Petition for Writ of Certiorari — Dires, LLC, dba Personal Touch Beds and Personal Comfort Beds, et al., Petitioners v. Select Comfort Corporation, et al.
Supreme Court briefAug 11, 2021
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No.
In the
Supreme Court
of the United States
______________
DIRES, LLC,
SCOTT STENZEL, AND CRAIG MILLER,
vs.
Petitioners,
SELECT COMFORT CORPORATION AND
SELECT COMFORT SC CORPORATION,
______________
Respondents.
On Petition for a Writ of Certiorari
to the United States Circuit Court of Appeals
for the Eighth Circuit
______________
PETITION FOR A WRIT OF CERTIORARI
______________
CHRISTOPHER W. MADEL
Counsel of Record
JENNIFER M. ROBBINS
CASSANDRA B. MERRICK
(MN#396372)
MADEL PA
800 Hennepin Avenue
Suite 800
Minneapolis, MN 55403
(612) 605-0630
cmadel@madellaw.com
AUGUST 11, 2021
Counsel for Petitioners
2021 - Bachman Legal Printing n (612) 339-9518 n Fax (612) 337-8053
i
QUESTION PRESENTED
Trademark infringement claims are intended to
ensure consumers are not confused as to the source of
goods; indeed, the consumers’ best interests lie at the
heart of the policy underpinning trademark law. Two
decades ago, as courts grappled with the application of
trademark law to the new Internet context, a minority
of federal courts of appeals adopted a doctrine known
as “initial interest confusion.” Pre-sale, initial interest
confusion as adopted here could impose liability for
trademark infringement that occurs when a consumer
first sees a mark online, even if the consumer does not
ultimately make a purchase while confused as to
source. For example, liability may be imposed based
simply on results returned by a search engine where
no purchase is made and where no sale is lost—i.e.,
there is no concrete harm. In the intervening years
since its initial adoption, this doctrine has fallen out of
favor and been sharply criticized as out of touch with
how consumers use search engines. It assumes that a
consumer’s search for a trademarked name means
that trademark owner’s website is the only result of
interest to the consumer—an assumption that is both
outdated and inaccurate. Nonetheless, the Eighth
Circuit adopted this doctrine for the first time—
despite that it has been rejected by the First, Fourth,
and Eleventh Circuits and narrowed by every Circuit
that recognizes it—holding that a defendant may be
liable for a likelihood of consumer confusion outside
the mark’s full context in a consumer’s purchasing
decision.
The question presented is: whether courts can
impose liability for a likelihood of consumer confusion
in a trademark infringement action based on a
ii
consumer’s initial interest in a mark, even where that
consumer is not confused as to source at the time the
consumer executes a purchase.
iii
PARTIES TO THE PROCEEDING
Petitioners are Dires, LLC (doing business as
Personal Comfort Bed), Scott Stenzel, and Craig
Miller. They were defendants in the District Court and
defendants/cross-appellants in the Court of Appeals.
Respondents are Select Comfort Corporation
and Select Comfort SC Corporation. Respondents were
plaintiffs
in
the
District
Court
and
plaintiffs/appellants in the Court of Appeals.
John Baxter was a defendant in the District
Court and defendant/cross-appellant in the Court of
Appeals.
Digi Craft Agency, LLC and Direct Commerce,
LLC (doing business as Personal Touch Bed), were
defendants in the District Court.
iv
CORPORATE DISCLOSURE STATEMENT
Pursuant to Supreme Court Rule 29.6,
Petitioner Dires, LLC, discloses that Number Bed
Holdings, LLC, is its parent corporation. No publicly
held corporation owns 10% or more of its stock.
v
STATEMENT OF RELATED PROCEEDINGS
There are no proceedings in state or federal trial
or appellate courts, or in this Court, directly related to
this case within the meaning of this Court’s Rule
14.1(b)(iii).
vi
TABLE OF CONTENTS
QUESTION PRESENTED......................................... i
PARTIES TO THE PROCEEDING .......................... iii
CORPORATE DISCLOSURE STATEMENT .......... iv
STATEMENT OF RELATED PROCEEDINGS ....... v
TABLE OF AUTHORITIES ...................................... ix
PETITION FOR WRIT OF CERTIORARI ................ 1
OPINIONS BELOW ................................................... 3
JURISDICTION ......................................................... 3
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED ........................................ 4
STATEMENT OF THE CASE ................................... 4
REASONS FOR GRANTING THE PETITION ........ 6
I.
II.
III.
