Grounding trademark law through trademark use

Iowa Law Review

Volumn 92, Issue 5, 2007, Pages 1669-1701

  Dogan, Stacey L ^a   Lemley, Mark A ^b,c  

^a NORTHEASTERN UNIVERSITY

^b STANFORD LAW SCHOOL   (United States)

^c Keker and Van Nest LLP ^*

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[No Author keywords available]

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EID: 34948872154     PISSN: 00210552     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (168)

1. Graeme B. Dinwoodie & Mark D. Janis, Confusion over Use: Contextualism in Trademark Law, 92 IOWA L. REV. 1597 (2007).
2. See infra note 62 (listing the pop-up and keyword cases).
3. An exception - contributory infringement - applies only when a defendant actively induces another party's infringement or "continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982). But even in that case, the claim is premised on an act of direct infringement by someone who is using the mark in connection with her goods or services. In other words, if there is no direct infringer making a trademark use, there is no infringement to which to contribute.
4. Dinwoodie & Janis, supra note 1, at 1599. For an interesting historical analysis suggesting that unfair competition, rather than consumer confusion, motivated trademark law in the nineteenth century,
5. see Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1860 (2007).
6. See generally Stacey L. Dogan, An Exclusive Right to Evoke, 44 B.C. L. REV. 291 (2003);
7. Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 YALE LJ. 1717 (1999).
8. Felix Cohen raised such concerns as early as the 1930s, and Ralph Brown took up the call in the middle of the last century. See, e.g., Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57
9. YALE L.J. 1165, 1177-80 (1948);
10. Felix Cohen, Transcendental Nonsense and the Functional Approach, 35 COLUM. L. REV. 809, 815 (1935).
11. Contemporary scholars, including Jessica Litman, Rochelle Dreyfuss, and others, have reinforced and expanded upon their admonitions about the dangers of overly protective trademark laws. See, e.g., Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 NOTRE DAME L. REV. 397, 405 (1990);
12. Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1694-1713 (1999);
13. Litman, supra note 5, at 1728-35;
14. Glynn S. Lunney, Jr., Trademark Monopolies, 48 EMORY L.J. 367, 421-31 (1999).
15. Eric Goldman, Deregulating Relevancy in Internet Trademark Law, 54 EMORY L.J. 507, 511-28 (2005).
16. A customer searching for "Disneyworld vacation," for example, might receive advertisements for reasonably priced hotels in the greater Orlando area. See generally Stacey L. Dogan, Trademarks and Consumer Information, in NOUVELLES APPROCHES EN PROPRIÉTÉ INTELLECTUELLE DANDS UN MONDE TRANSSYSTÉMIQUE [INTELLECTUAL PROPERTY AT THE EDGE: NEW APPROACHES TO IP IN A TRANSSYSTEMIC WORLD] 321 (2007);
17. Goldman, supra note 7, at 521-24 (discussing the various reasons people might use a trademark as a search term),
18. Dinwoodie & Janis, supra note 1, at 1604.
19. E.g., Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 853-54 (1982) (discussing when contributory liability may arise); Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 983-85 (9th Cir. 1999).
20. Lest anyone think this is a parade of horribles with no basis in reality, we note that suits of this sort are already beginning and that district courts are occasionally misled into allowing them. See generally American Dairy Queen Corp. v. New Line Prods., Inc., 35 F. Supp. 2d 727 (D. Minn. 1998) (enjoining a movie about a beauty contest in a rural state from using the title "Dairy Queens"; the movie was eventually released as "Drop Dead Gorgeous");
21. Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206 (CD. Cal. 1998) (enjoining a book about Godzilla from using the tide Godzilla, despite the presence of disclaimers on both the front and back covers). Other plaintiffs have failed, but the fact that the suits were brought at all is worrisome. See, e.g., E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012, 1048-49 (CD. Cal. 2006) (denying a strip club's infringement claim against a video-game manufacturer that included a like-named strip club in its game); Wham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254, 1265 (N.D. Cal. 2003) (refusing to enjoin a depiction of a Slip-N-Slide toy in a movie); Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913, 923-24 (CD. 111. 2003) (refusing to enjoin a depiction of bulldozers that resembled the plaintiffs in an animated film); Compagnie Generale des Etablisessements Michelin & Michelin Cie. v. Nat'l Auto., Aerospace, Transp., and Gen. Workers Union of Canada (CAW-Can.), [1997] 2 F.C. 302 (Can.), available at http://reports.fja..gc.ca/en/1996/1997fc19917.html/1997fc19917.html (refusing to enjoin a union from using the logo of the company it was trying to unionize as part of a leafleting campaign).
22. This last one requires some explanation. FIFA, the organizer of the soccer World Cup, forced more than one diousand male fans of the Dutch soccer team to remove their pants before entering the stadium to watch a 2006 game against the Ivory Coast. The fans were wearing pants in the colors of the Dutch soccer team that had been provided by a beer company and featured the beer company logo. FIFA argued that the fact that the clothes were in team colors meant that others would wrongly think that the beer company was an official sponsor of the World Cup. Rather than merely suing the beer company, however, FIFA took the position that the individuals wearing the offending pants were themselves violating the law and required them to remove the pants to enter the stadium, More than one thousand fans did so and cheered their team in their underwear. See Heather Smith, Goal Tending, IP LAW & BUS., Aug. 2006, at 28.
