9th Circuit: Amazon's Search Results Too Useful, Must Be Trademark Infringement

from the watch-this dept

Let's say you were in the market for some luxury item. Hell, let's say you wanted a nice watch. Being a watch kind-of-guy, you've done enough research to know you would like an MTM Special Ops branded watch, so you walk into a jewelry store and tell them what you want. When you ask the store clerk for an MTM watch, he or she instead points you towards lots of other watches for sale. As you look around the store, you notice none of the display cases actually contain any MTM brand watches. Have you suddenly become confused as to whether the alternative watches are in fact MTM watches?

The 9th Circuit Court thinks you might have, given its ruling in a trademark case between MTM and Amazon. The case is essentially over the scenario described above, except on Amazon's online marketplace. Users that put "MTM Special Ops" into Amazon's search field were provided with a list of competing watches in the results, because Amazon doesn't carry MTM watches. Those search results were clearly labeled with the competitor brand's names. One district court had already ruled in favor of Amazon, as MTM argued that those search results constituted trademark infringement. The 9th Circuit Court of Appeals reversed that ruling and sent the case to a jury. And this whole thing is prefaced on what's called initial interest confusion, as detailed in the link above by Eric Goldman.

The majority opinion focuses on a much-criticized trademark doctrine called initial interest confusion. The Ninth Circuit has had a dozen or so cases addressing initial interest confusion, and its handling of the doctrine has vacillated wildly. In 1999, the Ninth Circuit adopted an exceptionally (and, in my opinion, unreasonably) overbroad definition of the concept. This led to a series of tortured and inconsistent rulings until 2011, when the Ninth Circuit adopted a more constrained definition that virtually killed the doctrine.

In this case, the Ninth Circuit bypasses its 2011 definition and instead defines initial interest confusion from a 2004 ruling:

"Initial interest confusion occurs not where a customer is confused about the source of a product at the time of purchase, but earlier in the shopping process, if “customer confusion . . . creates initial interest in a competitor’s product.”"
As Goldman notes, there was a very good reason the court essentially killed off this whole doctrine in 2011. Based on that definition used above, all kinds of accepted retail practices would suddenly be found to be infringing, including the way product placement of house and alternative brands occurs in brick and mortar stores. The theory behind initial interest confusion is essentially that if a consumer was looking for brand x and only found brand y through retailing practices like product placement and/or search results, there can still be trademark infringement even if brand y is clearly labeled and the customer is clear on what they're buying prior to making the purchase. In the area of search results for online retailers, it's a really dumb doctrine, because it essentially penalizes search results for being too useful to everyone who isn't seeking one brand/product only to the exclusion of every other product on the planet. The dissenting judge in the case outlines nicely how silly the majority's ruling is.
Because Amazon’s search results page clearly labels the name and manufacturer of each product offered for sale and even includes photographs of the items, no reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products….The search results page makes clear to anyone who can read English that Amazon only carries the brands of watches that are clearly and explicitly listed on the web page. The search results page is unambiguous.
The difference between other online retailers and Amazon is that other retailers denote at the top of search results that they do not carry the MTM brand, where Amazon simply lists all the other brand watches it carries. In other words, Amazon assumes that the public is intelligent enough to read the brands on the search results and conclude that Amazon doesn't carry MTM watches. So, while the case is now headed to a jury, the fix for Amazon is technically easy, but silly to have to implement. More troubling, as Goldman notes, is both the fact that the court appears to view online retailers as having more culpability under the initial interest doctrine and the larger danger of initial interest being brought back to life by this ruling.
Initial interest confusion revitalized. I don’t believe any trademark owner has won on initial interest confusion grounds since 2011, and many trademark experts considered the doctrine dead. This opinion potentially resurrects the doctrine like a zombie. That’s an unfortunate development. The initial interest confusion doctrine is solely based on judicial intuition; no empirical research validates its existence. It’s also an overly plastic doctrine; its boundaries and definition often change from case to case. This makes it’s impossible for a defendant to rebut and hard for litigants to predict outcomes. Having a revitalized doctrine will increase defendants’ litigation costs with no commensurate social benefit.
In other words, this ruling would seem to force online retailers to treat the consuming public as though they were far more stupid than they actually are, which is a strange outcome for a court case. Punishing useful retailer search engines for being too useful and not treating the public like morons is hopefully a practice that won't make it through the jury process.


Reader Comments

Subscribe: RSS

View by: Time | Thread


  1. This comment has been flagged by the community. Click here to show it
    identicon
    Anonymous Coward, 14 Jul 2015 @ 12:10pm

    It's like coming here expecting to read Masnick, and getting Geigner instead.

