FPX, LLC v. Google, Inc.
276 F.R.D. 543
E.D. Tex.2011Background
- This is a civil action aligned against Google and related entities for trademark infringement and false designation of origin under the Lanham Act.
- Plaintiffs FPX, LLC, Hamilton Living Trust, and Beck seek class certification for nationwide/ Texas subclasses.
- Magistrate Judge Everingham recommended denying class certification and related motions; district court adopted those findings.
- Plaintiffs’ theory is initial interest confusion from Google’s AdWords/Keyword Suggestion Tool linking trademarks to competitors.
- The court analyzes Rule 23(a) commonality and Rule 23(b)(2) cohesion, plus the propriety of equitable disgorgement as class relief.
- The court finds material individualized issues preclude class treatment and otherwise rejects the motions to exclude/strike evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether commonality is satisfied under Rule 23(a)(2). | Plaintiffs contend common issues predominate due to shared misrepresentation theory. | Google argues that likelihood of confusion varies by mark and by context, preventing a class-wide answer. | No; commonality not met; claims depend on individualized confusion factors. |
| Whether the case is cohesive enough under Rule 23(b)(2). | Plaintiffs seek injunctive relief on a class-wide basis for all members. | Defendant asserts individualized issues defeat cohesiveness and require varied defenses. | No; class not cohesive due to fact-specific inquiries for each mark and defense. |
| Whether equitable disgorgement can be certified in a 23(b)(2) class. | Plaintiffs request equitable disgorgement in addition to injunctive relief. | Disgorgement requires nationwide liability and uniform state-law application, which is not feasible. | No; equitable disgorgement not appropriate for a 23(b)(2) class. |
| Whether the court must conduct fact-intensive validity/likelihood-of-confusion analyses for each mark. | Common contentions suffice for class-wide resolution. | Marks’ validity and confusion factors are highly individualized. | No; requires individualized validity and confusion analyses, precluding certification. |
Key Cases Cited
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir.2009) (definition of likelihood of confusion in context of Google ads)
- Wal-Mart Stores, Inc. v. Dukes, 131 S. Ct. 2541 (2011) (commonality and class certification rigor; class-wide resolution must drive claims)
- Castano v. American Tobacco Co., 84 F.3d 734 (5th Cir.1996) (rigorous analysis required for Rule 23; overlap with merits allowed)
- Langbecker v. Electronic Data Systems Corp., 476 F.3d 299 (5th Cir.2007) (4(c)(2) cohesion; individualized determinations defeat certification)
- Allison v. Citgo Petroleum Corp., 151 F.3d 402 (5th Cir.1998) (monetary claims in 23(b)(2) generally not permitted unless incidental)
- Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir.1998) (factors for likelihood of confusion; no single dispositive factor)
- Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145 (5th Cir.1985) (digits of confusion; no single factor controls)
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir.2011) (detailed analysis of likelihood of confusion across marks)