Trademark Cases And now for something confusingly similar Note: readings listed today for day 17 are not on the exam.

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

Note: readings listed today for day 17 are not Note: readings listed today for day 17 are not on the examon the exam

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 anner ad pops up that leads user to an adult site not anner 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

That was then, this is now:That was then, this is now:Dwyer v. SensoconDwyer v. Sensocon

More Evidence That the Initial Interest Confusion Doctrine is More Evidence That the Initial Interest Confusion Doctrine is DyingDying

Notice what the court did here . . . . It required the plaintiff to Notice what the court did here . . . . It required the plaintiff to provide some hard evidence of initial interest confusion, not provide some hard evidence of initial interest confusion, not just vague hypothetical assertions. Specifically, the court asks just vague hypothetical assertions. Specifically, the court asks to see how many searchers actually saw any search results or to see how many searchers actually saw any search results or other information that might have impacted their decision. other information that might have impacted their decision.

This reinforces that initial interest confusion is a relic doctrine This reinforces that initial interest confusion is a relic doctrine designed to redress really weak consumer search processes designed to redress really weak consumer search processes like guessing domain names or search engines rankings like guessing domain names or search engines rankings influenced by inaccurate metatags.influenced by inaccurate metatags.

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

The district court was confronted with the question whether Network’s use of ActiveBatch to 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 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 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 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), 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” areand 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 (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 used. The court therefore issued a preliminary injunction against Network’s use of the mark ActiveBatch.ActiveBatch.

Mindful that the sine qua non of trademark infringement is consumer confusion, and that the 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 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 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 insufficient to support injunctive relief. Therefore, we vacate the injunction and reverse and remand.remand.

So initial confusion might be in play but isn’t enough to win.So initial confusion might be in play but isn’t enough to win.

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.

Is a new standard needed for Is a new standard needed for online?online?

With regard to search, courts have With regard to search, courts have obliterated confusion (initial or real) and obliterated confusion (initial or real) and dilution dilution

Should there be a “misdirection” standard?Should there be a “misdirection” standard? That is, are confusion and dilution too tied That is, are confusion and dilution too tied

to physical/front stage/old media to physical/front stage/old media circumstances (the law will not solve) such circumstances (the law will not solve) such that a new standard is needed to protect that a new standard is needed to protect trademarks?trademarks?

Toyota Motor Sales v. Farzad Toyota Motor Sales v. Farzad TabariTabari

Basics:Basics: Parties?Parties? Jurisdiction?Jurisdiction? 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: Federal Ninth Circuit Court of Appeals Federal Ninth Circuit Court of Appeals

(California)(California) 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.

Rescuecom Corp. v. GoogleRescuecom Corp. v. Google

WhoWho’’s who?s who? Jurisdiction?Jurisdiction? Issues?Issues? 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

Rescuecom “wins” but later drops the action.Rescuecom “wins” but later drops the action.

Rosetta Stone v. GoogleRosetta Stone v. Google

goldman:goldman: http://blog.ericgoldman.org/archives/2012/04/fourth_circuits.htmhttp://blog.ericgoldman.org/archives/2012/04/fourth_circuits.htm the 4th circuit's opinion:the 4th circuit's opinion: http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?

article=1041&context=historicalarticle=1041&context=historical

““For the reasons that follow, we affirm the district court’s order with respect For the reasons that follow, we affirm the district court’s order with respect to the vicarious infringement and unjust enrichment claims; however, we to the vicarious infringement and unjust enrichment claims; however, we vacate the district court’s order with respect to the direct infringement, vacate the district court’s order with respect to the direct infringement, contributory infringement and dilution claims and remand these claims for contributory infringement and dilution claims and remand these claims for further proceedings.”further proceedings.”

Vicarious infringement and use in commerce.Vicarious infringement and use in commerce. Google settles Rosetta Stone lawsuit (Nov. 2012)Google settles Rosetta Stone lawsuit (Nov. 2012)

Tide might be turningTide might be turning

Google didn’t risk going back, on Rosetta Google didn’t risk going back, on Rosetta Stone, and risking the trial court deciding Stone, and risking the trial court deciding that vicarious infringement is occurring, that vicarious infringement is occurring, combined with the now TWICE appellate combined with the now TWICE appellate that search terms are a use in commerce.that search terms are a use in commerce.

Apple Settles iPad Trademark Dispute With Apple Settles iPad Trademark Dispute With Chinese CompanyChinese Company

HONG KONG — A Chinese provincial court said in a statement on Monday that Apple had settled a 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 lawsuit there by paying $60 million into a court-approved bank account for the legal rights to use the iPad trademark in China.iPad trademark in China.

““It was done last week, and it was confirmed with a ruling by the higher court,” that was issued on 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 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 (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.iPad trademark for China to Apple, added Mr. Xie, of the Grandall Legal Group in Shenzhen.

Mr. Xie said that Proview Technology did not regard the settlement amount as especially large, “but it 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 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. bank account will be used to repay some of its creditors, he said.

Apple retained British lawyers several years ago to set up a company, IP Application Development, to 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 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.affiliate in Taiwan for that company’s iPad trademarks in various countries.

But when Apple introduced the iPad with immediate success, Proview Technology (Shenzhen) said 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 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 Guangdong Province in southeastern China, filed a trademark infringement case against Apple in a Shenzhen court, and the case ended up in provincial courtShenzhen court, and the case ended up in provincial court

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