    In fact, this piece has so little of Geigner's trademark "style" that may have been written by another minion.

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

  2. identicon
    Anonymous Coward, 14 Jul 2015 @ 12:13pm

    In other words, this ruling would seem to force online retailers to treat the consuming public as though they were far more stupid than they actually are, which is a strange outcome for a court case.
    No judge has ever been removed from the bench for espousing profound stupidity as the ground state for citizens.

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

  3. icon
    Nom du Clavier (profile), 14 Jul 2015 @ 12:18pm

    Not actually using the trademark in question is trademark infringement? One has to wonder who the moron in a hurry here is, the public, or the luminary who came up with that logic.

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

  4. identicon
    Anonymous Coward, 14 Jul 2015 @ 12:28pm

    So say i goto walmart too buy laundry detergent, i goto the detergent section, but they dont have my brand, but have all kinds of other brands, one of which i buy, does this constitute infringement?

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

  5. identicon
    anonymous Dutch coward, 14 Jul 2015 @ 12:33pm

    annoyed

    I would not be confused, but I would certainly be annoyed by this type of link bait.

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

  6. identicon
    PRMan, 14 Jul 2015 @ 12:41pm

    Re:

    According to these stupid judges, it does.

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

  7. identicon
    Anonymous Cowherd, 14 Jul 2015 @ 12:43pm

    Businesses in general have long been legally required to treat customers as if were far more stupid than they actually are. To see proof of this, you need only to read any product instruction manual.

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

  8. icon
    Radix (profile), 14 Jul 2015 @ 12:44pm

    Only in the 9th Circuit

    Displaying our name without permission? Trademark infringement.
    NOT displaying our name at all? Trademark infringement!

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

  9. icon
    Teamchaos (profile), 14 Jul 2015 @ 12:51pm

    Not surprising

    In other words, this ruling would seem to force online retailers to treat the consuming public as though they were far more stupid than they actually are

    The whole premise of progressive government is that people are stupid and need the government to save them from their stupidity. Does a ruling like this from the notoriously liberal 9th circuit court surprise anyone?

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

  10. icon
    Gwiz (profile), 14 Jul 2015 @ 12:52pm

    Re: annoyed

    I would not be confused, but I would certainly be annoyed by this type of link bait.

    How is this "link bait"? Amazon doesn't sell this particular brand of watch and you are doing a search on Amazon's site, so what are they supposed to do, provide you with a link to a competitor's website?

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

  11. identicon
    Anonymous Coward, 14 Jul 2015 @ 12:52pm

    Re: Only in the 9th Circuit

    Selling watches that we do not make? Felony interference with our business.

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

  12. icon
    hjweth (profile), 14 Jul 2015 @ 12:52pm

    I was initially interested in justice, but maybe this will do.

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

  13. icon
    Agonistes (profile), 14 Jul 2015 @ 12:56pm

    Re: Not surprising

    That's stupid.

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

  14. identicon
    Anonymous Coward, 14 Jul 2015 @ 1:03pm

    Re: Not surprising

    This has nothing to do with a progressive government. Thanks for playing though.

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

  15. identicon
    Anonymous Coward, 14 Jul 2015 @ 1:11pm

    So this is the Court that Mike was hoping would overturn the CAFC API copyright ruling? Yeah, don't think it's going to do that.

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

  16. icon
    hij (profile), 14 Jul 2015 @ 1:20pm

    I Are Outraged!

    The other day I went to a restaurant and asked for a Coke. The crazy waiter man said, "We have Pepsi." It was horrible. My child started to cry. My wife was horribly embarrassed. We felt so bad for Coke to have to deal with this.

    I hope Coke sues them for all they are worth, the monsters.

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

  17. identicon
    Anonymous Coward, 14 Jul 2015 @ 1:21pm

    Re: Re:

    Not so, because it didn't happen on the internet.

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

  18. icon
    TheResidentSkeptic (profile), 14 Jul 2015 @ 1:21pm

    So can I sue my Ford Dealer

    for not selling me a brand new Corvette?

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

  19. identicon
    Anonymous Coward, 14 Jul 2015 @ 1:48pm

    Re: So can I sue my Ford Dealer

    Only if he has a picture of a Corvette on the premises, or if it is likely he has a picture of a Corvette on the premises, or if you're wearing a duck on your head.

