FILED
NOT FOR PUBLICATION
AUG 06 2018
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
STEVEN LASOFF, No. 17-35173
Plaintiff-Appellant, D.C. No. 2:16-cv-00151-BJR
v.
MEMORANDUM*
AMAZON.COM, INC.,
Defendant-Appellee.
Appeal from the United States District Court
for the Western District of Washington
Barbara Jacobs Rothstein, District Judge, Presiding
Argued and Submitted July 13, 2018
Seattle, Washington
Before: CLIFTON and NGUYEN, Circuit Judges, and BATTAGLIA,** District
Judge.
Steven Lasoff brought claims against Amazon for trademark infringement
and false advertising under the Lanham Act, monopolization under the Sherman
Act, and numerous violations under state law. The district court granted summary
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
**
The Honorable Anthony J. Battaglia, United States District Judge for
the Southern District of California, sitting by designation.
judgment in Amazon’s favor on every claim. On appeal, Mr. Lasoff challenges the
district court’s grant of summary judgment as to the two Lanham Act claims.1 We
review a district court’s grant of summary judgment de novo. Branch Banking &
Tr. Co. v. D.M.S.I., LLC, 871 F.3d 751, 759 (9th Cir. 2017).
We first turn to the infringement claim. The district court determined that
Mr. Lasoff owns a valid and protectable trademark in the term “Ingrass.” Mr.
Lasoff argues that Amazon infringed that trademark by purchasing the term Ingrass
as part of its keyword advertising program. But we have held that Amazon is
permitted to use a trademarked search term to direct consumers to competing
products, as long as the search results are clearly labeled. Multi Time Mach., Inc. v.
Amazon.com, Inc., 804 F.3d 930, 937–38 (9th Cir. 2015). Mr. Lasoff did not
provide any evidence that the search results here were not clearly labeled.
At oral argument, Mr. Lasoff argued that Multi Time Machine is
distinguishable because it involved competing watches, while Mr. Lasoff’s product
is artificial turf. He argued that consumers are more easily confused in the turf
market because the products are more similar than the items for sale in the watch
1
At oral argument, Mr. Lasoff argued that the district court erred as to the
state law claims. But that argument was not raised in Mr. Lasoff’s briefing and is
accordingly waived. See Smith v. Marsh, 194 F.3d 1045, 1052 (9th Cir. 1999)
(“[O]n appeal, arguments not raised by a party in its opening brief are deemed
waived.”).
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market. We disagree. The question is whether consumers are confused by the
search results, and those results display the trademarked product names. Id. at 937.
The display of names in a set of search results is not made more or less confusing
simply because the underlying products might be watches or turf.
Mr. Lasoff argued more generally that the law should be different and that
most people he talked with agreed with him that what Amazon did was improper.
We are not sure that his assertion is correct, but that is an argument that would
need to be addressed to Congress. Mr. Lasoff would like to ask a jury to decide
what the law should be, but that is not the function of a jury. A jury determines
facts, based on the law as it is instructed by the court. Amazon’s use of “Ingrass” in
search engine advertising did not violate Mr. Lasoff’s trademark under the law, and
a jury could not change that.
Mr. Lasoff also argued that disputed facts should have precluded summary
judgment. He noted that, before the district court, he contested the extent of
Amazon’s control over its keyword advertising program. According to Mr. Lasoff,
this control was relevant to the question of whether Amazon’s use of the Ingrass
trademark was a “use[] in commerce” for purposes of the Lanham Act. 15 U.S.C.
§ 1125(a)(1). He also noted that he contested Amazon’s argument that it was not
liable because the keyword advertising program was “fully automated.” But the
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district court decided both of those issues in Mr. Lasoff’s favor. Thus, Mr. Lasoff
failed to establish the materiality of any purportedly disputed fact.
Finally, we turn to the false advertising claim. Mr. Lasoff’s false advertising
claim fails because it was duplicative of his infringement claim. Compare 15
U.S.C. § 1125(a)(1)(A), with id. § 1125(a)(1)(B); see also Parks LLC v. Tyson
Foods, Inc, 863 F.3d 220, 226 (3d Cir. 2017) (“Parks’s false advertising claim fails
because it is essentially [an infringement] claim in disguise.”). False advertising
and infringement are two distinct bases of liability. See Lexmark Int’l, Inc. v. Static
Control Components, Inc., 134 S. Ct. 1377, 1384 (2014). False advertising claims
are based on “false representations in advertising concerning the qualities of goods
or services.” Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1108 (9th Cir. 1992),
abrogated on other grounds by Lexmark Int’l, Inc., 134 S. Ct. 1377. Here, Amazon
did not make any statements about the quality of Mr. Lasoff’s products.
AFFIRMED.
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