Multi Time MacHine, Inc. v. Amazon.com, Inc.
Opinion of the Court
Opinion by Judge BEA; Dissent by Judge SILVERMAN.
OPINION
We are called upon to determine whether the operation of a retailer’s website infringes a trademark because of the manner in which it responds to a shopper’s search request for the trademarked goods. What the website’s response states, together with what its response does not state, determines whether its response is likely to cause confusion. If confusion results from the website’s response, there may be trademark infringement.
MTM Special Ops watches are high-end, military style watches manufactured by Multi-Time Machines, Inc. (“MTM”). Online retailerAmazon.com (“Amazon”) does not carry MTM watches. If her brother mentioned MTM Special Ops watches, a frequent Amazon shopper might try to purchase one for him through Amazon. If she were to enter “MTM Special Ops” as her search request on the Amazon website, Amazon would respond with its page showing MTM Special Ops (1) in the search field (2) “MTM Specials Ops” again — in quotation marks' — immediately below the search field and (3) yet again in the phrase “Related Searches: MTM special ops watch,” all before stating “Showing 10 Results.”
MTM asserts the shopper might be confused into thinking a relationship exists between Luminox and MTM. As a result of this initial confusion, MTM asserts she might look into buying a Luminox watch, rather than junk the quest altogether and seek to buy an MTM watch elsewhere. MTM asserts that Amazon’s use of MTM’s trademarked name is likely to confuse buyers, who may ultimately buy a competitor’s goods.
The district court found Amazon’s use of MTM’s trademark created no likelihood of confusion as a matter of law. But we think a jury could find that Amazon has created a likelihood of confusion. We therefore reverse the district court’s grant of summary judgment in favor of Amazon.
Facts and Procedural History
Founded in 1992, MTM manufactures and markets watches under various brand names, including MTM, MTM Special Ops, and MTM Military Ops. MTM holds a registered trademark in “MTM SPECIAL Ops”
Amazon claims to offer “Earth’s Biggest Selection of products,” products which include watches manufactured by various competitors of MTM. Amazon users who search for “MTM Special Ops” on Amazon’s site are routed to a screen which shows the phrase “MTM Special Ops” in the query field (the “search query playback”); again immediately below as “MTM Special Ops” with quotation marks, directly below the search line; and immediately again after with the words “Related Searches.” After the three iterations of MTM’s trademark the screen lists search results, including watches manufactured
MTM’s competitors’ products appear in the Amazon search query response in part because Amazon’s search algorithm responds to its customers’ behavior using a Behavior Based Search technology (“BBS”), which uses data about what customers view and purchase after searching certain terms. Amazon does not program the terms; the function responds solely to customer behavior. If enough customers search for a certain keyword, “X,” and then look at or purchase another product “Y,” even if X and Y are not obviously related, future customers who search for X may receive search results including Y. But the BBS function is not solely responsible for the search results. The results list also includes matches based on a search of terms on Amazon’s pages — for instance, streaming video of a show called Special Ops Mission may be called up. Whether a particular result appears because of BBS or a traditional search of matching terms is not evident from the matches, and the relevant products (which are based on search terms) and recommended products (based on BBS) are mingled together.
MTM sued Amazon, alleging that Amazon had infringed MTM’s trademarks in violation of the Lanham Act. MTM sought injunctive relief barring use of the trademark and damages. On Amazon’s motion, the district court granted summary judgment to Amazon. MTM timely appealed.
Standard of Review
We review de novo the district court’s grant of summary judgment, and must consider the evidence in the light most favorable to the nonmoving party. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th Cir. 2005). This court may affirm the grant of summary judgment on any ground that finds support in the record. Karl Storz Endoscopy Am., Inc. v. Surgical Technologies, Inc., 285 F.3d 848, 855 (9th Cir. 2002).
