Initial Interest Confusion Is Still Kicking in the Ninth Circuit

It looks like (Amazon) and Multi Time Machine (MTM) may be going to trial, as the Court of Appeals for the Ninth Circuit recently reversed a district court’s summary judgment in a trademark infringement suit against Amazon. In a split decision, the appeals court found that a jury could conclude the online marketplace has created a likelihood of confusion based on the theory of initial interest confusion. This decision is a controversial one, as a number of legal scholars, not to mention courts, have rejected the initial interest confusion doctrine.

At issue in this suit is the operation of Amazon’s online search engine. MTM manufactures MTM Special Ops watches, which are “tactical” military style watches. Amazon does not sell MTM’s watches on its website. However, if a consumer were to type “MTM Special Ops” into the site’s search engine, Amazon’s response would fail to notify that it does not carry MTM goods. Instead, it would again list “MTM Special Ops” directly below the search field, which would still show the terms “MTM Special Ops.” The results would display various watches which look similar to those of MTM. In other words, the consumer’s search will come up with a number of watches being sold by MTM’s competitors.

MTM argued consumers might be initially confused into believing MTM has a connection with one of the competitor brands whose watches appear in the results. The Ninth Circuit explained, “[a]s a result of this initial confusion, MTM asserts [a consumer] might look into buying a [competitor’s] watch, rather than junk the quest altogether and seek to buy an MTM watch elsewhere.” In other words, because Amazon’s search engine fails to inform consumers that the site does not carry MTM watches, those seeking that particular brand may be less likely to search for its watches on other sites, as they are confused into thinking they are still getting an MTM product. Therefore, MTM insisted, Amazon’s use of the MTM trademark may confuse consumers, thereby leading them to purchase competitor’s products.

While the district court determined that the use of MTM’s trademarked name on Amazon’s site did not create a likelihood of confusion, the Ninth Circuit found a jury could reasonably conclude otherwise based on the doctrine of initial interest confusion. In Playboy Enterprises Inc. v. Netscape Commc’ns Corp., the Ninth Circuit defined initial interest confusion as “customer confusion that creates initial interest in a competitor’s product.” Thus, initial interest confusion is not about a customer being confused about the source of a particular good at the time of purchase. Rather, it occurs earlier in the process. Even if the initial confusion is mitigated before a purchase is made, the alleged infringer may still be held liable. As explained in Playboy Enterprises, Inc., initial interest confusion is problematic because “[a]lthough dispelled before an actual sale occurs, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement.”

In its decision, the Ninth Circuit cited to an expert report stating that Amazon’s search results are “ambiguous, misleading, and confusing.” Based on this, the court found a reasonable jury might expect consumers to be confused as to why MTM products do not appear in the search results since Amazon does not announce to customers it does not carry any MTM goods. The court noted that Amazon’s competitors, for example, clearly indicate to its shoppers that there is no product matching a search for “MTO Special Ops.” These sites do, however, go on to list products of MTM’s competitors. The court also concluded that “a reasonable jury could infer that the search results will cause shoppers to wonder whether a competitor has acquired MTM or if the competitor is otherwise affiliated with or endorsed by MTM.” In its conclusion, the court emphasized that MTM may ultimately be unable to prove trademark infringement through initial interest confusion. However, the court found there were genuine issues of material fact, thereby warranting a trial.

The Ninth Circuit’s decision can be considered a controversial one, as the doctrine of initial interest confusion has been rejected by a number of federal courts. Those courts that have remained willing to apply it have done so “in an uneven fashion.” The Ninth Circuit has gone especially far by allowing a jury to decide on the initial interest confusion claim.

Supporters of the initial interest confusion doctrine argue it is important in preventing “bait-and-switch” tactics that use a trademark holder’s name and goodwill to help sales. However, critics of the doctrine have argued that “it does not have a foundation in trademark law principles and it is often used as a short cut to finding liability without rigorously analyzing whether there is a likelihood of confusion.” The dissenting judge pointed out there was no evidence that anyone had purchased a watch on Amazon under the mistaken notion that it was in some way affiliated with MTM. He then stated “to establish likelihood of confusion, MTM must show that confusion is likely, not just possible.”

It will be interesting to see how this case proceeds, as it is uncertain whether or not the parties will go to trial. Reports indicate Amazon has requested a new hearing. If Amazon’s request is denied, it will be important to observe how other courts respond to the Ninth Circuit’s decision. Even if this case does not inspire other circuits to begin applying the initial interest confusion doctrine, online marketplaces should beware of the message their search engines might be sending.

