Trademark Lawsuit Claiming Organic Search Results Create Initial Interest Confusion Falls Apart–Larsen v. Larson
Disclosure note: I provided an expert report in this now-dismissed case, so you might consider my comments to be advocacy. I’ll explain my expert role in a bit.
The Court Opinion
Susan Larsen practices business law in the Denver, Colorado metro area under the name Larsen Law Offices. She claims she’s been using the name since 2003, though she did not register the name as a trademark (and would need to address the obvious secondary meaning issues to do so). David Larson practices estate planning law (and more) in the Denver metro area as well. In 2013, Larson set up a website at the domain name davidlarsonlawoffice.com, and he used the domain name larsonlawoffice.com starting in 2016. In 2016, Larsen sued Larson for trademark infringement, ACPA and more. After the complaint, Larson’s website removed references to Larson Law Offices, adopting the name David M. Larson, PLLC. Larson partially moved to dismiss.
Cybersquatting. The court says “Plaintiff does not allege that Mr. Larson had actual knowledge of Larsen Law Offices’ existence in 2013, or that he has ever conducted a Google search that returned plaintiff’s name.” Further (cites omitted):
davidlarsonlawoffice.com and larsonlawoffice.com both consist of a descriptive component (“law office”) and Mr. Larson’s name. And Mr. Larson has apparently used these marks for years in connection with his legitimate business. Plaintiff does not allege, for example, that Mr. Larson has offered to sell these websites to plaintiff for profit or that he falsified registration information in obtaining the domain names.
The court grants the motion to dismiss the ACPA claim.
Protective order. Larson sought a protective order against discovery into his financial affairs. In theory, such information would be relevant to damages. The judge isn’t willing to allow it (cites omitted):
I am not going to let plaintiff go digging in the books of what plaintiff asserts is a competitor when its case is hanging by a thread….
Plaintiff has already obtained most of the relief it seeks: Mr. Larson has changed his business’s name and removed all potentially infringing language from his websites. But plaintiff forges ahead simply because defendants continue to use the websites davidlarsonlawoffice.com and larsonlawoffice.com. The former domain name uses Mr. David Larson’s first and last name, casting doubt on the claim that this website could be confused with the site for Ms. Susan Larsen’s firm. And plaintiff did not notice this website for the first three years of the site’s existence, suggesting that Mr. Larson’s legitimate business activities did not actually harm plaintiff. As for the latter domain name, plaintiff’s exhibit shows that while Mr. Larson began using this website in 2016, the site has been used by others since 2001, if not earlier—at least two years before Larsen Law Offices was formed. Furthermore, plaintiff uses the plural “offices” in its name and website despite having only one office, possibly because larsenlawoffice.com is used by yet another attorney whose last name is Larsen. Thus, plaintiff might have some issues of its own.
To sidestep the discovery request, the court bifurcates liability and damages:
I cannot say that it is completely inconceivable that plaintiff could prevail in the end. However, plaintiff is going to have to show me that defendant is liable for disgorgement of profits before his books become fair game.
The plaintiff internalized the judge’s doubts about the case. The parties settled a week later, the plaintiff dismissed the case, and she wrote a check to the defendant.
My Role as an Expert
Nowadays, I’m careful about undertaking new outside professional activities because of my personal obligations, but I couldn’t say no here. The plaintiff’s trademark claim basically asserted that Larson’s website appearing in search results for “Larsen Law Offices” created initial interest confusion. Regular readers know how I feel about the initial interest confusion doctrine (hint: I think it’s bullshit), and I couldn’t believe that a putative trademark owner (of a dubious mark, no less) in 2017 was willing to go to court claiming that organic search results create initial interest confusion. Recall my tip to plaintiffs from yesterday: “If success in your case depends on establishing initial interest confusion, DON’T BRING THE CASE.” So I decided I couldn’t watch this case from the sidelines.
To support the initial interest confusion claim, the plaintiff procured an expert report from a technologist, Peter Kent. Read his report. I was asked to prepare a report rebutting Kent’s report (rather than prepare my own standalone expert report). Read my rebuttal report. As you know, expert reports become publicly available relatively rarely, but both reports were filed in PACER without redactions, so I’m sharing them here. As much as was possible within the scope of a rebuttal report, my expert report lays out some of my latest thinking about the initial interest confusion doctrine (especially as applied to organic search results), so I encourage you to take a look.