Amazon.com won summary judgment in the U.S. District Court of Colorado regarding its use of the third party mark VIDEO PROFESSOR in a sponsored link on Google. Video Professor Inc. had filed a trademark infringement suit against Amazon.com alleging, among other claims, that the company manipulated search results to lead consumers to competing products.

The court ruled in favor of Amazon. The ruling relied heavily upon the fact that the parties had entered into Amazon’s Vendor Manual in 2003, when Video Professor Inc. sold its products to Amazon for sale on its Web site. The Vendor Manual gave Amazon the worldwide and perpetual license to use Video Professor Inc.’s trademarks, including the VIDEO PROFESSOR mark. In 2008, Video Professor Inc. terminated the Vendor Manual, however, Amazon continued to use the mark to promote the sale of competing products after the termination of the agreement. Specifically, the complaint alleged that Amazon purchased the mark VIDEO PROFESSOR from Google so that, when a user searched for “VIDEO PROFESSOR” on Google, an Amazon advertisement would appear on the search results page. Amazon also continued to use the VIDEO PROFESSOR mark as part of its own search functionality and when a user searched for VIDEO PROFESSOR on Amazon, competing products were revealed.

Video Professor Inc. asserted eight claims for relief, including claims for trademark infringement, false designation of origin and unfair competition. One of Video Professor Inc.’s primary arguments was that the license between Amazon and Video Professor was limited only to Amazon’s use of the VIDEO PROFESSOR trademark in correlation with its sale of Video Professor Inc. products. The court refuted this argument, explaining that the plain meaning of the license was clear and that it did not prevent Amazon from using the mark to sell competing products. Video Professor Inc. also argued that the trademark license should have expired after Amazon no longer had any remaining stock of the Video Professor Inc. products. The court rejected this argument, explaining that the word “perpetual” gave Amazon the rights to use the mark even after the agreement had been terminated.

This case demonstrates the importance of paying attention to all the details of an agreement and considering what rights should extend beyond the termination date.

For more information, please contact Anthony Lupo or Sarah Bruno.

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Sarah L. Bruno
bruno.sarah@arentfox.com
202.775.5760