No, Telling Customers Why Your Product Is Better Than A Competitor's Is Not Trademark Infringement

from the and-judges-should-know-that dept

Every time I read an opinion like this ruling in AR Pillow Inc. v. Cottrell, a little piece of me dies. This is a ridiculously easy case, yet somehow it got all tangled up.

The litigants are rival vendors of similar products to combat baby acid reflux. For a slightly similar dispute involving trademark fights over baby products, see BabyAge v. Leachco.

The plaintiff is largely complaining about text on the defendant's website explaining why the plaintiff's product isn't as good as the defendant's. From my perspective, the explanation doesn't constitute a trademark "use" at all because the trademark is being used as a referent. See, e.g., Naked Cowboy v. CBS, 2012 WL 592539 (S.D.N.Y. Feb 23, 2012). Thus, the court should dismiss the trademark claim for non-trademark use. But if the court doesn't do that, at least it should dismiss as a nominative use. See, e.g., 1 800 GET THIN v. Hiltzik. There is absolutely no question that the defendant's reference qualifies as a nominative use under Ninth Circuit law. Yet, and here's where a piece of me dies, the opinion doesn't discuss nominative use AT ALL. What???

Instead of addressing the two most obvious grounds, the court engages in doctrinal contortions to fit this case into a standard likelihood of consumer confusion (LOCC) analysis. As I've explained elsewhere, the multi-factor LOCC test simply makes no sense when a third party is using the trademark editorially as a referent. My paradigmatic example is the Ballysucks case, where the LOCC analysis is ridiculous because the court is trying to compare a vendor with a griper who registered a "sucks" domain. The LOCC test doesn't work any better here. The judge almost seems to know that the LOCC test isn't the right test, but he doesn't seem to know what else to do.

Fortunately, the judge overcomes his shaky analysis by reaching the right result, concluding that there's insufficient evidence of consumer confusion. Yay for good outcomes. But we need to find better ways to make it clear trademark law should not play a role in situations like this. For more on that, see my Online Word of Mouth paper.

One more point: the court's technological discussions are a mixed bag. On the plus side, citing Network Automation and Matt Cutts' blog post/video, the judge rejects the plaintiff's claims over keyword metatags because Google ignores them. But then the judge launches these groaners:

"there is no evidence in the record that use of the term AR Pillow in Google or other search engine currently leads to defendant's website"

and later

"Consumers who search for AR Pillow today are not presented with defendant's website in the rankings"

Oh god, not this again. Please, let's kill this meme RIGHT NOW. Relative placement of search engine results is a HORRIBLE way to evaluate trademark disputes. First, as I explain here, the junior user doesn't control placements--the search engines do. Second, in my post on the Bitchen Kitchen litigation, I explain technological reasons why this is a terrible idea, including search results personalization, the fact that results change minute-by-minute, and the fact that different search engines rank their results differently. Judges, I beg you, please don't go down this wormhole.

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  • icon
    vegetaman (profile), 30 Mar 2012 @ 4:26pm


    Judges, I beg you, please don't go down this wormhole.

    The biggest barrier to entry here would be that it would require people at large to know how the technology actually works (and not spout off about how one of them THINKS it actually works)...

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 30 Mar 2012 @ 4:59pm

    Benefit of doubt...

    Consider this...

    With regards to the various grounds explored in order to dismiss the trademark claims that the judge was getting tired of hearing these cases so he wanted to try to set precedent for every stupid angle any one could come up with and that is why he went into the silly logic.

    As for the technical ones, I chalk that up to technical ignorance.

    reply to this | link to this | view in chronology ]

    • icon
      Atkray (profile), 30 Mar 2012 @ 7:03pm

      Re: Benefit of doubt...

      I too thought of that, but reading over it I don't get a sense that this particular judge is that clever or bright. Still it is a pleasant thought.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 31 Mar 2012 @ 1:09am

        Re: Re: Benefit of doubt...

        Or could it be that the court for some reason felt compelled to address every one of those silly paths of logic by a arduous plantiff's counsel that lead them there instead of simply dismissing the claim on a singular precedent?

        reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 30 Mar 2012 @ 6:00pm

    Why no mention of "nominative use"? Perhaps neither of the parties raised it in their brief re the motion. Perhaps because it is an affirmative defense, something typically the subject of a motion for SJ.

    reply to this | link to this | view in chronology ]

  • icon
    G Thompson (profile), 30 Mar 2012 @ 10:58pm

    Maybe the judge was bored and just needed to fill in a whole lot of time with inane babbling, and getting to the point would most likely have only taken 5 pages instead of 10.

    Either that or one of his Clerks gave him a Pepsi when he really wanted a Coke and the comparison of the taste difference made his brain cells explode into weirdness.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 31 Mar 2012 @ 8:23am

      Response to: G Thompson on Mar 30th, 2012 @ 10:58pm

      LOL! No more likely he felt the need to punish the clerk by forcing him to do extra research to document the opinions. I would be pissed too if that happened to me.

      reply to this | link to this | view in chronology ]

  • identicon
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