Amazon.com Keeps on Ticking in 9th Circuit Reversal in Watch Maker Trademark Dispute
In a surprise move, a panel of the Ninth Circuit Court of Appeals withdrew its earlier decision in Multi Time Machine, Inc. v. Amazon.com and issued a new opinion holding that the online behemoth is not liable to specialty watch maker Multi Time Machine, Inc. (“MTM”) for trademark infringement.
MTM manufactures an assortment of military-style watches. One particular model—the MTM Special Ops Watch—was at issue in this case. MTM apparently does not sell the MTM Special Ops through Amazon.com. Nonetheless, if a consumer entered the search term “mtm special ops” in the search bar on Amazon, it would list a variety of other brands of military style watches that Amazon does carry. These other brands were identified by their brand names—Luminox, Invicta, and others—along with pictures of the products. Here’s an example of how the other brands would be displayed on the search results:
MTM brought suit claiming that these search results violated the Lanham Act because consumers could be confused into believing that these other brands were somehow affiliated with, sponsored by, or endorsed by MTM.
The trial court did not give MTM the time of day and entered summary judgment for Amazon.com, finding that no reasonable consumer would be confused by Amazon displaying competitive watches in response to a consumer’s search for an MTM watch.
Initially, the Ninth Circuit (in a 2-1 split with Judge Carlos Bea writing for the panel) was unpersuaded by Amazon’s “lack of likely confusion” argument and reversed the trial court finding that issues of fact precluded summary judgment. The Ninth Circuit originally grounded its decision in the concept of “initial interest confusion”—an oft’ criticized doctrine that many argue has no place any longer in the world of online commerce. Judge Silverman’s serious yet at times lighthearted dissent—that harkened back to the days of Saturday Night Live! with John Belushi—persuasively argued that only a “dolt” would be confused by these search results and that “unreasonable, imprudent and inexperienced web-shoppers” should not be the measuring stick by which Lanham Act claims are measured.
Judge Silverman’s dissent won out and became the majority opinion (sans the prior references to John Belushi) with the Ninth Circuit now holding:
“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 find that a reasonably prudent consumer accustomed to shopping online would likely be confused by the Amazon search results.”
Is “initial interest” still alive and well in the Ninth Circuit? Hard to know for certain, but it’s time may be running out.