1-800 Contacts, Inc. v. Lens.com, Inc.

Purchasing keywords for "sponsored" links on internet search engines which contain registered marks of competitors does not alone amount to trademark infringement under the Lanham act.

Opinion (Hartz): 1-800 Contacts (1-800) is the world's leading retailer of contact lenses, which it sells over the internet, phone, and mail-order. 1-800 owns the registered service mark 1800CONTACTS. Lens.com, Inc. (Lens.com) is a contact lense retailer that does most of its business over the internet. In the summer of 2005, 1-800 discovered that searches for "1-800 Contacts" (and similar search inputs) on the www.Google.com search engine yielded advertisements for Lens.com among Google's sponsored search results. In 2007, after several failed attempts to have Lens.com remove their advertisements from Google searches for "1-800 contacts", 1-800 filed suit alleging direct, vicarious, and contributory infringement because Lens.com, along with various associates, had "use[d] the 1800 CONTACTS trademark as a triggering keyword to display and promote Lens.com's directly competitive goods and services." Lens.com filed a motion for summary judgment, arguing that the purchase of keywords for search engine results did not constitute trademark infringement. The district court granted Lens.com's motion, reasoning that: although purchasing a keyword link using "1-800 contacts" was use of a registered mark, because the ads consumers actually saw when they arrived at the Google.com results page did not contain any reference to 1-800's marks, there was no likelihood of consumer confusion. The district court also found that: although some of Lens.com's affiliates did use references to 1-800 Contacts in the actual body of their advertisements, 1-800 had failed to show that Lens.com's affiliates were Lens.com's agents or that Lens.com had either actual or constructive knowledge of their affiliate's infringement. The district court therefore granted Lens.com's motion on the issues of vicarious and contributory infringement. On appeal, 1-800 submitted survey evidence to show that there was actual consumer confusion as a result of Lens.com's keyword purchases alone. 1-800 also re-iterated their allegations of vicarious and contributory infringement. The Circuit court found that 1-800's survey had failed to show evidence of "initial-interest" confusion necessary to create an issue of fact on their direct infringement claims. The Circuit court did, however, rule that a rational juror could find that Lens.com knew of their affiliate's infringement. The court AFFIRMED Lens.com's motion on the issues of direct and vicarious infringement and REMANDED to the district court the issue of contributory infringement.