The Court Should Grant Review To Resolve
The Split Between The Circuits Regarding
Recognition Of Initial Interest Confusion In
Online Advertising ..................................... 7
The Court Should Grant Review To
Consider The Breadth Of The Formulation
Of Initial Interest Confusion Adopted By
The Eighth Circuit ..................................... 9
Consumers’ Interest In Useful Online
Advertising Requires Reconsideration Of
The Doctrine Of Initial Interest
Confusion .................................................. 14
CONCLUSION ......................................................... 18
APPENDIX
vii
Appendix A
Opinion, United States Court of Appeals for the
Eighth Circuit, Select Comfort Corporation;
Select Comfort SC Corporation v. John Baxter;
Dires, LLC, doing business as Personal Touch
Beds and Personal Comfort Beds; Digi Craft
Agency, LLC; Direct Commerce, LLC, doing
business as Personal Touch Beds; Scott Stenzel;
Craig Miller, Nos. 19-1077, 19-1113, 19-1178
(May 11, 2021) ................................................ A-1
Appendix B
Judgment, United States Court of Appeals for
the Eighth Circuit; Select Comfort Corporation;
Select Comfort SC Corporation v. John Baxter;
Dires, LLC, doing business as Personal Touch
Beds and Personal Comfort Beds; Digi Craft
Agency, LLC; Direct Commerce, LLC, doing
business as Personal Touch Beds; Scott Stenzel;
Craig Miller, Nos. 19-1077, 19-1113, 19-1178
(May 11, 2021) .............................................. A-31
Appendix C
Memorandum Opinion and Order, United States
District Court District of Minnesota, Select
Comfort Corporation; Select Comfort SC
Corporation v. John Baxter; Dires, LLC d/b/a
Personal Touch Beds and Personal Comfort
Beds; Digi Craft Agency, LLC; Direct Commerce,
LLC d/b/a Personal Touch Beds; Scott Stenzel;
and Craig Miller, No. 12-cv-2899 (DWF/SER)
(Jan. 13, 2016) .............................................. A-34
Appendix D
Order, United States Court of Appeals for the
Eighth Circuit, Select Comfort Corporation;
viii
Select Comfort SC Corporation v. John Baxter;
Dires, LLC, doing business as Personal Touch
Beds and Personal Comfort Beds; Digi Craft
Agency, LLC; Direct Commerce, LLC, doing
business as Personal Touch Beds; Scott Stenzel;
Craig Miller, Nos. 19-1077, 19-1113, 19-1178
(May 11, 2021) .............................................. A-80
Appendix E
Memorandum Opinion and Order, United States
District Court District of Minnesota, Select
Comfort Corporation; Select Comfort SC
Corporation v. John Baxter; Dires, LLC d/b/a
Personal Touch Beds and Personal Comfort
Beds; Digi Craft Agency, LLC; Direct Commerce,
LLC d/b/a Personal Touch Beds; Scott Stenzel;
and Craig Miller, No. 12-cv-2899
(DWF/SER) ................................................... A-83
Appendix F
Relevant Constitutional and Statutory
Provisions.................................................... A-125
U.S. Const. art. III, §§1-2 ........................... A-125
15 U.S.C § 1125(a), The Lanham Act ........ A-126
ix
TABLE OF AUTHORITIES
CASES
1-800 Contacts, Inc. v. Lens.com, Inc.,
722 F.3d 1229 (10th Cir. 2013) ................. 13, 14, 15
Ascentive, LLC v. Opinion Corp.,
842 F. Supp. 2d 450 (E.D.N.Y. 2011) ................ 9, 15
Australian Gold v. Hatfield,
436 F.3d 1228 (10th Cir. 2006) ............................. 13
Brookfield Commc'ns, Inc. v. W. Coast Ent. Corp.,
174 F.3d 1036 (9th Cir. 1999) ................................. 9
Concordia Partners, LLC v. Pick,
No. 2:14-CV-009-GZS, 2015 WL 4065243
(D. Me. July 2, 2015) ............................................... 7
Ducks Unlimited, Inc. v. Boondux, LLC,
No. 214CV02885SHMTMP, 2017 WL 3579215
(W.D. Tenn. Aug. 18, 2017) ............................. 12, 13
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP,
423 F.3d 539 (6th Cir. 2005) ........................... 12, 13
Hearts on Fire Co., LLC v. Blue Nile, Inc.,
603 F.Supp.2d 274 (D. Mass. 2009) .................. 7, 15
Kemp v. Bumble Bee Seafoods, Inc.,
398 F.3d 1049 (8th Cir. 2005) ............................... 17
Lamparello v. Falwell,
420 F.3d 309 (4th Cir. 2005) ................................... 7
x
Moore v. Doe,
No. CV 20-6569-DMG (SPX), 2020 WL 6804508
(C.D. Cal. Oct. 13, 2020) ........................................ 12
Moving & Storage, Inc. v. Panayotov,
No. CIV.A. 12-12262-GAO, 2014 WL 949830
(D. Mass. Mar. 12, 2014) ......................................... 7
Network Automation, Inc. v. Advanced Sys.
