Transcript Trademark Cases - Bradley University

Trademark Cases
And now for something confusingly similar
10-19-10
Steve Baron
Bradley IM 350 Fall 2010
What are the goals of trademark
law?
 Protect owner of marks from freeloaders
 Protect consumers from being confused
What are the fundamental
questions in trademark litigation?
 Is the use of a mark likely to cause
confusion in the marketplace between that
mark and another mark?
 Is the use of mark likely to cause dilution
of another famous mark?
Can you recognize these
trademarks?
Playboy v. Netscape (9th Cir. 2004)
 Playboy owns trademarks for “playboy” and




“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
 banner 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:




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
 Do you agree with Judge Berzon’s
concurring opinion?
I am the master of my
domain…name
 What’s a domain name name?
 What’s a domain name dispute?
 Why do trademark holder’s care?
 Fundamental problem: many trademarks
but only one domain
Toyota Motor Sales v. Farzad
Tabari
 Basics:





What court?
Where?
What’s the case about?
What happened in the lower court?
What are the issues on appeal?
Toyota Motor Sales v. Farzad
Tabari
 Answers:
 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.
What’s up with keyword
advertising?
 What is keyword advertising?
 How do competitor’s use key words to
attract business from competitors?
 How does it implicate trademark
infringement law?
 Who is responsible?
 Advertiser?
 Search engine?
Rescuecom Corp. v. Google
 Who’s who?
 What are they fighting about?
 What happens in the trial court?
 What happens on appeal?
Rescuecom Corp. v. Google
 Google offers:
 Adwords
 Keyword Suggestion Tool
Rescuecom Corp. v. Google
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