Trademark CasesTrademark CasesAnd now for something And now for something

confusingly similarconfusingly similar

3-12-093-12-09

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?

Morris Publishing Group v. SK*RTMorris Publishing Group v. SK*RT

National Arbitration ForumNational Arbitration Forum Authorized by Internet Corporation for Authorized by Internet Corporation for

Assigned Names and Numbers (ICANN) to Assigned Names and Numbers (ICANN) to resolve domain name disputesresolve domain name disputes

ICANN - Mandatory arbitrationICANN - Mandatory arbitration Arbitrators are typically lawyers and former Arbitrators are typically lawyers and former

judgesjudges Daniel Banks = former lawyer and judge, now Daniel Banks = former lawyer and judge, now

concentrates on mediation and arbitrationconcentrates on mediation and arbitration

Morris Publishing Group v. SK*RTMorris Publishing Group v. SK*RT

Morris Publishing owns trademarks: Morris Publishing owns trademarks: SKIRTSKIRT SKIRT!SKIRT!

Morris Publishing publishes newspaper Morris Publishing publishes newspaper devoted to women’s issues (since 1994)devoted to women’s issues (since 1994)

SK*RT.com registers (in 2007) domain SK*RT.com registers (in 2007) domain name:name: sk-rt.comsk-rt.com Social media ranking website and blogSocial media ranking website and blog

Morris Publishing v. SK*RTMorris Publishing v. SK*RT

Morris Publishing files complaint with NAFMorris Publishing files complaint with NAF Seeks transfer of domain nameSeeks transfer of domain name

Morris Publishing v. SK*RTMorris Publishing v. SK*RT

Arbitrator’s Findings:Arbitrator’s Findings: Domain name sk-rt.com is confusingly similar to the Domain name sk-rt.com is confusingly similar to the

SKIRT marksSKIRT marks Looks similarLooks similar Sounds identicalSounds identical

SK*RT has rights and a legitimate interest in domain SK*RT has rights and a legitimate interest in domain namename Legitimate businenssLegitimate businenss Functional web siteFunctional web site Do not compete with Morris PublishingDo not compete with Morris Publishing Domain name comprised of a common termDomain name comprised of a common term

Morris Publishing v. SK*RTMorris Publishing v. SK*RT

SK*RT did not register or use the domain SK*RT did not register or use the domain name in bad faithname in bad faith Domain name is comprised of a modified Domain name is comprised of a modified

generic termgeneric term

DeVry, Inc. v. University of DeVry, Inc. v. University of Medicine Medicine

Court = USDC ND ILLCourt = USDC ND ILL Plaintiffs = DeVry, Inc. and Global Plaintiffs = DeVry, Inc. and Global

EducationEducation Defendant = University of Medicine and Defendant = University of Medicine and

Health Sciences – St. KittsHealth Sciences – St. Kitts

DeVry, Inc. v. University of DeVry, Inc. v. University of MedicineMedicine

DeVry, Inc. v. University of DeVry, Inc. v. University of MedicineMedicine

Plaintiff owns trademarks: Plaintiff owns trademarks: ROSSROSS ROSS UNIVERSITYROSS UNIVERSITY

Educational servicesEducational services

Defendant:Defendant: Shares campus with Robert Ross Shares campus with Robert Ross

International University of NursingInternational University of Nursing Signs say: “Founded by Dr. Robert Ross”Signs say: “Founded by Dr. Robert Ross” Brochures mention “Ross University”Brochures mention “Ross University”

DeVry, Inc. v. University of DeVry, Inc. v. University of MedicineMedicine

Plaintiff sues for trademark infringement and Plaintiff sues for trademark infringement and unfair competitionunfair competition

Defendant files a motion to dismissDefendant files a motion to dismiss Argues “fair use” is “impenetrable defense”Argues “fair use” is “impenetrable defense”

DeVry, Inc. v. University of DeVry, Inc. v. University of MedicineMedicine

Court denies motion to dismiss:Court denies motion to dismiss: Statutory fair use cannot be decided without fact Statutory fair use cannot be decided without fact

discoverydiscovery Nominative Fair Use:Nominative Fair Use:

Def. uses plf.’s marks to refer to plf’s goods or services Def. uses plf.’s marks to refer to plf’s goods or services in a non-confusing manner.in a non-confusing manner.

Test:Test: Product or service not readily identifiable without use Product or service not readily identifiable without use

of markof mark Use only so much of mark as is necessaryUse only so much of mark as is necessary Don’t imply sponsorship or endorsement by Don’t imply sponsorship or endorsement by

trademark holdertrademark holder Can’t decide these issues without discoveryCan’t decide these issues without discovery