Concepts, Inc.,
638 F.3d 1137 (9th Cir. 2011) ............. 10, 11, 12, 17
NSM Res. Corp. v. Target Corp.,
636 F. Supp. 2d 857 (D. Minn. 2008) .................... 17
Passport Health, LLC v. Avance Health Sys., Inc.,
823 F. App’x 141 (4th Cir. 2020), as amended
(Aug. 17, 2020) ..................................................... 7, 8
Playboy Enters. v. Netscape Commc'ns Corp.,
354 F.3d 1020 (9th Cir. 2004) ............................... 10
Savin Corp. v. Savin Grp.,
391 F.3d 439 (2d Cir. 2004) ................................... 12
Sensient Techs. Corp. v. SensoryEffects Flavor Co.,
613 F.3d 754 (8th Cir. 2010) ................................... 7
Sleepmaster Prods. Co. v. Am. Auto-Felt Corp.,
241 F.2d 738 (C.C.P.A. 1957) ................................ 17
Smartling, Inc. v. Skawa Innovation Ltd.,
358 F. Supp. 3d 124 (D. Mass. 2019) ...................... 7
Suntree Techs., Inc. v. Ecosense Int’l, Inc.,
693 F.3d 1338 (11th Cir. 2012) ............................... 8
xi
Toyota Motor Sales v. Tabari,
610 F.3d 1171 (9th Cir. 2010) ................... 11, 12, 15
Transunion v. Ramirez,
141 S. Ct. 2190 (2021) ........................................... 14
USA Nutraceuticals Grp., Inc. v. BPI Sports, LLC,
165 F. Supp. 3d 1256 (S.D. Fla. 2016) .................... 8
Vital Pharm., Inc. v. Am. Body Bldg. Products, LLC,
511 F. Supp. 2d 1303 (S.D. Fla. 2007) ................ 8, 9
OTHER AUTHORITIES
Brad Tuttle, 8 Amazing Things People Said When
Online Shopping Was Born 20 Years Ago, MONEY
(Aug. 15, 2014), https://money.com/onlineshopping-history-anniversary ................................. 2
Eric Goldman, Deregulating Relevancy in Internet
Trademark Law, 54 EMORY L. J. 507, 509 (2005),
http://digitalcommons.law.scu.edu/
facpubs/68. ....................................................... 16, 17
Eric Goldman, Eighth Circuit Embraces the Initial
Interest Confusion Doctrine. What??? UGH. No.
Why??? – Select Comfort v. Baxter, TECHNOLOGY &
MARKETING LAW BLOG
https://blog.ericgoldman.org/archives/2021/05/eight
h-circuit-embraces-the-initial-interest-confusiondoctrine-what-ugh-no-why-select-comfort-vbaxter.htm (May 13, 2021) .................................... 10
FCC News Release, High-Speed Connections to the
Internet Increased 63% During the Second Half of
2000 for a Total of 7.1 Million Lines in Service
xii
(Aug. 9, 2001),
https://transition.fcc.gov/Bureaus/Common_Carrier
/News_Releases/2001/nrcc0133.html. ..................... 2
Michael Grynberg, Trademark Litig. as Consumer
Conflict, 86 N.Y.U.L.REV. 60 (2008) ................. 9, 10
1
PETITION FOR WRIT OF CERTIORARI
Relying on decades-old case law, the U.S. Court
of Appeals for the Eighth Circuit, for the first time,
adopted pre-sale “initial interest confusion,” a
formulation of trademark infringement that could
vastly increase potential liability for online marketing
regardless of any actual concrete harm. The decision
conflicts with precedent from other Courts of Appeals
in Lanham Act cases; it revives a doctrine that has
otherwise fallen out of favor around the country as
Internet searches have become increasingly
ubiquitous; it increases the chances for forumshopping; and it undermines this Court’s requirement
that a plaintiff demonstrate concrete harm. The Court
should grant review to clarify requirements for
liability in Lanham Act cases in the context of online
advertising—one of the most critical activities for
many businesses today—and to ensure correct
application of Article III standing principles.
Initial interest confusion under the Lanham Act
relates to when potential consumer confusion between
two marks is actionable. The district court in this case
concluded that plaintiff needed to show that
consumers were confused about the source of the goods
at issue—expensive, air adjustable beds, sometimes
called “number beds”—at the time they made a
purchase from defendant, having experienced the full
context of the mark. Practically speaking, this meant
plaintiff would need to show confusion as to source at
the time a consumer executed a purchase of a mattress
from defendant either online or over the phone.
In reversing, the Eighth Circuit made displayed
search engine results, with no further step taken by
the consumer (such as purchasing a product),
2
potentially actionable. Instead of adducing liability in
the complete context of trademark usage—including
its appearance in search results, followed by a
consumer’s decision to click on defendant’s
advertising, and the actual website that the link
brought the consumer to—the Eighth Circuit held that
liability could potentially be found for pre-sale
confusion based on search engine results alone.
