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.


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  • identicon
    Scote, 21 Oct 2015 @ 2:20pm

    "No Coke. Pepsi" affirmed as legal.

    What Amazon is doing is no different than a server saying "Is Pepsi OK?" when someone asks for a Coke. It's still troubling that the court wasn't unanimous in this. Judges seem to trip all over simple ideas once you add "on a computer" to an issue.

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

  • identicon
    Jordan, 21 Oct 2015 @ 3:24pm

    Confused

    So what did MTM want the results to show? "No results founds" if they type MTM?

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

  • identicon
    Scote, 21 Oct 2015 @ 3:39pm

    I haven't read their submissions, but one thing they may have wanted is a simple affirmative statement that Amazon doesn't carry the MTM watches, posted on the page that shows the alternatives. That's a flaw in the premise of my earlier post. Amazon never said "No Coke." It just offered up a bunch of cola results - all with clearly marked makers, and none of which purported to be Coke. MTM said that was potentially confusing to customers, Amazon said it is clear. So more like a customer says "Coke, please" and is offered a menu with Pepsi, RC Cola and Hanson's.

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

  • identicon
    PK, 21 Oct 2015 @ 3:47pm

    Your references to the courts are a complete mess

    First paragraph: "9th District Court of Appeals" is not a thing. Doesn't exist. You're combining the 9th Circuit (appellate court) and the District Court (trial/lower court).

    Look at the caption of the doc you link to: you can call it either the "Ninth Circuit Court of Appeals", the "Court of Appeals for the Ninth Circuit", or just the "Ninth Circuit".

    Look at the doc itself: the case is being appealed from the "United States District Court for the District of California", which you can call either the "District Court" or the "trial court" or the "lower court".

    HTH

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

  • icon
    madasahatter (profile), 21 Oct 2015 @ 5:04pm

    Confusion?

    Any competent retailer will show a customer the nearest item to what the customer described they have. The only issue is whether the retailer properly identified the item. Online retailers will always try to return the best matches to a search; again the real issue is whether the items were properly described.

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

  • identicon
    baker, 22 Oct 2015 @ 2:34am

    so ..... no MTM watches then?

    The only issue I have here is that the retailer(Amazon in this case) returns results that do not actually contain results that are exactly what Im searching for - but not actually saying so. Wasting my time by having to search through the results before realising that.



    That being said, that's a way to cause confusion as to why you would piss off your customers like that , not cause a actual confusion between products

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

    • icon
      PaulT (profile), 22 Oct 2015 @ 2:44am

      Re: so ..... no MTM watches then?

      "Wasting my time by having to search through the results before realising that. "

      Really? If I type something specific into a search and nothing matching that search appears on the first page, I tend to assume that it's not there. How many pages do you scroll through?

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

  • identicon
    Anonymous Coward, 22 Oct 2015 @ 1:52pm

    Hey how many times can you use "essentially" in a 500 word post to cover for the fact that you don't know how to read a legal opinion from a court you can't even get right the name of? That is some ace reporting, Techdirt.

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

    • icon
      PaulT (profile), 23 Oct 2015 @ 12:41am

      Re:

      I don't know. How many times can a whiny twit decide that he has nothing of the substance of the article to address, but has to post something attacking the author or site anyway without adding anything of value to a conversation?

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


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