{"id":18661,"date":"2018-05-01T10:24:06","date_gmt":"2018-05-01T17:24:06","guid":{"rendered":"https:\/\/blog.ericgoldman.org\/?p=18661"},"modified":"2018-05-01T10:27:50","modified_gmt":"2018-05-01T17:27:50","slug":"another-court-says-competitive-keyword-advertising-doesnt-cause-confusion","status":"publish","type":"post","link":"https:\/\/blog.ericgoldman.org\/archives\/2018\/05\/another-court-says-competitive-keyword-advertising-doesnt-cause-confusion.htm","title":{"rendered":"Another Court Says Competitive Keyword Advertising Doesn’t Cause Confusion"},"content":{"rendered":"

This is a lawsuit between two Alzheimer’s-related non-profit organizations, the Alzheimer’s Association (the more established and better-funded group) and the Alzheimer’s Foundation (the relative upstart). I blogged a prior 2015 ruling<\/a>.<\/p>\n

The potential for brand collisions in consumers’ minds seems obvious. For example, “Between 2007 and 2012, Alzheimer\u2019s Association received more than 5,700 checks made payable to \u201cAlzheimer\u2019s Foundation\u201d or a variant totaling over $1.5 million…AFA, in turn, received more than 5,000 checks between 2006 and June 2016 made payable to \u201cAlzheimer\u2019s Association\u201d or near variants.””<\/p>\n

Both parties used competitive keyword advertising. The court describes the situation in some detail:<\/p>\n

From June 2004 to the present, AFA has also purchased Association Marks as keywords. By late 2007, AFA was frequently purchasing \u201calzheimers association\u201d and variants as search keywords. For part of this time – April 2012 to June 2014 – AFA ran sponsored ads that used the word \u201cAssociation\u201d in the text. After correspondence from the Association\u2019s counsel, AFA discontinued the use of the word \u201cAssociation\u201d in the content of its ads, however AFA continues to purchase Association Marks as keywords and to advertise itself as \u201cAlzheimer\u2019s Foundation\u201d in responsive ads.<\/p>\n

The Association began its own keyword marketing program in April 2007. The Association spent approximately $150,000 annually on keyword advertising in 2015-16, but also utilized Google Grants for an additional $480,000 of keyword advertising. Initially, the Association purchased \u201cAlzheimer\u2019s Foundation\u201d as a keyword, but all foundation-related keywords were removed from the Association\u2019s SEM in August 2010. The Association did not believe it was acting improperly in purchasing foundation-related keywords….In August 2016, AFA\u2019s trademark counsel wrote to the Association to complain that Alzheimer\u2019s Association\u2019s Northern California and Northern Nevada chapter had purchased \u201cAlzheimer\u2019s Foundation\u201d as a keyword and displayed resulting advertising text with \u201cAlzheimer\u2019s Foundation\u201d in the title. The chapter had recently merged with the Alzheimer\u2019s Association, and upon receipt of the letter, the chapter discontinued purchase of the keyword.<\/p>\n

Presently, one of the at-issue ads run by AFA might show \u201cAlzheimer\u2019s Foundation\u201d in the ad title, in standard typeface without any graphic element, followed by the associated website URL and a brief description or tagline. For example, as can be seen below, a Google search of \u201calzheimer\u2019s association\u201d from June 2014 shows AFA\u2019s ad as the top result, with the main header as \u201cAlzheimer\u2019s Foundation – alzfdn.org\u201d followed by a yellow marker reading \u201cad,\u201d the URL \u201cwww.alzfdn.org\u201d and a tagline of \u201cAn Association of Care and Support. Reach Out to Us for Help….<\/em>\u201d The advertisement also contains links to pages within AFA\u2019s website for those looking to \u201cMake a Donation,\u201d to learn \u201cAbout AFA,\u201d or to \u201cReach Out to Us for Help.\u201d Id.<\/em> The second and only other ad result is from the Association. Their header reads \u201calz.org – Alzheimer\u2019s Association,\u201d is also followed by the yellow \u201cad\u201d marker and the URL for their donation page, \u201cwww.alz.org\/donate.\u201d The Association\u2019s tagline was \u201cHonor a Loved One with a Tribute Donation – Support Research & Care\u201d and included links to subtopics on their website…. [the court included the following screenshot, showing the foundation and association ads at the page top, plus many organic links for the association]<\/p><\/blockquote>\n

\"alzheimers-ad\"<\/a><\/p>\n

Purchasing keywords such as \u201cAlzheimer\u2019s Association\u201d was part of the AFA\u2019s so-called competitors campaign. In October 2011, Chris Leone, AFA\u2019s SEO consultant, recommended increasing the daily budget for the competitor\u2019s campaign, and AFA agreed. At times, the keyword \u201cAlzheimer\u2019s Association\u201d received more clicks on AFA\u2019s sponsored ad than those received from its own brand. In early 2012, Mr. Leone reported that campaigns targeting AFA\u2019s competitors performed the best. The competitors campaign comprised roughly 40% of AFA\u2019s keyword marketing budget. AFA also worked with a vendor named Vizions on an SEO plan involving keywords such as \u201calzheimers association,\u201d but there is no specific evidence in the record that AFA adopted Vizions\u2019 recommendations….<\/p>\n

