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Network Automation, Inc. v. Advanced Systems Concepts, Inc. is a California court case where the United States Court of Appeals for the Ninth Circuit reversed the district court's preliminary injunction against Network Automation on the issue of trademark infringement of the Advanced Systems Concepts' "ActiveBatch" trademark. The court evaluated the factors relevant to likelihood of customer confusion outlined in AMF Inc. v. Sleekcraft Boats, and concluded that was customer confusion was not likely, vacated the injunction, and reversed the decision.

Trademark Infringement Background
An essential condition for trademark infringement is customer confusion. A 1979 Ninth Circuit Court case, AMF Inc. v. Sleekcraft Boats, identified eight factors in determining whether confusion between related goods was likely. The eight factors are:
 * 1) strength of the mark
 * 2) proximity of the goods
 * 3) similarity of the marks
 * 4) evidence of actual confusion
 * 5) marketing channels used
 * 6) type of goods and the degree of care likely to be exercised by the purchaser
 * 7) defendant's intent in selecting the mark
 * 8) likelihood of expansion of the product lines

In 1999, another Ninth Circuit Court case, Brookfield Communications, Inc. v. West Coast Entertainment Corp., determined that of the eight Sleekcraft factors, three of them were most significant for cases involving the internet.
 * 1) the similarity of the marks
 * 2) the relatedness of the goods and services offered
 * 3) the simultaneous use of the Internet as a marketing channel

These three Brookfield factors are now known as the "Internet trinity" or "Internet troika".

Background
Network Automation ("Network") and Advanced Systems Concepts ("Systems") both sell job scheduling and management software. Network's product is called Automate and Systems' product is called ActiveBatch, and both companies run keyword advertisements on the internet. Network decided to buy the keyword "ActiveBatch" so that when users searched for "ActiveBatch", Network's website would be displayed as a sponsored link on search engines including Google Search and Microsoft Bing. Systems sent a letter to Network saying Network's usage of "ActiveBatch" was infringing Systems' trademark rights, then Network filed a lawsuit seeking declaratory judgement of non-infringement. Systems counterclaimed asserting trademark infringement under the Lanham Act, 15 U.S.C. § 1114 and seeking preliminary injunction against Network's usage of "ActiveBatch".

The district court analyzed the eight Sleekcraft factors and emphasized that the "Internet troika" from Brookfield were most significant, and they all favored Systems. Network used the identical mark, "ActiveBatch", to sell a product directly competing with Systems' product, and both Network and Systems used the Internet to advertise. The district court also concluded that many of the other Sleekcraft factors were in favor Systems, including the degree of consumer care because "there is generally a low degree of care exercised by Internet consumers." The district court ordered the preliminary injunction against Network using the "ActiveBatch" mark, and Network promptly appealed.

Opinion of the Court
The United States Court of Appeals for the Ninth Circuit concluded that likelihood of confusion was insufficient to support trademark infringement, and vacated the injunction, reversed and remanded. The Ninth Circuit Court decided that the district court applied the Brookfield factors too rigidly, and emphasized flexibility over rigidity for the "Internet troika" from Brookfield. The Brookfield case also emphasized flexibility:

The Ninth Circuit Court analyzed the eight Sleekcraft factors and decided that the district court relied too heavily on the "Internet troika", and incorrectly considered the factors in isolation. The federal court analysis of the factors are:

Strength of the Mark
The Ninth Circuit Court concluded that this factor favored Systems, since the mark "ActiveBatch" was the name of Systems' product, and also a federally registered trademark. Any consumer searching for "ActiveBatch" were more likely to be looking for the specific product and not a category of goods.

Proximity of Goods
The products from Systems and Network were virtually interchangeable, so the district court considered this factor in isolation, and found it in favor of Systems. However, the Ninth Circuit Court concluded that this factor should be considered with other factors such as the labeling and appearance of the advertisements, and the consumers' degree of care. The federal court concluded that the district court weighed this factor too heavily, without considering the fact that the two companies were direct competitors.

Similarity of Marks
The test for similarity of two marks compares the sight, sound and meaning of the marks. This comparison is impossible when two distinct trademarks do not exist. The district court incorrectly treated the "ActiveBatch" keyword bought by Network, and the ActiveBatch product from Systems as two different marks. The federal court concluded that the "ActiveBatch" keyword purchased by Network is the same trademark as of the ActiveBatch product, so a similarity comparison was not relevant.

Evidence of Actual Confusion
Evidence of actual confusion is not necessary to prove likelihood of consumer confusion, so the Ninth Circuit Court agreed with the district court in that this factor was given no weight.

Marketing Channels
The federal court decided that this factor is less important when the marketing channel is not obscure. Internet advertising was becoming ubiquitous, so sharing the same marketing channel does not reveal any information on the likelihood of consumer confusion. The district court incorrectly weighed this factor in favor of Systems.

Type of Goods and Degree of Care
The federal court found that the district court incorrectly concluded that this factor was in Systems' favor on the fact that in the 1999 Brookfield case, Internet users exercised a low degree of care. Internet users no longer exhibit a low degree of care for many situations. The Ninth Circuit Court also concluded that the type and cost of the product affects the degree of care by the consumer. A consumer of expensive, business software is more likely to understand search engines and sponsored advertisements, and thus be less likely to be confused.

Defendant's Intent
The Ninth Circuit Court concluded that the district court incorrectly considered this factor in isolation and presumed that Network knowingly used a similar trademark to deceive consumers. Since Network was providing a product in competition with ActiveBatch, Network was not trying to mislead consumers, but to inform them of other choices of comparable products.

Likelihood of Expansion of the Product Lines
The district court correctly disregarded this factor, since the likelihood of expansion does not apply when the two companies are direct competitors.

Other Relevant Factors
The eight Sleekcraft factors were never meant to be an exhaustive list. The appearance of the advertisements were also an important factor. The district court correctly analyzed the advertisement texts, and concluded that the text did not clearly identify the source, which could have led to consumer confusion. However, the Ninth Circuit Court found that the advertisements for both Google Search and Microsoft Bing were segregated from the search results, and were labeled as "sponsored links", so confusion was less likely.

Conclusion
This was an important case for keyword advertising since the opinion strongly suggested that keywords involving trademarks were not infringing. In addition, the opinion of the Ninth Circuit Court suggested that previous court case rulings involving trademark infringement on the internet depended too rigidly on specific factors, and did not consider the whole picture in the context of new emerging technologies. The results of this case will make it more difficult for future plaintiffs complaining about trademark infringement with keyword advertising. Google and other Internet search engines and e-commerce sites have made online advertising ubiquitous, andGoogle's own refusal to stop selling trademarked keywords made the practice pervasive and acceptable. These factors contributed to reducing the likelihood of consumer confusion of trademark usage in advertisements.

Notes...
This is from a harvard law blog.

Eric Goldman blog.

Ninth Circuit Clarifies Standards For Keyword Advertising Trademark Cases.

gibson dunn.

lewis and roca.

bullivant.

techdirt.