Do Adjacent Organic Search Results Constitute Trademark Infringement? Of Course Not…But…–America CAN! v. CDF


One of the screenshots from the complaint

A charitable fundraising organization, America CAN!, has a registered trademark in the phrase “Write off the car, not the Kid.” The organization purports to help the education of high risk youths, and it claims that “100% of the net proceeds go to the kids.” So the “kid” in the trademarked phrase appears to refer to disadvantaged youths, not tax writeoffs for being a parent. As a parent, the pun didn’t work for me.

The lawsuit relates to Make-a-Wish North Texas, but it isn’t named as a defendant. Instead, the lawsuit targets several subcontractors who accept car donations on behalf of Make-a-Wish and do some donation solicitations. Some of the defendants run a website, “Wheels for Wishes.” The plaintiff alleged:

CDF—which performs essentially the same charitable function as America CAN!—has a website that appears in search results near America CAN!’s website when users search America CAN!’s trademark, “Write off the car, not the Kid” ® on Yahoo and Google.

Based on this allegation, the court says that the trademark owner properly alleged trademark infringement sufficient to overcome a 12(b)(6) motion to dismiss. Say what?

The court doesn’t expressly explain that it’s addressing organic search results listings, but the screenshots in the complaint make that clear. The opinion does expressly say that this isn’t a case involving competitive keyword ads. There is some discussion about metatagging. The defendants’ briefs apparently correctly destroyed the legal consequences of metatags, but the court lets the trademark owner sidestep this by saying that the trademark owner doesn’t rely exclusively on metatag claims.

So, as far as I can tell, the trademark owner is suing merely because rivals have adjacent search results in the organic search results for the phrase “Write off the car, not the Kid.” If that sounds crazy, that’s because it is. We can say with 100% confidence that mere adjacency doesn’t constitute trademark infringement (also see my expert report in Larsen v. Larson). Plus, there are many legitimate and socially beneficial reasons why other car donation websites would appear in organic results for that search phrase.

The defendants argued that the trademarked phrase didn’t appear in the search results, so there couldn’t be any consumer confusion. The court responds that trademark visibility isn’t required for a successful trademark claim, citing Abraham v. Alpha Chi OmegaMary Kay v. Weber, and Clearline Technologies v. Cooper B-Line. In a footnote, the court says the “defendants’ recitation of other federal district courts’ holdings of this issue is not determinative since the court is not obligated to follow the law of sister circuits, however persuasive.”

What a maddening ruling! This is a crazy lawsuit that is swimming massively upstream against the tide of decade-old precedent. I don’t understand why the judge is so conciliatory to the trademark owner in this case. Maybe the judge doesn’t like 12(b)(6) motions to dismiss. Maybe the judge is overly impressed with the trademark registration. Whatever the case, I sure hope the judge’s tenor changes on summary judgment.

This case reminds me of the Alzheimer charities’ battle royale over keyword ads and more, which converted so many donation dollars into private school tuition for the lawyers’ kids. Can’t charities find a way to work together rather than burn up their charitable donations on lawsuits? It’s even worse when the trademark owner seems to rely on some, uh, unorthodox views of trademark law. Charities need to protect their donors from being fleeced, but I’m not sure this lawsuit is about protecting consumers.

Worse, the car donation business strikes me as a categorically shady niche. The complaint repeatedly alleges how donated car revenues are being siphoned off before they reach Make-a-Wish North Texas. Then again, America CAN!’s phrasing about 100% of their NET proceeds going to help the kids leaves open the obvious question: what percentage of gross proceeds translates into net proceeds? It wouldn’t surprise me if that percentage is an unimpressive number. Still, donors to either “charity” may not really care where the revenues go if they can overstate the car’s value on their tax returns.

Case citationAmerica CAN! v. Car Donations Foundation, 2019 WL 1112667 (N.D. Tex. March 11, 2019). The complaint.

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