23. Dinwoodie & Janis, supra note 1, at 1647-53.
24. We are indebted to Mark McKenna for persuading us of this point.
25. Dinwoodie & Janis, supra note 1, at 1621.
26. Id. at 1608-20. Tom McCarthy makes a similar argument. 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:11.50 (4th ed. 2007).
27. See, e.g., Banff Ltd. v. Limited, Inc., 869 F. Supp. 1103, 1111 (S.D.N.Y. 1994) ("[L]iability for non-direct infringers under trademark law is narrower than liability under the copyright laws.").
28. See Margreth Barrett, Internet Trademark Suits and the Demise of "Trademark Use", 39 U.C. DAVIS L. REV. 371, 376-87 (2006) (detailing the history of the trademark use requirement).
29. 15 U.S.C. § 1114(1)(a) (2000) (defining infringement of registered marks); iee also id. § 1125(a) (providing a parallel cause of action for unregistered marks).
30. Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777, 806 (2004).
31. See, e.g., Barrett, supra note 18, at 382-86.
32. 15 U.S.C. § 1127.
33. Id. § 1127. The full definition provides: The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce- (1) on goods when- (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
34. Id. § 1127.
35. For service marks, the "use in commerce" definition expressly includes use in advertising. Id. § 1127.
36. Id. § 1114, 1125(a). See generally Barrett, supra note 18, at 384 (noting the inconsistency in statutory language).
37. Florida Dep't of Banking & Fin. v. Board of Governors of Fed'l Reserve Sys., 800 F.2d 1534, 1536 (11th Cir. 1986) ("It is an elemental precept of statutory construction that the definition of a term in the definitional section of a statute controls the construction of that term wherever it appears throughout the statute."); iee also Crooks v. Harrelson, 282 U.S. 55, 60 (1930) (noting that courts should "override the literal terms of a statute only under rare and exceptional circumstances," in which "the absurdity [is] so gross as to shock the general moral or common sense").
38. Many courts adopting the trademark use doctrine have relied upon the "in connection with" language in the Lanham Act. See, e.g., Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 679-80 (9th Cir. 2005) (finding the appropriate inquiry in evaluating the "in connection with" requirement, as "whether [defendant] offers competing services to the public"); DaimlerChrysler AG v. Bloom, 315 F.Sd 932, 939 (8th Cir. 2003) ("[T]he licensing of a toll-free telephone number, without more, is not a 'use' within the meaning of the Lanham Act...."); Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.Sd 619, 623-26 (6th Cir. 1996) (holding that the use of a telephone number that translated into 1-800-HOLIDAY-with a zero in place of the "O" - was not trademark "use" within the Lanham Act because the defendant had not advertised its services under the offending alphabetical translation). Others have relied on the "use in commerce" language. See, e.g., 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 407-11 (2d Cir. 2005) (relying on the "use in commerce" requirement to find no direct infringement by a party selling pop-up advertisements); Karl Storz Endoscopy-Am., Inc. v. Surgical Techs., Inc., 285 F.3d 848, 855 (9th Cir. 2002) ("'[U]se in commerce' appears to contemplate a trading upon the goodwill of or association with the trademark holder."); Site Pro-1, Inc. v. Better Metal, LLC, No. CV-06-6508, 2007 WL 1385730, at *4 (E.D.N.Y. May 9, 2007); Best Western Int'l, Inc. v. Doe, No. CV-06-1537-PHX-DGC, 2006 WL 2091695, at *5 (D. Ariz. July 25, 2006); cf. Hamzik v. Zale Corp., No. 3:06-cv-1300, 2007 WL 1174863, at *3 (N.D.N.Y. April 19, 2007) (finding potential trademark use by a keyword advertiser that displayed plaintiffs trademark in the text of its ad). Still others have held that the trademark use doctrine bars claims without specific reference to statutory language. See, e.g., Universal Comm. Sys., Inc. v. Lycos, Inc., 478 F.3d 413, 424 (1st Cir. 2007) (rejecting a state dilution claim because "Lycos might profit by encouraging others to talk about UCS under the UCSY name, but neither that speech nor Lycos's providing a forum for that speech is the type of use that is subject to trademark liability"); Nautilus Group, Inc. v. Icon Healdi & Fitness, Inc., No. CO2-2420RSM, 2006 WL 3761367, at *5 (W.D. Wash. Dec. 21, 2006) (holding that an advertiser's use of a keyword to generate a sponsored link to run a comparative advertisement was not a trademark use for dilution purposes); Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425, 428 (S.D.N.Y. 2006); Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393, 398-403 (N.D.N.Y. 2006) (finding that sale of keyword-based advertising does not constitute "trademark use"); Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931, 934-35 (D.D.C 1985).
