Picture It Sold, Inc. v. I Sold It, LLC, 2006 WL 2467552, 199 Fed. Appx. 631 (9th Cir. Aug. 28, 2006).
Factual Background Edit
Plaintiff and defendant operated competing eBay sales businesses. Plaintiff alleged that defendant purchased advertising keyed to plaintiff’s mark PICTURE IT SOLD. Plaintiff appealed from the district court’s denial of its motion for preliminary injunction.
Appellate Court Proceedings Edit
The Ninth Circuit did not address the question of whether plaintiff owned a valid protectable mark, because it disposed of the case on the issue of whether sufficient evidence existed to show that defendant actually used or purchased keyword advertising for plaintiff’s mark. The Ninth Circuit held that the record did not support such a finding and affirmed the district court’s decision. The court noted the extremely limited record before it and emphasized that plaintiff’s search engine results were flawed as evidence because the searches did not use quotation marks around plaintiff’s PICTURE IT SOLD mark. Without the quotation marks, the search engines would pay no attention to the order of the words and produced results containing those words in any order.
Because each party’s name shared the words “IT” and “SOLD” and defendant admittedly purchased keyword advertising for its own name “I SOLD IT,” defendant’s advertisements could appear as a result of a search for the words “picture it sold” without quotations even if defendant did not purchase keywords for the phrase “picture it sold.”
To the extent plaintiff argued that defendant’s purchasing of advertising based on the terms “IT” and “SOLD” was actionable, the court noted that its decision in Brookfield Communications v. West Coast Entertainment required intentional use of the trademark and it was acceptable to use “untrademarked” words in metatags.
The Ninth Circuit also rejected plaintiff’s argument that defendant’s purchase of keyword advertising tied to plaintiff’s mark could be inferred because searches for other competitors’ names also returned defendant’s advertisements. Those searches were also flawed, however, because the searches were not performed with quotations and the competitor’s names contained various generic terms.
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