Ninth Circuit rejects trademark claim against Google over search results

The US Court of Appeals for the Ninth Circuit has affirmed the dismissal of trademark and related claims brought by musician Lance M. Benedict against Google, holding that he failed to plead facts showing that Google used his name in commerce.

In a September 22 memorandum disposition, a three-judge panel rejected Benedict’s arguments and affirmed the US District Court for the District of Arizona’s dismissal of his complaint with prejudice.

Benedict alleged that Google violated his rights through its search engine and AdWords advertising. His first amended complaint centered on allegedly defamatory material published online by a third party, which he claimed Google subsequently displayed in its generic search results.

Benedict had registered the name “Lance Benedict” as a trademark for entertainment, marketing, and management services, according to the district court’s 2024 order. The district court concluded that Benedict had failed to allege the required commercial use of his trademark. The Ninth Circuit agreed.

Search results did not establish commercial use

The Ninth Circuit said the operative complaint “repeatedly challenges” Google’s display of third-party content in its generic search results. Under Ninth Circuit precedent, trademark infringement law does not prohibit all unauthorized uses of a trademark. Rather, the relevant use must be connected with a commercial transaction.

The panel cited its 2005 decision in Bosley Medical Institute, Inc. v. Kremer, which held that trademark law addresses unauthorized uses in connection with commercial transactions.

The court noted that Benedict had abandoned this theory on appeal. Although the district court had rejected his search-results allegations as insufficient to establish commercial use, Benedict did not specifically challenge that reasoning in his appellate briefing.

Instead, he argued that his theory had always been that Google had extensively used his trademark in its own AdWords advertising. The Ninth Circuit declined to consider that argument.

AdWords theory was not adequately pleaded

The panel found that Benedict’s first amended complaint contained only “scattered and disconnected references” to AdWords and did not adequately allege that Google had used his trademark in connection with a commercial transaction. The court distinguished the case from Rescuecom Corp. v. Google Inc., a 2009 decision of the US Court of Appeals for the Second Circuit involving allegations that Google sold a trademark owner’s mark as an AdWords keyword to a competitor.

In Rescuecom, the alleged conduct involved Google selling the trademark as a keyword so that a competitor’s advertisement would appear when users searched for the trademark. Benedict did not allege comparable conduct, the Ninth Circuit said.

The panel also rejected Benedict’s attempt to develop his new theory on appeal, noting that a party generally cannot raise an entirely new legal theory for the first time at that stage or effectively amend a complaint through appellate arguments.

Jurisdiction and leave to amend

The Ninth Circuit also rejected Benedict’s challenge to the district court’s exercise of diversity jurisdiction.

Benedict argued for the first time on appeal that he and Google shared California citizenship. The Ninth Circuit held that the relevant inquiry was whether the pleadings at the time Google removed the case raised a substantial question regarding diversity of citizenship.

Benedict’s operative complaint stated that he resided in Arizona, and the court found that his pleadings did not allege that he was a California citizen at the time of removal. The panel also upheld the denial of further leave to amend the complaint.

The district court had already given Benedict an opportunity to address the pleading deficiencies, and the Ninth Circuit agreed that another amendment would be futile. The court noted that additional detail concerning Google’s general AdWords practices would not cure the failure to allege facts showing that Google used Benedict’s mark in commerce.

The court also rejected Benedict’s attempt to supplement the appellate record with a declaration concerning his citizenship, finding that the declaration did not bear on the state of his pleadings when the case was removed.

The Ninth Circuit therefore affirmed the district court’s dismissal of Benedict’s complaint with prejudice. The September 22 decision is a memorandum disposition marked “Not for Publication.” Under Ninth Circuit Rule 36-3, such dispositions are not precedent except in the circumstances specified by the rule.

The decision nevertheless illustrates the importance of pleading facts establishing commercial use when asserting a trademark claim against a search-engine operator, as well as the limits on attempting to introduce a different theory of trademark use for the first time on appeal.

← Back to News