Designer Skin LLC v. S & L Vitamins, Inc., et al.
Goto.com Inc. v. The Walt Disney Company
2000 U.S.Dist. Lexis 1608, 202 F.3d 1199 (9th Cir., Feb. 2, 2000)
Court affirms grant by district court of preliminary injunction, enjoining defendant The Walt Disney Company ("Disney") from continuing to use its "go logo" on the ground that such use infringes plaintiff's "goto" mark.
Plaintiff Goto.com Inc. operates a web site that contains a search engine. In December 1997, plaintiff began using a logo on this web site that depicts the words "go to" in a white font stacked vertically within a green circle. That circle, in turn, is displayed against a square yellow background.
In December 1998, defendant Disney beta-launched its "Go Network" web sites. The home or portal page of the Go Network contained, among other things, a search engine, and provided access to a number of other Disney web sites, including disney.com, abc.com, abcnews.com and espn.com. Disney prominently displayed on all pages of these interconnected sites the "go" logo at issue. This logo, which the court described as "remarkably similar" to plaintiff's, contains the word "go" in white letters set in a green circle. The green circle, in turn, is set within a yellow square with details and contouring suggestive of a traffic light. Directly to the right of this square, the word "Network" appears in black font.
Promptly upon learning of this use, and while Disney's Go Network was still being beta-tested, plaintiff objected to Disney's use of its "go logo." Disney refused to discontinue use of this logo, and instead proceeded to officially launch the Go Network with the disputed "go logo" in place. Plaintiff thereafter commenced this suit, charging Disney with trademark infringement in violation of Section 43 of the Lanham Act, 15 U.S.C. Section 1125(a)(1)(A).
On plaintiff's motion, the district court issued a preliminary injunction, enjoining Disney from further use of its "go logo." This determination was affirmed by the Ninth Circuit.
The Ninth Circuit determined that plaintiff was likely to succeed on its claim that Disney's use of the "go logo" infringed plaintiff's mark. In reaching this conclusion, the Ninth Circuit determined that plaintiff was likely to establish that defendant's use would cause confusion with the public. Normally, the Ninth Circuit uses eight factors, called the "Sleekcraft factors," to determine if a use is likely to cause confusion. When dealing with confusion on the Internet, however, the Ninth Circuit noted it will generally only focus on three of those factors -- the similarity of the marks, the relatedness of the goods or services marketed by the parties, and the simultaneous use of the Web by the parties as a marketing channel. If each of these factors is present, the court will determine that there is a likelihood of consumer confusion without addressing the five additional "Sleekcraft factors."
The court determined that each of these factors favored a finding that the use in question was likely to cause consumer confusion. The logos used by the parties were "glaringly similar" -- "it is precisely the identical colors that create the confusion: white script in a green circle on a yellow square" -- the parties offered directly competing services, namely search engines, and both used the Internet extensively to market their products.
Of interest, the court noted that given the nature of the web, "for now, we can safely conclude that the use of remarkably similar trademarks on different web sites creates a likelihood of confusion amongst Web users" even if the parties were not offering directly competing products. Said the court:
With respect to Internet services, even services that are not identical are capable of confusing the public. Although even Web tyros can distinguish between a web site that, for example, provides discounted travel tickets and one that provides free Web-based e-mail, a user would almost certainly assume a common sponsorship if the sites' trademarks were the same. The yahoo.com web site is just one example of Web genies that coordinate a bevy of distinct services under a common banner. Indeed, Disney's own portal shows the potential for one company to provide a host of unrelated services. Whereas in the world of bricks and mortar, one may be able to distinguish easily between an expensive restaurant in New York and a mediocre one in Los Angeles, the Web is a very different world. Our ever growing dependence on the Web may force us eventually to evolve into increasingly sophisticated users of the medium, but, for now, we can safely conclude that the use of remarkably similar trademarks on different web sites creates a likelihood of confusion amongst Web users. The ever-growing number of tentacled conglomerates may force us to conclude that even one hundred and one products could all be sponsored by a single consortium.
The court discussed the remaining Sleekcraft factors "only because the parties raised them." In doing so, the court again emphasized that "an intent to confuse customers is not required for a finding of trademark infringement." The court also noted its view that in the Internet context, users are more likely to be confused because of the ease of entering another web site. Said the court:
The question in this analysis is not how sophisticated web surfers are but, rather, how high the cost is of choosing one service -- that it, one web site -- over another on the Web. We agree with our previous conclusion that this cost is negligible: it is simply a single click of a mouse. In the Internet context, in particular, entering a web site takes little effort -- usually one click from a linked site or a search engine's list; thus Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership.
The court also rejected Disney's claim that plaintiff was guilty of laches because of the "delay" in commencing suit. Said the court: "GoTo objected to Disney's use of its logo within a fortnight of Disney's beta launch. Although several months did pass between GoTo's filing suit in February 1999 and moving for a preliminary injunction in July 1999, the parties had entered into a tolling agreement under which Disney agreed not to raise this issue. Even without this tolling agreement, however, this delay of only a few months would not be sufficient to bar GoTo's recovery."