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

  20. icon
    Radix (profile), 14 Jul 2015 @ 2:14pm

    Re: So can I sue my Ford Dealer

    Well all they would have to do is put up a sign that says 'We do not sell: Acura, Alfa Romeo, Aston Martin, Audi, BMW, Bugatti, Buick, Cadillac, Chevrolet, Chrysler, Citroen, Datsun, DeLorean, Dodge, Ferrari, Fiat, Fisker, GMC, Holden, Honda, Hyundai, Infiniti, Isuzu, Jaguar, Jeep, Kia, Lamborghini, Land Rover, Lexus, Lotus, Maserati, Mazda, McLaren, Mercedes-Benz, Mini, Mitsubishi, Nissan, Peugeot, Porsche, Ram, Renault, Rolls Royce, Saab, Scion, Subaru, Suzuki, Tesla, Toyota, Volkswagen, or Volvo.'
    Although that would leave them open to lawsuits from a few hundred other smaller manufacturers around the world, they could probably argue that nobody would come in looking for one of those anyway.

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

  21. icon
    UriGagarin (profile), 14 Jul 2015 @ 2:17pm

    Re: Re: So can I sue my Ford Dealer

    What Duck ?
    *Pterri reference*

    To be honest, I would find it annoying if I went specifically to Amazon to buy a "magic TLA superwatch" or whatever and they didn't say we don't have it, but here's the "super FLA megawatch". Don't know where that stands in trademark issues because I don't care - if I'm searching for a specific thing , not being told they don't have it is not what I want.

    Then again I generally search for what I want and select from the links that search brings up.

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

  22. identicon
    David, 14 Jul 2015 @ 2:31pm

    If Amazon advertized they had MTM watches

    but then only showed you other watches, that would be wrong. However, Amazon never advertises that they have any specific product, really.

    This is actually an opportunity for MTM to offer watches for sale on Amazon, so that when someone searches for it - there you go!

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

  23. identicon
    Anonymous Coward, 14 Jul 2015 @ 2:40pm

    Re:

    I love it!
    From now on all retailers must display lists of everything they dont sell, so beforw you get the 3 results u searched for, you will need to go through atleast a couple hundred pages of theae not offered pages.
    GENIUS!

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

  24. icon
    Agonistes (profile), 14 Jul 2015 @ 2:56pm

    Re: I Are Outraged!

    Was that the Olympia Cafe by any chance?

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

  25. identicon
    Anonymous Coward, 14 Jul 2015 @ 3:00pm

    Simple fix. Stop repeating the search phrase the user entered onto the screen. Amazon simply has to put "Search results:" instead of "Search results for _______ :". There can't be any trademark infringement if they Amazon never displays the query text the user input that contains trademarks.

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

  26. icon
    Blackfiredragon13 (profile), 14 Jul 2015 @ 3:15pm

    Sounds like a bit of stretch to say "infringing"

    I'd be, at most, confused as to whether they were similar or if I was being scammed. I'd have to be heavily drugged and barely conscious to confuse the brands.

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

  27. icon
    Rapnel (profile), 14 Jul 2015 @ 4:49pm

    web site: "We didn't find any XXXX but here are some other options you might be interested in."

    IMHO - if the above is all it takes to steer clear of any "initial interest confusion" and not, as someone mentioned above, as a bunch of almost but not quite relevant "clickbait" results, which they are, at least in part, then where's the actual issue?

    I only see it this way because on several occasions I've been served initial query results that were initially presented as successful matches - which they were most certainly not. Yes, I can see that these things are not the things that I'm looking for but, sometimes, there is actually the gem you're looking for buried within the crap you weren't looking for but that sort of depends upon the sites you're frequenting. A clear indicator that what you're looking for does not exist is not too much to ask and, also IMHO, Amazon knows exactly when there is not a direct match for your query..

    I'd call it a fucking courtesy, actually (and I'm very fond of courtesy fucks) and it's one of the reasons I try to avoid Amazon when I know exactly what I'm looking for, that and they absolutely crush (emphasis *crush*) my browser experience.

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

  28. icon
    Paul Alan Levy (profile), 14 Jul 2015 @ 7:46pm

    Sorry to disturb Teamchaos's prejudices but....

    The judges in the majority in this case were both appointed to the Ninth Circuit by one of the Bushes -- Judge Bea by George W and Judge Quist by George H. W. It was the dissenter who was appointed by a Democratic president. Misapplication of trademark law is not easily classified on the liberal / conservative spectrum.

    Comment on the decision by a well-known liberal blogger is here: http://pubcit.typepad.com/clpblog/2015/07/the-ninth-circuit-botches-a-trademark-case-about-search-en gines.html

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

  29. icon
    Atkray (profile), 14 Jul 2015 @ 8:00pm

    Re:

    This cape will not allow you to fly.