This decision eschews decades of learning about
the application of initial interest confusion in Internet
marketing. In recent years, courts have been criticized
for expanding this form of pre-sale confusion into
Internet cases, where the potential so-called harm to a
consumer is as slight as clicking a “back” button on a
browser. Indeed, the only cases cited by the Eighth
Circuit supporting its recognition of initial interest
confusion date back twenty years or more. A-9–10; A16. Internet marketing practices—and consumers’
level of sophistication in that context—have changed
dramatically from that time when the majority of
Americans did not have the Internet, dial-up
connections (or “DSL”) were considered “high-speed,”1
and online shopping was new, required a modem
(which had to be explained to people), and it was
“assumed that advertising would ruin everything.”2
Further, the Eighth Circuit ignores the reality of
consumers’ interaction with brands online; while
consumers may use a search engine to search for a
FCC News Release, High-Speed Connections to the Internet
Increased 63% During the Second Half of 2000 for a Total of 7.1
Million
Lines
in
Service
(Aug.
9,
2001),
https://transition.fcc.gov/Bureaus/Common_Carrier/News_Relea
ses/2001/nrcc0133.html.
1
Brad Tuttle, 8 Amazing Things People Said When Online
Shopping Was Born 20 Years Ago, MONEY (Aug. 15, 2014),
https://money.com/online-shopping-history-anniversary.
2
3
brand name (e.g., Winnebago), they might be
interested in or satisfied with results relating to any
brand (e.g., other recreational vehicles). In recognition
of this reality, brands commonly purchase competitors’
trademarks in connection with search engine
advertising; indeed, Select Comfort admitted at trial
that it does the same. Inasmuch as consumers benefit
from a bevy of results from many brands—and the
attendant competition—the Eighth Circuit’s decision
here confounds consumers’ best interests.
Recognizing these issues with pre-sale, initial
interest confusion in the context of the Internet, the
First, Fourth, and Eleventh Circuits have outright
declined to adopt the doctrine. While other Circuits do
recognize some form of initial interest confusion,
none—including the Ninth Circuit, where it
originated—recognize a formulation as broad as the
Eighth Circuit has adopted here.
Given the potential for plaintiffs to weaponize
this decision to attack common Internet advertising
practices even when they cannot show concrete harm,
the inconsistency between the Circuits, and the
likelihood of forum shopping, Petitioners respectfully
request that the Court grant this Petition.
OPINIONS BELOW
The Eighth Circuit’s opinion is reported at 996
F.3d 925 and reproduced at A-1. The opinion of the
district court is reported at 156 F.Supp.3d 971 and
reproduced at A-34.
JURISDICTION
The Eighth Circuit entered judgment on May
11, 2021, and issued its order denying rehearing en
4
banc on June 16, 2021. This Court has jurisdiction
under 28 U.S.C. § 1254(1).
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED
Article III, §§ 1-2 of the United States
Constitution is reproduced at A-125. Relevant
portions of the Lanham Act, 15 U.S.C. § 1125 et seq.,
are reproduced at A-126.
STATEMENT OF THE CASE
In its effort to take down one of its only
remaining competitors in the air adjustable bed
market, Select Comfort Corporation and Select
Comfort SC Corporation (collectively, “Select
Comfort”) brought this lawsuit in 2012. It targeted
Dires, LLC (“Dires”), known commercially as Personal
Comfort Bed, and two of its owners, Craig Miller and
Scott Stenzel. It also sued former owner John Baxter,
as well as Direct Commerce, LLC (doing business as
Personal Touch Bed) and Digi Craft Agency, LLC (not
represented by the undersigned counsel). Select
Comfort claimed, among other things, that Dires’
online advertising of its beds that compete directly
with Select Comfort’s through search engines,
including Google and Bing, infringed Select Comfort’s
trademarks because of the appearance of those
trademarks in search engine results.
On summary judgment, the district court
determined that, in the context of Dires’ online
advertising, “Plaintiffs’ trademark infringement claim
will require Plaintiffs to establish a likelihood of actual
confusion at the time of purchase.” A-62.
At trial, the testimony showed that when Dires’
ads appeared in search engine results, consumers
5
could click on those ads (at a cost to Dires) and be
taken to the Personal Comfort Bed website. The
Personal Comfort Bed website extensively compares
its products with Select Comfort’s. From that website,
consumers were presented with the phone number to
place a phone call to a salesperson or a page where
they could place an online order for a bed. A-95. Select
Comfort admitted it presented exactly the same
evidence as it would have had the district court not
made its ruling regarding initial interest confusion. A91, A-95. Indeed, when asked at oral argument before
the Eighth Circuit, counsel for Select Comfort could
not identify one piece of evidence Select Comfort was
prevented from introducing. Further, Petitioners have
consistently argued that Select Comfort failed to prove
any injury caused by Petitioner’s activities.