39. While one could argue that manufacturers that suggest to retailers that the retailers use a mark in infringing ways have themselves "used" the mark "in connection with" the product sales process, thereby satisfying the broadest reading of this provision, such a reading would compel a similarly broad interpretation of the language for eligibility purposes, so that advertising and internal uses would suffice for protection. Courts have consistently rejected such a broad interpretation in the eligibility context, Zazu Designs v, L'Oreal, SA, 979 F.2d 499, 505 (7th Cir. 1992); Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265-68 (5th Cir. 1975), and we think they should similarly reject that broad interpretation in the infringement context. Such behavior by manufacturers has always been considered under the stricter standards of contributory infringement, and we think that is the proper approach. See, e.g., William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 530-31 (1924);
40. Hostetter Co. v. Brueggeman-Reinert Distilling Co., 46 F. 188, 188 (E.D. Mo. 1891) (finding a manufacturer liable for "counseling] and advis[ing]" its retailers to commit fraudulent product substitution).
41. For a discussion of the pre-Lanham Act case law, which clearly required use as a mark affixed to the defendant's goods, see Barrett, supranote 18, at 379-81.
42. In AMF, Inc. v. Sleekcraft Boats, for example, the court noted: When the goods produced by the alleged infringer compete for sales with those of the trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several other factors are added to the calculus. If the goods are totally unrelated, there can be no infringement because confusion is unlikely.
43. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979); iee also Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997) (stating that infringement turns on "whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties");
44. Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989) ("Infringement occurs only when there is a likelihood of confusion between the products of the plaintiff and the defendant." (emphasis added)); RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. a (1995) ("The test for infringement is whether the actor's use of a designation as a trademark, trade name, collective mark, or certification mark creates a likelihood of confusion . . . ."); cf. Hubbard Feeds, Inc. v. Animal Feed Supply, Inc., 182 F.3d 598, 602 (8th Cir. 1999) ("The ultimate inquiry always is whether, considering all the circumstances, a likelihood exists that consumers will be confused about the source of the allegedly infringing product.").
45. While the specific factors vary among jurisdictions, the essential inquiry is quite similar from one circuit to the next. See, e.g., Polaroid Corp. v. Polarad Elees. Corp., 287 F.2d 492, 495 (2d Cir. 1961). In that case, the Second Circuit stated:
46. Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.
47. Id.; AMF, 599 F.2d at 348-49 (listing Ninth Circuit factors);
48. Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 940 (10th Cir. 1983).
49. For a catalogue of the multi-factor tests in various circuits, see generally Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CAL. L. REV. 1581 (2006).
50. Falcon Rice Mill, Inc. v. Cmty. Rice Mill, Inc., 725 F.2d 336, 346 (5th Cir. 1984) (stating that the likelihood-of-confusion test considers the two parties' "products, outlets, purchasers, and marketing methods").
51. Examples abound of cases that end up discarding the likelihood-of- confusion factors wholesale because they are seeking to apply the doctrine in the absence of a trademark use. Perhaps most notable is Brookfield Commc'ns v. W. Coast Entm't Corp., 174 F.3d 1036, 1058-60 (9th Cir. 1999) (throwing out the majority of confusion factors as irrelevant in the Internet context).
52. The Tenth Circuit recently identified this as a reason for the development of contributory liability. See Procter & Gamble Co. v. Haugen, 317F.3d 1121,1128 (10th Cir. 2003) ("Because the infringement test initially adopted under the Lanham Act is not well suited for targeting... secondary liability, an additional theory of liability was warranted.").
53. See, e.g., William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 530-31 (1924); Coca Cola Co. v. Gay-Ola Co., 200 F. 720, 723 (6th Cir. 1912); Hostetter Co. v. Brueggeman-Reinert Distilling Co., 46 F. 188, 189 (C.C.E.D. Mo. 1891); iee also Rathbone, Sard & Co. v. Champion Steel Range Co., 189 F. 26, 33 (6th Cir. 1911) ("[Defendant is not responsible for the fact that tricky retailers represent its manufacture as that of complainant"). The Supreme Court most recently addressed indirect trademark liability in Inwood Labs. v. Ives Labs., 456 U.S. 844 (1982): Even if a manufacturer does not directly control others in the chain of distribution, it can be held responsible for their infringing activities under certain circumstances. Thus, if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.
54. Id. at 853-54.
55. William R. Warner & Co., 265 U.S. at 530-31.
56. Id. See generally John T. Cross, Contributory Infringement and Related Theories of Secondary Liability for Trademark Infringement, 80 IOWA L. REV. 101 (1994) (exploring the history and foundations of the contributory infringement doctrine).
57. William R. Warner & Co., 265 U.S. at 530.
58. Id.
59. Id.
60. Cf. Hard Rock Café Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1148 (7th Cir. 1992) (noting that "it is not clear how the [contributory infringement] doctrine applies to people who do not actually manufacture or distribute the good that is ultimately palmed off as made by someone else").
61. Andrew Jergens Co. v. Bonded Prods. Corp., 21 F.2d 419, 422 (2d Cir. 1927).
62. Id. at 424.
63. Id.
64. See 15 U.S.C. § 1114(1)(b) (2000). Section 1114(1)(5) provides for liability against any party that shall reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.
65. Id. § 1114 (1) (b).
66. The language of § 1114, moreover, limits liability to injunctive relief "unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive." Id. § 1114.
