1-800 Contacts Appeals 2nd Circuit WhenU Decision to the Supreme Court

By Eric Goldman

1-800 Contacts has appealed the 2nd Circuit decision in the WhenU case to the US Supreme Court. A copy of the petition (warning–5+ MB PDF file).

As the brief states, the question presented is: “Does ‘use’ of a trademark under the Lanham Act require that the trademark be displayed or visible to consumers?”

This is a great question, and it would be fantastic to have the Supreme Court give us a definitive answer. However, I’m very much hoping that the Supreme Court does not grant the petition, both because the 2nd Circuit got it right and because the narrow issues presented by the WhenU software may not give the court enough reason to opine on the question we all REALLY care about–does search engine keyword triggering constitute a trademark use?

Frankly, I’m a little surprised 1-800 Contacts is pouring more money into this litigation. They have already bought themselves an anti-WhenU law in Utah (although, bizarrely, the law does not directly overwrite the 2nd Circuit case because trademark infringement is a required element). Alaska has piled on with its own anti-adware law that appears even more favorable to 1-800 Contacts’ interests than the Utah law. So why keep fighting in the courts when legislators appear eager to limit competition for them?

I’m not very good at predicting Supreme Court cert grants, so I’m adopting a wait-and-see attitude. However, I think there are good reasons why the court won’t take this case. First, the cert petition is well-written from a technical standpoint but it’s a bit of a dull read. From my perspective, it lacks the personality/”pizazz” that would grab a clerk’s attention.

Second, the attempt to manufacture a circuit split isn’t that compelling. The main cases the petition cites as holding that “covert use of marks” is a use in commerce (Playboy v. Netscape, Brookfield, Promatek) don’t expressly address the “use in commerce” issue. Ultimately, the petition tries to graft together various domain name, metatag and keyword-triggered ad cases in a generalized effort to show that courts have been tough on trademark uses on the Internet. In shifting the grounds, the petition strays from its own “question presented” and becomes a catch-all rant against various types of trademark uses on the Internet. If the clerk catches this loss of focus, that will hurt its chances as well.

One final interesting point: there appears to be a change of counsel on 1-800 Contacts’ side. 1-800 Contacts’ lead counsel used to be Terence Ross of Gibson Dunn’s DC office; the attorney on this appeal is Terry Rader of Rader Fishman and Grauer in Detroit. I’m not sure what’s behind this change. If I wanted the Supreme Court to take a case and I was willing to change counsel, I would hire one of the Supreme Court “specialists” in DC who have enough repeat business with the Supreme Court that the court will recognize their brand. In this case, switching from a DC powerhouse like Gibson Dunn to a Detroit-based IP firm seems like an odd move.

UPDATE: To be clear, all of the rulings cited in the petition had to resolve the question of trademark “use” to find for the plaintiff. My point is that only a few of them did so explicitly. Most of the cited cases did not discuss “trademark use” at all–presuming that the defendant made such a use or forgetting that this is a required element in the plaintiff’s prima facie case. On further reflection, when reviewing all of this precedent, the clerk may be shocked at the truly abysmal state of Internet trademark jurisprudence when the clerk realizes just how many times plaintiffs win when the courts do not explicitly consider the trademark “use” threshold question.

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