Discussion
Under the Lanham Act, a defendant infringes a trademark when the defendant uses the mark in commerce in a manner likely to cause confusion as to a good’s source. Trademark infringement also occurs when the trademark’s use in commerce is likely to cause confusion as to the affiliation, association, or approval of the trademark holder with the trademark user.
A defendant can create likelihood of confusion, and thereby infringe the' trademark, through a type of confusion referred to as “initial interest confusion.” Initial interest confusion occurs not where a customer is confused about the source of a product at the time of purchase, but earlier in the shopping process, if “customer confusion .. .■ creates initial interest in a competitor’s product.” Id. at 1025. Even if that confusion is dispelled before an actual sale occurs, initial interest confusion still constitutes trademark infringement because it “impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement.” Id.
A. Likelihood of Confusion
This court considers eight non-exhaustive factors, known as the Sleekcraft factors, to determine whether a trademark use gives rise to a likelihood of confusion: (1) strength of the mark(s); (2) proximity or relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) the defendants’ intent; and (8) likelihood of expansion. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)). As the Network Automation court explained, in the context of internet commerce, though likelihood of confusion might be shown where “consumers saw banner advertisements that were ‘confusingly labeled or not labeled at all’.... clear labeling ‘might eliminate the likelihood of confusion.’ ” Network Automation, 638 F.3d at 1153-54 (citing Playboy, 354 F.3d at 1023, 1030 n. 43).
1. Labeling
MTM submitted an expert report that stated that the search results on Amazon are “ambiguous, misleading, and confusing.” Dist. Ct. Order, 926 F.Supp.2d 1130, 1141 (C.D.Cal. 2013). The district court found that the expert analysis showed only that customers could be confused about why they receive certain search results, but that there was no evidence that Amazon users were likely to be confused as to the source who manufactured the competing goods We disagree. A jury could infer that users who are confused by the search results are confused as to why MTM products are not listed. Unlike its competitors Buy.com and Overstock.com, Amazon does not forestall any confusion by informing customers who are searching “MTM Special Ops” that Amazon does not carry any such products.
A jury could infer that users who are confused by the search result will wonder whether a competitor has acquired MTM or is otherwise affiliated with or approved by MTM. See Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1057 (9th Cir. 1999). This is especially true as to a brand like MTM, as many luxury brands with distinct marks are produced by manufacturers of lower-priced, better-known brands — just as Honda manufactures Acura automobiles but sells Acura automobiles under a distinct mark that is marketed to wealthier purchasers, and Timex manufactures watches for luxury fashion houses Versace and Salvatore Ferraga-mo. Like MTM, Lummox manufactures luxury watches, and a customer might think that MTM and Luminox are manufactured by the same parent company. The possibility of initial interest confusion here is likely much higher than if, for instance, a customer using an online grocery website typed “Coke” and only Pepsi products were returned as results. No shopper would think that Pepsi was simply
In any event, even as to expensive goods — for instance, pianos sold under a mark very similar to the famous Steinway and Sons brand’s mark — the issue is not that a buyer might buy a piano manufactured by someone other than Steinway thinking that it was a Steinway. The issue is that the defendant’s use of the mark would cause initial interest confusion by attracting potential customers’ attention to buy the infringing goods because of the trademark holder’s hard-won reputation. Brookfield, 174 F.3d at 1063 (citing Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1341-42 (2d Cir. 1975)).
A jury could infer that the labeling of the search results, and Amazon’s failure to notify customers that it does not have results that match MTM’s mark, give rise to initial interest confusion. If so, a jury might find that Amazon customers searching for MTM products are subject to more than mere diversion, since MTM is not required to show that customers are likely to be confused at the point of sale. Playboy, 354 F.3d at 1025.
We agree with the district court’s conclusion that the product details for competitors’ itemized products were clearly labeled, but we find that the clarity of the search results page at issue is open to dispute. We must not substitute our determination of what constitutes clear labeling, nor its importance, for that of a jury.
