Transcript Trademark Cases - Bradley University

Trademark Cases
And now for something confusingly similar
Note: readings listed today for day 17 are not
on the exam
Text cases
 Toeppen violates FTDA by not using trademark in
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commerce and by trying to sell it to Panavision
Faber gets protection for “bally sucks”: no use in
commerce (no dilution), no confusion, critical
comment/1st amendment
March Madness v. Netfire: IHSA trademarks a very
famous term: Netfire can’t use it.
U-Haul v WhenU: pop ups in the browser, block the view
of U-Haul’s site, and that direct the user away. No
trademark infringement or dilution.
Playboy v Wells: nominative use (tags DO have to
comply, but with the tests, not with absolute use or not).
Playboy v. Netscape (9th Cir. 2004)
 Playboy owns trademarks for “playboy” and
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“playmate”
Netscape has list of terms that it “keys” to
advertisers’ banner ads, including “playboy”
and “playmate”
Netscape makes more $$ for higher “click
through” rate
Playboy sues Netscape for trademark
infringement and dilution.
Netscape wins on summary judgment in trial
court
Playboy v. Netscape (9th Cir. 2004)
On appeal:
 Playboy argues “initial interest confusion”
 Customer confusion creates initial interest in
competitor’s product.
 Example:
 User types “playboy” into search engine
 anner ad pops up that leads user to an adult site not
affiliated with Playboy
 While user understands that he is not at a Playboy site,
nonetheless he has been drawn to site through
unauthorized use of good will of Playboy
Playboy v. Netscape (9th Cir. 2004)
On appeal: Eight factor test:
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Strength of mark
Proximity of the goods
Similarity of the marks
Evidence of actual
confusion
 Marketing channels used
 Type of goods and
degree of care exercised
by purchaser
 Defendant’s intent in
selecting mark
 Likelihood of expansion
of the product lines
Playboy v. Netscape (9th Cir. 2004)
Netscape Defenses
 Fair use
 But fair use must not be confusing
 Nominitive use
 But product or service must not be readily
identifiable without use of the mark
 Functional use
 Playboy’s use of the terms “playboy” and
“playmate” are not functional
Playboy v. Netscape (9th Cir. 2004)
Dilution
 Elements:
 Is mark “famous”
 Did defendant engage in commercial use of
mark
 Was there “actual dilution” of the mark (not
mere “likelihood of dilution”
Playboy v. Netscape (9th Cir. 2004)
Result
 Appellate court finds genuine issues of
material fact exist on both infringement
and dilution claims
 Appellate court reverses and remands the
trial court’s grant of summary judgment in
favor of Netscape
That was then, this is now:
Dwyer v. Sensocon
 More Evidence That the Initial Interest Confusion Doctrine is
Dying
 Notice what the court did here . . . . It required the plaintiff to
provide some hard evidence of initial interest confusion, not
just vague hypothetical assertions. Specifically, the court asks
to see how many searchers actually saw any search results or
other information that might have impacted their decision.
 This reinforces that initial interest confusion is a relic doctrine
designed to redress really weak consumer search processes
like guessing domain names or search engines rankings
influenced by inaccurate metatags.
NETWORK AUTOMATION, INC. (Plaintiff-counterdefendant) v. ADVANCED SYSTEMS CONCEPTS, INC.
(Defendant-counter-claimant- Appellee). ⎭
Appeal from the United States District Court for the Central District of
California. December 8, 2010—Pasadena, California
 Network Automation (“Network”) and Advanced Systems Concepts
(“Systems”) are both in the business of selling job scheduling and
management software, and both advertise on the Internet.
 Network sells its software under the mark Auto-Mate, while Systems’
product is sold under the registered trademark ActiveBatch.
 Network decided to advertise its product by purchasing certain
keywords, such as “Active-Batch,” which when keyed into various
search engines, most prominently Google and Microsoft Bing,
produce a results page showing “www.NetworkAutomation.com” as
a sponsored link.
NETWORK AUTOMATION, INC. (Plaintiff-counterdefendant) v. ADVANCED SYSTEMS CONCEPTS, INC
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Systems’ objection to Network’s use of its trademark to interest viewers in Network’s
website gave rise to this trademark infringement action.
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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, 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 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 Internet” are
(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 the mark ActiveBatch.
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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 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 and reverse and remand.
So initial confusion might be in play but isn’t enough to win.
