Trademark CasesTrademark CasesAnd now for something confusingly similarAnd now for something confusingly similar

10-19-1010-19-10Steve BaronSteve Baron

Bradley IM 350 Fall 2010Bradley IM 350 Fall 2010

What are the goals of trademark What are the goals of trademark law?law?

Protect owner of marks from freeloadersProtect owner of marks from freeloaders Protect consumers from being confusedProtect consumers from being confused

What are the fundamental What are the fundamental questions in trademark litigation?questions in trademark litigation?

Is the use of a mark likely to cause Is the use of a mark likely to cause confusion in the marketplace between that confusion in the marketplace between that mark and another mark?mark and another mark?

Is the use of mark likely to cause dilution Is the use of mark likely to cause dilution of another famous mark?of another famous mark?

Can you recognize these Can you recognize these trademarks?trademarks?

Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004)

Playboy owns trademarks for “playboy” and Playboy owns trademarks for “playboy” and “playmate”“playmate”

Netscape has list of terms that it “keys” to Netscape has list of terms that it “keys” to advertisers’ banner ads, including “playboy” and advertisers’ banner ads, including “playboy” and “playmate”“playmate”

Netscape makes more $$ for higher “click Netscape makes more $$ for higher “click through” ratethrough” rate

Playboy sues Netscape for trademark Playboy sues Netscape for trademark infringement and dilution.infringement and dilution.

Netscape wins on summary judgment in trial Netscape wins on summary judgment in trial courtcourt

Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004)On appeal:On appeal:

Playboy argues “initial interest confusion”Playboy argues “initial interest confusion” Customer confusion creates initial interest in Customer confusion creates initial interest in

competitor’s product.competitor’s product. Example:Example:

User types “playboy” into search engineUser types “playboy” into search engine banner ad pops up that leads user to an adult site not banner ad pops up that leads user to an adult site not

affiliated with Playboyaffiliated with Playboy While user understands that he is not at a Playboy site, While user understands that he is not at a Playboy site,

nonetheless he has been drawn to site through nonetheless he has been drawn to site through unauthorized use of good will of Playboyunauthorized use of good will of Playboy

Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004) On appeal: Eight factor test:On appeal: Eight factor test:

Strength of markStrength of mark Proximity of the goodsProximity of the goods Similarity of the marksSimilarity of the marks Evidence of actual Evidence of actual

confusionconfusion

Marketing channels usedMarketing channels used Type of goods and Type of goods and

degree of care exercised degree of care exercised by purchaserby purchaser

Defendant’s intent in Defendant’s intent in selecting markselecting mark

Likelihood of expansion Likelihood of expansion of the product linesof the product lines

Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004) Netscape DefensesNetscape Defenses

Fair useFair use But fair use must not be confusingBut fair use must not be confusing

Nominitive use Nominitive use But product or service must not be readily But product or service must not be readily

identifiable without use of the markidentifiable without use of the mark Functional useFunctional use

Playboy’s use of the terms “playboy” and Playboy’s use of the terms “playboy” and “playmate” are not functional“playmate” are not functional

Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004) DilutionDilution

Elements:Elements: Is mark “famous”Is mark “famous” Did defendant engage in commercial use of Did defendant engage in commercial use of

markmark Was there “actual dilution” of the mark (not Was there “actual dilution” of the mark (not

mere “likelihood of dilution”mere “likelihood of dilution”

Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004) ResultResult

Appellate court finds genuine issues of Appellate court finds genuine issues of material fact exist on both infringement material fact exist on both infringement and dilution claimsand dilution claims

Appellate court reverses and remands the Appellate court reverses and remands the trial court’s grant of summary judgment in trial court’s grant of summary judgment in favor of Netscapefavor of Netscape

Do you agree with Judge Berzon’s Do you agree with Judge Berzon’s concurring opinion?concurring opinion?