2. Sleekcraft Factors
The Sleekcraft “eight-factor test for likelihood of confusion is pliant. Some factors are much more important than others, and the relative importance of each individual factor will be case-specific.” Brookfield, 174 F.3d at 1054. On a motion for summary judgment, courts may consider whether any of the Sleekcraft factors give rise to a genuine issue of fact. Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1031 (9th Cir. 2010). A court may be “far from certain that consumers were likely to be confused [and still be] confident that the question is close enough that it should be answered as a matter of fact by a jury, not as a matter,of law by a court.” Id. If there is a genuine issue of fact as to any of the factors, there is more likely to be a genuine issue of fact as to whether there is likelihood of confusion. To avoid summary judgment a plaintiff need not show that every factor weighs in his favor, only to make a strong showing as to some of them (though we note that, because the factors are not exhaustive, a plaintiff could presumably survive summary judgment by adducing evidence of likelihood of confusion that did not fall within one of the factors). Surfvivor, 406 F.3d at 630.
Mindful that our analysis must be tailored to this case, we discuss below the five Sleekcraft factors we deem relevant to resolution of the question of summary judgment: the strength of the mark, relatedness/proximity of the goods, evidence of actual confusion, defendant’s intent, and
We find that three of the remaining five relevant factors appear to weigh in favor of a finding of a likelihood of confusion, and we address these first. We hold that it is the province of a jury to determine how heavily each of these factors should weigh.
a. Strength of the Mark
A mark’s strength is a measure of how uniquely identified it is with a product or service, and therefore how deserving of trademark protection. Fortune Dynamic, 618 F.3d at 1032. Two types of trademark strength are relevant: commercial and conceptual. Commercial strength refers to a mark’s recognition in the marketplace, that is, how widely recognized the mark is by customers. Id. at 1034. Neither MTM nor Amazon presented evidence of MTM’s commercial strength. We do not consider it; we turn to consideration of conceptual strength.
“A mark’s conceptual strength depends largely on the obviousness of its connection to the good or service to which it refers. The less obvious the connection, the stronger the mark, and vice versa.” Id. at 1032-33. Conceptual strength is considered along a continuum, and in this circuit, marks may be classified as falling into one of five categories, from conceptually weak to conceptually strong: generic, descriptive, suggestive, arbitrary, or fanciful. Id. at 1033. Whether a mark is descriptive or suggestive is a question of fact. Id. at 1034. In an infringement suit, “the distinction [between a descriptive and suggestive mark] is important ... because if the mark is suggestive, there is a stronger likelihood that a jury could reasonably conclude that the ‘strength of the mark’ factor favors the [plaintiff].” Id. Here, the district court found that “Amazon’s evidence is persuasive in showing that the marks are not strong; they are at best suggestive, and more likely descriptive.” 926 F.Supp.2d at 1139. However, the phrase “MTM Special Ops” requires “a mental leap from the mark to the product,” because the phrase does not expressly refer to watches. Fortune Dynamic, 618 F.3d at 1034. Indeed, by evoking elite military forces (“Special Ops”), the goods suggested by the phrase are as likely to be protective gear, binoculars, weapons, or boots as they are watches. A jury could find that the mark is suggestive and conceptually strong because it does not obviously refer to watches, or that it is merely descriptive because the watches are made in a military style. Either way, the weight of the evidence is a question of fact, and there is a genuine issue of fact as to the conceptual strength of the mark. As in Fortune Dynamic, “a jury should assess the conceptual strength of [plaintiffs] mark in the first instance.” 618 F.3d at 1033.
