Competitive Keyword Advertising Doesn’t Show Bad Intent–ONEpul v. BagSpot

30 04 2018

Technology and Marketing Law Blog

Eric Goldman

April 28, 2018

This case involves dispensers of plastic bags for picking up dogshit. The plaintiff has a registered trademark in the brand “ONEpul.” The defendant describes its bags as “one-pull” (and yet, the term “descriptive fair use” doesn’t appear in the opinion once…). It also buys Adwords on another trademark of the plaintiff, “zerowaste,” but the appellate court doesn’t discuss a trademark infringement claim over the zerowaste mark. My prior blog post on the district court ruling.

The court analyzes the ONEpul trademark claim.

The court concludes: “Taken as a whole, the evidence that ZW submitted at summary judgment showed only that ZW and PWD were in competition with one another.” Summary judgment affirmed.

Case citation: ZW USA, Inc. v. PWD Systems, LLC, 2018 WL 1956417 (8th Cir. April 26, 2018)

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/04/competitive-keyword-advertising-doesnt-show-bad-intent-onepul-v-bagspot.htm

 Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com.

Powered by WPeMatico



Brief Roundup of Three Keyword Advertising Lawsuit Developments

10 02 2018

1) Xymogen, Inc. v. Digitalev, LLC, 2018 WL 659723 (M.D. Fla. Feb. 1, 2018). This appears to be a typical competitive keyword advertising case, with the twist that the plaintiff also alleges counterfeiting. The defendant moved to dismiss.

 

2) Engineered Tax Services, Inc. v. Scarpello Consulting, Inc., 2018 WL 741371 (S.D. Fla. Feb. 6, 2018). This appears to be a standard competitive keyword advertising case. The plaintiff made the following discovery request:

3) Edible Arrangements sued Google for product listings ads where the ad matrix is a mix of ads from Edible Arrangements and third parties. See this implementation:

more

The content in this post was found at https://blog.ericgoldman.org/archives/2018/02/brief-roundup-of-three-keyword-advertising-lawsuit-developments.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



Trademark hijackers are hurting online advertisers; here’s how to stop them

5 01 2018

Avery Labels worked hard to establish its brand among consumers as the premier retailer of label products, as well as providing software solutions through their design-and-print-online tool and one-stop premium printing service, “WePrint.” As a result, when consumers search online for label products, Avery is typically the top-of-mind brand, making Avery the envy of its competitors. A few of those competitors recently attempted to benefit from Avery’s category-leading position by using the Avery trademark on their digital marketing ads without Avery’s permission, which not only drove up Avery’s ad costs and cut into its results, but was a clear case of trademark infringement.

more.

The content in this post was found at http://www.ipwatchdog.com/2017/04/29/trademark-hijackers-hurting-online-advertisers-heres-how-to-stop-them/id=82505/ and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



Trademark Injunction Issued Against Print-on-Demand Website–Harley Davidson v. SunFrog

1 01 2018

The print-on-demand business is a legally risky one. As I recently blogged, in June a court ruled that Zazzle did not qualify for the DMCA 512 safe harbor. This ruling is even more troubling. Are the days of print-on-demand services numbered, at least any that try to operate without human prescreening of all user uploads?

SunFrog prints user-uploaded designs on T-shirts and other merchandise. Users uploaded Harley-Davidson logos to produce what Harley considered counterfeit T-shirts. The case doesn’t mention if users uploaded any parodic versions of the logos, though the court’s ruling does not distinguish between counterfeits and parodies. (Paging Rebecca Tushnet, who has shown through FOIA requests that our own government can’t make that distinction either). SunFrog claimed it took a number of steps to protect Harley’s marks, but apparently these steps did not satisfy Harley.

