August 30, 2006
Do Quotation Marks Matter? Yes (in the Ninth Circuit)--Picture It Sold v. iSOLD It
By Eric Goldman
Picture It Sold, Inc. v. iSOLD It, LLC, 2006 WL 2467552 (9th Cir. Aug. 28, 2006)
The plaintiff sued iSOLD for trademark infringement based on competitive keyword ad purchases, and it sought an injunction against continued keyword purchases of certain phrases. Judge Whyte in the district court denied a preliminary injunction, and the Ninth Circuit is dealing with an appeal of that denial.
The court doesn't lay out the facts in any coherent fashion, but here's the best I can tease together. Picture It Sold claims that iSOLD It is buying the term "picture it sold" as a keyword trigger for ads at Yahoo and Google. iSOLD It claims that it has not done so. Picture It Sold then refutes iSOLD's response by bringing in screen shots showing iSOLD's ads being displayed in response to various keyword searches, including "picture it sold" and the names of other competitors (including "auction drop," "quick drop" and "snappy auctions"). However, the plaintiff ran all of these searches without using quotation marks around the search terms, so in effect the plaintiff searched for ["snappy" and "auctions"] rather than ["snappy auctions']. Because iSOLD could have purchased keywords like "sold" and "auction," it might have shown up in the demonstration searches even if it never bought a competitor's name as a keyword.
(The court doesn't mention broad matching, nor does it seem aware of the possibility of broad matching. But I believe that if iSOLD It bought words like "sold" and "auction" broad-matched, then its ads would show up even if the plaintiff conducted those searches with quotation marks.)
Thus, the court cannot make the inference sought by the plaintiff that the defense made illicit keyword ad purchases. Without that inference, apparently there is no other basis to support the preliminary injunction.
The court goes on to say that even if the defendants had purchased the keywords, it is not clear what legal consequence should attach. It says that keyword purchases might be analogized to keyword metatags a la Brookfield, or it might not (cite to Berzon's concurrence in Playboy v. Netscape). This panel doesn't tip its hand, simply saying "it would  be necessary for the district court to resolve the somewhat difficult question." Best of luck on that, Judge Whyte! (Here's a tip: read the Merck case!)
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