b. Similarity of the Goods
Like MTM, Amazon sells specialized, military-style watches. The similarity of the goods Amazon is selling weighs in favor of a finding of infringement. The district court cited Network Automation for the proposition that “though the products were interchangeable ... that fact would ‘become less important if advertisements are clearly labeled or consumers exercise a high degree of care, because
On summary judgment, the court may not make assumptions about the sophistication of would-be purchasers. Fortune Dynamic, 618 F.3d at 1030. Some members of MTM’s target demographic, men of 22-55 years of age who like military-styled, rugged products, may not be frequent internet shoppers. Such purchasers “may incorrectly believe that [defendant] licensed [the mark] from [plaintiff] .... Other consumers may simply believe that [defendant or the manufacturers it features] bought out [plaintiff], or that they are related companies.” Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1057 (9th Cir. 1999). This is especially possible here because Amazon touts itself as offering “Earth’s Biggest Selection of products,” and, as noted above, manufacturers sometimes market luxury brands under distinct marks. Even if further internet research could clarify the matter for a customer who wondered if MTM had been acquired or had acquired its competitor watch-makers, it is incorrect to conclude that “likelihood of confusion exists only when consumers are confused as to the source of a product they actually purchase. It is ... well established that the Lanham Act protects against many other forms of confusion.” Brookfield, 174 F.3d at 1057. Network Automation found that on the internet, initial interest confusion is an untenable theory where sponsored links appear on search pages that have “partitioned their search results pages so that the advertisements appear in separately labeled sections for ‘sponsored’ links.’” 638 F.3d at 1154. Here, the competitors’ products are not clearly labeled as being BBS results rather than keyword searches. The similarity of the goods means that an Amazon customer who searches for “MTM Special Ops” and then investigates watches manufactured by Luminox or Chase-Durer, even if he later purchases such a watch without any confusion as to its source, will have been subject to “confusion, not mere diversion.”
c. Defendant’s intent
“A defendant’s intent to confuse constitutes probative evidence of likely confusion.” Playboy, 354 F.3d at 1028. MTM submitted evidence that Amazon vendors and customers had complained to Amazon because they did not understand why they received certain non-responsive search results when they searched for products that are not carried by Amazon. The evidence showed that Amazon employees did not take action to address the complaints by explaining to the public how the BBS function works. One Amazon employee noted that explaining BBS to the public might draw customers’ and vendors’ unwanted scrutiny to the matter. Amazon did not disclose to shoppers how its BBS worked.
As in Playboy, this evidence suggests, “at a minimum, that defendants do nothing to alleviate confusion.... Although not definitive, this factor provides some evidence of an intent to confuse on the part of defendants.” Playboy, 354 F.3d at 1029. From evidence that “Earth’s most customer-centric company” took no action on these complaints, a jury could infer that Amazon intended to confuse its customers. We leave it to a jury to determine, if Amazon so intended, how important that intent is, and we turn to two factors that we think weigh in favor of Amazon.
d. Evidence of Actual Confusion
Where evidence of actual confusion is submitted, it is “strong support for the likelihood of confusion.” Network Automation, 638 F.3d at 1151 (internal quotation marks omitted). But actual confusion “is not necessary to a finding of likelihood of confusion under the Lanham Act. Indeed, proving actual confusion is difficult ... and the courts have often discounted such evidence because it was unclear or insubstantial.” Id. (internal quotation marks, citation, and brackets omitted).
MTM did not submit colorable evidence of actual confusion. MTM offered its president’s testimony that he had knowledge of actual confusion. The district court found this testimony was too vague to constitute evidence. The president testified that someone he had met named Eric said, in reference to Amazon’s page, “it’s confusing.” Such testimony does not suffice to give rise to a genuine issue of fact, even were such hearsay admissible, as the record does not provide support for the speculation that Eric was a potential customer.
Amazon submitted evidence that purports to show that no customers were confused, because customers who searched for “Luminox” were 21 times as likely to purchase a Luminox watch as were customers who searched for “MTM Special Ops.” We do not find it surprising that customers who search for an item (Luminox watches) are more likely to buy that item than customers who did not search for it but searched for another product (MTM watches). But in the absence of evidence of actual confusion, we agree that the factor weighs in favor of Amazon. However, we are not persuaded that a jury could not view this purported evidence of no actual confusion as flawed because a user researching watches might initially be confused about the availability of MTM watches online and so not purchase a Lu-minox the same day.