Case citation: H.-D. USA, Inc. v. SunFrog LLC, 2017 WL 3261709 (E.D. Wis. July 31, 2017). The complaint.

more

The content in this post was found at http://blog.ericgoldman.org/archives/2017/08/trademark-injunction-issued-against-print-on-demand-website-harley-davidson-v-sunfrog.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



FTC Explains Why It Thinks 1-800 Contacts’ Keyword Ad Settlements Were Anti-Competitive–FTC v. 1-800 Contacts

31 12 2017

As you may recall, the FTC is pursuing 1-800 Contacts for antitrust violations based on 1-800 Contacts having sued and then settled with competitors who bought keyword ads on 1-800 Contacts’ trademarks. Recently, the FTC filed its “Complaint Counsel’s Corrected Pre-Trial Brief and Exhibits” in the Matter of 1-800 Contacts, Inc. This 90 page document, unfortunately swiss-cheesed by numerous redactions, lays out the FTC’s case. It’s a fascinating read, and I encourage you to read the whole thing. In this post, I’ll flag some of the highlights.

 

more

The content in this post was found at http://blog.ericgoldman.org/archives/2017/04/ftc-explains-why-it-thinks-1-800-contacts-keyword-ad-settlements-were-anti-competitive-ftc-v-1-800-contacts.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



Your Periodic Reminder That Initial Interest Confusion Lawsuits Are Stupid–Epic v. YourCareUniverse

19 12 2017

The plaintiff has a registered trademark for “CARE EVERYWHERE” for B2B healthcare software. The defendant, YourCareUniverse, also makes healthcare software. It extended its brand to include “YOURCAREEVERYWHERE” and launched a public-facing patient healthcare portal under the extended brand. The plaintiff sued for trademark infringement. The court runs through the standard multi-factor likelihood of consumer confusion test and finds most factors favor the defendant.

That should end the case, but no. As we see far too often with weak marks and weak infringement cases, “Epic attempts to save its claims by relying on the doctrine of ‘initial interest confusion.’” In response, the court issues a major burn: “The facts in this case bear no similarity to those in which a court accepted a theory of initial interest confusion as plausible.”

We still don’t have a consistent (or coherent) definition of initial interest confusion. This court applies the Seventh Circuit jurisprudence, which has historically provided a narrow scope for initial interest confusion. The court defines it as when “the defendant ‘lur[es] potential customers away from [the plaintiff] by initially passing off its goods [or services] as those of the [plaintiff’s] even if confusion as to the source of the goods is dispelled by the time any sales are consummated.’…The Seventh Circuit has summarized initial interest confusion as a “bait and switch” technique, in which a competitor will try to ‘get its foot in the door’ and affect a purchasing decision by confusing the consumer.”

more

I’ll close with a free tip for trademark owners. If success in your case depends on establishing initial interest confusion, DON’T BRING THE CASE.

Case citation: Epic Systems Corp. v. YourCareUniverse, Inc., 2017 WL 1093292 (W.D. Wis. March 22, 2017)

The content in this post was found at http://blog.ericgoldman.org/archives/2017/03/your-periodic-reminder-that-initial-interest-confusion-lawsuits-are-stupid-epic-v-yourcareuniverse.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



Trademark Lawsuit Claiming Organic Search Results Create Initial Interest Confusion Falls Apart–Larsen v. Larson

19 12 2017

Disclosure note: I provided an expert report in this now-dismissed case, so you might consider my comments to be advocacy. I’ll explain my expert role in a bit.

The Court Opinion

Susan Larsen practices business law in the Denver, Colorado metro area under the name Larsen Law Offices. She claims she’s been using the name since 2003, though she did not register the name as a trademark (and would need to address the obvious secondary meaning issues to do so). David Larson practices estate planning law (and more) in the Denver metro area as well. In 2013, Larson set up a website at the domain name davidlarsonlawoffice.com, and he used the domain name larsonlawoffice.com starting in 2016. In 2016, Larsen sued Larson for trademark infringement, ACPA and more. After the complaint, Larson’s website removed references to Larson Law Offices, adopting the name David M. Larson, PLLC. Larson partially moved to dismiss.

Cybersquatting. The court says “Plaintiff does not allege that Mr. Larson had actual knowledge of Larsen Law Offices’ existence in 2013, or that he has ever conducted a Google search that returned plaintiff’s name.” Further (cites omitted):

more

Case citation: Larsen Law Offices v. David Larson, 2017 WL 1131885 (D. Colo. Mar. 14, 2017). The complaint.

