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Buying for the Home, LLC v. Humble Abode, LLC (D.N.J.)

Case Conclusion Date: 10.19.2006

Practice Area: Trademark infringement

Outcome: Cash payout to defendant after mixed SJ opinion

Description: From Eric Goldman's Technology and Marketing Blog: [T]he court denied the defendant's motion for summary judgment on the use in commerce issue. For more on why this result is wrong, see my writeups on the Edina Realty and 800-JR-Cigar cases. In an ironic twist, the defendant alleges that the plaintiff buys the "Humble Abode" keyword at Google and displays an ad saying: "Save on Humble Abode. Find many of the Humble beds at a significant discount" and providing a link to the plaintiff's website. I really don't understand how a plaintiff can complain with a straight face about competitive keyword purchases on its trademarks when it does the same thing itself. (But this seems to happen fairly frequently--for example, it was an embarrassing fact in the 1-800 Contacts case as well). In this ruling, the defendant sought SJ on its counterclaim against the plaintiff for buying its trademarks. This should set up a mirror image opinion--if keyword purchases are a problem, the plaintiff should be liable too. The judge sidesteps this parallelism by ignoring the use in commerce question altogether, instead citing the possibility that the plaintiff is protected by the nominative use defense to deny the defendant's SJ motion on the counterclaim. Of course, this raises a highly ironic question, but the irony appears to have been lost on (or ignored by) the judge. You may recall the Buying for the Home v. Humble Abode decision from last Fall, part of the topsy-turvy jurisprudence from 2006 on whether buying/selling trademarked keywords constitutes a trademark use in commerce. In the prior opinion, the defendant Humble Abode failed to win summary judgment to dismiss Buying for the Home's infringement claim. Further, Humble Abode brought a counterclaim based on Buying for the Home's purchase of keywords containing Humble Abode's trademarks, and the court also denied Humble Abode's SJ motion for its counterclaim. Cooler heads have prevailed, and the parties settled the case. Both agreed not to use the other's trademarks on their websites. However, as far as I can tell, the parties did not agree to stop buying each other's trademarks as keywords--a pretty big omission if that's what started the lawsuit in the first place. Further, the settlement deal includes the initial aggressor, Buying for the Home, paying the defendant, Humble Abode, $10,000. So Buying for the Home initiates the lawsuit and beats Humble Abode's motions for SJ, but nevertheless settles the case without stopping Humble Abode from buying its trademarked keywords, AND ends up writing a check to Humble Abode to boot? What gives?

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