e. Degree of Care
As to the degree of care expected of a purchaser, when goods are expensive, purchasers can be expected to exercise greater care, though confusion may still be likely. Network Automation, 638 F.3d at 1152. MTM’s watches are priced between several hundred dollars to two thousand dollars. The district court did not err in finding that consumers could be presumed to use a high degree of care in purchasing such watches. However, in light of our determination that other factors give rise to genuine issues of fact, we note that a jury may find that Amazon presented evidence that “same day sales” are high for Lummox. This could be interpreted, by a jury, as proof that at least some persons who seek military watches are impulse buyers who do not spend as much time comparing products as careful buyers might. If so, the jury might accord the price of the watches little weight compared to the other factors. This factor and its relative importance are matters for a jury.
B. Use in Commerce
This court has held that use of a trademark as a search engine keyword that triggers the display of a competitor’s advertisement is a “use in commerce” under the Lanham Act. Network Automation, 638 F.3d at 1144-45. Amazon contends that the user-generated search term “MTM Special Ops” is not a use in commerce within the meaning of the Lanham Act. We hold that the customer-generated use of a trademark in the retail search context is a use in commerce. As the district court correctly observed, though Network Automation is distinguishable because the search engines were selling the use of competitor’s trademarks, Amazon’s purpose is not less commercial just because it is selling wares, not advertising space. Therefore, we decline to affirm the district court on the alternative ground that Amazon’s use is not a use in commerce.
Conclusion
We are by no means certain that MTM will be able to prove likelihood of confusion under an initial interest confusion theory, but we are confident the matter can be determined only by resolving genuine issues of material fact.
REVERSED AND REMANDED.
. Our recitation of the facts, and our decision, are based on the evidence submitted below. However, we may take judicial notice of facts which are publicly available and "not subject to reasonable dispute in that [they are] ...
. We refer to the various capitalizations of the trademark as "MTM Special Ops” herein.
. "[A]ny person who shall, without consent of the registrant,” use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to
. In Playboy, defendant search engine Netscape required adult-oriented websites who purchased advertising from Netscape to link their advertisements to search keywords "playboy” and "playmate,” trademarks of Playboy Enterprises ("PEI”). 354 F.3d at 1023. When Netscape users searched the terms, they would be presented with banner ads for non-PEI operated websites that said "click here” and routed users to advertisers’ websites. Id. PEI sued Netscape for Lanham Act violations, and the district court granted summary judgment in favor of defendants. Id. This court reversed. We found that initial interest confusion supported an infringement theory even if users realized they were not at a PEI site before making a purchase. Id. at 1025, 1026-29.
. In Network Automation, plaintiff Network Automation and defendant Advanced Systems Concepts both sold job scheduling and management software. 638 F.3d at 1142. Network Automation advertised its product by purchasing certain keywords — including registered trademarks belonging to Advanced Systems — which, when typed into various search engines, produced a results page that included Network Automation’s website "www.NetworkAutomation.com” as a labeled, sponsored link. Id. Advanced Systems alleged violation of the Lanham Act and moved for a preliminary injunction. Id. at 1143. The district court granted a preliminary injunction to Advanced Systems, and Network Automation appealed. Id. On appeal, this court reversed and vacated the preliminary injunction. This court considered the eight Sleekcraft factors and held that the district court had not weighed the factors
. The dissent also mentions Coke and Pepsi in conjunction with the labeling inquiry, and John Belushi’s Saturday Night Live "cheez-borger” refrain' — "No Coke. Pepsi." However, Belushi's line is analogous to the message on Overstock’s and Buy’s websites, which • state the equivalent of "No Coke” rather than simply inundating the shopper with images of Pepsi. The dissent acknowledges that a retailer who offers competitors’ products for sale, without mentioning that he does not carry a brand requested by a customer, is "sort of like what happens when you order a Coke, and are clearly told that they only have Pepsi.” Dissent at 1081. But it is only sort of like the Belushi scenario, because unlike Belushi’s "No Coke,” Amazon'does not say "No MTM.”
