Today

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Today

• Chapter 16 and Chapter 18
• Issue
• How to use words and technology to attract
  customers and place ads
• Some uses are overt domain name
• Some are hidden metatags and other means of
  shaping search engine results.
• Some of these are intentional

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Basic Structure

• Must show 1) that it possesses a mark 2) that
  the defendant used the mark 3) that the
  defendant's use of the mark occurred "in
  commerce" 4) that the defendant used the mark
  "in connection with the sale, offering for sale,
  distribution, or advertising" of goods and
  services and 5) that the defendant used the mark
  in a manner likely to confuse customers
• Fair use It is well established that the Lanham
  Act does not prevent one from using a
  competitor's mark truthfully to identify the
  competitor's goods or in comparative
  advertisements. This fair use doctrine applies in
  cyberspace as it does in the real world.

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Issue when to gauge it

• Control or influence of entry or directions only
• Entire package, factor driven
• Package, factor driven, but some have greater
  value Three most important Sleekcraft factors in
  evaluating a likelihood of confusion are (1) the
  similarity of the marks, (2) the relatedness of
  the goods or services, and (3) the parties'
  simultaneous use of the Web as a marketing
  channel.
• Only after they arrive once there how quick or
  hard is it to know and void confusion

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• Discussion Point Your client (Tickets, Corp.)
  is starting an online business site that will
  provide an alternative to Skylink Corporations
  stong lock on the market for providing a resource
  for consumers to select and purchase travel
  tickets on airlines, cruise ships and other
  travel formats. Client has the contacts and
  funds to compete, but it has not yet named its
  online site or taken other steps to attract
  customers. Skylink operates on Sklink.com.
  Client seeks advice on how to set up its site,
  and name it, and attract customers to it. What
  legal issues arise in context of the scope of our
  course?

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Brookfield case

• Moviebuff (Bookfield TM)
• Information on the entertainment industry
• Cannot register because West Coast there first
• WC is video store
• Issue Name
• Issue Metatags When a keyword is entered, the
  search engine processes it through a self-created
  index of web sites Each search engine uses its
  own algorithm to arrange indexed materials
  Search engines look for keywords in places such
  as domain names, actual text on the web page, and
  metatags. Metatags are code intended to
  describe the contents of the web site. The
  description metatags are intended to describe the
  web site the keyword metatags, at least in
  theory, contain keywords relating to the contents
  of the web site.

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Initial interest

• Here, we must determine whether West Coast can
  use "MovieBuff" or "moviebuff.com" in the
  metatags of its web site at "westcoastvideo.com"
  or at any other domain address other than
  "moviebuff.com" (which we have determined that
  West Coast may not use).
• Although there is no source confusion in the
  sense that consumers know they are patronizing
  West Coast rather than Brookfield, there is
  nevertheless initial interest confusion in the
  sense that, by using "moviebuff.com" or
  "MovieBuff" to divert people looking for
  "MovieBuff" to its web site, West Coast
  improperly benefits from the goodwill that
  Brookfield developed in its mark.
• Using another's trademark in one's metatags is
  much like posting a sign with another's trademark
  in front of one's store

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Playboy v. Netscape

• Keyed ads Netscape displays ads based on entry
  of words for search
• Playboy, Playmate as keyed words
• Argue this use is commercial use of my trademark
  that creates confusion
• Playboy

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Issues

• PEI's strongest argument is initial interest
  confusion. Initial interest confusion.
• Once they follow the instructions to "click
  here," and they access the site, they may well
  realize that they are not at a PEI-sponsored
  site. However, they may be perfectly happy to
  remain on the competitor's site
• Factors Evidence of Actual Confusion. Dr. Ford,
  concluded that a significant number of Internet
  users searching for "playboy" and "playmate"
  would think that PEI sponsored banner ads
  containing adult content that appear on the
  search results page

