Trademark Lawsuit Over Website Text Comparing Products Baffles the Judge–AR Pillow v. Cottrell
By Eric Goldman
Every time I read an opinion like this, a little piece of me dies. This is a ridiculously easy case, yet somehow it got all tangled up.
The litigants are rival vendors of similar products to combat baby acid reflux. For a slightly similar dispute involving trademark fights over baby products, see BabyAge v. Leachco.
The plaintiff is largely complaining about text on the defendant’s website explaining why the plaintiff’s product isn’t as good as the defendant’s. From my perspective, the explanation doesn’t constitute a trademark “use” at all because the trademark is being used as a referent. See, e.g., Naked Cowboy v. CBS, 2012 WL 592539 (S.D.N.Y. Feb 23, 2012). Thus, the court should dismiss the trademark claim for non-trademark use. But if the court doesn’t do that, at least it should dismiss as a nominative use. See, e.g., 1 800 GET THIN v. Hiltzik. There is absolutely no question that the defendant’s reference qualifies as a nominative use under Ninth Circuit law. Yet, and here’s where a piece of me dies, the opinion doesn’t discuss nominative use AT ALL. What???
Instead of addressing the two most obvious grounds, the court engages in doctrinal contortions to fit this case into a standard likelihood of consumer confusion analysis. As I’ve explained elsewhere, the multi-factor LOCC test simply makes no sense when a third party is using the trademark editorially as a referent. My paradigmatic example is the Ballysucks case, where the LOCC analysis is ridiculous because the court is trying to compare a vendor with a griper who registered a “sucks” domain. The LOCC test doesn’t work any better here. The judge almost seems to know that the LOCC test isn’t the right test, but he doesn’t seem to know what else to do.
Fortunately, the judge overcomes his shaky analysis by reaching the right result, concluding that there’s insufficient evidence of consumer confusion. Yay for good outcomes. But we need to find better ways to make it clear trademark law should not play a role in situations like this. For more on that, see my Online Word of Mouth paper.
One more point: the court’s technological discussions are a mixed bag. On the plus side, citing Network Automation and Matt Cutts’ blog post/video, the judge rejects the plaintiff’s claims over keyword metatags because Google ignores them. But then the judge launches these groaners:
“there is no evidence in the record that use of the term AR Pillow in Google or other search engine currently leads to defendant’s website”
“Consumers who search for AR Pillow today are not presented with defendant’s website in the rankings”
Oh god, not this again. Please, let’s kill this meme RIGHT NOW. Relative placement of search engine results is a HORRIBLE way to evaluate trademark disputes. First, as I explain here, the junior user doesn’t control placements–the search engines do. Second, in my post on the Bitchen Kitchen litigation, I explain technological reasons why this is a terrible idea, including search results personalization, the fact that results change minute-by-minute, and the fact that different search engines rank their results differently. Judges, I beg you, please don’t go down this wormhole.