. Amazon's evidence that customers do not purchase competitors' watches after searching "MTM SPECIAL OPS" is addressed below.
. In response to MTM's critique that the data did not fully account for consumer behavior, the district court opined that "Amazon persuasively responds that the value of the data is not absolute but relative; there is no reason to think that those consumers searching for Luminox would exhibit different behaviors
Dissenting Opinion
dissenting:
Live! From New York! It’s Saturday Night! ... and the scene is the Olympia Restaurant, Chicago, January, 1978. Dan Aykroyd is manning the grill, Bill Murray is working prep, and John Belushi is up front taking orders. A customer, Jane Curtin, walks in and orders two cheeseburgers. Belushi yells to the grill: “Cheez-borger, cheezborger.” Curtin then orders a Coke. Without looking up, Belushi replies: “No Coke. Pepsi.”
Pause it right there.
Now, fast-forward to the present. A customer goes online to Amazon.com looking for a certain military-style wristwatch — specifically the “MTM Special Ops” — marketed and manufactured by Plaintiff Multi Time Machine, Inc. The customer types “mtm special ops” in the search box and presses “enter.” Because Amazon does not sell the MTM Special Ops watch, what the search produces is a list, with photographs, of several other brands of military style watches that Amazon does carry, specifically identified by their brand names — Lummox, Chase-Durer, TAWATEC, and Modus — sort of like what happens when you order a Coke, and are clearly told that they only have Pepsi. The particular search results page at issue is displayed below:
MTM brought suit alleging that Amazon’s response to a search for the MTM Special Ops watch on its website is trademark infringement in violation of the Lan-ham Act. MTM contends that Amazon’s search results page creates a likelihood of confusion, even though there is no evidence of any actual confusion and even though the other brands are clearly identified by name and each product is displayed with a photograph. The district court granted summary judgment in favor of Amazon.
I.
“Although disfavored in trademark infringement cases, summary judgment may be entered when no genuine issue of material fact exists.” Id. Indeed, in several trademark cases, we have concluded that there is no likelihood of confusion as a matter of law, and affirmed the district court’s grant of summary judgment in favor of the defendant. See, e.g., One Indus., LLC v. Jim O’Neal Distrib., 578 F.3d 1154, 1162-65 (9th Cir. 2009); M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1080-85 (9th Cir. 2005); Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 631-34 (9th Cir. 2005).
To prevail on a claim of trademark infringement under the Lanham Act, “a trademark holder must show that the defendant’s use of its trademark ‘is likely to cause confusion, or to cause mistake, or to deceive.’ ” Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., 618 F.3d 1025, 1030 (9th Cir. 2010) (quoting 15 U.S.C. § 1125(a)(l)-(a)(l)(A)). “The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.” Dreamwerks Prod. Group v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). “The confusion must ‘be probable, not simply a possibility.’ ” Murray v. Cable NBC, 86 F.3d 858, 861 (9th Cir. 1996).
Here, the district court was correct in ruling that there is no likelihood of confusion. Amazon is responding to a customer’s inquiry about a brand it does not carry by doing no more than stating clearly (and showing pictures!) of what brands it does carry. To whatever extent the Sleekcraft factors
To analyze likelihood of confusion, we utilize the eight-factor test set forth in Sleekcraft.
In the present case, the eight-factor Sleekcraft test is not particularly apt. This is not surprising as the Sleekcraft test was developed for a different problem— i.e., for analyzing whether two competing brands’ marks are sufficiently similar to cause consumer confusion. See Sleekcraft, 599 F.2d at 348. Although the present case involves brands that compete with MTM, such as Luminox, Chase-Durer, TAWATEC, and Modus, MTM does not contend that the marks for these competing brands are similar to its trademarks. Rather, MTM argues that the design of Amazon’s search results page creates a likelihood of initial interest confusion because when a customer searches for MTM Special Ops watches on Amazon.com, the search results page displays the search term used — here, “mtm special ops” — followed by a display of numerous watches manufactured by MTM’s competitors and offered for sale by Amazon, without explicitly informing the customer that Amazon does not carry MTM watches.
