Trademarks and the World Wide Web and Trade Dress in Mobile Tech

IM 350: Intellectual Property Law and New Media

Oct. 6, 2015Steve Baron

• Cited in the dissent in Multi Time Machine v. Amazon.com

• https://screen.yahoo.com/olympia-restaurant-000000640.html

Agenda

• A new look at “initial interest confusion” in online retail

• Another look at Apple v. Samsung and Apple’s trade dress claims

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• MTM makes “Special Ops” watches• MTM own tm in MTM SPECIAL OPS• Amazon does not sell MTM’s watches• Unlike Amazon’s competitors, when users

search for MTM Special Ops watches on Amazon, Amazon does not state that it does not carry the watches

• Amazon displays Luminox and Chase-Durer watches

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• “MTM Special Ops” appears on Amazon:– In search field– In quotation marks immediately below search field– In the phrase “Related Searches: MTM special ops

watch”– On a static page stating, “At Amazon.com, we not

only have a large collection of mtm special ops watch products, but also a comprehensive set of reviews from our customers.”

– Amazon uses behavior based search (BBS) technology

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• MTM sues Amazon.com for infringement• District Court finds no likelihood of confusion

and grants summary judgment for Amazon• MTM appeals to Ninth Circuit

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• From labeling or failure to label, a jury could infer:– users who are confused by the search results are confused as to

why MTM products are not listed. – users who are confused by the search result will wonder whether a

competitor has acquired MTM or is otherwise affiliated with or approved by MTM.

• A customer might think that MTM and Luminox are manufactured by the same parent company.

• The possibility of initial interest confusion here is likely much higher than if, for instance, a customer using an online grocery website typed “Coke” and only Pepsi products were returned as results.”

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• Factors that influence likelihood of confusion:1. Strength of mark2. Proximity or relatedness of goods3. Similarity of marks4. Evidence of actual confusion5. Marketing channels6. Degree of consumer care7. Defendant’s intent8. Likelihood of expansion

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• Factors that influence likelihood of confusion:1. Strength of mark (Jury should assess)2. Proximity or relatedness of goods (Jury should

assess)3. Similarity of marks4. Evidence of actual confusion (Jury should assess)5. Marketing channels6. Degree of consumer care (Jury should assess)7. Defendant’s intent (Jury should assess)8. Likelihood of expansion

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• Use of a trademark as a search engine keyword that triggers the display of a competitor’s advertisement is “use in commerce”

Multi Time Machine v. Amazon.comNo. 13-55575 (Ninth Cir. 2015)

• Implications of ruling:– On line big-box retailers must exercise greater care

in informing users about products they carry and don’t carry.

– Use of BBS technology algorithms is not illegal, but a retailer must be able to disclose whether it sells the merchandise and not simply forward users who are searching for “X” over to “Y”

Trademark Reg. 3470983• The mark consists of the configuration of a rectangular handheld mobile digital electronic device with

rounded silver edges, a black face, and an array of 16 square icons with rounded edges. The top 12 icons appear on a black background, and the bottom 4 appear on a silver background. The first icon depicts the letters "SMS" in green inside a white speech bubble on a green background; the second icon is white with a thin red stripe at the top; the third icon depicts a sunflower with yellow petals, a brown center, and a green stem in front of a blue sky; the fourth icon depicts a camera lens with a black barrel and blue glass on a silver background; the fifth icon depicts a tan television console with brown knobs and a gray-green screen; the sixth icon depicts a white graph line on a blue background; the seventh icon depicts a map with yellow and orange roads, a pin with a red head, and a red-and- blue road sign with the numeral "280" in white; the eighth icon depicts an orange sun on a blue background, with the temperature in white; the ninth icon depicts a white clock with black and red hands and numerals on a black background; the tenth icon depicts three brown-gray circles and one orange circle on a black background with a white border, with the mathematical symbols for addition, subtraction, multiplication, and the equal sign displayed in white on the circles; the eleventh icon depicts a portion of a yellow notepad with blue and red ruling, with brown binding at the top; the twelfth icon depicts three silver gears over a thatched black-and-silver background; the thirteenth icon depicts a white telephone receiver against a green background; the fourteenth icon depicts a white envelope over a blue sky with white clouds; the fifteenth icon depicts a white compass with a white- and-red needle over a blue map; the sixteenth icon depicts the distinctive configuration of applicant's media player device in white over an orange background.

The Apple “SMS” Trade Dress

Apple also claims unregistered trade dress

• a rectangular product with four evenly rounded corners;• a flat, clear surface covering the front of the product;• a display screen under the clear surface;• substantial black borders above and below the display screen

and narrower black borders on either side of the screen; and• when the device is on, a row of small dots on the display

screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set offfrom the display’s other icons.

Apple v. Samsung2014-1335, 2015-1029 (Fed. Cir. 2015)

• Trade dress cannot be “functional”• Four factors:

(1) whether the design yields a utilitarian advantage, (2) Whether alternative designs are available, (3) whether advertising touts the utilitarian

advantages of the design, and(4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.

Apple v. Samsung2014-1335, 2015-1029 (Fed. Cir. 2015)

• Federal Circuit rules for Samsung and says:• Four factors:

(1) iPhone design yields a utilitarian advantage, (2) Alternative designs to iPhone did not provide

exactly the same features, (3) Apple’s advertising touts the utilitarian advantages

of the design of the iPhone, and(4) Apple points to no evidence to show the particular design results from a comparatively simple or inexpensive method of manufacture.