Kerrijane Wennberg is a second-year law student at the Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is looking forward to a career in trademark and copyright law.

1. Multi Time Machine, Inc. v., Inc., No. 13-55575, D.C. No. 2:11-cv-09076-DDP-MAN (9th Cir. July 6, 2015).
2. Id.
3. Patrick J. Concannon, ‘Initial Interest Confusion’ Trademark Doctrine Still Has Legs in Ninth Circuit, IP LAW BULLETIN (Aug. 16, 2015),
4. Multi Time Machine, Inc., No. 13-55575 at 3.
5. MTM SPECIAL OPS, (last visited Sept. 3, 2015).
6. Multi Time Machine, Inc., No. 13-55575 at 3-4.
7. Id. at 4.
8. Id. at 4-5.
9. Id. at 5.
10. Id. at 5.
11. Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1025 (9th Cir. 2004).
12. Multi Time Machine, Inc., No. 13-55575 at 9.
13. Peter Sullivan, Pushing the Envelope on Initial Interest Confusion Claims-Multi Time Machine, Inc. v. Amazon, TRADEMARK & COPYRIGHT LAW (August 31, 2015),
14. Playboy Enters., Inc., 354 F.3d at 1025.
15. Do’s Search Results Constitute Trademark Infringement?, THE NATIONAL LAW REVIEW (Aug. 27, 2015),
16. Id.
17. Multi Time Machine, Inc., No. 13-55575 at 6.
18. Id.
19. THE NATIONAL LAW REVIEW, supra note 14.
20. Multi Time Machine, Inc., No. 13-55575 at 22.
21. Sullivan, supra note 13.
22. Id.
23. Id.
24. Id.
25. Multi Time Machine, Inc., No. 13-55575 at 32.
26. Id.
27. Wendy Davis, Court Urged to Deny Amazon New Hearing in Battle over Search Results, THE DAILY ONLINE EXAMINER (Aug. 13, 2015, 1:09 PM),

Are Threats Made on Social Media a True Threats Exception to the First Amendment?

As the popularity of social media continues to grow, people are increasingly using it to express themselves. While expressing oneself on social media sites is a documented right as per the First Amendment, what is less clear is whether threats made on social media are permitted under the First Amendment, or whether they constitute the “true threats” exception that serves as a limitation on First Amendment rights. Put differently, at what point are threats made on Facebook no longer a rant, but a true threat that is not covered by one’s First Amendment rights?

In a recent major Supreme Court case, Elonis v. United States, Anthony Elonis posted various items on his Facebook page that sounded like threats about injuring his “estranged wife, police officers, a kindergarten class, and an FBI agent.” He argued that they were just rap lyrics that he “intended as artistic and fictional.” He claimed to be using rap as a “‘therapeutic’ medium” through which to vent his frustrations.

In all of the cases leading up to Elonis v. United States, many legal experts said that true-threat cases have failed to provide clear guidance, as there has been much disagreement among lower courts. However, as a New York Times article indicates, in Elonis v. United States, the Supreme Court had the opportunity to clarify whether the “true threats” exception to the First Amendment applies to threats made on Facebook, Internet and social media.

The key question for the Court to decide was how to instruct the jury. Should the jury be told that Elonis was guilty only if he had the purpose of putting the alleged targets in fear of criminal attack – the required mens rea? Or should the jury be told that Elonis was guilty so long as “a reasonable person would foresee” that the targets would perceive the statement as seriously expressing an intent to criminally attack them (a “negligence test”)? Each of these questions focuses on what level of mental culpability, or “mens rea,” is required to justify criminal punishment.

To figure this out, the Court had to interpret two bodies of law. First, it had to decide what mental state is required by the federal threats statute, 18 U.S.C. §875, which bans transmitting “in interstate or foreign commerce” (which includes the Internet, telephones, the mail, and many other means) “any communication containing any threat to kidnap [or injure].” Second, it had to decide what mental state is required by the “true threats” exception to the First Amendment, since it’s only the existence of this exception that makes the federal threats statute constitutional. And, as in all such situations, the criminal defendant would get the benefit of the higher mental state (the one more demanding on the government).

The federal trial court in this case concluded that the “reasonable person” negligence test was sufficient both under the federal statute and under the First Amendment true threats exception. The court of appeals agreed, as have most other circuit courts of appeals. But the Ninth and the Tenth Circuit courts of appeals concluded that, under the First Amendment, speech can’t be punished as a true threat unless it’s said with the purpose to put in fear, and that therefore the federal threat statute must be interpreted the same way (as must any other state or federal threat statutes, if they are to be constitutional). The Supreme Court agreed to hear the case, largely to resolve this disagreement among lower courts.

