.
Plaintiff Multi Time Machine Inc. (MTM) claimed that Amazon created initial interest confusion, which occurs when someone piques a consumer's interest in a trademarked product only to present similar goods by another maker when it turns out the promised goods aren't available. The consumer is aware that it is buying a different brand of goods by the time they make their purchase, but courts have split over whether consumers' initial confusion is actionable under the Lanham Act.
MTM sells Special Op branded military-style watches through an exclusive vendor list that doesn't include Amazon or Amazon-affiliated distributors. When consumers typed “mtm special ops” into Amazon's search bar, the subsequent screen replicated the search terms twice and listed 10 results, many of which were for competitors' products.
MTM argued that the labeling of competing products on Amazon's search results page was confusing due to the overall layout, including the “mtm special ops” search terms. The court disagreed, saying that each individual product on the results page was clearly labeled by brand name and model number with an accompanying picture. Further, several of the results weren't for watches at all, but rather for books, and no reasonably prudent online shopper would conclude that such search results were for MTM watches, the court said.
MTM also argued Amazon should change its search results page to state unambiguously that no results were found for MTM watches before suggesting alternatives. The court said, however, that any English-speaking reader would understand that Amazon only carries the brands listed, and that the search results are already unambiguous in that regard.
The dissent said that MTM had asserted that a shopper could be confused into thinking a relationship existed between MTM and the brands that appeared in the Amazon search results. While MTM might be wrong, Bea said, the majority usurped the jury's role by making that determination for itself.
In the process, Bea said, the majority implicitly overruled the initial interest confusion without expressly saying so.
Wolf Rifkin Shapiro Schulman & Rabkin LLP and Millen White Zelano & Branigan PC represented MTM. Faegre Baker Daniels LLP and Arent Fox LLP represented Amazon.
To contact the reporter on this story: Joseph Wright in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Keith Perine in Washington at email@example.com
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)