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.