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.