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

  30. icon
    Coyne Tibbets (profile), 14 Jul 2015 @ 8:02pm

    Re: Re: Only in the 9th Circuit

    That is essentially what it comes down to: "Competition...baaaad!!!"

    The cynic in me says I hope this ruling stands, so MTM can be sued for not showing links to their competitors.

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

  31. identicon
    Anonymous Coward, 15 Jul 2015 @ 12:39am

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

  32. icon
    Seegras (profile), 15 Jul 2015 @ 2:25am

    Re: Sorry to disturb Teamchaos's prejudices but....

    The opposite of conservative is progressive, and the opposite of liberal is authoritorian.

    And "liberal" is not a word that applies to any of the US governments in the last decades. And I'm also not sure "conservative" does.

    The only thing you can say is "more liberal than", or "more conservative than". Like "Bush Senior was more liberal than Bush Junior or Obama". Or "Bush Senior and Obama are more conservative than Bush Junior".

    In the broader spectrum, Obama and Bush Jr. are of course extremely authoritarian.

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

  33. identicon
    Anonymous Coward, 15 Jul 2015 @ 2:26am

    Re:

    Useless topic? Has nothing to say about the article's actual content? Can only criticize based on personal dislike of all article writers?

    out_of_the_blue just hates it when due process is enforced.

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

  34. icon
    Not an Electronic Rodent (profile), 15 Jul 2015 @ 6:31am

    Re: Re: Re: So can I sue my Ford Dealer

    "magic TLA superwatch" or whatever and they didn't say we don't have it, but here's the "super FLA megawatch
    Maybe annoying, but can you imagine the level of coding needed to sort out human-entered search terms into "specific item" vs. "general search for watches like this"? It'd need to be AI!

    Either you get exactly what you asked for and nothing else (which means you're in trouble if you mis-spell it) or you get stuff like what you asked for.
    This is why Google allows you to modify your search to force the presence of terms (+thing +brandname or whatever) in the result, but even it's tenuous because of cross references. I've no idea of Amazon implements this 'coz I've never cared enough to find out...

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

  35. identicon
    David, 15 Jul 2015 @ 6:52am

    Re: Re: Sorry to disturb Teamchaos's prejudices but....

    Political 'Liberal' has changed, but the change occurred some time ago. For instance, humorist and commentator Will Rogers once said "I remember when liberal used to mean with your own money". And that was before many here were even born.

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

  36. icon
    Jeff Green (profile), 15 Jul 2015 @ 7:26am

    Suppose I take out a trademark for Rear Lee Gude watches, my being Rear Lee Gude, but Amazon has never heard of me. Now suppose a customer of Amazon's, or possibly more than one such customer, is dyslexic and tries to search for a really good watch. Can I sue Amazon for trying to sell these unfortunate individuals really good watches made by other people?

    It is high time that judges were held to a reasonable standard.

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

  37. icon
    Teamchaos (profile), 15 Jul 2015 @ 8:44am

    Re: Sorry to disturb Teamchaos's prejudices but....

    Macht nichts. The ruling will probably get overturned anyway unless Hillary get's elected and appoints a few more lefty (since I can't say progressive or liberal) justices.

    However, through 2008, the Ninth Circuit Court's rulings reviewed by the Supreme Court were affirmed only 20% of the time and reversed and or vacated 80% of the time; a rate substantially higher than the median reversal rate of 68.29% for the same period

    https://en.wikipedia.org/wiki/United_States_Court_of_Appeals_for_the_Ninth_Circuit

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

  38. identicon
    Anonymous Coward, 15 Jul 2015 @ 8:45am

    I kinda agree, I don't see a problem with requiring Amazon to put a note at the top saying that they don't carry this specific watch before listing others. Not saying the law should require it I just don't see it as that big a deal, the court isn't impeding Amazon's free speech (they're still allowed to make other suggestions) it's just forcing them to also be clear that this specific item isn't available.

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

  39. identicon
    Anonymous Coward, 15 Jul 2015 @ 8:48am

    Re:

    The thing is most people here are intelligent techs. You have no idea how 'stupid' many people are. Or they're not stupid but English is not their primary language and they struggle with it and so they have a hard time understanding and need the clarification.