Dist.Ct.Dkt.678 at 18–20; Dist.Ct.Dkt.646 at 14–21;
App.Ct.Second.Br. at 6–9; 32–34.
Following a three-week trial, the jury agreed
with Dires and found no infringement. Nonetheless,
the Eighth Circuit reversed, adopting an outdated
standard that other circuits have declined to adopt at
all, determining for the first time that (1) the Eighth
Circuit recognizes initial interest confusion and
(2) initial interest confusion could apply in this
Internet marketing case. A-16–21. As relevant here, it
reversed and remanded for a new trial on Select
Comfort’s claim of trademark infringement. Id. Dires
filed a petition for rehearing en banc, which the Eighth
Circuit denied on June 16, 2021.
6
REASONS FOR GRANTING THE PETITION
The Eighth Circuit’s decision below adopts, for
the first time, a dying doctrine and revives a split
between the Circuits with respect to trademark
infringement in online marketing. Three Circuits have
declined entirely to adopt initial interest confusion
(the First, Fourth, and Eleventh). And even among
those that have adopted it, all now recognize a
narrower version of initial interest confusion than the
broad formulation adopted by the Eighth Circuit,
which may make mere attraction of consumers’
attention, even in the absence of any purchase or other
concrete harm, actionable.
Moreover, the Circuits that have recognized
initial interest confusion online did so decades ago.
Indeed, all the cases cited by the Eighth Circuit in
support of its adoption are more than twenty years old.
The doctrine has been increasingly criticized over the
last two decades, even among those Circuits that have
adopted it. Good policy reasons support revisiting this
doctrine and resolving this split among Circuits under
application of the Lanham Act and in concert with this
Court’s Article III standing requirements in the
context of today’s Internet marketing and its
increasing ubiquity. Failure to do so by the Court will
result in broadened liability for standard online
marketing beyond any concrete harm to consumers or
other online companies and is likely to result in forumshopping. This Court should grant review as to the
single question presented.
7
I. The Court Should Grant Review To
Resolve The Split Between The
Circuits Regarding Recognition Of
Initial Interest Confusion In Online
Advertising.
Prior to this decision, pre-sale, initial interest
confusion “[had] never been adopted by the Eighth
Circuit[.]” Sensient Techs. Corp. v. SensoryEffects
Flavor Co., 613 F.3d 754, 764 & 766 (8th Cir. 2010)
(declining to adopt initial interest confusion). The
Sensient court held that it did not apply where
consumer sophistication and degree of purchasing care
are both high. Id. Several Circuits have refused to
adopt initial interest confusion altogether.
The First Circuit has not recognized initial
interest confusion as actionable. See Smartling, Inc. v.
Skawa Innovation Ltd., 358 F. Supp. 3d 124, 141 n. 9
(D. Mass. 2019) (“the First Circuit has yet to adopt this
concept.”) (quoting Concordia Partners, LLC v. Pick,
No. 2:14-CV-009-GZS, 2015 WL 4065243, at *9 n.7 (D.
Me. July 2, 2015)); (citing Moving & Storage, Inc. v.
Panayotov, No. CIV.A. 12-12262-GAO, 2014 WL
949830, at *4 (D. Mass. Mar. 12, 2014) (“However,
even if [the initial interest] doctrine were recognized
in this Circuit, which it has not been, mere diversion,
without any hint of confusion, is not enough”); Hearts
on Fire Co., LLC v. Blue Nile, Inc., 603 F.Supp.2d 274,
283 (D. Mass. 2009) (noting that initial interest
confusion has “not been fully explored or addressed by
the First Circuit”)).
The Fourth Circuit, too, declined to adopt initial
interest confusion in Lamparello v. Falwell, 420 F.3d
309, 316 (4th Cir. 2005). It did so again last year in a
case strikingly similar to this one, where plaintiff
8
“urg[ed] [the court] to only consider the appearance of
[defendant]’s advertisement on the search results
page[.]” Passport Health, LLC v. Avance Health Sys.,
Inc., 823 F. App’x 141, 150 (4th Cir. 2020), as amended
(Aug. 17, 2020) (emphasis added). The court in
Passport Health noted that “[Plaintiff] focuses on
whether the use of its marks will lure consumers to its
competitor’s website, regardless of whether the
content of the website will dispel the consumers’
confusion.” Id. It reasoned:
[W]e
have
never
adopted
the initial interest confusion theory;
rather, we have followed a very
different mode of analysis, requiring
courts to determine whether a
likelihood
of confusion exists
by
examining the allegedly infringing
use in the context in which it is seen by
the ordinary consumer.
Id. (internal quotations omitted) (emphasis in
original). The court declined to adopt the doctrine and
considered
“[defendant’s]
advertisement
in
conjunction with the website to which it links.” Id.
Similarly, the Eleventh Circuit has not adopted
initial interest confusion. See Suntree Techs., Inc. v.