67. This was a problem in Marvel Enterprises, Inc. v. NCSoft Corp., 74 U.S.P.Q2d 1303, 1305 (CD. Cal. 2005), where the defendant sold a computer game called "City of Heroes" that allowed players to create their own superhero characters. When some players created characters that looked like Marvel Comics heroes, Marvel sued for trademark infringement. Id. The court rejected the claim of contributory trademark infringement, finding that the individual players were not engaged in trademark use and that, therefore, there was no infringement to which the defendant could contribute. Id. at 1308-09. Inexplicably, however, the court allowed Marvel to proceed on a claim that selling the game was an act of direct infringement. Id. at 1308, Marvel demonstrates the problems with ignoring trademark use in analyzing claims of direct infringement in circumstances that are better analyzed under contributory infringement standards.
68. See Cross, supra note 35, at 104 (presuming the "in connection with" requirement to apply only to parties that "themselves sell the underlying product"); cf. MCCARTHY, supra note 16, at § 25:17 ("Liability for trademark infringement and unfair competition may be extended beyond those who actually sell goods with the infringing mark, to include all those contributory infringers who knowingly cooperate in illegal and tortious activity."),
69. Dinwoodie & Janis, supra note 1, at 1654.
70. See, e.g., Bosley Med. Inst, Inc. v. Kremer, 403 F.3d 672, 679-80 (9th Cir. 2005); DaimlerChrysler AG v. Bloom, 315 F.3d 932, 939 (8th Cir. 2003); Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 623-26 (6th Cir. 1996); 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 407-11 (2d Cir. 2005); Karl Storz Endoscopy-Am., Inc. v. Surgical Techs., Inc., 285 F.3d 848, 855 (9th Cir. 2002); Best Western Int'l, Inc. v, Doe, No. CV-06-1537-PHX-DGC, 2006 WL 2091695, at *5 (D. Ariz. July 25, 2006); Nautilus Group, Inc. v. Icon Health & Fitness, Inc., No. C02-2420RSM, 2006 WL S761367, at *5 (W.D. Wash. Dec. 21, 2006); Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425, 428 (S.D.N.Y. 2006); Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393, 398-403 (N.D.N.Y. 2006); Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931, 934-35 (D.D.C 1985).
71. Avery & Sons v. Meikle & Co., 4 Ky. L. Rptr. 759, 763-64 (1883).
72. See, e.g., Interactive Products v. a2z Mobile Solutions, 326 F.3d 687, 698 (6th Cir. 2003); Patmont Motor Werks v. Gateway Marine, Inc., No. C96-2703, 1997 WL 811770, at *4 n.6 (N.D. Cal. Dec. 18, 1997).
73. See 15 U.S.C. §§1114, 1125 (2000) (prohibiting use "likely to cause confusion"); Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 538 (2d Cir. 2005) ("[T] he Lanham Act requires a court to analyze the similarity of the products in light of the way in which the marks are actually displayed in their purchasing context.").
74. The trade dress cases are a good example. Whether consumers view similarities in trade dress as aesthetic or source identifying will determine both the question of trademark use and that of infringement. Merchandising cases, too, involve difficult questions about whether consumers believe that trademark holders have sponsored or licensed merchandise bearing their marks. While we doubt that consumers traditionally had such an assumption, they may have developed it over time, at least in the professional sports context. We have critiqued the merchandising right elsewhere, not on the basis of trademark use, but because courts in the early merchandising cases failed to inquire into likelihood of confusion, as the Lanham Act requires. See generally Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 EMORY LJ. 461 (2005).
75. 15 U.S.C. §§ 1114(1), 1125(a) (defining infringement to require confusion as to source, sponsorship, or affiliation).
76. In other words, if a jury were to get it wrong and conclude that the defendant's use of the mark was likely to confuse the public as to source or sponsorship, the public would suffer through the loss of some valuable speech or marketplace competition.
77. 15 U.S.C. § 1115(b)(4); iee Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1059 (7th Cir. 1995) (describing the fair use defense); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791, 796 (5th Cir. 1983) (same).
78. Saxlehner v. Wagner, 216 U.S. 375, 380 (1910) (allowing imitator to use trademark "to tell the public what they are doing and to get whatever share they can in the popularity of the [trademarked product] by advertising that they are trying to make the same article and think that they succeed"); Smith v. Chanel, Inc., 402 F.2d 562, 566 (9th Cir. 1968) ("The courts . . . have generally confined legal protection to the trademark's source identification function for reasons grounded in the public policy favoring a free, competitive economy."); accord Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 503-04 (8th Cir. 1987) (upholding competitor's use of the Calvin Klein mark OBSESSION if used in a nondeceptive, comparative manner); G.D. Searle & Co. v. Hudson Pharm. Corp., 715 F.2d 837, 842 & n.12 (3d Cir. 1983) (holding that a generic could advertise its product as "[equivalent to" plaintiffs if accompanied by a disclaimer); Upjohn Co. v. Am. Home Prods. Corp., 598 F. Supp. 550, 561 (S.D.N.Y. 1984) (permitting the maker of Advil to advertise Advil's equivalent strength to Motrin by using the Motrin mark).
79. In New Kids on the Block v. News America Publishing, Inc., the court stated: Such nominative use of a mark - where the only word reasonably available to describe a particular thing is pressed into service-lies outside the strictures of trademark law: Because it does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder.
80. New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). See generally Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).
