New Case on Indexable Uses of Trademarks on Web Pages

Independent Living Aids, Inc. v. Maxi-Aids, Inc., 2005 WL 756676 (2d Cir. April 4, 2005) (unpublished/uncitable decision). This opinion is the latest in a string of rulings involving a trademark infringement claim between two manufacturers of equipment for physically challenged people. Because of the messy litigation history, this latest opinion comes with some baggage (a series of injunctions against the defendant).

Plaintiff claims a trademark in “Independent Living Aids.” This is a weak descriptive phrase but a prior ruling found it protectable and enjoined the defendant’s use.

Despite the injunction, the defendant used the phrase “independent living aids” on its website (no capitalization) in an effort to get indexed by the search engines. The appeals court upheld the lower court’s determination that this usage infringed and was enjoined. However, the appeal court said that the defendant may use variations of the phrase “independent living aids,” such as “aids for independent living” and “aids for living independently,” even though this may result in the defendant’s website being listed in searches for the plaintiff’s trademarked phrase. As the court says, “once the plaintiffs selected a descriptive phrase as a trade name, they accepted the risk that an Internet search of that phrase would produce a list of websites that include the defendants’ website.”

One could view this as a Solomonic ruling. The court properly gave a descriptive trademark very limited protection for the precise trademark, but reasonable variations were excluded from protection. However, from my perspective, the injunction was silly to begin with.

First, any ruling restricting a website’s use of a trademark makes questionable assumptions about searcher behavior, a point I make in some detail in my Deregulating Relevancy article. If the defendant was using the phrase as part of an overall infringement scheme, then it is appropriate for the court to restrict the scheme. But in this case, there’s no evidence that the narrow restriction on web content avoids consumer confusion one bit.

Second, what about descriptive fair use? While the court questioned the defendant’s good faith, an unrestricted injunction against defendant using the TM in commerce on its website is clearly overbroad. The defendant should still be free to use the trademark for comparative advertising and other purposes. For example, recall in the Brookfield case that the court said:

West Coast is not absolutely barred from using the term “MovieBuff.” As we explained above, that term can be legitimately used to describe Brookfield’s product. For example, its web page might well include an advertisement banner such as “Why pay for MovieBuff when you can get

the same thing here for FREE?” which clearly employs “MovieBuff” to refer to Brookfield’s products.

In the end, we need to focus on consumer confusion, but cases like Brookfield and Maxi-Aid lose sight of that. Instead, they make distinctions based on form, not substance—like saying that “independent living aids” is not OK but “aids for independent living” and “aids for living independently” is OK. Eventually, we need a more coherent approach to govern trademark usage on websites.