The Supreme Court decided that the federal threats statute would be satisfied by a showing that the speaker had the purpose of putting the target in fear (mens rea), or that he knew the target would be put in fear (the “knowledge test”) — the defendant’s counsel had conceded at oral argument that such knowledge would indeed satisfy the federal statute.

The Court decided that the federal threats statute would not be satisfied by a mere showing that a reasonable person would foresee that the statement would put the target in fear (the Court thus rejected the negligence test).

The Court expressly declined to reach the First Amendment question, because their ruling led to the conviction being reversed on statutory grounds (though there would likely be a retrial, if the prosecution so wishes). “Given our disposition,” the Court said, “it is not necessary to consider any First Amendment issues.”

Justice Thomas, who would have upheld Mr. Elonis’s conviction, said the majority’s approach was unsatisfactory. “This failure to decide,” he wrote, “throws everyone from appellate judges to everyday Facebook users into a state of uncertainty.”

But isn’t the Supreme Court’s decision not to rule on First Amendment issues a veneer of sorts? Is it really possible to draw the line between the federal threats statute and the true threats exception to the First Amendment when the consequences are identical? Granted, the Supreme Court required either a purpose to threaten or actual knowledge that the target of the threat will feel threatened in order for it to be criminalized under the federal threat statute, but aren’t they by default ruling on the “true threats” exception of the First Amendment? By not criminalizing Elonis, they are in effect allowing social media threats to be made even if a reasonable person would foresee that the statement would put the target in fear as per their First Amendment rights. Moreover, it is only because of the true threats exception to the First Amendment that the federal threat statute is constitutional altogether!

Whether or not the poster of the threat would be criminalized under the First Amendment true threats exception if they did indeed have the purpose to put the target in fear remains unclear, however, what is crystal clear is that a poster of a threat which a reasonable person would foresee as putting the target in fear does NOT fall within the true threats exception of the First Amendment, and remains covered under one’s First Amendment rights. Even the Supreme Court of the United States cannot disguise that.

Elonis v. United States, 135 S.Ct. 200 (2015).

Adam Liptack, On the Next Docket: How the First Amendment Applies to Social Media, The New York Times, June 30, 2014,

Eugene Volokh, The Supreme Court doesn’t decide when speech becomes a constitutionally unprotected “true threat”, The Washington Post, June 1, 2015,

Adam Liptack, Supreme Court Overturns Conviction in Online Threats Case, Citing Intent, The New York Times, June 1, 2015,

Erik Nielson & Charis E. Kubrin, Will Top Court Challenge Prosecution of Rap, CNN, June 23, 2014,

Elana Herzog is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is an active member of PILSA and looks forward to a career in public interest.

Forever 21, Forever Problematic: Forever 21 is Slammed with yet Another “Copycat Design” Trademark Infringement Lawsuit

Adidas recently filed a lawsuit against Forever 21, Inc. and Central Mills, Inc., in which Adidas claims that Forever 21 and Central Mills allegedly infringed Adidas’s famous three-stripe trademark. The lawsuit was filed in federal district court in Portland, Oregon, where the German sportswear giant’s North American headquarters are located.

In a complaint filed on August 17, 2015, Adidas America, Inc., a Delaware corporation, and Adidas AG, a foreign entity, demanded a jury trial in the suit against Forever 21, Inc., a Delaware corporation, and Central Mills, Inc., a New York corporation. Adidas alleged the following claims against Forever 21 and Central Mills: counterfeiting, trademark infringement and dilution, unfair competition, and deceptive trade practices.

In the complaint, Adidas argued that “[d]efendants’ apparel is not manufactured by adidas, nor are Defendants connected or affiliated with, or authorized by, adidas in any way. Defendants’ merchandise is likely to cause confusion, deceive the public regarding its source, and dilute and tarnish the distinctive quality of adidas’s Three-Stripe Mark.”

The complaint provides two images of Forever 21 apparel that Adidas claims are examples of confusingly similar or identical imitations of the Adidas Three-Stripe mark.

In Adidas’s complaint, the company states that it “owns numerous incontestable federal trademark registrations for its Three-Stripe Mark for apparel and footwear, and adidas has invested millions of dollars building its brand in connection with the Three-Stripe Mark.”

