Trademark Owners Just Can’t Win Keyword Advertising Cases–EarthCam v. OxBlue

28 11 2014

I have repeatedly observed that trademark owners routinely lose their lawsuits against advertisers who buy their trademarks as advertising keywords. (This is in addition to the futility of bringing trademark lawsuits against search engines, which almost no one does any more). I can’t recall the last time that I saw a trademark owner win a keyword advertising lawsuit; since the Network Automation case, those wins have been scarce.

Today’s case involves two companies in the security camera business. EarthCam initiated a wide-ranging trade secret, CFAA and copyright lawsuit against OxBlue. OxBlue scorch-earthed its response to EarthCam with a panoply of counterclaims. As an outside observer, it’s always fun to see competitors locked in a death match in court. As one of the litigants, not so much.

Let’s focus on OxBlue’s trademark counterclaim. For a few months in 2010, an EarthCam subsidiary, Work Zone Cam, purchased “oxblue” as part of its keyword advertising campaign. OxBlue’s trademark infringement claim goes nowhere:

OxBlue has not addressed any of these factors, let alone presented any evidence of a likelihood of confusion based on these factors. There is no evidence of the labeling and appearance of Work Zone Cam’s advertisements and the surrounding context of the screen displaying the search results. Nor is there any evidence in the record on how often customers were lured to the Work Zone Cam’s website when they searched for OxBlue on the Internet. See 1–800 Contacts, 722 F.3d at 1244 (holding that there was no likelihood of “initial interest confusion” because an expert report showed that customers clicked on the defendant’s advertisement only 1.5% of the time that an advertisement was generated by an infringing keyword search term). No evidence has been presented that would allow the Court to properly evaluate OxBlue’s trademark infringement claim. OxBlue’s trademark infringement claim based on “initial interest confusion” is required to be dismissed because OxBlue failed to address or present evidence on any of the factors relevant to whether there is a likelihood of confusion.

The associated false designation of origin claim fails along with it.

Here’s some of the several possible contributing factors to this ruling:


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