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

Text casesText cases

Toeppen violates FTDA by not using trademark in Toeppen violates FTDA by not using trademark in commerce and by trying to sell it to Panavisioncommerce and by trying to sell it to Panavision

Faber gets protection for “bally sucks”: no use in Faber gets protection for “bally sucks”: no use in commerce (no dilution), no confusion, critical comment/1commerce (no dilution), no confusion, critical comment/1stst amendmentamendment

March Madness v. Netfire: IHSA trademarks a very March Madness v. Netfire: IHSA trademarks a very famous term: Netfire can’t use it.famous term: Netfire can’t use it.

U-Haul v WhenU: pop ups in the browser, block the view U-Haul v WhenU: pop ups in the browser, block the view of U-Haul’s site, and that direct the user away. No of U-Haul’s site, and that direct the user away. No trademark infringement or dilution.trademark infringement or dilution.

Playboy v Wells: nominative use (tags DO have to comply, Playboy v Wells: nominative use (tags DO have to comply, but with the tests, not with absolute use or not).but with the tests, not with absolute use or not).

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

Playboy owns trademarks for Playboy owns trademarks for ““playboyplayboy”” and and ““playmateplaymate””

Netscape has list of terms that it Netscape has list of terms that it ““keyskeys”” to to advertisersadvertisers’’ banner ads, including banner ads, including ““playboyplayboy”” and and ““playmateplaymate””

Netscape makes more $$ for higher Netscape makes more $$ for higher ““click click throughthrough”” rate 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 Playboy argues ““initial interest confusioninitial interest confusion”” Customer confusion creates initial interest in Customer confusion creates initial interest in

competitorcompetitor’’s product.s product. Example:Example:

User types User types ““playboyplayboy”” into search engine 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

DefendantDefendant’’s intent in 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 PlayboyPlayboy’’s use of the terms s use of the terms ““playboyplayboy”” and and

““playmateplaymate”” are not functional are not functional

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

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

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

mere mere ““likelihood of dilutionlikelihood 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 courttrial court’’s grant of summary judgment in s grant of summary judgment in favor of Netscapefavor of Netscape

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

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? WhatWhat’’s the case about?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 Product ““readily identifiablereadily identifiable”” without use of 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.

WhatWhat’’s up with keyword s up with keyword advertising?advertising?

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

WhoWho’’s 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

Second Circuit holds:Second Circuit holds: Use of RescuecomUse of Rescuecom’’s mark in Adwords or 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 GoogleGoogle’’s practice causes a likelihood of s practice causes a likelihood of confusionconfusion

NETWORK AUTOMATION, INC. (Plaintiff-counter-NETWORK AUTOMATION, INC. (Plaintiff-counter-defendant) v. ADVANCED SYSTEMS CONCEPTS, INC. defendant) v. ADVANCED SYSTEMS CONCEPTS, INC.

(Defendant-counter-claimant- Appellee). ⎭(Defendant-counter-claimant- Appellee). ⎭Appeal from the United States District Court for the Central District of Appeal from the United States District Court for the Central District of

California. December 8, 2010—Pasadena, CaliforniaCalifornia. December 8, 2010—Pasadena, California

Network Automation (“Network”) and Advanced Systems Concepts Network Automation (“Network”) and Advanced Systems Concepts (“Systems”) are both in the business of selling job scheduling and (“Systems”) are both in the business of selling job scheduling and management software, and both advertise on the Internet. management software, and both advertise on the Internet.

Network sells its software under the mark Auto-Mate, while Network sells its software under the mark Auto-Mate, while Systems’ product is sold under the registered trademark Systems’ product is sold under the registered trademark ActiveBatch. ActiveBatch.

Network decided to advertise its product by purchasing certain Network decided to advertise its product by purchasing certain keywords, such as “Active-Batch,” which when keyed into various keywords, such as “Active-Batch,” which when keyed into various search engines, most prominently Google and Microsoft Bing, search engines, most prominently Google and Microsoft Bing, produce a results page showing “www.NetworkAutomation.com” as produce a results page showing “www.NetworkAutomation.com” as a sponsored link. a sponsored link.

NETWORK AUTOMATION, INC. (Plaintiff-counter-NETWORK AUTOMATION, INC. (Plaintiff-counter-defendant) v. ADVANCED SYSTEMS CONCEPTS, INCdefendant) v. ADVANCED SYSTEMS CONCEPTS, INC

Systems’ objection to Network’s use of its trademark to interest viewers in Network’s Systems’ objection to Network’s use of its trademark to interest viewers in Network’s website gave rise to this trademark infringement action.website gave rise to this trademark infringement action.

The district court was confronted with the question whether Network’s use of ActiveBatch The district court was confronted with the question whether Network’s use of ActiveBatch to advertise its products was a clever and legitimate use of readily available technology, to advertise its products was a clever and legitimate use of readily available technology, such as Google’s AdWords, or a likely violation of the Lanham Act, 15 U.S.C. § 1114. The such as Google’s AdWords, or a likely violation of the Lanham Act, 15 U.S.C. § 1114. The court found a likelihood of initial interest confusion by applying the eight factors we court found a likelihood of initial interest confusion by applying the eight factors we established more than three decades ago in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 established more than three decades ago in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), and reasoning that the three most important factors in “cases involving the (9th Cir. 1979), and reasoning that the three most important factors in “cases involving the Internet” areInternet” are

(1) the similarity of the marks; (2) the relatedness of the goods; and (3) the marketing (1) the similarity of the marks; (2) the relatedness of the goods; and (3) the marketing channel used. The court therefore issued a preliminary injunction against Network’s use of channel used. The court therefore issued a preliminary injunction against Network’s use of the mark ActiveBatch.the mark ActiveBatch.

Mindful that the sine qua non of trademark infringement is consumer confusion, and that Mindful that the sine qua non of trademark infringement is consumer confusion, and that the Sleekcraft factors are but a nonexhaustive list of factors relevant to determining the the Sleekcraft factors are but a nonexhaustive list of factors relevant to determining the likelihood of consumer confusion, we conclude that Systems’ showing of a likelihood of likelihood of consumer confusion, we conclude that Systems’ showing of a likelihood of confusion was insufficient to support injunctive relief. Therefore, we vacate the injunction confusion was insufficient to support injunctive relief. Therefore, we vacate the injunction and reverse and remand.and reverse and remand.

Network Automation, Inc. v. Advanced System Network Automation, Inc. v. Advanced System Concepts, Inc.Concepts, Inc.

buying keyword ads constitutes a use in buying keyword ads constitutes a use in commerce.commerce.

the most relevant factors to the analysis of the the most relevant factors to the analysis of the likelihood of confusion are: (1) the strength of likelihood of confusion are: (1) the strength of the mark; (2) the evidence of actual confusion; the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the be exercised by the purchaser; and (4) the labeling and appearance of the advertisements labeling and appearance of the advertisements and the surrounding context on the screen and the surrounding context on the screen displaying the results page.displaying the results page.