1-800 CONTACTS, INC. v. Lens. Com, Inc.
2010 U.S. Dist. LEXIS 132389
| D. Utah | 2010Background
- Plaintiff owns the service marks 1-800 CONTACTS and its stylized form, incontestable after five years of use and substantial advertising.
- Defendant Lens.com operates online contact-lens sales and utilizes an affiliate network via Commission Junction.
- Affiliates of Lens.com purchased keywords resembling Plaintiff’s mark (and variations) to trigger sponsored links; some affiliates directly used Plaintiff’s mark as keywords.
- Plaintiff notified Lens.com of alleged infringements starting in 2005 and again in 2007, urging cessation and negative keyword use; Lens.com cooperated selectively with affiliates.
- The court analyzes (i) whether purchasing a keyword constitutes use in commerce, (ii) likelihood of confusion from Lens.com’s ads, and (iii) theories of secondary liability, contract, and related Utah claims.
- The court ultimately determines keyword purchase can be a use in commerce, grants some aspects of Plaintiff’s summary judgment, and grants Defendant summary judgment on other claims; affililiate-impression cases remain central to liability.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether purchasing Plaintiff’s mark as a keyword constitutes use in commerce. | Plaintiff contends keyword use constitutes use in commerce under Lanham Act. | Lens.com argues keyword purchases are non-source-identifying, not use in commerce. | Yes, keyword use constitutes use in commerce. |
| Whether Lens.com’s ads that used Plaintiff’s mark (via affiliates) create likelihood of confusion. | Plaintiff asserts affiliate ads with Plaintiff’s mark cause confusion and infringe. | Defense argues ads are dissimilar and do not confuse consumers; many impressions are triggered by non-trademarked terms. | Mixed results: ads without Plaintiff’s mark show no likelihood of confusion; affiliate ads using the mark create likelihood of confusion. |
| Whether Lens.com is liable for secondary infringement (inducement, vicarious, contributory). | Plaintiff seeks secondary liability for affiliates’ infringing ads. | Lens.com did not directly induce; control over affiliates is limited; no agency relationship proven. | Contributory/inducement/vicarious liability denied; no agency relationship established; no liability for secondary infringement. |
| Whether there was a binding oral contract limiting keyword purchases. | Plaintiff asserts an agreement restricting keyword purchases and actions to resolve issues. | No meeting of the minds; emails show amicable resolution but lack definite terms. | No enforceable contract formed. |
| Whether Utah common law unfair competition, misappropriation, and unjust enrichment claims survive. | Plaintiff asserts these theories based on use as a keyword. | Use as a keyword is insufficient for infringement; claims fail on the merits. | All related Utah causes of action fail. |
Key Cases Cited
- Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006) (initial interest/confusion and metatag usage discussed in context of online use)
- Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999) (use of metatags and internet search impact on confusion; initial interest confusion analysis)
- Sally Beauty Co., Inc. v. Mountain, 304 F.3d 964 (10th Cir. 2002) (non-exhaustive factors for likelihood of confusion; strength of mark)
- In re Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) (contributory infringement doctrine framework; knowledge and continuing to supply standard)
- Tiffany, Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) (modern take on likelihood of confusion and use in commerce in the internet context)