Ecosense Int’l, Inc., 693 F.3d 1338, 1347 (11th Cir.
2012) (declining to address whether initial interest
confusion is actionable in the Eleventh Circuit); USA
Nutraceuticals Grp., Inc. v. BPI Sports, LLC, 165 F.
Supp. 3d 1256, 1265–66 (S.D. Fla. 2016) (“The Court
declines to adopt, at this early juncture, a yet-to-berecognized legal theory…”); Vital Pharm., Inc. v. Am.
Body Bldg. Products, LLC, 511 F. Supp. 2d 1303, 1318
(S.D. Fla. 2007) (“The Eleventh Circuit has not
9
embraced this principle, and I find it unpersuasive.
When the bottom line is sales of a particular product,
initial confusion prior to and concluding before the
point of purchase does not seem dispositive in a
likelihood of confusion analysis.”).
The First, Fourth, and Eleventh Circuits’
analyses do what the Eighth Circuit’s decision
arguably does not—they require more than mere
visibility on a results page or a click to a different
website to establish concrete harm for a potential
violation of the Lanham Act.
II. The Court Should Grant Review To
Consider
The
Breadth
Of
The
Formulation
Of
Initial
Interest
Confusion Adopted By The Eighth
Circuit.
Among those Circuits that do recognize some
form of initial interest confusion, all have now adopted
a more narrowed doctrine than the Eighth Circuit did
here. Indeed, the Ninth Circuit, where the doctrine
originated, has criticized its original formulation of the
doctrine from Brookfield Commc'ns, Inc. v. W. Coast
Ent. Corp., 174 F.3d 1036 (9th Cir. 1999), the very
formulation adopted by Eighth Circuit here. That case,
as cited by McCarthy, made actionable “confusion that
creates initial customer interest, even though no
actual sale is finally completed as a result of the
confusion.” A-3. Brookfield has been “roundly
criticized by courts and commentators.” Ascentive,
LLC v. Opinion Corp., 842 F. Supp. 2d 450, 466
(E.D.N.Y. 2011) (citing Michael Grynberg, Trademark
Litig. as Consumer Conflict, 86 N.Y.U.L.REV. 60, 86
(2008) (citations omitted) (noting that “Brookfield and
its progeny have been heavily criticized for expanding
10
initial interest confusion doctrine into Internet cases
in which the case for any consumer harm is doubtful);
Eric Goldman, Eighth Circuit Embraces the Initial
Interest Confusion Doctrine. What??? UGH. No.
Why??? – Select Comfort v. Baxter, TECHNOLOGY &
MARKETING LAW BLOG https://blog.ericgoldman.org/
archives/2021/05/eighth-circuit-embraces-the-initialinterest-confusion-doctrine-what-ugh-no-why-selectcomfort-v-baxter.htm (May 13, 2021) (“The opinion
creates avoidable doctrinal trouble, and other judges
on the Eighth Circuit should demand a tighter opinion
with fresher citations (if not a completely different
result).”)
In Playboy Enters. v. Netscape Commc'ns
Corp., 354 F.3d 1020, 1034–35 (9th Cir. 2004) (Berzon,
J., concurring), one judge called Brookfield “wrongly
decided,” stating, “I do not think it is reasonable to find
initial interest confusion when a consumer is never
confused as to source or affiliation, but instead knows,
or should know, from the outset that a product or web
link is not related to that of the trademark holder
because the list produced by the search engine so
informs him.” Judge Berzon concluded that the
doctrine’s common analogy to misleading customers
with a billboard that causes them to visit one store
instead of another “has been widely criticized as
inapplicable to the Internet situation, given both the
fact that customers were not misdirected and the
minimal inconvenience in directing one’s web browser
back to the original list of search results.” Id. at 1036.
Thereafter, the Ninth Circuit reversed a grant
of a preliminary injunction based on the Brookfield
formulation in Network Automation, Inc. v. Advanced
Sys. Concepts, Inc., 638 F.3d 1137, 1148 (9th Cir.
2011), a case strikingly similar to this matter, which
11
considered “whether the use of another’s trademark as
a search engine keyword to trigger one’s own product
advertisement violates the Lanham Act.” In discussing
the application of Brookfield, the Ninth Circuit stated:
While the district court analyzed each of
the Sleekcraft [likelihood of confusion]
factors, it identified the three most
important factors as (1) the similarity of
the marks, (2) the relatedness of the
goods or services, and (3) the
simultaneous use of the Web as a
marketing channel, for any case
addressing trademark infringement on
the Internet…However, we did not
intend Brookfield to
be
read
so
expansively as to forever enshrine these
three factors—now often referred to as
the “Internet trinity” or “Internet
troika”—as the test for trademark
infringement
on
the
Internet.
Brookfield was the first to present a claim
of initial interest confusion on the
Internet; we recognized at the time it
would not be the last, and so emphasized
flexibility over rigidity. Depending on the
facts of each specific case arising on the
Internet, other factors may emerge as
more illuminating on the question of
consumer confusion.