At trial, Mr. Leone opined that the \u201ccommon strategy\u201d of competitor-targeted ads was effective here because \u201cAlzheimer\u2019s Association is the larger organization\u201d and \u201cif someone is searching for Alzheimer\u2019s Association, which they are frequently, then we\u2019re providing a[n] ad as another option for them. It is the same thing that most competitors do.\u201d…<\/p>\n

In order to make an online donation to AFA, a consumer could not simply enter a keyword or click on an online ad, but would have to visit AFA\u2019s website. If after looking at AFA\u2019s website, a computer user determines that AFA is not the entity to which she wants to donate, the user can click back to return to her original screen page. To continue on to the donation page, a user would have to click on \u201cDonate\u201d or \u201cSupport Us\u201d within the AFA website. On the donation page, there are many references to \u201cAFA\u201d or \u201cAlzheimer\u2019s Foundation of America,\u201d and no references to the Association or use of any the Association Marks. At no point while on the AFA website during the donation process would a consumer see any of the Association Marks. A similar multi-step process would be required to make an online donation to the Association….<\/p>\n

It would strain credulity to deny that AFA has purchased Association Marks as keywords in part due to the Association\u2019s size and presence and not only because of the descriptive nature of the words.<\/p><\/blockquote>\n

The association sought to prevent the foundation from buying the association’s trademarks as search engine keywords. The lawsuit has been ongoing since 2010 (with prior litigation going back to 2007). The court held a 6 day bench trial.<\/p>\n

The Court Ruling<\/strong><\/p>\n

Use in Commerce.\u00a0<\/em>The court says keyword advertising constitutes a use in commerce, citing Rescuecom v. Google<\/a>, CJ Products v. Snuggly Plushez<\/a>, LBF Travel v. Fareportal<\/a>, and Allied Interstate v. Kimmel & Silverman<\/a>.<\/p>\n

Initial Interest Confusion<\/em>. The court says competitive keyword advertising, by itself, isn’t infringing: “Virtually no court has held that, on its own, a defendant\u2019s purchase of a plaintiff\u2019s mark as a keyword term is sufficient for liability.” Cites to: 1-800 Contacts v. Lens.com<\/a>, General Steel v. Chumley (2013)<\/a>, and Hearts on Fire v. Blue Nile<\/a>.<\/p>\n

The court defines its conception of initial interest confusion:<\/p>\n

because a user diverted to the wrong website can easily get \u201cback on track,\u201d the Second Circuit has also expected a plaintiff prove \u201cintentional deception\u201d to prevail in an initial interest confusion case in the internet context. [cite to the Second Circuit’s 2004 Savin case]<\/p><\/blockquote>\n

The task of distinguishing between situations that are and are not actionable as initial interest confusion may be best illustrated by two scenarios. The first is a pure bait and switch scenario, which is clearly actionable. For example, if AFA had purchased Association Marks as keywords and then advertised itself as \u201cAlzheimer\u2019s Association,\u201d with nothing in its ad to distinguish itself from the Association aside from its URL, this would be a clear case of infringement. By contrast, comparison ads are not violations of the Lanham Act because it is clear to consumers that the plaintiff\u2019s mark is only being used as a point of contrast. For example, if Pepsi were to purchase the keyword \u201cCoca-Cola\u201d and then publish an ad with the headline \u201cTry Pepsi – It Is Better than Coca-Cola,\u201d it would be the rare consumer confused by the source of the advertisement; The consumer searching for \u201cCoca-Cola\u201d may have been diverted, but she has not been confused or misled. The sine qua non<\/em> of trademark infringement is consumer confusion caused by the infringing behavior, and behavior meant to harm a competitor does not necessarily entail infringement if a consumer is unlikely to be confused. For this reason, courts have repeatedly found that the purchase of a competitor\u2019s marks as keywords alone, without additional behavior that confuses consumers, is not actionable.\u00a0As one district court in Massachusetts framed the issue: \u201cMere diversion, without any hint of confusion, is not enough.\u201d\u00a0Court subscribes to that approach.<\/p>\n

Thus, for the purpose of the Court\u2019s analysis – which principally focuses on initial interest confusion – the crucial question is whether AFA\u2019s actions in purchasing Association Marks as keywords and advertising itself under its two-word name are more akin to a bait-and-switch likely to confuse consumers, or to the simple act of offering consumers a choice.<\/p><\/blockquote>\n

Likelihood of Consumer Confusion.\u00a0<\/em>The court doesn’t evaluate initial interest confusion by itself. Instead, the court\u00a0frames the issue: “Are AFA\u2019s actions in purchasing Association Marks as keywords and advertising itself as ‘Alzheimer\u2019s Foundation’ likely to cause consumer confusion?” and applies the standard Polaroid multi-factor likelihood of consumer confusion test.<\/p>\n