Thus, the present ease focuses on a different type of confusion than was at issue in Sleekcraft. Here, the confusion is not caused by the design of the competitor’s mark, but by the design of the web page that is displaying the competing marks and offering the competing products for sale. Sleekcraft aside, the ultimate test for determining likelihood of confusion is whether a “reasonably prudent consumer” in the marketplace is likely to be confused as to the origin of the goods. Dreamwerks, 142 F.3d at 1129. Our case can be resolved simply by an evaluation of the web page at issue and the relevant consumer. Cf. Brookfield, 174 F.3d at 1054 (“[I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the factors.”). Indeed, we have previously noted that “[i]n the keyword advertising context [i.e., where a user performs a search on the internet, and based on the keywords contained in the search, the resulting web page displays certain advertisements containing products or services for sale,] the ‘likelihood of confusion will ultimately turn on what the consumer saw on the screen and reasonably believed, given the context.’ ” Network Automation, 638 F.3d at 1153. In other words, the case will turn on the answers to the following two questions: (1) Who is the relevant reasonable consumer?; and (2) What would he reasonably believe based on what he saw on the screen?
Turning to the first question, we have explained that “[t]he nature of the goods and the type of consumer is highly relevant to determining the likelihood of confusion in the keyword advertising context.” Network Automation, 638 F.3d at 1152. “In evaluating this factor, we consider ‘the typical buyer exercising ordinary caution.’” Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1076 (9th Cir. 2006) (quoting Sleekcraft, 599 F.2d at 353). “Confusion is less likely where
The goods in the present case are expensive. It is undisputed that the watches at issue sell for several hundred dollars. Therefore, the relevant consumer in the present case “is a reasonably prudent consumer accustomed to shopping online.” Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010).
Turning to the second question, as MTM itself asserts, the labeling and appearance of the products for sale on Amazon’s web page is the most important factor in this case. This is because we have previously noted that clear labeling can eliminate the likelihood of initial interest confusion in cases involving Internet search terms. See, e.g., Playboy Enters. v. Netscape Communs. Corp., 354 F.3d 1020, 1030 n. 44 (9th Cir. 2004) (explaining that clear labeling “might eliminate the likelihood of initial interest confusion that exists in this case”); Network Automation, 638 F.3d at 1154 (same). Indeed, MTM itself argues: “The common thread of [the Ninth Circuit’s decisions in Brookfield, Playboy, and Network Automation ] is that liability under the Lanham Act can only be avoided as a matter of law where there is clear labeling to avoid the possibility of confusion — including initial interest confusion— resulting from the use of another’s trademark.” Thus, MTM agrees that summary judgment of its trademark claims is appropriate if there is clear labeling that avoids likely confusion.
Here, the products at issue are clearly labeled by Amazon to avoid any likelihood of initial interest confusion by a reasonably prudent consumer accustomed to online shopping. When a shopper goes to Amazon’s website and searches for a product using MTM’s trademark “mtm special ops,” the resulting page displays several products, all of which are clearly labeled with the product’s name and manufacturer in large, bright, bold letters and includes a photograph of the item. In fact, the manufacturer’s name is listed twice. For example, the first result is “Luminox Men’s 8401 Black Ops Watch by Luminox.” The second result is “Chase-Durer Men’s 246.4BB7-XL-BR Special Forces 1000XL Black Ionic-Plated Underwater Demolition Team Watch by Chase-Durer.” Because Amazon clearly labels each of the products for sale by brand name and model number accompanied by a photograph of the item, it is simply bizarre to suppose that a reasonably prudent .consumer accustomed to online shopping would be confused about the source of the goods.