Adidas also claimed that Forever 21, as well as retailer Central Mills, “intentionally adopted and used counterfeit and/or confusingly similar imitations of the Three-Stripe Mark knowing that they would mislead and deceive consumers into believing that the apparel was produced, authorized, or licensed by adidas, or that the apparel originated from adidas.”

However, Forever 21 is not a stranger to lawsuits. Forever 21 has a history of being embroiled in a variety of legal controversies. The fashion company has faced trademark lawsuits from other fashion brands that claim that Forever 21 is copying their designs. In fact, Forever 21 is way too familiar with being involved in legal battles. The company has faced lawsuits for employment discrimination and labor violations.

The fashion company has also been the subject of more than 50 copyright lawsuits from prominent designers (including Anna Sui, 3.1 Phillip Lim, Gwen Stefani, and Diane von Furstenberg) for allegedly stealing their designs. Diane von Furstenberg sued the retailer, arguing that Forever 21 copied four of her dresses.

Susan Scafidi, Professor and Academic Director of the Fashion Law Institute at Fordham University School of Law, said that Forever 21’s “design is swathed in mystery” and that “it probably looks a bit like a crime scene, with the chalk outlines of the garments they’re copying.”

So in addition to a jury trial, what does Adidas want from Forever 21? Adidas wants Forever 21 to immediately and permanently end all manufacturing, sourcing, importing, selling, promoting, distributing and marketing of the allegedly infringing garments, and deliver the garments to Adidas so that they can be destroyed. Adidas also seeks damages that could possibly be in the millions of dollars.

It is widely known that Forever 21’s powerful legal team is hired by the company to swiftly settle lawsuits similar to Adidas’s.

Sherry Wilson is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is particularly interested in intellectual property law and administrative law.



Greenpeace[ful?] Harm to Cultural Property

The Nazca lines are a celebrated example of cultural property. Located in the Nazca Desert in southern Peru, the Nazca lines are a series of ancient designs called “geoglyphs” that were created by removing small, reddish pebbles to expose the white ground underneath. These designs were created by the Nazca culture between 400 and 650 AD, and were recognized as a UNESCO World Heritage Site in 1994. The designs include animals, trees, and flowers. Moreover, the unique climate of the Nazca Desert has allowed for the natural preservation of these early forms of art: since the area is relatively isolated and windless, the designs have remained naturally intact. As such, Peru has taken care to further preserve the Nazca lines. In doing so, the nation has voiced environmental concerns, and has stringently regulated access to the area. For example, “[e]ven ministers and presidents have to seek special permission [to visit] and wear special footwear to access the grounds.”[1]

In December 2014, climate change talks were held in the Peruvian capital of Lima. Greenpeace took the opportunity to illegally visit the Nazca lines and use yellow fabric letters to inscribe “Time for Change! The Future is Renewable. Greenpeace” next to one of the iconic images of a Nazca hummingbird. In doing so, the group of activists allegedly removed 1,600 km2 of the surface next to the hummingbird.[2] This display can be seen from an airplane descending into Lima, so Greenpeace used the letters to catch the attention of those attending the climate change talks. In doing so, Greenpeace seriously offended both Peruvians and art appreciators alike. Not only was their entry illegal, but also they did not use the special footwear when traversing the delicate landscape. The incident also sparked a heated legal debate about preservation of cultural property, as well as prosecution and extradition. Continue reading Greenpeace[ful?] Harm to Cultural Property

Shoulder Surfing: A Fourth Amendment Violation

With the advent of social media, people have taken their personal lives online. With photos, wall posts, “likes,” and friend requests, a plethora of information detailing the innermost thoughts of a person are available with just a username and password.

Employers, in an effort to learn more beyond an applicant’s resume and cover letter, use information available through social media to their advantage. Employers ask, or even require, applicants to provide their passwords to social media sites.

As a result of strong public criticism against passwords requests, some employers “shoulder surf” as a way to circumvent any backlash or newly imposed social media legislation. Shoulder surfing is a practice by which a prospective employer will ask an applicant, usually during an interview, to log onto their social media pages in front of them. The employer will then hover over the applicant as the applicant scrolls through their pages and accounts. Continue reading Shoulder Surfing: A Fourth Amendment Violation

Google Autocomplete and the Potential for Defamation

Autocomplete is a feature provided by many search engines that uses an algorithm to automatically display search suggestions to fill queries as information is inputted. These search suggestions are based on a user’s search history, popular search queries, and a number of other objective factors. Autocomplete is an extremely useful search tool, as it may accelerate and refine searches in ways users would not expect.   However, despite its benefits, autocomplete has been the subject of controversy. Autocomplete can be potentially defamatory if your name or company is autocompleted with something negative. Even assuming the negative information is false, the suggestion alone has the power to completely destroy your reputation.