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Other Factors

• Factor Strength of the Mark.
• Factor Defendants' Intent in Selecting the Mark
  
• In this case, the evidence does not definitively
  establish defendants' intent. At a minimum,
  however, it does suggest that defendants do
  nothing to prevent click-throughs that result
  from confusion. Moreover, they profit from such
  click- throughs.
• Intent to confuse
• Defendants monitor click throughs
• Do not require alleviate confusion

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Defense

• Nominative use of PEI's marks.
• To be considered a nominative use, the use must
  meet the following three-factor test
• First, the product or service in question must be
  one not readily identifiable without use of the
  trademark
• Second, only so much of the mark or marks may be
  used as is reasonably necessary to identify the
  product or service and
• Third, the user must do nothing that would, in
  conjunction with the mark, suggest sponsorship or
  endorsement by the trademark holder.
• Not Here
• Functional use makes our system work better

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Concurrence

• As applied, Brookfield might suggest that there
  could be a Lanham Act violation even if the
  banner advertisements were clearly labeled,
  either by the advertiser or by the search engine.
  
• There is a big difference between hijacking a
  customer to another website by making the
  customer think he or she is visiting the
  trademark holder's website (even if only
  briefly), which is what may be happening in this
  case when the banner advertisements are not
  labeled, and just distracting a potential
  customer with another choice, when it is clear
  that it is a choice

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Interstellar v EPIX

• Epix maufacture and sell electronic imaging
  products
• ISS Tchou registered name because catchy hopes
  to develop into portal current promotes Rocky
  Horror Show!!!
• Issue epix.com vs. epix trademark
• Held no confusion
• The core element is whether the similarity is
  likely to confuse customers about the source of
  the products. Initial interest confusion occurs
  when defendant uses the trademark "in a manner
  calculated 'to capture initial consumer
  attention, even though no actual sale is finally
  completed as a result of the confusion.' " The
  Second Circuit described initial interest
  confusion as follows A likelihood of confusion
  arises "not in the fact that a third party would
  do business with Pegasus Petroleum believing it
  related to Mobil and its winged horse
  trademark, but rather in the likelihood that
  Pegasus Petroleum would gain crucial credibility
  during the initial phases

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Initial as a factor only

• If an apple grower adopts a famous trademark,
  like www.DRSEUSS.com, as a domain name, initial
  interest confusion probably results, even if that
  business's goods differ significantly from those
  of Dr. Seuss.
• Why?
• The apple grower might adopt a famous trademark
  without causing initial interest confusion. For
  example, an apple grower in Washington might
  register www.apple.com to promote his business.
• Common noun
• If, however, the apple grower adopted the
  www.apple.com domain name, and then competed
  directly with Apple Computer by selling
  computers, initial interest confusion probably
  would result

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• As the examples demonstrate, actionable initial
  interest confusion on the Internet is determined,
  in large part, by the relatedness of the goods
  offered and the level of care exercised by the
  consumer. If a rogue company adopts as its
  domain name a protected trademark and proceeds to
  sell goods similar to those offered by the
  trademark owner, it necessarily free rides on the
  trademark owner's goodwill, and that rogue
  company benefits from increasing initial interest
  confusion as consumers exercise lower levels of
  care in making their purchasing decisions. Of
  course, the remainder of the Sleekcraft factors
  complete the case-by-case inquiry necessary to
  evaluate initial interest confusion on the
  Internet.

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Gibson

• G owns mark Reed manufactures similar looking
  guitars
• TC all factors point toward win for G, except
  the factor of actual confusion.
• No confusion at point of sale
• Initial interest confusion cannot substitute for
  point of sale confusion.

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• Discussion Point Your client (Tickets, Corp.)
  is starting an online business site that will
  provide an alternative to Skylink Corporations
  stong lock on the market for providing a resource
  for consumers to select and purchase travel
  tickets on airlines, cruise ships and other
  travel formats. Client has the contacts and
  funds to compete, but it has not yet named its
  online site or taken other steps to attract
  customers. Skylink operates on Sklink.com.
  Client seeks advice on how to set up its site,
  and name it, and attract customers to it. What
  legal issues arise in context of the scope of our
  course?

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END