Network Automation, Inc. v. Advanced System
Concepts, Inc.
 buying keyword ads constitutes a use in
commerce.
 the most relevant factors to the analysis of the
likelihood of confusion are: (1) the strength of
the mark; (2) the evidence of actual confusion;
(3) the type of goods and degree of care likely to
be exercised by the purchaser; and (4) the
labeling and appearance of the advertisements
and the surrounding context on the screen
displaying the results page.
Is a new standard needed for
online?
 With regard to search, courts have
obliterated confusion (initial or real) and
dilution
 Should there be a “misdirection” standard?
 That is, are confusion and dilution too tied
to physical/front stage/old media
circumstances (the law will not solve) such
that a new standard is needed to protect
trademarks?
Toyota Motor Sales v. Farzad
Tabari
 Basics:
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Parties?
Jurisdiction?
What’s the case about?
What happened in the lower court?
What are the issues on appeal?
Toyota Motor Sales v. Farzad
Tabari
 Answers:
 Federal Ninth Circuit Court of Appeals
(California)
 Domain name dispute: Tabaris owns buy-alexis.com and buyorleaselexus.com
 Trial court enjoins Tabaris from using LEXUS
mark in domain names.
 Does nominative fair use apply? Was the
injunction too broad?
Toyota Motor Sales v. Farzad
Tabari
 Nominative Fair Use Test – Consider
whether:
 Product “readily identifiable” without use of
mark;
 D used more of the mark than necessary; or
 D falsely suggested he was sponsored or
endorsed by the TM holder.
Toyota Motor Sales v. Farzad
Tabari
 What does Ninth Circuit decide?
 Why?
 Do you agree?
Toyota Motor Sales v. Farzad
Tabari
 Other interesting observations
 Tabaris do not have lawyers – but they win
anyway!
 Judge Kozinski suggests that they receive
appointed counsel.
 Judge Kozinski makes repeated references to
the level of sophistication and attitude of
consumers on the internet – all without
evidence in the record.
 Judge Fernandez points this out in concurrence.
Rescuecom Corp. v. Google
 Who’s who?
 Jurisdiction?
 Issues?
 What happens in the trial court?
 What happens on appeal?
Rescuecom Corp. v. Google
 Second Circuit holds:
 Use of Rescuecom’s mark in Adwords or
Keyword Suggestion Tool is a use in
commerce
 There is a question of fact as to whether
Google’s practice causes a likelihood of
confusion
 Rescuecom “wins” but later drops the action.
Rosetta Stone v. Google
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goldman:
http://blog.ericgoldman.org/archives/2012/04/fourth_circuits.htm
the 4th circuit's opinion:
http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1041&context
=historical
 “For the reasons that follow, we affirm the district court’s order with respect
to the vicarious infringement and unjust enrichment claims; however, we
vacate the district court’s order with respect to the direct infringement,
contributory infringement and dilution claims and remand these claims for
further proceedings.”
 Vicarious infringement and use in commerce.
 Google settles Rosetta Stone lawsuit (Nov. 2012)
Tide might be turning
 Google didn’t risk going back, on Rosetta
Stone, and risking the trial court deciding
that vicarious infringement is occurring,
combined with the now TWICE appellate
that search terms are a use in commerce.
Apple Settles iPad Trademark Dispute With
Chinese Company
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HONG KONG — A Chinese provincial court said in a statement on Monday that Apple had settled a
lawsuit there by paying $60 million into a court-approved bank account for the legal rights to use the
iPad trademark in China.
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“It was done last week, and it was confirmed with a ruling by the higher court,” that was issued on
Monday morning, said Xie Xianghui, a lawyer for the Chinese company involved, Proview Technology
(Shenzhen). It should take only a week or two for China’s national trademark authority to transfer the
iPad trademark for China to Apple, added Mr. Xie, of the Grandall Legal Group in Shenzhen.
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Mr. Xie said that Proview Technology did not regard the settlement amount as especially large, “but it is
O.K.” Proview Technology is insolvent and close to liquidation, and the money in the court-approved
bank account will be used to repay some of its creditors, he said.
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Apple retained British lawyers several years ago to set up a company, IP Application Development, to
buy up rights to the iPad name around the world. Apple paid only £35,000 to a Proview Technology
affiliate in Taiwan for that company’s iPad trademarks in various countries.
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But when Apple introduced the iPad with immediate success, Proview Technology (Shenzhen) said that
the transaction had not included the trademark for China. The operation in the city of Shenzhen, in
Guangdong Province in southeastern China, filed a trademark infringement case against Apple in a
Shenzhen court, and the case ended up in provincial court
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