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May 15, 2011
Quityerbitchin: Relative Search Results Placement Doesn't Support Trademark Injunction--Bitchen Kitchen v. Bitchin' Kitchen
By Eric Goldman
Martha Elizabeth, Inc. v. Scripps Networks Interactive, LLC, 2011 WL 1750711 (W.D. Mich. May 9, 2011)
It seems inconceivable to me that people would litigate over the term "Bitchin" almost 30 years after the Valley Girl song popularized the term. Didn't the term become passe DECADES ago? For a similar observation, see my post on the trademark battles over the term "Rad." (Partially related: saying "awesome" was worth $1.2M).
This is a sophisticated and interesting dispute over the trademark "Bitchen Kitchen"/"Bitchin Kitchen" as used by a kitchen supply retailer (the alleged senior user), a Canadian food podcaster who morphed into the eponymous star of a food-oriented cable TV show, and show producers (the alleged junior users). Rebecca runs down the complete details. This post focuses on just one small piece about the intersection between search engine placement and the trademark analysis.
The retailer argues that the emergence of the TV show pushed it down in the search engine rankings. The TV show contests that assessment and submits more recent search results from Google, Bing, Yahoo and Ask.com. The defendants also note that the retailer didn't show its search engine placement before the TV show's emergence, so without a baseline, we don't know for sure that the retailer has actually gone down. Either way, the court rightly says this inquiry isn't that useful:
In any event, whether or not the mark “The Bitchen Kitchen” has become less prominent on search-engine results because of Bitchin' Kitchen, and whether or not MEI/Rapp's underlying business has correspondingly suffered vis-a-vis what it would have been without the existence of Bitchin' Kitchen, the record does not support the plaintiffs' rather extreme allegations that The Bitchen Kitchen has “all but disappeared” from search-engine results on the Internet. The court therefore accords little weight to the plaintiffs' evidence and assertions regarding search-engine rankings.
This argument reminded me of Chad Doellinger's uncited article from a decade ago (Chad J. Doellinger, Trademarks, Metatags and Initial Interest Confusion: A Look into the Past to Reconceptualize the Future, 41 IDEA 173) where he argued that trademark infringement should be based on relative search engine placement--i.e., if a junior user got better placement than the senior user, that should support a trademark infringement claim.
It was a wacky argument at the time, and history has not been kind to it. First, search engines don't agree with each other--so what happens if one search engine ranks plaintiff first and another ranks defendant first? Second, search engines don't agree with themselves over time. In fact, a search engine's result placements can change from moment-to-moment for reasons completely outside of any individual website's control. As a result, basing legal analysis on relative placement could easily mean that the legal outcome could vacillate from day to day. Finally, search engines deliver different results to the same keyword searches at the same time based on who is asking. Search engines personalize results and deliver geographic-specific results. So often person A's search results aren't replicable by person B. Given that there is a potential infinite variety of search results ordering for the same keywords at the same search engine conducted at the same time, how do we decide which ordering dictates the legal conclusion?
For more on these arguments, see my 2005 Deregulating Relevancy article and James Grimmelmann's more recent search neutrality article. Rebecca gets at some of the same issues in her comment on this case:
The search results are complicated by various forms of personalization/geolocation, and it seems to me a reliable foundation would have to be provided to show that any of these are the types of results a reasonable consumer is likely to get. For example, my own search for bitchen kitchen (I did not use quote marks) produced a first page with links only to defendants’ sites, which may be because Google autocorrected to bitchin kitchen (no apostrophe), and then offered me the opportunity to search instead for bitchen kitchen, which search did indeed provide top results for plaintiffs' site. Also, it seems like it’s about time to start including Facebook in these evaluations, especially here since (a) some of the confusion evidence here is about Facebook and (b) both parties encourage potential customers/viewers to use Facebook.
Back to the Bitchen Kitchen case. The court says it is more "significant and helpful" to the plaintiff that the TV show apparently bought its trademark as a keyword and used the misspelled phrase "bitchen" in the ad copy. Later, the court says that this misspelling could support a bad faith inference.
Nevertheless, the court declined to issue a preliminary injunction against the TV show based on First Amendment considerations. The way I read the opinion, the court did not enjoin even the TV show's misspelled keyword ad copy. However, the court did enjoin the podcaster's individual behavior.
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