The content in this post was found at http://blog.ericgoldman.org/archives/2017/03/trademark-lawsuit-claiming-organic-search-results-create-initial-interest-confusion-falls-apart-larsen-v-larson.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



California Court Enjoins Canadian Court’s Global De-listing Order to Google as Contrary to CDA

6 12 2017

In a decision that sets up a potential international comity showdown, a California district court granted Google’s request for a preliminary injunction preventing enforcement in the U.S. of a Canadian court order that compelled Google to globally de-list certain search results of a former distributor that had allegedly used its websites to unlawfully sell the defendant Equustek Solutions’s (“Equustek”) intellectual property. (Google LLC v. Equustek Solutions Inc., 2017 WL 5000834 (N.D. Cal.  Nov. 2, 2017)).

more


The content in this post was found at https://newmedialaw.proskauer.com/2017/11/09/california-court-enjoins-canadian-courts-global-de-listing-order-to-google-as-contrary-to-cda/ and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



Interesting Tidbits From FTC’s Antitrust Win Against 1-800 Contacts’ Keyword Ad Restrictions

30 11 2017

Over the course of about a decade starting in 2004, 1-800 Contacts entered into over a dozen settlement agreements with competitors, most of which mutually restricted both parties from buying keyword ads triggered to their competitor’s trademarks and sometimes requiring the use of negative keywords. The FTC challenged this practice as anti-competitive via the FTC’s administrative adjudication process. In a behemoth 215 page opinion peppered with annoying redactions, the ALJ agrees with the FTC. The opinion’s summary:

Complaint Counsel has met its burden of proving that the Challenged Agreements unreasonably restrain trade in violation of Section 5 of the FTC Act. Contrary to Respondent’s argument, FTC v. Actavis, 133 S. Ct. 2223 (2013), is not authority for the proposition that trademark settlement agreements are immune from antitrust scrutiny.

The evidence in this case demonstrates that the advertising restraints imposed by the Challenged Agreements cause harm to consumers and competition in the market for the sale of contact lenses online. This is sufficient to establish Complaint Counsel’s prima facie case that the agreements are anticompetitive. The evidence fails to prove that the Challenged Agreements have countervailing procompetitive benefits that outweigh or justify the demonstrated anticompetitive effects of the Challenged Agreements. Accordingly, the Challenged Agreements violate Section 5 of the FTC Act.

This opinion is chock-full of goodies. Normally I’d recommend reading the whole thing. However, at a hefty 215 pages, it would take you a long time to do so. Here are some of the highlights I saw.

 

more

Case citation: In the Matter of 1-800 Contacts, Inc., Docket No. 9372 (FTC Off. of Admin. L. Judges Oct. 27, 2017)

Case library: The FTC maintains a page with all of the public filings in this case. Here’s a selected library of materials:

 

The content in this post was found at http://blog.ericgoldman.org/archives/2017/11/interesting-tidbits-from-ftcs-antitrust-win-against-1-800-contacts-keyword-ad-restrictions.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



Amazon Defeats Lawsuit Over Its Keyword Ad Purchases–Lasoff v. Amazon

3 02 2017

Lasoff owns Ingrass, which makes artificial turf. He claims he’s losing business to “cheaper, counterfeit” versions of Ingrass. (The opinion uses the term “counterfeit,” though it probably means knockoffs). He objects to the fact that Amazon runs keyword ads for “Ingrass” at the search engines and in promotional emails that are algorithmically programmed for remarketing (i.e., promoting products the email recipient viewed on Amazon but didn’t buy). The promotional email ad copy comes from third party sources. Prospective customers who saw these ads for “Ingrass” were directed to the Amazon product pages containing listings from the alleged counterfeiters.

Section 230

Citing the Ninth Circuit’s ccBill v. Perfect 10 ruling, the court cleans out all of the state law claims (unfair competition, state trademark infringement, tortious interference, negligence and unjust enrichment) due to Section 230. The court says:

more

Case citation: Lasoff v. Amazon.com, (W.D. Wash. Jan. 26, 2017)

 

The content in this post was found at http://blog.ericgoldman.org/archives/2017/02/amazon-defeats-lawsuit-over-its-keyword-ad-purchases-lasoff-v-amazon.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.