An appeals court overturned a ruling that had let Amazon off the hook in a trademark-infringement case, and now it will be up to a jury to decide if Amazon confuses shoppers at the expense of a brand.
A three-judge panel of the Appeals Court of the Ninth Circuit heard arguments in April and held that a jury could find that Amazon had created a likelihood of confusion under an “initial interest confusion” theory by responding to a search request with a page showing “MTM Special Ops” three times above a search result displaying similar watches manufactured by MTM’s competitors.
MTM does not make its watches available for sale on Amazon and sued the marketplace in 2011 for its use of its brand.
One judge dissented, writing that because Amazon’s search result clearly labeled the name and manufacturer of each product offered for sale and even included photographs of the watches, no reasonably prudent shopper accustomed to shopping online would likely be confused as to the source of the products.
Interestingly the majority cited examples of Amazon practices that they said might provide a jury with insight as to Amazon’s “intent to confuse.” Here’s a quote from the footnote:
As of June 26, 2015, Amazon hosts a static webpage which states that “At Amazon.com, we not only have a large collection of mtm special ops watch products (which, of course, is flatly untrue), but also a comprehensive set of reviews from our customers. Below we’ve selected a subset of mtm special ops watch products and the corresponding reviews to help you do better research, and choose the product that best suits your needs.” Amazon.
As of the same date, when an Amazon shopper searches “mtm special ops,” under the search query playback he will see “9 results for “mtm special ops.”” Amazon.
Though unnecessary to our result, we think that a jury might find that these pages provide insight as to defendants’ intent to confuse (p. 18–19, infra) and thus give rise to an even greater likelihood of confusion than the earlier format used by Amazon.
Asked for comment, Amazon spokesperson Erik Fairleigh told EcommerceBytes, “We can’t comment on litigation.”
Courthouse News wrote up the case, and in relating the opinion of the dissenting judge who referenced a line from comedy sketch with actor John Belushi to explain his logic, the publication wrote:
In a 1978 “Saturday Night Live” sketch, Belushi played a waiter who responds to a customer’s request for Coca-Cola by saying, “No Coke. Pepsi.”
“Would anyone seriously contend that the diner violated Coke’s trademark by responding to the customer’s order that it doesn’t carry Coke, only Pepsi?” Silverman asked.
Clearly Coke is the MTM brand in this analogy, Pepsi is its competitors, and John Belushi is Amazon, telling customers it doesn’t carry MTM, but does carry other watches.
It’s also interesting to read what the Court had to say about Amazon’s search algorithm. “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.” It goes on to discuss the issue, and writes, ” 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.”
Courthouse News includes a link to the full opinion.