Do Adjacent Organic Search Results Constitute Trademark Infringement? Of Course Not…But…–America CAN! v. CDF
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 Omega, Mary 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.
More Posts About Keyword Advertising
* The Ongoing Saga of the Florida Bar’s Angst About Competitive Keyword Advertising
* Your Periodic Reminder That Keyword Ad Lawsuits Are Stupid–Passport Health v. Avance
* Restricting Competitive Keyword Ads Is Anti-Competitive–FTC v. 1-800 Contacts
* Another Failed Trademark Suit Over Competitive Keyword Advertising–JIVE v. Wine Racks America
* Negative Keywords Help Defeat Preliminary Injunction–DealDash v. ContextLogic
* 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