December 2011 / January 2012 Issue
Ascentive, LLC v. Opinion Corp.,
2011 WL 6181452 (E.D.N.Y. Dec. 13, 2011)
Plaintiffs’ goods and services were the subject of negative reviews from third parties on defendant’s consumer-review website, “PissedConsumer.com.” Plaintiffs alleged that defendant’s use of plaintiffs’ trademarks in subdomains, metatags, and advertising on the “PissedConsumer.com” site violated the Lanham Act and various state laws. The Eastern District of New York denied plaintiffs’ motion for a preliminary injunction, finding that defendant did not use plaintiffs’ marks as source identifiers and that defendant’s actions did not cause a likelihood of confusion, including initial-interest confusion. It also held that defendant qualified for immunity as a service provider under the Communications Decency Act against the state law claims.
Defendant Opinion Corp. (“Opinion”) operated “PissedConsumer.com,” a consumer-review website that allowed third parties to post negative reviews about businesses. Opinion published the negative reviews to a subdomain or URL using the business’s name (e.g., businessname.pissedconsumer.com) and, using Google advertising, advertised competitive goods and services on the web pages. Opinion also used the business’s name in the website’s metatags. Opinion then offered paid “premium reputation management services” that allowed a business to respond to complaints and otherwise manage its “PissedConsumer.com” page. At issue here were negative user reviews on products made by Ascentive, LLC and Classic Brands, LLC (collectively “Plaintiffs”), accessible on Opinion’s website through subdomains containing their trademarks (e.g., ascentive.pissedconsumer.com). Plaintiffs sued Opinion, alleging trademark infringement, unfair competition, and various state-law claims.
The court denied Plaintiffs’ motion for a preliminary injunction. First, the court weighed the Polaroid likelihood-of-confusion factors and found that, although the strength-of-the-mark and degree-of-similarity factors weighed in Plaintiffs’ favor, the remaining factors weighed heavily against them, including that the parties did not have “competitive proximity.” Plaintiffs sold software and sleep products, respectively, whereas Opinion sold advertising and reputation-management services. Furthermore, neither Plaintiffs nor Opinion contended that their services might “bridge the gap” and enter into the other’s field. And it was “clear” to the court that Opinion was not using Plaintiffs’ marks as “source identifiers.”
Regarding use of the Plaintiffs’ marks in subdomains and in website content, the court noted that Opinion’s use of the “PissedConsumer.com” domain name made “clear that [Opinion’s website] is not affiliated with trademarks the domain name incorporates.” It further noted that use of the word “pissed” in the domain name and the exclusively negative reviews on the site meant that there was “little likelihood that a potential consumer visiting PissedConsumer.com would be confused about whether it was the source of [P]laintiffs’ goods or whether [Plaintiffs] sponsored or otherwise approved of PissedConsumer’s use of their marks,” and that the “same . . . holds true for PissedConsumer’s use of the [P]laintiffs’ marks in the content of the . . . site itself.”
Turning to metatags, the court held that Opinion’s use of Plaintiffs’ trademarks in metatags to manipulate search rankings did not result in initial-interest confusion because the parties did not compete and “no reasonable consumer searching for [Plaintiffs’] sites would be diverted to PissedConsumer’s webpages in light of their domain names” that were clearly critical of Plaintiffs. The court also criticized the Ninth Circuit’s decision in Brookfield Communications, Inc. v. West Coast Entertainment Corp., which found initial-interest confusion in the Internet context from use of trademarks in metatags. Instead, it agreed with other courts that “the harm caused by initial interest confusion in the Internet context is minimal as ‘with one click of the mouse and a few seconds delay, a viewer can return to the search engine’s results and resume searching for the original website.’” The court added that “the technological landscape today is vastly different than it was in 1999 when the Ninth Circuit decided Brookfield” because search engines now use ranking algorithms with minimal, if any, weight given to metatags.
The court also held that Plaintiffs were not likely to succeed on the merits of their nontrademark state claims, including interference with contractual relations, unjust enrichment, and violations of Pennsylvania’s unfair trade practices and consumer-protection laws, because Opinion had immunity under the Communications Decency Act. Specifically, the court held that Opinion operated as a “service provider,” not an “information content provider,” because defendant “invite[d] postings and then in certain circumstances alter[ed] the way those postings are displayed.”Finally, although the court found “some aspects of PissedConsumer’s business practices troubling and perhaps unethical,” it was “unable to find a legal remedy for conduct that may offend generally accepted standards of behavior.” The court thus denied Plaintiffs’ motion for a preliminary injunction, but noted that its decision was without prejudice to Plaintiffs’ ability to seek a permanent injunction with the “benefit of full disclosure.”
Although the end result here is consistent with most other “gripe site” cases, this case was unusual for two reasons. First, Opinion used Plaintiffs’ marks in subdomains and metatags, and to advertise competitive goods and services, which goes beyond the extent of use in most “gripe site” cases. Second, Opinion’s business model invited trademark owners to pay to manage negative reviews that Opinion solicited for its own website.