Amazon Search Results Unlikely to Cause Confusion as a Matter of Law: Ninth Circuit | Practical Law

Amazon Search Results Unlikely to Cause Confusion as a Matter of Law: Ninth Circuit | Practical Law

In Multi Time Machine, Inc. v. Amazon.com, Inc., the US Court of Appeals for the Ninth Circuit affirmed the district court's grant of summary judgment in favor of Amazon.com, Inc., holding that Amazon's search results page displaying only similarly-styled products of plaintiff's competitors is unlikely to cause initial interest confusion as a matter of law because the products are clearly labeled as the competitors' products.

Amazon Search Results Unlikely to Cause Confusion as a Matter of Law: Ninth Circuit

Practical Law Legal Update 7-619-6653 (Approx. 4 pages)

Amazon Search Results Unlikely to Cause Confusion as a Matter of Law: Ninth Circuit

by Practical Law Intellectual Property & Technology
Published on 22 Oct 2015 • USA (National/Federal)
In Multi Time Machine, Inc. v. Amazon.com, Inc., the US Court of Appeals for the Ninth Circuit affirmed the district court's grant of summary judgment in favor of Amazon.com, Inc., holding that Amazon's search results page displaying only similarly-styled products of plaintiff's competitors is unlikely to cause initial interest confusion as a matter of law because the products are clearly labeled as the competitors' products.
On October 21, 2015, the US Court of Appeals for the Ninth Circuit withdrew its July 6, 2015 opinion in Multi Time Machine, Inc. v. Amazon.com, Inc., and filed a new opinion affirming the US District Court for the Central District of California's grant of summary judgment ( (9th Cir. Oct. 21, 2015)). The Ninth Circuit held that Multi Time Machine, Inc.'s (MTM's) mark, MTM SPECIAL OPS, was not infringed when Amazon.com, Inc.'s search results page displayed only third-party watch brands.
MTM sells expensive military-style watches either directly to its customers, or through authorized retailers. In an effort to maintain an image of high-end exclusivity, MTM does not sell its watches on Amazon.com, nor does it permit its distributors to sell the watches anywhere but on their own retail sites. When a customer searches on Amazon.com for "MTM Special Ops", a popular MTM watch, the search results page does not indicate that MTM watches are unavailable through Amazon, but instead simply lists other brands of military-style watches that are available for purchase on the site.
MTM filed suit against Amazon, alleging Amazon's search results page infringes its trademarks in violation of the Lanham Act. The district court applied the eight-factor test set out in AMF Inc. v. Sleekcraft Boats, and granted Amazon's motion for summary judgment, finding Amazon's search results create no likelihood of confusion (599 F.2d 341 (9th Cir. 1979)).
On appeal, MTM argued that:
  • The appearance of the "MTM Special Ops" search term and other references to the mark at the top of the search results page is likely to confuse consumers, at least initially, to think that the competitor products in the search results are offered by or affiliated with MTM.
  • Like Amazon's competitor websites Buy.com and Overstock.com, Amazon should state at the top of its search results page that it does not sell MTM watches before listing the competitor products.
  • Summary judgment was inappropriate because a jury should determine whether the labeling and appearance of the search results are likely to cause confusion.
Rather than focusing on the eight-factor Sleekcraft test, which the Ninth Circuit noted was not particularly useful as the present case involved competing brands without similar trademarks, it instead focused on the threshold question of whether a reasonably prudent consumer in the marketplace is likely to be confused by Amazon's search results. Citing other Ninth Circuit authorities for their holdings that, as a matter of law, initial interest confusion can be avoided with clear labeling, the court concluded there was no likelihood of confusion because:
  • Consumers looking to purchase expensive MTM watches would be reasonably prudent and accustomed to shopping online.
  • Amazon's clear labeling of the alternative watches with the brand name, model number, and photograph is unambiguous and will prevent confusion among reasonably prudent consumers regarding the source of the listed products.
  • Amazon's search results page includes non-watch products, making it even less likely that consumers could be confused.
  • Any consumers that are confused would be unreasonable, imprudent, and inexperienced web shoppers and are irrelevant to the likelihood of confusion analysis.
In a vigorous dissent by the author of the initial, withdrawn majority opinion, Circuit Judge Bea argued:
  • The overall function and presentation of the search results page may well confuse shoppers seeking an MTM watch into thinking that a competitor acquired MTM or is otherwise affiliated with MTM because:
    • many luxury brands are produced by manufacturers of lower-priced brands; and
    • unlike other retailer sites, Amazon fails to notify consumers that it does not sell MTM watches.
  • MTM at least created a genuine question of fact sufficient to withstand summary judgment as to whether the "clear labeling" will prevent a likelihood of confusion.
  • The majority usurped the jury's function by determining there was no likelihood of confusion as a matter of law.
  • The court effectively overruled the Ninth Circuit's "initial interest confusion" doctrine.