Id. The Network Automation court specifically noted
the importance of the degree of consumer care in the
Internet context, stating that (even more than a
decade ago), “[w]e have recently acknowledged that
the default degree of consumer care is becoming more
heightened as the novelty of the Internet evaporates
12
and online commerce becomes commonplace.” Id. at
1152 (citing Toyota Motor Sales v. Tabari, 610 F.3d
1171 (9th Cir. 2010)). Moreover, the court stated it
“expect[s] consumers searching for expensive products
online to be even more sophisticated.” Network
Automation, Inc., 638 F.3d at 1153. The Network
Automation court held that the district court erred by
concluding that the “type of purchaser and degree of
care” factor in the context of Internet marketing
weighed in favor of a finding of infringement and
reversed. Id. Recent opinions in the Ninth Circuit
confirm this narrowing. See, e.g., Moore v. Doe, No. CV
20-6569-DMG (SPX), 2020 WL 6804508, at *3 (C.D.
Cal. Oct. 13, 2020) (“courts have since narrowed
Brookfield to not apply where the displayed search
result is not likely to confuse the consumer as to its
source”) (internal citations omitted).
The Second Circuit’s formulation of initialinterest confusion also conflicts with the Eighth
Circuit’s decision. The court in Savin Corp. v. Savin
Grp. clarified that, “[b]ecause consumers diverted on
the Internet can more readily get back on track than
those in actual space, thus minimizing the harm to the
owner of the searched-for site from consumers
becoming trapped in a competing site, Internet initial
interest confusion requires a showing of intentional
deception.” 391 F.3d 439, 462 (2d Cir. 2004). The court
affirmed dismissal of the trademark infringement
claim on summary judgment. Id. Here, the Eighth
Circuit did not require any showing of intentional
deception.
Although the Sixth Circuit recognizes initialinterest confusion, it too “has been reluctant to extend
initial-interest confusion as an actionable theory
under the Lanham Act outside the narrow context of
13
disputes over Internet domain names.” Ducks
Unlimited,
Inc.
v.
Boondux,
LLC,
No.
214CV02885SHMTMP, 2017 WL 3579215, at *28 n. 14
(W.D. Tenn. Aug. 18, 2017) (citing Gibson Guitar Corp.
v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 551 (6th
Cir. 2005)).
While the Tenth Circuit recognized initialinterest confusion in Australian Gold v. Hatfield, 436
F.3d 1228 (10th Cir. 2006), it did so in the context of
passing off; there, the defendants improperly obtained
plaintiffs’ tanning lotions and resold them on their
own website; such passing off did not occur here. Id. at
1232–33. Further, the tanning lotion was inexpensive,
so “the degree of care likely to be exercised in
purchasing Products weighed in favor of Plaintiffs
because Plaintiffs’ low-cost products were subject to
impulse purchases.” Id. at 1240. Thereafter, the Tenth
Circuit cast doubt on the viability of the doctrine going
forward in 1-800 Contacts, Inc. v. Lens.com, Inc., 722
F.3d 1229, 1242 (10th Cir. 2013). In that case—again,
quite similarly to the instant matter—the district
court ruled that mere use of Google Keywords,
“divorced from the text of the resulting ads,” could not
result in any likelihood of confusion. Id. Because
Google users view only the results of searches and
cannot tell which keywords advertisers purchase, a
consumer who searches for “1-800 Contacts” and then
sees an ad from Lens.com cannot know whether
Lens.com purchased 1-800’s mark as a keyword, or
simply the term “contacts.” Id. The Tenth Circuit then
opined:
Perhaps in the abstract, one who
searches for a particular business with
a strong mark and sees an entry on the
results page will naturally infer that
14
the entry is for that business. But that
inference is an unnatural one when the
entry is clearly labeled as an
advertisement and clearly identifies the
source, which has a name quite
different from the business being
searched for.
Id. at 1245. This passage has drawn the doctrine
into serious question in the Tenth Circuit,
although ultimately, the court did not issue the
formal death knell, concluding that because the
plaintiff failed to introduce sufficient evidence of
initial interest confusion, it need not reach the
question. Id. at 1243.
Notably, these decisions criticizing a
formulation like the Eighth Circuit’s here even
predated the Court’s recent decision on Article III
standing in Transunion v. Ramirez, in which as
the Court succinctly put it: “No concrete harm, no
standing.” 141 S. Ct. 2190, 2200 (2021). The
Eighth Circuit’s formulation of initial interest
confusion could allow liability to be imposed even
without a showing of concrete harm, a proposition
directly contrary to Transunion and Article III of
the Constitution.
III. Consumers’ Interest In Useful
Online
Advertising
Requires
Reconsideration Of The Doctrine
Of Initial Interest Confusion.
