Amazon not liable for use of TM in review

Sen v. Amazon.com, Inc., 2018 WL 4680018, No. 16-CV-01486-JAH-JLB (S.D. Cal. Sept. 28, 2018)

Sen owns the trademark “Baiden” for skin-exfoliation products. Amazon bought “Baiden” through Google’s AdWords program and on other search engines. In 2012, Sen sued Amazon for this conduct and settled; the parties couldn’t agree on the terms of a long-form agreement, but the court enforced the terms of a settlement Memorandum of Understanding.

Now Sen sued again for infringement and false designation of origin/false advertising, alleging the unauthorized use of the Baiden mark in advertising as well as in an online review that promoted a competing product.  The infringement claim based on keyword/pay-per-click ads was barred by claim preclusion.

Contributory/vicarious liability for use in a review: Amazon user “Nanners” wrote that she initially purchased the Baiden Mitten, but she declared that a competing product is cheaper and delivers similar benefits.  This claim was barred by nominative fair use. Nanners’s review used the trademark to identify her subject; she used it “only to the extent necessary to identify the product she is reviewing” and didn’t use Baiden’s logo [query: could she have posted a picture of the product she received? I think the answer has to be yes].  Nothing else in the review suggested sponsorship or endorsement and indeed the idea that there are “monumentally cheaper” competitors suggested the opposite.

Tortious interference based on pay-per-click ads: precluded; the claim shared a transactional nucleus of facts with the initial trademark claim.  Tortious interference based on the review: barred by CDA §230.