March/April 2011 Issue

Civil Cases

InternetShopsInc.com v. Six C Consulting, Inc.,
2011 WL 1113445 (N.D. Ga. Mar. 24, 2011)

ABSTRACT
Plaintiff alleged that defendant used plaintiff’s trademark as a search-engine keyword and sued for trademark infringement.  Defendant conceded infringement and the court granted plaintiff’s motion for summary judgment.  Although the court permanently enjoined defendant from infringing plaintiff’s mark, it rejected plaintiff’s requests for actual damages, defendant’s profits, and attorney’s fees.

CASE SUMMARY

FACTS
Plaintiff sold golf equipment over the Internet, including a practice golf mat called DURA PRO.  Defendant Six C Consulting, Inc. (“Six C”) competed with plaintiff in the online sale of golf equipment.  In early 2008, Six C began using the DURA PRO mark as a search-engine keyword.  It is unclear from the decision whether Six C’s sponsored ads contained the DURA PRO keyword, but plaintiff alleged in its complaint that Six C used the DURA PRO mark as a heading in its ads.  Plaintiff discovered Six C’s keyword use in January 2009 and immediately contacted Six C.  Within 48 hours, Six C ordered its marketing company to stop using the DURA PRO keyword.  However, the marketing company failed to completely stop use of the keyword, and it remained in use as a keyword until April 2009.  Plaintiff sued Six C for trademark infringement in March 2009, and the parties filed cross-motions for summary judgment.

ANALYSIS
Six C conceded infringement, and the court granted plaintiff’s motion for summary judgment.  Thus, the only dispute concerned plaintiff’s relief.  The court denied plaintiff’s request for $123,785 in actual damages because plaintiff’s only evidence was an affidavit from its CEO that calculated damages based on a 140-unit decrease in average monthly sales and the average profit from each sale.  The court held that the affidavit neither provided a rational basis for awarding nor a reasonable methodology for calculating actual damages.  Plaintiff failed to prove that any declines in sales resulted from Six C’s infringement.  The court then denied plaintiff’s request for an award of Six C’s profits, noting that only 35 of 1,319 impressions from searches for DURA PRO resulted in a “click,” and none of the clicks resulted in a sale for Six C.  Because Six C did not make a single sale as a result of its infringement, there was no basis to award its profits.  The court granted plaintiff’s motion to permanently enjoin Six C from infringing plaintiff’s mark.  Finally, the court denied plaintiff’s motion for attorney’s fees, finding that there was no evidence that Six C’s infringement was “malicious, fraudulent, deliberate, or willful.”

CONCLUSION
This decision is interesting because of the court’s methodology in analyzing plaintiff’s request for an award of Six C’s profits.  Not many courts analyze the results of a keyword-advertising campaign in this level of detail to evaluate claims for monetary relief.