Trademark Cases And now for something confusingly similar

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 (9 th 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 (9 th 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 (9 th 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 (9 th 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 (9 th 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 (9 th 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? § 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