Simply put, presale, initial interest confusion in
the context of Internet search results is inappropriate.
15
If “the purpose of the search [truly is to look only
for Plaintiffs’ goods], the shoppers will be attentive to
click on those results that will connect them with sites
relating to [plaintiff].” 1-800 Contacts, 722 F.3d at
1245. The consumer can distinguish between products,
and if the consumer selects the lower-cost product,
that does not mean that the consumer was “confused
about the alternatives presented to her.” Hearts on
Fire, 603 F. Supp. 2d at 285 (citations omitted). Initial
interest confusion is particularly inapplicable here
because, to constitute actionable infringement, the
“confusion must be more than momentary and … must
be truly costly to the consumer.” Id. at 287–88
(emphases added) (citation omitted). Online,
[R]easonable, prudent and experienced
Internet consumers … skip from site to
site, ready to hit the back button
whenever they’re not satisfied with a
site’s contents. They fully expect to find
some sites that aren’t what they imagine
based on a glance at the domain name or
search engine summary.… This is
sensible agnosticism, not consumer
confusion.
Tabari, 610 F.3d at 1179 (citation omitted). Thus,
placement on a search engine’s results list is
“irrelevant” when the website itself is non-confusing.
Ascentive, 842 F. Supp. 2d at 468–69.
Policy considerations caution against overbroad
application of the initial interest doctrine. “Emerging
trademark law doctrines have allowed trademark
owners to excise socially beneficial content and to take
unprecedented control over their channels of
16
distribution. Without limits, trademark law has the
capacity to counterproductively destroy the Internet’s
utility for everyone.” Eric Goldman, Deregulating
Relevancy in Internet Trademark Law, 54 EMORY L. J.
507, 509 (2005), http://digitalcommons.law.scu.
edu/facpubs/68. Goldman notes:
In all cases—even when the searcher has
been “tricked” into viewing a website
through
unscrupulous
practices—a
searcher’s costs to change an Internet
search is trivial. The searcher need only
hit the back button, type a new web
address into the address bar, or select a
new bookmark…The costs to switch a
web search compare very favorably to
other offline searches, such as using the
Yellow Pages (which require extra time to
dial, reach a live person and get questions
answered) or driving around town looking
for a particular item (where, if a store
does not have what the searcher wants,
the searcher must get back into the car
and drive to the next vendor).
Id. at 520–21. Goldman critiques initial interest
confusion as incorrectly “assum[ing] that a searcher
using a trademarked keyword is looking for the
trademarked owner.” Id. at 566. But “[s]earchers’
objectives cannot be inferred from the keywords they
employ.” Id. He goes on to criticize Brookfield,
concluding that “[b]ecause [initial interest confusion]
lacks a rigorous definition, defendants are virtually
powerless to combat it—especially under Brookfield’s
framework of treating any efforts to capture initial
consumer attention as goodwill misappropriation.” Id.
17
at 573. Goldman concludes that “[p]ushing the
infringement determination later in the search
process”—as the district court did—“will inhibit the
speculation that can lead courts astray.” Id. at 584.
Further, the degree of consumer care is high for
the expensive beds at issue in this case. “There is
always less likelihood of confusion where goods are
expensive and purchased after careful consideration.”
Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049,
1055 (8th Cir. 2005) (quotations omitted); Network
Automation, 638 F.3d at 1153 (“[W]e expect consumers
searching for expensive products online to be even
more sophisticated.”) (internal quotations omitted).
Mattresses are not an impulse purchase susceptible to
confusion. See, e.g. NSM Res. Corp. v. Target Corp.,
636 F. Supp. 2d 857, 868 (D. Minn. 2008) (“Shoes are
not, generally, an impulse item that consumers take
off the shelf without thought.”). Rather, they are an
important purchase that greatly impacts a purchaser’s
quality of life; even in 1957, when mattresses were
both less expensive and less technologically advanced,
the U.S. Court of Customs and Patent Appeals
concluded “that the average purchaser will exercise
such care in the selection of a mattress as to minimize
the possibility of confusion as to the origin of the
goods.” Sleepmaster Prods. Co. v. Am. Auto-Felt Corp.,
241 F.2d 738, 741 (C.C.P.A. 1957) Liability for initial
interest confusion in Internet marketing ignores how
consumers use search engines and the lack of harm
caused to consumers, and it has the potential to stifle
competition in online marketing. It is outdated and
illogical, and this Court should revisit its adoption.
18
CONCLUSION
This Court should grant the petition for
certiorari.
Respectfully submitted,
CHRISTOPHER W. MADEL
Counsel of Record
JENNIFER M. ROBBINS
CASSANDRA B. MERRICK
(MN#396372)
MADEL PA
800 Hennepin Avenue,
Suite 800
Minneapolis, MN 55403
(612) 605-0630
cmadel@madellaw.com
AUGUST 11, 2021
Counsel for Petitioners
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