Autocomplete was originally implemented to help people with disabilities increase their typing speed and reduce the number of keystrokes needed in order to complete a word or sentence. It quickly became clear, however, that autocomplete served a purpose for all Internet users. Autocomplete operates so that when a user inputs the first letter or word into the search bar, it predicts one or more possible words to fill the query. If the user intends to type what appears in the list, he can select it. If not, the user must type in the next letter of the word. As each additional letter is entered into the search box, autocomplete automatically alters the search suggestions in the drop-down menu. Once the word or phrase that the user intends to search appears, he can select it and press “Enter” to complete the search.

Autocomplete search suggestions are generated by an algorithm that takes into account a number of objective factors, such as a user’s previous searches and popular search queries.  Other criteria are also factored into the ranking, such as the user’s location and a search term’s “freshness.” In addition, the algorithm automatically detects and filters out a small set of search terms related to pornography, violence, hate speech, and copyright infringement.

Around the world, Google has been subjected to defamation lawsuits based on the content that automatically appears as Internet users input their search queries into Google’s search box. Even though the content in Google’s search suggestions is mainly based on information inputted by third parties, plaintiffs have sued Google on the grounds that it “controls, “creates,” or “publishes” the information through autocomplete. Plaintiffs’ arguments are based on the fact that Google uses an algorithm to aggregate, synthesize, and reconstitute input query data prior to publishing it in its autocomplete search suggestions. Google also consistently updates and improves its algorithm. Plaintiffs argue that by using artificial intelligence, which Google itself creates and maintains, to actively facilitate searches, Google does more than simply convey third-party information. Therefore, it should be held liable for any defamatory content displayed.  Most foreign courts have accepted this argument and found Google liable, forcing it to either remove the defamatory material upon request or otherwise modify its autocomplete algorithm. Continue reading Google Autocomplete and the Potential for Defamation

Food Plating and Trade Dress: Can a Chef Claim Trademark Protection for a Signature Dish?

In America’s burgeoning foodie culture, food is increasingly being embraced as art. At many high-end restaurants, food is intricately created, carved and designed, and placed with artistic precision and perfection on each plate before being delivered to diners. Color combinations, along with textures, layering, and placement are all considerations a chef uses to create artistically designed dishes. Recently, The Drawing Center in Soho, New York City exhibited the work of Ferran Adria, chef of famed Spanish restaurant El Bulli, demonstrating that Adria’s work at El Bulli had “transcended mere hospitality” and that Adria had achieved the status of artist. But is the presentation of food, intended for eating, considered “art” worthy of intellectual property protection? This post briefly examines whether chefs can protect their food presentation under U.S. trademark law. For a full discussion of chefs’ rights (or lack of rights) to protect food presentation under U.S. copyright law, trademark law, and design patent law, please see Food Art: Protecting Food Presentation Under U.S. Intellectual Property Law.

In 2006, a scandal erupted in the culinary world. Commenters on the popular cuisine blog, eGullet, accused Robin Wickens, famous chef at (now closed) Interlude restaurant in Melbourne, Australia of serving dishes copied from renowned American chefs Wylie Dufresne, Jose Andres, and Grant Achatz. It is not uncommon for chefs to borrow recipes from other chefs, and there has been a long culture of sharing in the cuisine industry. However, what made Wickens’ actions scandalous was that he had purportedly copied the artistic presentation and plating of other chefs’ dishes, not just their recipes.

This is not the only time a chef was accused of copying another chef’s food plating. Continue reading Food Plating and Trade Dress: Can a Chef Claim Trademark Protection for a Signature Dish?

Collective Bargaining and Student Athletes

Recently, Edward O’Bannon, at the age of forty-one and working as a car salesman in Las Vegas, recognized himself in a video game. He became distressed and concerned that his likeness was being used without his consent—and without any form of compensation. Mr. O’Bannon is a former student-athlete who led the University of California, Los Angeles (“UCLA”) to victory in the 1995 National Collegiate Athletic Association (“NCAA”) championship in his senior season. Mr. O’Bannon was considered a fantastic player in the tournament and a “consensus all-American.”[1] In turn, he was drafted ninth by the New Jersey Nets, but his professional career fizzled out and never quite matched the expectations set by his excellent undergraduate career. Continue reading Collective Bargaining and Student Athletes