Ninth Circuit reverses itself in v Multi Time Machine

The US Court of Appeals for the Ninth Circuit has reversed its own decision in Multi Time Machine Inc v Inc, and upheld the district court’s grant of summary judgment in favour of Amazon.

In July 2015 the Ninth Circuit had reversed the district court’s grant of summary judgment in a trademark infringement action filed by Multi Time Machine, a manufacturer of high-end watches that did not authorise distribution via online retailer Amazon. The Ninth Circuit held that a reasonable jury could find that Amazon had created a likelihood of consumer confusion due to the manner in which it presented its product search results.

In October the court withdrew its decision and filed a superseding opinion upholding the district court’s grant of summary judgment in favour of Amazon. A two-judge majority concluded that Amazon’s search results for competing products were clearly labelled, and therefore reasonably prudent consumers accustomed to shopping online would not be confused as to the source of the goods.

Counsel comment:

“The court acknowledged the controversy surrounding the ‘initial interest confusion’ doctrine within a footnote in the decision, but pointed out that the doctrine was not at issue on appeal and that, from a procedural standpoint, a three-judge panel could not overrule earlier precedential decisions favouring the application of the doctrine. Nonetheless, the court’s vacating and reversing its earlier decision grounded in that doctrine might signal trouble for the viability of the doctrine. The decision is also noteworthy because most infringement decisions concerning the use of others’ trademarks as keywords to date have addressed the practice in the search engine context, but this addresses the practice within a retailer website.”

Patrick J Concannon, partner at Nutter McClennen & Fish LLP

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