My Take on Google v. American Blinds

Google v. American Blinds & Wallpaper Factory, 2005 WL 832398 (N.D. Cal. March 30, 2005). I’m a little late blogging the case, but I finally had a chance to read the opinion. On one level, the opinion isn’t all that remarkable. Google moved to dismiss American Blind’s claims, and the judge is required to apply a high standard of review to motions to dismiss. Unsurprisingly, Google couldn’t meet that high standard. If anything, Google got a small win because the judge granted a motion to dismiss the tortious interference with prospective business advantage claim (although this claim seemed like a dead duck from the outset).

Structurally, the opinion is interesting because so many important statement were relegated to the footnotes. Reading it, I got the impression that the judge took the clerk’s memo and cut ‘n’ paste it into the footnotes.

Substantively, because of the early procedural posture of the case, the opinion only has a few nuggets of insight. Some points that caught my eye:

* FN 19 reads: “Defendants analogize the instant case to Ford’s payment to have Car and Driver magazine run Ford advertisements facing every Toyota advertisement in order to target Toyota’s customers or a pizzeria owner’s handing flyers to customers on their way to Domino’s. While it is of no consequence to the outcome of the instant motions, the Court notes that, as alleged by American Blind, Defendants themselves would not be the analogs to Ford and the pizzeria owner, because they are not alleged to be the advertisers.” While the court is technically correct, I don’t understand how/why the court missed the more obvious question—is the magazine liable for taking Ford’s payments to run those ads? However, contrary to Google’s hopes, I’m not convinced that the magazine has no liability in these circumstances. My summer paper will address the issue of “trademark adjacency”—when do adjacent uses of a trademark create liability? There are some interesting precedent from the supermarket context where, in fact, adjacency may contribute to liability.

* In FN 21, the court defines “initial interest confusion” as “a situation in which, although the consumer does not experience confusion as to the source of goods or services, the defendant, by diverting or capturing the consumer’s initial attention, improperly benefits from the goodwill that the plaintiff developed in its mark.” (cite to Brookfield and Playboy). Note that Playboy used a different definition that required competitive uses: “customer confusion that creates initial interest in a competitor’s product . . .[a]lthough dispelled before an actual sale occurs.” The court does not cite the August 2004 Nissan Motors v. Nissan Computer case, the latest Ninth Circuit ruling on initial interest confusion. That case used the Brookfield definition but also pushed any analysis of initial interest confusion back into the multi-factor likelihood of consumer confusion test. So exactly what is the Ninth Circuit definition of “initial interest confusion”? And what standard will the court use in this case? If I were Google, I would take issue with the court’s definition.

* Finally, the court had to confront one of many deficiencies in the Playboy case—did that court decide that Netscape and Excite had “used” Playboy’s trademarks in commerce. The Ninth Circuit so thoroughly botched that ruling that we don’t know something as basic as that. (Then again, we also don’t know if the court was analyzing direct or contributory trademark infringement because the court expressly declined to decide that specific question). For purposes of the motion to dismiss, the court logically concludes that the Playboy case did make an implicit ruling that the search engines were engaged in a trademark use. I’m curious to see if the court will entertain the trademark use question in future motions or if the court thinks that this opinion resolves it for the rest of the litigation.

While the ruling is a loss to Google, I don’t know if Google really expected to win this motion. There’s still lots of opportunity for Google to win the case, and the opinion was fairly opaque about which way the judge was leaning.