October 31, 2005
WhenU Opposition to 1-800 Contact's Certiorari Petition
By Eric Goldman
WhenU has filed its opposition to 1-800 Contact's petition for certiorari from the US Supreme Court. WhenU's main argument:
"1-800 mischaracterizes the decision below as holding that the “covert” use of a trademark can never support an infringement claim. But the Second Circuit did not rule that the unseen use of a trademark can never be infringing; it merely held that the particular manner in which WhenU employs the plaintiff’s mark to generate online advertisements does not constitute the “use” of a mark. Petitioner also argues that the decision below is at odds with cases involving metatags, cybersquatting and keyword advertising. But the Second Circuit addressed each of those situations in its opinion, explained why they differ from WhenU’s advertising, and expressly stated that it was expressing no view on the validity of other Internet cases. Accordingly, the conflict posited by 1-800 simply does not exist."
I think it's correct that the Second Circuit opinion does not evidence a particularly strong circuit split, but only because the opinion was so limited. If we try to read the Second Circuit opinion broadly to opine on trademark use on the Internet, a split becomes more pronounced. If we read the opinion narrowly, in that it opines only on the specific under-the-hood database practices of WhenU, there's no circuit split--but then there may be very little precedential impact from the case.