Plaintiff and Defendant are competitors. Defendant published numerous references to Plaintiff (including news of legal troubles and consumer complaints) such that Defendant sometimes appeared as the first hit when Plaintiff’s name was used as a search term. The reference in the search engine was (accurately) labeled as “complaints about plaintiff.” Plaintiff brought false advertising claims and also argued “initial interest confusion.” Users looking for plaintiff’s site would find their way to defendant’s site, and not “take the trouble” to navigate back to plaintiff (or as the Sevent Circuit once put it: “Those who window shop, linger to buy.”).
On reconsideration, the North District of California has reversed the injunction based on trademark law. The defendant met the three part test – used the mark to accurately describe plaintiff; reproduced the mark only to the extent necessary to identify plaintiff; and did not cause confusion. (See a recent previous Ninth Circuit fair use analysis here).
This is an important case regarding how use of another’s trademark affects Internet navigation. Commentary from EFF here. Read the case slowly and carefully. J.K. Harris v. Kassell, No. 02-0400 CW (N.D. Cal March 28, 2003).