December 27, 2007
Keyword Advertising is TM Use in Commerce But Doesn't Violate Injunction--Boston Duck Tours v. Super Duck Tours
By Eric Goldman
Boston Duck Tours, LP v. Super Duck Tours, LLC, 2007 WL 4465464 (D. Mass. Dec. 5, 2007)
In the latest advertiser-vs.-advertiser lawsuit over keyword advertising, a court from the First Circuit (in Massachusetts) deemed keyword advertising to be a trademark use in commerce but concluded that the trademark-triggered keyword advertising didn't violate the governing injunction.
This case is reminiscent of the Sport Court v. Rhino Court case. The trademark owner, Boston Duck Tours (BDT), obtained an injunction against a junior user, Super Duck Tours (SDT) restricting the use of "the phrase 'duck tours' as a trademark or service mark in connection with its sightseeing tour service in the greater Boston area." SDT bought keyword advertising triggered by the phrase "boston duck tours," and BDT sought recourse for the alleged violation of the injunction.
The court acknowledges the caselaw split about whether buying a competitor's trademark constitutes a trademark use in commerce. This court sides with the opinions of the courts outside the Second Circuit, concluding that "Because sponsored linking necessarily entails the “use” of the plaintiff's mark as part of a mechanism of advertising, it is “use” for Lanham Act purposes."
Despite this, the injunction only restricts the use of the term "duck tours" as a trademark. The court concludes that the injunction doesn't restrict every possible reference of the trademark and consumer confusion isn't likely in this particular circumstance. Thus, SDT didn't violate the injunction by purchasing the keyword advertising.
From my perspective, this case is another silly keyword advertising lawsuit. First, I generally think most keyword advertising lawsuits are stupid and a waste of time, and this case doesn't appear to be any different. Maybe I'm missing something, but I'd be very surprised if duck tour companies have such fat profits that they can afford to bring expensive trademark lawsuits. In this case, BDT only succeeded in forcing SDT to adopt the trademark "Super Duck Excursions." I'm having a tough time seeing how that name change will increase BDT's profits by the tens/hundreds of thousands of dollars of legal fees it cost to get it.
Second, I wonder if the term "Duck Tours" has become a generic description of tours in an unattractive amphibious vehicle. These tours are ubiquitous throughout the world. On the first page of a Google search for the term "duck tours," I see promotions for duck tours in Miami, Washington DC, Baltimore, Seattle, Austin, Philadelphia, Portland and London. (Not all of these use the words "duck tours" in that order, but several do). I am sure there are many others--for example, I can't erase my mental image of the omnipresent duck boats in Wisconsin Dells. See the Wikipedia entry on this topic, listing other venues. Wikipedia also informs that "duck" is a variation of DUKW, a WW2 amphibious vehicle, further reinforcing that the phrase might be generic. As a result, giving BDT the exclusive rights to use the term "duck tours" in Boston seems unnecessary and unwarranted.
UPDATE (12/28): Super Duck Excursions is showing up as the lead AdSense ad on the site today. And on the post-specific page, Viator (a consolidator reselling tickets for BDT) is the lead advertiser.
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