January 09, 2008
1-800 Contacts Sues LensWorld for Keyword Advertising
By Eric Goldman
1-800 Contacts, Inc. v. LensWorld.com, Inc., 2:08-cv-00015-SA (D. Utah complaint filed Jan. 8, 2008)
My my, look who's decided to go back into court! It's none other than 1-800 Contacts, the online retailer with a lousy trademark and a love-hate relationship towards keyword advertising. This time their target is their chums LensWorld.com for buying "1800Contacts" as a keyword.
You may recall 1-800 Contacts for their decisive loss in the Second Circuit on the keyword advertising issue, in which the court emphatically shut down their trademark claims against WhenU because WhenU didn't make the requisite trademark use in commerce. This ruling has become a major precedent that has spawned no less than a half-dozen Second Circuit-based court rulings that keyword advertising isn't a trademark use in commerce.
Ironically, 1-800 Contacts also has routinely bought third party trademarks as keywords. They admitted to this in the WhenU litigation (a point that the Second Circuit noted sharply). They also were so concerned when Utah legislators banned using third party trademarks for keyword advertising that they helped push the legislators to back down. Hey 1-800 Contacts, maybe I'm missing something, but if you wanted to bring a keyword advertising lawsuit like this one, maybe you shouldn't have badgered your legislators to remove a law that would have ensured your success in court!
So it looks like 1-800 Contacts has a somewhat duplicitous attitude towards keyword advertising--good when they do it, bad when their competitors do it. Hmm. Then again, maybe we shouldn't be surprised; this isn't 1-800 Contacts' only example of marketing duplicity.
In any case, the LensWorld lawsuit is a garden-variety advertiser-vs.-advertiser keyword advertising lawsuit. Based on the limited data we have, I'm guessing the Utah federal court will deem keyword advertising a trademark use in commerce, but after that, who knows? The only twist here is that 1-800 Contacts claims that LensWorld aped their FAQs, prompting a tossed-in copyright infringement claim as part of the package. Also I can't help but note that there appear to be many other possible defendants who are buying 1800contacts as a keyword (see the screenshot in para. 22/page 6)...is a 1-800 Contacts litigation frenzy imminent, or is LensWorld uniquely positioned for 1-800 Contacts' enmity?
Finally, for those of you who purchase contact lenses and other eyecare items online, I trust you've noted 1-800 Contacts' affinity for using legal processes to shut down pro-competitive behavior. Personally, I'm voting against their regressive and duplicitous attitudes towards IP by taking my business elsewhere!
HT Evan Brown.
UPDATE: Tom O'Toole explains why Utah is a great venue for 1-800 Contacts.
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