I am the master of my domain…I am the master of my domain…namename

What’s a domain name name?What’s a domain name name? What’s a domain name dispute?What’s a domain name dispute? Why do trademark holder’s care?Why do trademark holder’s care? Fundamental problem: many trademarks Fundamental problem: many trademarks

but only one domainbut only one domain

Toyota Motor Sales v. Farzad Toyota Motor Sales v. Farzad TabariTabari

Basics:Basics: What court?What court? Where?Where? What’s the case about?What’s the case about? What happened in the lower court?What happened in the lower court? What are the issues on appeal?What are the issues on appeal?

Toyota Motor Sales v. Farzad Toyota Motor Sales v. Farzad TabariTabari

Answers:Answers: Ninth Circuit Court of AppealsNinth Circuit Court of Appeals CaliforniaCalifornia Domain name dispute: Tabaris owns buy-a-Domain name dispute: Tabaris owns buy-a-

lexis.com and buyorleaselexus.comlexis.com and buyorleaselexus.com Trial court enjoins Tabaris from using LEXUS Trial court enjoins Tabaris from using LEXUS

mark in domain names.mark in domain names. Does nominative fair use apply? Was the Does nominative fair use apply? Was the

injunction too broad?injunction too broad?

Toyota Motor Sales v. Farzad Toyota Motor Sales v. Farzad TabariTabari

Nominative Fair Use Test – Consider Nominative Fair Use Test – Consider whether:whether: Product “readily identifiable” without use of Product “readily identifiable” without use of

mark;mark; D used more of the mark than necessary; orD used more of the mark than necessary; or D falsely suggested he was sponsored or D falsely suggested he was sponsored or

endorsed by the TM holder.endorsed by the TM holder.

Toyota Motor Sales v. Farzad Toyota Motor Sales v. Farzad TabariTabari

What does Ninth Circuit decide?What does Ninth Circuit decide? Why?Why? Do you agree?Do you agree?

Toyota Motor Sales v. Farzad Toyota Motor Sales v. Farzad TabariTabari

Other interesting observationsOther interesting observations Tabaris do not have lawyers – but they win Tabaris do not have lawyers – but they win

anyway!anyway! Judge Kozinski suggests that they receive Judge Kozinski suggests that they receive

appointed counsel.appointed counsel. Judge Kozinski makes repeated references to Judge Kozinski makes repeated references to

the level of sophistication and attitude of the level of sophistication and attitude of consumers on the internet – all without consumers on the internet – all without evidence in the record.evidence in the record.

Judge Fernandez points this out in concurrence.Judge Fernandez points this out in concurrence.

What’s up with keyword What’s up with keyword advertising?advertising?

What is keyword advertising?What is keyword advertising? How do competitor’s use key words to How do competitor’s use key words to

attract business from competitors?attract business from competitors? How does it implicate trademark How does it implicate trademark

infringement law?infringement law? Who is responsible? Who is responsible?

Advertiser?Advertiser? Search engine?Search engine?

Rescuecom Corp. v. GoogleRescuecom Corp. v. Google

Who’s who?Who’s who? What are they fighting about?What are they fighting about? What happens in the trial court?What happens in the trial court? What happens on appeal?What happens on appeal?

Rescuecom Corp. v. GoogleRescuecom Corp. v. Google

Google offers:Google offers: AdwordsAdwords Keyword Suggestion ToolKeyword Suggestion Tool

Rescuecom Corp. v. GoogleRescuecom Corp. v. Google

Rescuecom Corp. v. GoogleRescuecom Corp. v. Google

Second Circuit holds:Second Circuit holds: Use of Rescuecom’s mark in Adwords or Use of Rescuecom’s mark in Adwords or

Keyword Suggestion Tool is a use in Keyword Suggestion Tool is a use in commercecommerce

There is a question of fact as to whether There is a question of fact as to whether Google’s practice causes a likelihood of Google’s practice causes a likelihood of confusionconfusion