Trademark CasesTrademark Cases
And now for something And now for something confusingly similarconfusingly similar
3-6-083-6-08
What are the goals of trademark What are the goals of trademark law?law?
Protect owner of marks from freeloadersProtect owner of marks from freeloaders Protect consumers from being confusedProtect consumers from being confused
What are the fundamental What are the fundamental questions in trademark litigation?questions in trademark litigation?
Is the use of a mark likely to cause Is the use of a mark likely to cause confusion in the marketplace between that confusion in the marketplace between that mark and another mark?mark and another mark?
Is the use of mark likely to cause dilution Is the use of mark likely to cause dilution of another famous mark?of another famous mark?
Can you recognize these Can you recognize these trademarks?trademarks?
Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004)
Playboy owns trademarks for “playboy” and Playboy owns trademarks for “playboy” and “playmate”“playmate”
Netscape has list of terms that it “keys” to Netscape has list of terms that it “keys” to advertisers’ banner ads, including “playboy” and advertisers’ banner ads, including “playboy” and “playmate”“playmate”
Netscape makes more $$ for higher “click Netscape makes more $$ for higher “click through” ratethrough” 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 “initial interest confusion”Playboy argues “initial interest confusion” Customer confusion creates initial interest in Customer confusion creates initial interest in
competitor’s product.competitor’s product. Example:Example:
User types “playboy” into search engineUser types “playboy” into search engine banner ad pops up that leads user to an adult site not banner 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
Defendant’s intent in Defendant’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 Playboy’s use of the terms “playboy” and Playboy’s use of the terms “playboy” and
“playmate” are not functional“playmate” are not functional
Playboy v. Netscape (9Playboy v. Netscape (9thth Cir. 2004) Cir. 2004) DilutionDilution
Elements:Elements: Is mark “famous”Is mark “famous” Did defendant engage in commercial use of Did defendant engage in commercial use of
markmark Was there “actual dilution” of the mark (not Was there “actual dilution” of the mark (not
mere “likelihood of dilution”mere “likelihood 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 court’s grant of summary judgment in trial court’s grant of summary judgment in favor of Netscapefavor of Netscape
Do you agree with Judge Berzon’s Do you agree with Judge Berzon’s concurring opinion?concurring opinion?
Morris Publishing Group v. SK*RTMorris Publishing Group v. SK*RT
National Arbitration ForumNational Arbitration Forum Authorized by Internet Corporation for Authorized by Internet Corporation for
Assigned Names and Numbers (ICANN) to Assigned Names and Numbers (ICANN) to resolve domain name disputesresolve domain name disputes
ICANN - Mandatory arbitrationICANN - Mandatory arbitration Arbitrators are typically lawyers and former Arbitrators are typically lawyers and former
judgesjudges Daniel Banks = former lawyer and judge, now Daniel Banks = former lawyer and judge, now
concentrates on mediation and arbitrationconcentrates on mediation and arbitration
Morris Publishing Group v. SK*RTMorris Publishing Group v. SK*RT
Morris Publishing owns trademarks: Morris Publishing owns trademarks: SKIRTSKIRT SKIRT!SKIRT!
Morris Publishing publishes newspaper Morris Publishing publishes newspaper devoted to women’s issues (since 1994)devoted to women’s issues (since 1994)
SK*RT.com registers (in 2007) domain SK*RT.com registers (in 2007) domain name:name: sk-rt.comsk-rt.com Social media ranking website and blogSocial media ranking website and blog
Morris Publishing v. SK*RTMorris Publishing v. SK*RT
Morris Publishing files complaint with NAFMorris Publishing files complaint with NAF Seeks transfer of domain nameSeeks transfer of domain name
Morris Publishing v. SK*RTMorris Publishing v. SK*RT
Arbitrator’s Findings:Arbitrator’s Findings: Domain name sk-rt.com is confusingly similar to the Domain name sk-rt.com is confusingly similar to the
SKIRT marksSKIRT marks Looks similarLooks similar Sounds identicalSounds identical
SK*RT has rights and a legitimate interest in domain SK*RT has rights and a legitimate interest in domain namename Legitimate businessLegitimate business Functional web siteFunctional web site Do not compete with Morris PublishingDo not compete with Morris Publishing Domain name comprised of a common termDomain name comprised of a common term
Morris Publishing v. SK*RTMorris Publishing v. SK*RT
SK*RT did not register or use the domain SK*RT did not register or use the domain name in bad faithname in bad faith Domain name is comprised of a modified Domain name is comprised of a modified
generic termgeneric term