81. This safe harbor is explicit in the dilution statute. See 15 U.S.C. § 1125(c)(3). But courts have protected speech about trademarks in the consumer-confusion context as well. See, e.g., Mattel, 296 F.3d at 900-02 (denying infringement claim based on the use of Barbie mark in a song title); Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 502-05 (2d Cir. 1996) (finding no confusion based on parodic use of the SPAM mark); Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) ("[I]n general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression."); MasterCard Int'l Inc. v. Nader 2000 Primary Comm., Inc., No. 00-CIV.6068 (GBD), 2004 WL 434404, at *16 (S.D.N.Y. Mar. 8, 2004) (allowing for a politician's humorous use of commercial trademarks in political advertisements).
82. In some of these categories-particularly descriptive fair use-the Supreme Court has made clear that the defense applies even if confusion is likely. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 121-22 (2004) ("Since the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no free-standing need to show confusion unlikely, it follows.., that some possibility of consumer confusion must be compatible with fair use, and so it is.").
83. Indeed, these third-party cases fall farther from the line separating trademark use and non-use than do some of the established defenses such as descriptive fair use.
84. See infra Part III.
85. See, e.g., Google, Inc. v. Am. Blind & Wallpaper, No. C-03-5340JF (RS), 2007 WI. 1159950, at *6 (N.D. Cal. Apr. 18, 2007) (holding that a search engine's sale of keyword-based advertising can constitute trademark use under the Lanham Act); 800-JR Cigar, Inc. v. GoTo.com, Inc., 437 F. Supp. 2d 273, 282-93 (D.NJ. 2006) (allowing trademark claims against a pay-for-priority search engine based on its "sale" of keywords in exchange for prominent placement in search results); Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425, 426-28 (S.D.N.Y. 2006) (rejecting a trademark claim based on keyword-based advertising because defendant did not make trademark use); Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393, 397-404 (N.D.N.Y. 2006) (same); Edina Realty, Inc. v. TheMLSonline.com, No. Civ. 04-4371JRTFLN, 2006 WL 737064, at *1-2 (D. Minn. Mar. 20, 2006) (allowing a trademark claim based on keyword-based advertising); Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310, 321-24 (D.NJ. 2006) (same); Int'l Profit Assocs., Inc. v. Paisola, 461 F. Supp. 2d 672, 676-80 (N.D. Ill. 2006) (enjoining keyword advertising by a gripe site); cf. 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 408-12 (2d Cir. 2005) (rejecting infringement claim based on pop-up advertisements).
86. 15 U.S.C. § 1115(b)(4) (2000).
87. Dinwoodie & Janis, supra note 1, at 1616.
88. See Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 500 n.3 (5th Cir. 1979) (recognizing the statutory fair use provision as a codification of common law). Because the statutory fair use provision applies only to registered marks, courts have resorted to the common law to craft a fair use defense in the unfair-competition context. See Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1190 (5th Cir. 1980). As the court stated:
89. It would make no sense to characterize defendant's use as "fair" within the meaning of the Lanham Act for the purposes of a trademark infringement claim and at the same time characterize his use as "unfair" for the purpose of a section 43(a) unfair competition claim under the same statute.
90. Id. And at least some courts have used the descriptive fair use doctrine to excuse what are not really descriptive fair uses at all but rather non-trademark uses. See, e.g., Arnold v. ABC, Inc., No. 06 Civ. 1747(GBD), 2007 WL 210330, at *2-3 (S.D.N.Y. Jan. 29, 2007).
91. If the trademark use doctrine became a standard inquiry in every trademark case, including those involving defendants that sell their own products under the mark, then the trademark use doctrine might swallow subsidiary doctrines, including descriptive fair use. As discussed in this Article, however, trademark use has a more limited reach - covering only those who do not use the mark in branding their own goods or services - that does not tread into the territory of descriptive fair use. See also Int'l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270, 1274-75 (11th Cir. 2006) (analyzing the good-faith element of the descriptive fair use doctrine); Barrett, supra note 18, at n.433 (arguing that the two doctrines are distinct because descriptive fair use involves a subjective inquiry into good faith while trademark use is objective).
92. See, e.g., Baker v. Selden, 101 U.S. 99, 102-06 (1879) (establishing the idea-expression dichotomy); Winans v. Denmead, 56 U.S. (15 How.) 330, 343 (1854) (creating the doctrine of equivalents); Folsom v. Marsh, 9 F. Cas. 342, 348-49 (D. Mass. 1841) (establishing the fair use doctrine); Edmund W. Kitch, Graham v. John Deere Co.: New Standards for Patents, 1966 Sup. CT. REV. 293, 303-27 (tracing common-law evolution of the obviousness doctrine).
93. See, e.g., McDonald's Corp. v. Burger King Corp., 107 F. Supp. 2d 787, 791 (E.D. Mich. 2000) (noting the fair use doctrine's common-law roots);
94. MCCARTHY, supra note 16, at § 7:63 (discussing the long common-law history of the functionality doctrine, which Congress codified in 1998).
95. As we noted above, the closest statutory provision, the definition of "use in commerce," can be read to impose a requirement of trademark use, one that, if anything, is too strict. There is no way to read the statutory language to foreclose the imposition of such a requirement.
96. Dinwoodie & Janis, supra note 1, at 1659-60.
97. See 17 U.S.C. § 106(1) (2000) (providing copyright holders with an exclusive right "to reproduce the copyrighted work in copies or phonorecords").
