The Ninth Circuit STILL Thinks Keyword Metatags Matter in 2018–Adidas v. Skechers

adidas-300x92Yesterday, the Ninth Circuit ruled about trademarked stripes on tennis shoes. To me, legally weaponizing dots in three lines on a shoe predictably leads to wasteful and possibly anti-consumer litigation. However, instead of critiquing the opinion generally, I’ll isolate just one aspect.

The court says:

Skechers placed metadata tags on its website that directed consumers who searched for “adidas Stan Smith” to the page for the Onix shoe. “Using another’s trademark in one’s metatags is much like posting a sign with another’s trademark in front of one’s store.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1064 (9th Cir. 1999). We agree with the district court that “the only reason ‘adidas Stan Smith’ is a useful search term is that consumers associate the term with a distinctive and recognizable shoe made by adidas.” Therefore, the district court did not clearly err by finding that the Stan Smith had acquired secondary meaning.

Instead of the multitude (dozens?) of Ninth Circuit cases interpreting online trademark law in the past two decades, this court in 2018 actually reaches back to the Brookfield billboard analogy from 1999? FFS. As I explained in 2005, Brookfield’s billboard analogy is irreparably flawed. Even in keyword metatag’s halcyon days when they had minor technical relevance, keyword metatags that are processed only by automated bots bear zero resemblance to a physical space sign that consumers see.

(And what’s up with the phrase “metadata tags”?)

Later, the court says: “the evidence supports an inference that Skechers intended to confuse consumers; it not only created a nearly identical shoe to the Stan Smith, but then used metadata tags to direct consumers who searched for ‘adidas stan smith’ to the Onix web page.” In a footnote, the court adds:

Relying on Multi Time Machine, Inc. v., Inc., 804 F.3d 930 (9th Cir. 2015), Skechers argues that its use of metadata tags clearly identifying the source of the product being sold is indicative only of an intent to compete, not an intent to infringe. This reliance is misplaced. In Multi Time, a watch manufacturer brought an action alleging that an online retailer’s listing of competitors’ products in response to a search for the manufacturer’s mark constituted trademark infringement. Because the defendant there did not create any of the competing products, the use of the metadata was not probative of its intent to exploit the existing secondary meaning of a competitor’s mark or trade dress. Here, however, Skechers’s use of the metadata is probative of its attempt to capitalize on the Stan Smith by both creating and selling the similar-looking Onix.

FFS (again). In the fictional world imagined by judges, keyword metatags single-handledly defraud innocent consumers. But as a quick calendar check will reveal, it’s 2018. Keyword metatags have been irrelevant for nearly a decade, and they are not “probative” of anything that matters except, perhaps, the desire to alert consumers of competitive alternatives. To wit: in context of keyword ads, recall that the 9th Circuit said–in 2011–that “companies sometimes purchase search terms they believe will lead potential customers to their websites even if the terms do not describe goods or services the company actually provides” (emphasis added). Seems apropos, as does the nominative use defense, also not mentioned.

In light of yesterday’s rehash of desperately outdated technological facts, I wearily reiterate the guidance I’ve been giving for over a decade: scrub your website of any third party trademarks in your keyword metatags. The only people those keyword metatags will influence are plaintiffs’ lawyers and possibly a judge.

Case citation: Adidas America, Inc. v. Skechers USA, Inc., No. 16-35204 (9th Cir. May 10, 2018)