Boston Duck Tours v. Super Duck Tours: First Circuit Lifts Trademark Injunction to Make Way for Super Duck

Boston Duck Tours v. Super Duck Tours

First Circuit, June 18th, 2008, Nos. 07-2078, 07-2246
Slip Opinion

On June 18, the First Circuit lifted a preliminary injunction granted by the District Court of Massachusetts, which had enjoined Super Duck Tours, LLC (“Super Duck”) from using the phrase “duck tours” in its trade name and the cartoon of a duck in its logo. On July 2, 2007, Boston Duck Tours, LP (“Boston Duck”) filed a complaint in the district court alleging federal trademark infringement and unfair competition and seeking a preliminary injunction against Super Duck. The district court granted the injunction and Super Duck appealed.

The First Circuit held that the lower court clearly erred in concluding that Boston Duck was likely to succeed on the merits of its trademark infringement, by over-estimating the likelihood that use of the phrase and image would cause consumer confusion.

The court of appeals did not address the district court's ruling regarding Super Duck's purchase of the key word phrase “Boston duck tours” on Google. “Sponsored linking” or “keyword advertising” allows the purchaser of a keyword to link his or her website to the search engine's results page with a highlighted link at the top of the page.

The district court found that Super Duck’s sponsored linking did not violate the injunction. It found that sponsored linking, however, does constitute “use” under the Lanham Act, which states that “a mark shall be deemed to be in use in commerce. . . (2) on services when it is used or displayed in the sale or advertising of services.” 15 U. S. C. §1127. The district court reasoned that the plain language of the statute and the majority of courts have considered sponsored linking “use.”

Unlike traditional advertising, sponsored linking makes use of allegedly infringing terms without actually displaying the marks to consumers, making it unclear whether such activity fulfills the “use in advertising” requirement. A split has developed in the circuit courts over interpretation of the act and the First Circuit has yet to rule on the matter. The Second Circuit has distinguished sponsored linking from more overt use of trademarks in advertising online, holding that sponsored linking does not constitute “use.” By contrast the Ninth and Tenth Circuit Courts of Appeals have held that similar internal uses do constitute “use” under the Lanham Act.

In this case, the First Circuit lifted the injunction on the basis of traditional trademark infringement analysis. The court held that the lower court clearly erred in concluding that Boston Duck was likely to succeed on the merits of its trademark infringement. To win its trademark infringement case, Boston Duck had to prove that its mark was entitled to trademark protection and that Super Duck’s use of the mark was likely to confuse consumers. The First Circuit determined that the phrase “duck tours” was generic, and that consumers were unlikely to be confused by the similarity between the names “Boston Duck Tours” and “Super Duck Tours.” The two companies’ similar cartoon duck logos, the court further held, were dissimilar enough to prevent confusion.

Law.com discusses the sponsored linking issue here.

FileWrapper analyzes the case here (with photos).

Press Coverage is also available from Business Week and Boston Magazine.