98. See Sega Enters. Ltd. v. MAPHIA, 857 F. Supp. 679, 686 (N.D. Cal. 1994); Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552, 1559 (M.D. Fla. 1993) ("Intent or knowledge is not an element of infringement, and thus even an innocent infringer is liable for infringement"). These courts also found defendants liable for infringing the rights of public distribution and display.
99. Religious Tech. Ctr. v. Netcom On-Line Commc'n, 907 F. Supp. 1361 (N.D. Cal. 1995).
100. Id. at 1370.
101. Id.
102. See, e.g., CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 549 (4th Cir. 2004) (endorsing Netcom, in which "the court grounded its ruling principally on its interpretation of § 106 of the Copyright Act as implying a requirement of 'volition or causation' by the purported infringer").
103. The standards for secondary copyright liability are somewhat broader than trademark's contributory liability rule. Compare, e.g., A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1019 (9th Cir. 2001) (holding that contributory copyright liability applies when one who has knowledge of another's infringement "'induces, causes or materially contributes to'" that infringement (quoting Gershwin Publ'g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971))), and id. at 1022 (noting that vicarious liability extends to defendants who enjoy a direct financial benefit from infringing activity that they have a right and ability to supervise), with Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) (holding that contributory trademark infringement requires that a defendant actively induce infringement or continue to supply a product to a party with knowledge of that party's ongoing infringement). We use the copyright example not to suggest that trademark courts adopt the copyright standard but to illustrate the benefits of contextual, common-law responses to new uses and new technologies.
104. Religious Tech. Ctr., 907 F. Supp. at 1373-75.
105. See BRUCE A. LEHMAN & RONALD H. BROWN, INTELLECTUAL PROPERTY AND THE NATIONAL INFORMATION INFRASTRUCTURE: THE REPORT OF THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS 14-15 (1995) (recommending adoption of direct liability for copyright infringement with no volitional exception).
106. Digital Millennium Copyright Act of 1998, Pub. L. No. 105-304, 112 Stat. 2860 (codified at 17 U.S.C. § 512 (2000)).
107. It is worth noting that Congress has passed a somewhat similar safe harbor already in the trademark context. 15 U.S.C. § 1114(2)(B)-(C). This provision excludes the publisher of infringing content authored by another from
108. See 15 U.S.C. § 1051 (requiring "use in commerce" as condition of federal registration).
109. Dinwoodie & Janis, supra note 1, at 1639-40.
110. See Zazu Designs v. L'Oreal, SA, 979 F.2d 499, 503 (7th Cir. 1992) (noting that the trademark use doctrine "prevents entrepreneurs from reserving brand names in order to make their rivals' marketing more costly").
111. For an example of those thorny issues, see Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265-67 (5th Cir. 1975).
112. It bears emphasis that the trademark use doctrine does not necessarily insulate them from legal liability. Parties that play an intimate role in another party's infringement may well face liability as contributory infringers. Their liability, however, turns on proof that they satisfy the legal standard for contributory trademark infringement.
113. That section of the Lanham Act defines "use in commerce" as "the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark." 15 U.S.C. § 1127. Specifically, that use requires that the mark be "placed in any manner on the goods or their containers or the displays associated therewith" and that "the goods are sold or transported in commerce." Id. §1127.
114. Dinwoodie & Janis, supra note 1, at 1604-05.
115. Playboy introduced such a survey in the Playboy v. Netscape case, and the Ninth Circuit used it as the basis for concluding that Netscape may well have committed trademark infringement by allowing keyword-based ads using the Playboy marks. See Playboy Enters., Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1026 (9th Cir. 2004) (noting an expert report that "concluded that a statistically significant number of Internet users searching for the terms 'playboy' and 'playmate' would think that PEI, or an affiliate, sponsored banner ads containing adult content that appear on the search results page"). But see Goldman, supra note 7, at 577 Sc n.285 (describing the Playboy survey as "flawed beyond repair").
116. The Ninth Circuit recently rejected the idea that any use of keywords that causes a competitor's ad to appear next to a search result is illegal. Picture It Sold, Inc. v. iSOLDIT, LLC, No. 06-15112, 2006 WL 2467552, at *1 n.3 (9th Cir. Aug. 28, 2006). That case involved keywords purchased on words that appeared in the plaintiffs mark but not on the entire mark itself.
117. Playboy, 354 F.3d at 1026-27 ("The [expert study Playboy introduced] establishes a high likelihood of initial interest confusion . .. among consumers....").
118. In Playboy, the plaintiff introduced a survey suggesting that some people believed that trademark holders sponsored every ad that appeared in response to a trademark-based search. Id. at 1026. The court used this survey as the basis for concluding that keyword-based ads were likely to confuse the public and that Netscape could face liability for enabling them. See id. at 1026, 1031.
119. These sellers cannot use logos and other forms of the mark on their ads and packaging that might suggest an official relationship between themselves and the trademark holder, but they can clearly use the trademark in plain text to describe the nature of their product.
120. The same concerns apply to other lawful uses of trademarks, including descriptive fair use, nominative fair use, comparative advertising, and advertising of used and reconditioned products. A rule forbidding the use of trademark-based signals by advertisers would inhibit all of these desirable, information-enhancing uses of marks.
