Negative Keywords Help Defeat Preliminary Injunction–DealDash v. ContextLogic

DealDash and Wish are e-commerce vendors. For a while, Wish offered a service called “Deal Dash” for time-limited bargains. Immediately after DealDash sued, Wish renamed its service “Bargain Blitz” and pulled the “DealDash” term from all advertising. DealDash still pressed for a preliminary injunction that restricted, among other things, using “DealDash” as keyword ad triggers in search engines and app stores.

Wish submitted an affidavit that it had blocked “DealDash” or “Deal Dash” as negative keywords in AdWords. The court responds:

defendant has offered unchallenged evidence showing not only that it has included “Deal Dash” and “DealDash” as “negative keywords,” but that its past use of the “Deal Dash” term “would have occurred only if Google’s own algorithm had included [it]…or if Google had suggested” the term to defendant; the term “was not sought out” by defendant. In light of the above, even assuming defendant’s past use amounted to infringement, defendant has clearly shown it cannot “reasonably be expected” to use “Deal Dash” or “DealDash” as Internet search keywords in the future

With respect to the app store, the court says that the defendant can’t control organic search results:

Kathiresan, in his declaration, avers defendant “does not use the term ‘DealDash’ or ‘Deal Dash’ as a search advertising keyword,” and, as defendant points out, the results for defendant’s apps, as shown in plaintiffs’ exhibits, do not include an “Ad” icon, which is displayed when a result is generated by way of the app’s “own search advertising.” The inclusion of defendant’s apps in the search results, Kathiresan avers, is due to “Apple’s or Google’s proprietary algorithm,” which determines “what apps appear in the app store search results and how they are ranked among the search results.” Given such unchallenged evidence, plaintiffs have failed to show defendant is currently, or will in the future, use “DealDash,” or any confusingly similar variation thereon, as a search keyword in the app stores.

I’d like to know more about why Wish adopted DealDash in the first instance (did they do an imperfect trademark search? Did they hope the plaintiff wouldn’t notice or care?). However, in light of the defendant’s instant crumple in response to the lawsuit, the case avoids the bigger issue of whether use of DealDash as a keyword ad trigger constituted trademark infringement. Instead, the defendant’s move to negative keywords seemed well-designed to assuage the judge’s concern and (ideally) put this incident behind everyone. If you’re a defendant who’s going to fold in the face of a trademark owner threat, negative keywords seems like a way to defang the plaintiff.

Case citation: DealDash OYJ v. ContextLogic, Inc., 2018 WL 3820654 (N.D. Cal. Aug. 10, 2018)

Other blog posts discussing negative keywords:

* Interesting Tidbits From FTC’s Antitrust Win Against 1-800 Contacts’ Keyword Ad Restrictions
FTC Explains Why It Thinks 1-800 Contacts’ Keyword Ad Settlements Were Anti-Competitive–FTC v. 1-800 Contacts
FTC Sues 1-800 Contacts For Restricting Competitive Keyword Advertising
Court Orders Uber To Control Its Google Search Results
What Are Trademark Defendants’ Obligations to Clean Up the Internet After a Trademark Injunction?
* Injunction Requires Negative Keywords in Future Adwords Campaigns
Broad Matching Doesn’t Violate Injunction–Rhino Sports v. Sport Court

Bonus: I also note Safeway Transit LLC v. Discount Party Bus, Inc., 2018 WL 3831345 (D. Minn. Aug. 13, 2018). The court:

PERMANENTLY ENJOINED [the defendants] from using or contributing to the use of the “Rent My Party Bus” and “952 Limo Bus” trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services.

This ruling was scrambled by the fact that the defendants actually used the trademarks before the plaintiffs did, but the court said the defendants didn’t achieve secondary meaning and then abandoned their use when the plaintiffs started using the terms. So the court said that it didn’t harm the defendants to enjoin them given their abandonment (further complicated by the fact that the parties had tangled in court previously). Also, the court’s discussion only addressed the defendants’ display of the trademarks on its website, not the AdWords usage, so the injunction’s extension to keywords wasn’t explained. Finally, the court didn’t award any damages or attorneys’ fees, so I wonder if this was an good economic outcome for the plaintiffs. Still, it’s never good when a court weaponizes such highly descriptive terms like “Rent My Party Bus” and “952 Limo Bus.”