MTM argues that initial interest confusion might occur because Amazon lists the search term used — here the trademarked phrase “mtm special'ops” — three times at the top of the search page. MTM argues that because Amazon lists the search term “mtm special ops” at the top of the page, a consumer might conclude that the products displayed are types of MTM watches. But, a review of Amazon’s search results page shows that such consumer confusion is highly unlikely. None of these products are labeled with the word “MTM” or the phrase “Special Ops,” let alone the specific phrase “MTM Special Ops.” Further, some of the products are not even watches. The sixth result is a book entitled “Survive!: The Disaster, Crisis and Emergency Handbook by Jerry Ahem.” The tenth result is a book entitled “The Moses Expedition: A Novel by Juan Gómez-Jura-do.” It is perplexing how one could assume that a book entitled “The Moses Expedition” is a type of MTM watch or is
The majority hypothesizes, without any evidence to support it, that a reasonable jury could infer that initial interest confusion is possible here because consumers might view these search results and wonder whether a competitor has acquired MTM or is otherwise affiliated with MTM. There is no evidence in the record that anyone, anywhere, has ever labored under the mistaken impression that Lummox or the other brands offered are in any way, shape, or form affiliated with MTM. Moreover, to establish likelihood of confusion, MTM must show that confusion is likely, not just possible. See Murray, 86 F.3d at 861.
MTM argues that in order to eliminate the likelihood of confusion, Amazon must change its search results page, so that it explains to customers that it does not offer MTM watches for sale before suggesting alternative watches to the customer. “No MTM, Luminox” is essentially what MTM says is required. I disagree. The search results page makes clear to anyone who can read English that Amazon only carries the brands of watches that are clearly and explicitly listed on the web page. The search results page is unambiguous.
In light of the clear labeling Amazon uses on its search results page, no reasonable trier of fact could conclude that Amazon’s search results page would likely confuse a reasonably prudent consumer accustomed to shopping online as to the source of the goods being offered. See Playboy, 354 F.3d at 1030 n. 44 (Clear labeling “might eliminate the likelihood of initial interest confusion that exists in this ease.”); Network Automation, 638 F.3d at 1154 (same). Therefore, summary judgment of MTM’s trademark claims was appropriate.
MTM attempts to argue that summary judgment of its claims is inappropriate because there are numerous factual disputes related to Amazon’s search results page. But, to the extent there are any factual disputes between the parties, none of them are material to the analysis. MTM cannot dispute the fact that the watches at issue all sell for hundreds of dollars. Therefore, as a matter of law, the relevant consumer would be a reasonably prudent consumer accustomed to shopping online. See Tabari 610 F.3d at 1176; Network Automation, 638 F.3d at 1152-53. Further, MTM cannot dispute the contents of the web page at issue. A review of Amazon’s web page shows that each product listed for sale is clearly labeled with the product’s name and manufacturer and a photograph, and none of the products are labeled with MTM’s mark. Thus, the undisputed facts show that it is highly unlikely that a reasonably prudent consumer accustomed to shopping online would be confused as to the source of the goods offered for sale on Amazon’s web page.
It is true that likelihood of confusion is often a question of fact, but not always. In a case such as this, where a court can conclude that the consumer confusion al
II.
In light of Amazon’s clear labeling of the products it carries, by brand name and model, accompanied by a photograph of the item, no rational trier of fact could possibly find that a reasonably prudent consumer accustomed to online shopping would likely be confused by the Amazon search results. I would hold that the district court correctly granted summary judgment in favor of Amazon, or as John Belushi might have put it, “No reversal. Affirm.”
. The eight-factor test from our decision in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), abrogated in part on other grounds as recognized in Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003).
. The eight Sleekcraft factors are: "1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant’s intent in selecting the mark; and 8. likelihood of expansion of the product lines.” 599 F.2d at 348-49.
Reference
- Full Case Name
- MULTI TIME MACHINE, INC., Plaintiff-Appellant, v. AMAZON.COM, INC.; Amazon Services, LLC, Defendants-Appellees
- Cited By
- 4 cases
- Status
- Published