121. See, e.g., 35 U.S.C. § 271(b)-(c) (2000) (limiting contributory patent liability to (1) those who induce infringement and (2) those who sell devices specially designed or adapted to commit infringement, if such devices are "not a staple article or commodity of commerce suitable for substantial infringing use"); Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 440-42 (1984) (adopting the "staple article of commerce" doctrine in copyright law). Indeed, the Supreme Court in Sony made clear that the scope of indirect liability in trademark law is narrower than the corresponding doctrines in copyright and patent law. See id. at 439 & n.19. The Court stated:
122. If Inwood's narrow standard for contributory trademark infringement governed here, respondents' claim of contributory infringement would merit little discussion. Sony certainly does not 'intentionally induce [ ]' its customers to make infringing uses of respondents' copyrights, nor does it supply its products to identified individuals known by it to be engaging in continuing infringement of respondents' copyrights.
123. Id.
124. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 861-62 (1982) (White, J., concurring).
125. See id. ("Preventing the use of generic drugs of the same color to which customers had become accustomed in their prior use of the brand name product interferes with the important state policy, expressed in New York and 47 other States, of promoting the substitution of generic formulations.");
126. cf. id. at 861 ("The mere fact that a generic drug company can anticipate that some illegal substitution will occur to some unspecified extent, and by some unknown pharmacists, should not by itself be a predicate for contributory liability.").
127. Id.; cf. MCCARTHY, supra note 16, at § 25:18 (stating that "the supplier's duty does not go so far as to require him to refuse to sell to dealers who merely might pass off its goods").
128. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982).
129. Contributory infringement has historically required either inducement or the supply of goods to counterfeiters knowing they would be used to infringe; the supply of services has not historically constituted contributory trademark infringement. It is possible that courts will extend the doctrine to the supply of services, but given the narrow scope of contributory infringement in the trademark context, courts should approach such an extension with caution and apply it only against defendants with a high level of complicity in the direct infringer's behavior.
130. Beebe, supra note 30, at 1623-31.
131. Nor is actual confusion, another factor that seems like it should be quite important, immune from the possibility of manipulation. In Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1994), for example, the court found an obvious parody of a beer ad to be confusing, in part because the plaintiffs survey expert tweaked the questions asked of consumers in a way that generated spurious evidence of confusion. Id. at 775.
132. Edina Realty, Inc. v. TheMLSonline.com, No. Civ. 04-4371JRTFLN, 2006 WL 737064, at *1-2 (D. Minn. 2006); 1-800 Contacts, Inc. v. WhenU.com, Inc., 309 F. Supp. 2d 467, 490 (S.D.N.Y. 2003), rev'd, 414 F.3d 400 (2d Cir. 2005).
133. Wendy J. Gordon, On Owning Information: Intellectual Property and the Restitutionary Impulse, 78 VA. L. REV. 149, 167-69 (1992) ("A culture could not exist if all free riding were prohibited within it.");
134. Mark A. Lemley, Property, Intellectual Property, and Free Riding, 83 TEX. L. REV. 1031, 1049 (2005).
135. Dinwoodie and Janis actually suggest in their Article that proximate placement may indeed be confusing, so perhaps they think that such placement should be enjoined or at least that trademark owners should get to trial on such a claim. See Dinwoodie & Janis, supra note 1, at 1635 & n.177 and accompanying text. We think the prospect that Dinwoodie and Janis's approach might lead to successful trademark suits against grocery stores for putting all the sodas together on the same aisle is an excellent reason to reject their approach.
136. For a more detailed analysis of the retailer issue and an argument that Internet intermediaries play the same role for trademark purposes as retailers, see Eric Goldman, Brand Spillovers (Aug. 3, 2006) (unpublished manuscript), available at http://www.law.berkeley. edu/institutes/bclt/ipsc/papers2/ goldman.pdf.
137. See Dogan & Lemley, supra note 52, at 461-65 (detailing this history).
138. Our conversations with search-engine lawyers suggest that they get literally thousands of keyword-based trademark threats every year in the United States alone.
139. The AIPLA's economic survey reports that the median expenditures per side in legal fees to litigate a trademark case to trial were $300,000 for a small case, $700,000 for a medium-sized case, and $1.25 million for a large case. AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION, REPORT OF THE ECONOMIC SURVEY 22 (2005).
140. Kevin Newcomb, Yahoo! Modifies Trademark Keyword Policy, CLICKZ NEWS, Feb. 24, 2006, available at http://www.clickz.com/showPage.html?page=3587316.
