Internet Trademark Case Summaries

J.G. Wentworth, S.S.C. L.P. v. Settlement Funding, LLC

2007 U.S. Dist. Lexis 288 (E.D. Pa. Jan. 4, 2007)

The parties were competitors in the business of providing immediate cash payments in exchange for rights to future payments from structured settlements and other assets.  Defendant allegedly purchased the keywords “J.G. Wentworth” and/or “JG Wentworth” through Google’s AdWords program.  Defendant also allegedly used plaintiff’s trademark in the metatags for 14 pages of defendant’s website.  Searches for plaintiff’s marks on Google revealed Sponsored Links for defendant’s services, but none of them contained plaintiff’s marks in any way.  Plaintiff sued for infringement and unfair competition.  Defendant moved to dismiss on the grounds that it did not “use” plaintiff’s marks and there was no likelihood of confusion as a matter of law.  The court disagreed with defendant on the first point, finding that defendant’s purchase of trademark-related keywords to trigger ads was not an “internal” use as in the WhenU cases, but rather was a “use in commerce under the Lanham Act” as found in Buying for the Home.  However, the court agreed with defendant that “[e]ven accepting plaintiff’s allegations as true—i.e., assuming that defendant did in fact use plaintiff’s marks through Google’s AdWords program or in the keyword meta tags for its website—as a matter of law defendant’s actions do not result in any actionable likelihood of confusion under the Lanham Act.”  The court focused its analysis on plaintiff’s claim of initial-interest confusion both in terms of the metatags and keywords.  The court initially noted that the Third Circuit has not extended initial-interest confusion protection to metatags.  It then disagreed with the Ninth Circuit’s conclusion in Brookfield that consumers are “taken by a search engine to defendant’s website due to defendant’s use of plaintiff’s marks in meta tags.”  Instead, the links to defendant’s website in the search results—whether paid listings or natural web results—are “one of many choices for the potential consumer to investigate” and “always appear as independent and distinct links on the search results pages.”  Moreover, neither defendant’s links nor advertisements “incorporate plaintiff’s marks in any way discernible to Internet users and potential customers.”  Similarly, because defendant’s Sponsored Links triggered by the keywords did not contain plaintiff’s marks and “[d]ue to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant’s services, goods, advertisements, links or websites for those of plaintiff.”  Accordingly, the court held that initial-interest protection did not apply and granted defendant’s motion to dismiss.