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

  40. identicon
    Anonymous Coward, 15 Jul 2015 @ 8:51am

    Re: Re:

    Famous quote

    "Two Things Are Infinite: the Universe and Human Stupidity"

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

  41. icon
    John Fenderson (profile), 15 Jul 2015 @ 9:40am

    Re:

    "No one ever went broke underestimating the intelligence of the American public" -- HL Mencken

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

  42. identicon
    Pragmatic, 16 Jul 2015 @ 2:28am

    Re: Re: Sorry to disturb Teamchaos's prejudices but....

    We don't really have a left. We do have "Slightly less nuts," though.

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

  43. identicon
    Pragmatic, 16 Jul 2015 @ 2:29am

    Re:

    Why leave it at that? Why not force them to pre-emptively list all the other things they don't actually sell?

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

  44. icon
    Teamchaos (profile), 16 Jul 2015 @ 6:18am

    Re: Re: Re: Sorry to disturb Teamchaos's prejudices but....

    We don't really have a left. We do have "Slightly less nuts," though.

    LOL Pragmatic. Insightful. Although I would probably reverse it to say "We don't really have a right...." since the repubs in power are mostly RHINOs.

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

  45. icon
    Drawoc Suomynona (profile), 16 Jul 2015 @ 7:15am

    Re: I Are Outraged!

    "The other day I went to a restaurant and asked for a Coke. The crazy waiter man said, "We have Pepsi."

    I think the scenario is more like…I walked into the restaurant and before I sat down I asked the hostess seating me "Do you have Coke?" She says "we have an extensive beverage menu". Then, I ask the waiter for a Coke he comes back with the beverage menu. After looking up and down a few times at the menu to see where the Coke was I ask "do you have Coke?" The waiter asks if I want a Pepsi. I say "I don’t like Pepsi, I’d like a Coke". The waiter queries, "Would you like a Fanta or one of our other refreshing beverages?". "Do you not have Coke?". "These are the beverages we offer" says the waiter, again presenting the beverage menu. "Whatever", I say. Not wanting to leave and find another restaurant, I say, "Just give me a glass of water", and you stay and have dinner anyway.

    My mom used to call that a “lie by omission”. The lie got you in the door, rather than move on to the place next door. Then the continued lie kept you looking at other items on their extensive menu, and the lie was not discovered until you were well invested in having dinner and getting hungier by the minute. If they were honest and told you they didn’t have Coke right up front you would then have the informed option of moving on right away, or choosing one of their other options.

    Amazon wants to string you along because the longer they can get you to stay the better the chances you will make some kind of purchase from their extensive menu.

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

  46. identicon
    Zonker, 16 Jul 2015 @ 4:39pm

    I searched for Timex watches on the MTM Special Ops watches website, but I got a MTM Testimonial article instead. Shouldn't Timex be suing MTM for trademark infringement?

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

  47. icon
    John85851 (profile), 17 Jul 2015 @ 9:46am

    This is why humans are still better than computers

    Here's a better example: suppose I was looking for a lawn edger/ trimmer. I go to Home Depot or Lowe's and the people there take me to the lawn edger section of the store.
    I ask for a "Black and Decker" brand and they show it to me.

    Now compare this to a search on any website: I type in "lawn edger" and was shown some edgers, some lawn mowers (um, I don't need a lawn mower), and string for lawn edgers (okay, fine, but I need an edger before I need string).
    So I type in "Black and Decker lawn edger" to narrow the results and I'm shown lawn edgers that are black.
    So I try "Black & Decker"... sorry "&" is a reserved keyword.
    Okay, "Black + Decker"... sorry, no results found for a lawn edger with a black deck.

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

  48. icon
    The Wanderer (profile), 26 Sep 2015 @ 4:58pm

    Re: Re: annoyed

    The logic of a "do what I tell you, not what you think I mean" search engine would indicate that they're supposed to return no search results, because they don't have any results that match what you actually searched for.

    That might not be the most useful thing to do in real-world practice, but it's the most internally consistent from the perspective of the "principle of least surprise", at least.

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

  49. identicon
    Dan, 29 Sep 2015 @ 8:09am

    Great Post!

    Yes! I certainly agree to everything you have placed in the content. Amazon has been doing really great.

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


Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Use markdown for basic formatting. HTML is no longer supported.
  Save me a cookie
Close
Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Use markdown for basic formatting. HTML is no longer supported.
  Save me a cookie
Follow Techdirt
Techdirt Gear
Shop Now: I Invented Email
Advertisement
Report this ad  |  Hide Techdirt ads
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Advertisement
Report this ad  |  Hide Techdirt ads
Recent Stories
Advertisement
Report this ad  |  Hide Techdirt ads

Close

Email This

This feature is only available to registered users. Register or sign in to use it.