141. As Stadler argues, risk aversion leads to ever-expanding rights over time because if companies are unwilling to make questionable uses, it entrenches as the norm-and therefore the outer limits of legality-behavior that was designed to fall well within those outer bounds. Sara K. Stadler, Incentives and Expectation in Copyright, 58 HASTINGS LJ. (forthcoming 2007) (manuscript at 22), available at http://ssrn.com/abstract=889344 ("When legal rules define rights by reference to the expectations of rightsholders, lawmakers can use those rules to narrow rights by conditioning rightsholders to lower their expectations.");
142. James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 YALE LJ. 882 (2007) (same). For arguments that the scope of confusion is, in fact, broadening over time,
143. see, e.g., Robert G. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B.U. L. REV. 547, 606-14 (2006);
144. Rochelle Cooper Dreyfuss, Reconciling Trademark Rights and Expressive Values: How to Stop Worrying and Learn to Love Ambiguity, in TRADEMARK LAW AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH (Graeme B. Dinwoodie & Mark D. Janis eds., forthcoming 2007), available at http://ssrn.com/abstract=929534;
145. Lemley, supra note 6, at 1697-1713.
146. Our communications with search-engine representatives indicate that they already receive many complaints demanding not only the removal of ads but also "clean" search results. Even scholars have started to suggest that search engines should be required to manipulate their search algorithms so that trademark owners show up first, or at least get a special note pointing consumers to their official website. See Frank Pasquale, Rankings, Reductionism, and Responsibility, passim (Seton Hall Univ. Sch. of Law, Working Paper No. 888327, 2006), available at http://papers.ssrn.com/ sol3/papers.cfm?abstract_id=888327.
147. But see Goldman, supra note 7, passim (contending that overly restrictive trademark law will harm consumer interest in access to information online).
148. See generally Goldman, supra note 7 (explaining the benefits of a robust market in search relevance).
149. SeeTy Inc. v. Perryman, 306 F.3d 509, 510 (7th Cir. 2002) ("The fundamental purpose of a trademark is to reduce consumer search costs by providing a concise and unequivocal identifier of the particular source of particular goods.");
150. WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 167-68 (2003);
151. Nicholas S. Economides, The Economics of Trademarks, 78 TRADEMARK REP. 523, 525-27 (1988) (discussing the economic benefits of marks that apprise consumers of products' unobservable features);
152. Nicholas S. Economides, Trademarks, in 3 THE NEW PALGRAVE DICTIONARY OF ECONOMICS AND THE LAW 602 (Peter Newman ed., 1998) [hereinafter Economides, Trademarks] (describing the savings for consumers in product searches as one of "[t]he primary reasons for the existence and protection of trademarks");
153. Brian A. Jacobs, Trademark Dilution on the Constitutional Edge, 104 COLUM. L. REV. 161, 164 (2004) (noting the search-costs rationale);
154. William M. Landes & Richard A, Posner, Trademark Law: An Economic Perspective, 30 J.L. &
155. ECON. 265, 268-70 (1987) (identifying the lowering of brand-recognition costs to consumers as the justification for trademark law);
156. Lemley, supra note 6, at 1690-94 (describing economic justifications for trademarks and advertising);
157. I.P.L. Png & David Reitman, Why Are Some Products Branded and Others Not?, 38 J.L. Sc ECON. 207, 208-11, 218 (1995) (analyzing empirical search cost data and suggesting that "consumers of products subject to performance uncertainty will pay for brandname assurance");
158. John F. Coverdale, Comment, Trademarks and Generic Words: An Effect-on-Competition Test, 51 U. CHI. L. REV. 868, 869-70 (1984) (noting that trademark law encourages competition, which potentially decreases the cost to consumers); see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995) (explaining that trademark law "reduce[s] the customer's costs of shopping and making purchasing decisions," and "helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product" (internal quotations omitted) (alteration in original)); Union Nat'l Bank of Tex., Laredo v. Union Nat'l Bank of Tex., Austin, 909 F.2d 839, 844 (5th Cir. 1990) ("The idea is that trademarks are 'distinguishing' features which lower consumer search costs and encourage higher quality production by discouraging free-riders."); cf. Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942) ("A trademark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants.").
159. See Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 505 (8th Cir. 1987).
160. See generally Dogan & Lemley, supra note 20.
161. See, e.g, Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 440-42 (1984);
162. see also Mark A. Lemley & R. Anthony Reese, Reducing Digital Copyright Infringement Without Restricting Innovation, 56 STAN. L. REV. 1345, 1379-90 (2004).
163. See generally Dogan & Lemley, supra note 52.
164. We concede that many consumers may have developed an assumption of trademark-holder sponsorship of merchandise, particularly in the professional sports context. Because this assumption arguably resulted from erroneous decisions in early merchandising cases, however, we suggest that courts should consider ways to correct the perception by allowing relief short of an injunction when confusion is likely but rectifiable.
165. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29-35 (2001) (denying trademark protection for a previously patented feature and noting that "copying is not always discouraged or disfavored by the laws which preserve our competitive economy"); Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 213-14 (2000) (concluding that "[consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves").
166. Dinwoodie &Janis, supra note 1, at 1627-30.
167. See, e.g., Goldman, supra note 7, at 511-28; Frank A. Pasquale III, The Law and Economics of Information Overload Externalities, http://papers.ssm.com/sol3/papers.cfm?abstract _id=888410 (arguing in the copyright context that the law should treat information intermediaries such as search engines more favorably because, if unfettered, they can help solve the information-overload problem).
168. A logical implication of Dinwoodie and Janis's approach to trademark law might well be to subject search engines to liability if trademark holders do not like their placement in search results, even absent any paid placement. Without any knowledge or intent requirement, or for that matter any other limit on what can constitute "trademark use," a search engine could well infringe if its search algorithm happened to bring up a search result that confused some consumers.