More Posts About Keyword Advertising

The Florida Bar and Competitive Keyword Advertising: A Tragicomedy (in 3 Parts)
Another Court Says Competitive Keyword Advertising Doesn’t Cause Confusion
Competitive Keyword Advertising Doesn’t Show Bad Intent–ONEpul v. BagSpot
Brief Roundup of Three Keyword Advertising Lawsuit Developments
Interesting Tidbits From FTC’s Antitrust Win Against 1-800 Contacts’ Keyword Ad Restrictions
1-800 Contacts Charges Higher Prices Than Its Online Competitors, But They Are OK With That–FTC v. 1-800 Contacts
FTC Explains Why It Thinks 1-800 Contacts’ Keyword Ad Settlements Were Anti-Competitive–FTC v. 1-800 Contacts
Amazon Defeats Lawsuit Over Its Keyword Ad Purchases–Lasoff v. Amazon
More Evidence Why Keyword Advertising Litigation Is Waning
Court Dumps Crappy Trademark & Keyword Ad Case–ONEPul v. BagSpot
AdWords Buys Using Geographic Terms Support Personal Jurisdiction–Rilley v. MoneyMutual
FTC Sues 1-800 Contacts For Restricting Competitive Keyword Advertising
Competitive Keyword Advertising Lawsuit Will Go To A Jury–Edible Arrangements v. Provide Commerce
Texas Ethics Opinion Approves Competitive Keyword Ads By Lawyers
Court Beats Down Another Competitive Keyword Advertising Lawsuit–Beast Sports v. BPI
Another Murky Opinion on Lawyers Buying Keyword Ads on Other Lawyers’ Names–In re Naert
Keyword Ad Lawsuit Isn’t Covered By California’s Anti-SLAPP Law
Confusion From Competitive Keyword Advertising? Fuhgeddaboudit
Competitive Keyword Advertising Permitted As Nominative Use–ElitePay Global v. CardPaymentOptions
Google And Yahoo Defeat Last Remaining Lawsuit Over Competitive Keyword Advertising
Mixed Ruling in Competitive Keyword Advertising Case–Goldline v. Regal
Another Competitive Keyword Advertising Lawsuit Fails–Infogroup v. DatabaseLLC
Damages from Competitive Keyword Advertising Are “Vanishingly Small”
More Defendants Win Keyword Advertising Lawsuits
Another Keyword Advertising Lawsuit Fails Badly
Duplicitous Competitive Keyword Advertising Lawsuits–Fareportal v. LBF (& Vice-Versa)
Trademark Owners Just Can’t Win Keyword Advertising Cases–EarthCam v. OxBlue
Want To Know Amazon’s Confidential Settlement Terms For A Keyword Advertising Lawsuit? Merry Christmas!
Florida Allows Competitive Keyword Advertising By Lawyers
Another Keyword Advertising Lawsuit Unceremoniously Dismissed–Infostream v. Avid
Another Keyword Advertising Lawsuit Fails–Allied Interstate v. Kimmel & Silverman
More Evidence That Competitive Keyword Advertising Benefits Trademark Owners
Suing Over Keyword Advertising Is A Bad Business Decision For Trademark Owners
Florida Proposes to Ban Competitive Keyword Advertising by Lawyers
More Confirmation That Google Has Won the AdWords Trademark Battles Worldwide
Google’s Search Suggestions Don’t Violate Wisconsin Publicity Rights Law
Amazon’s Merchandising of Its Search Results Doesn’t Violate Trademark Law
Buying Keyword Ads on People’s Names Doesn’t Violate Their Publicity Rights
With Its Australian Court Victory, Google Moves Closer to Legitimizing Keyword Advertising Globally
Yet Another Ruling That Competitive Keyword Ad Lawsuits Are Stupid–Louisiana Pacific v. James Hardie
Another Google AdWords Advertiser Defeats Trademark Infringement Lawsuit
With Rosetta Stone Settlement, Google Gets Closer to Legitimizing Billions of AdWords Revenue
Google Defeats Trademark Challenge to Its AdWords Service
Newly Released Consumer Survey Indicates that Legal Concerns About Competitive Keyword Advertising Are Overblown