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Initial Interest Confusion: Initially Interesting, Ultimately Harmless?

Posted in Advertising, Civil Procedure, Infringement, Squirrelly Thoughts

In the market for sunglasses, I recently went to Amazon.com and searched for “Holbrook sunglasses.” HOLBROOK is, of course, a trademark of Oakley, Inc. – but I had no intention of purchasing Oakleys. Instead, I wanted a far cheaper pair of sunglasses based on that style, so I could more easily justify inevitably losing them. Was I a victim of self-inflicted “initial interest confusion”?

Initial interest confusion is a theoretical “subset” of trademark infringement, whereby infringement can occur “where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase.” In other words, under an IIC theory, a plaintiff could sustain a lawsuit based on source or affiliation confusion, even if that confusion was not the basis for the consumer’s ultimate decision to purchase the product.Screen Shot 2017-01-27 at 7.59.28 AM

At yesterday’s INTA Roundtable here at Winthrop, my colleagues and fellow practitioners discussed Multi Time Machine, Inc. v. Amazon.com, Inc. and Amazon Services LLC, 804 F.3d 930 (9th Cir. 2015), a case holding that Amazon is not liable for trademark infringement resulting from its search results – and rebuking an “initial interest confusion” theory.

Multi Time Machine, Inc., a maker of high-end watches, brought a trademark infringement action against Amazon.com, alleging that Amazon infringed its trademark because a search for “mtm special ops” on Amazon’s website returns search results for alternative products, including other watches. Multi Time Machine does not actually sell its own watches on Amazon.com, so only competitors’ products would be listed.

MTM argued that because a search for MTM Special Ops watches on Amazon displays watches manufactured by MTM’s competitors and does not inform the consumer that Amazon does not carry MTM watches, there is a likelihood of “initial interest confusion.” Namely, MTM argued that a consumer may be confused into thinking that a relationship exists between MTM and one of its competitors, as displayed in the Amazon search. Because of this initial confusion, MTM asserted, the consumer may choose to buy the competitor watch instead of continuing to seek out an MTM watch.

In a 2-1 majority decision, the panel affirmed the district court’s summary judgment in favor of Amazon, holding that Amazon’s search results page does not create a likelihood of confusion by displaying other brands’ watches.

INTA, for its part, recommends that courts adopt initial interest confusion as an actionable theory:

INTA recommends that courts recognize that the initial interest confusion doctrine is not separate from a likelihood of confusion analysis. It is simply a timing question as to when confusion occurs, which recognizes confusion that is dispelled before an actual sale occurs may be actionable. Courts should consider initial interest confusion claims, whether in brick and mortar cases or Internet cases, under traditional likelihood of confusion tests and should consider each element of such tests, as well as related defenses, based on the facts of each case.

Personally, I’m a bit skeptical of this particular theory of liability, and I’m certainly not alone in the trademark blog world. And perhaps the Ninth Circuit’s ruling is a step towards minimizing the scope of initial-interest liability.