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Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Brookfield Communications Inc. v. West Coast Entertainment Corp.

174 F.3d 1036 (9th Cir. April 22, 1999)

Plaintiff Brookfield Communications Inc. ("Brookfield") is in the business of selling information about the entertainment industry. Commencing in or about 1993, Brookfield began marketing software under the mark "MovieBuff" which provides users with a database of entertainment-industry related information. Sometime in 1996 or 1997 Brookfield began marketing its "MovieBuff" software on an Internet site, as well as offering on-line access to a searchable database which also contained entertainment-industry related information. In August 1997, Brookfield filed for federal registration with the PTO of its "MovieBuff" mark, which registration issued in 1998.

Defendant West Coast Entertainment Corporation ("West Coast") is one of the largest video rental chains in the United States. Since at least 1988, it has used the term "Movie Buff" in various advertising slogans. In 1991, West Coast received federal servicemark registration of its mark "The Movie Buff's Movie Store."

In 1996, West Coast registered the domain name "" with Network Solutions Inc. ("NSI"). It did not commence operation of a web site at "" at that time, however. In or about November 1998, West Coast issued a press release announcing that it would soon commence operation of a web site at "" that would offer the public access to an extensive searchable database of information concerning movies. Brookfield responded by commencing suit, charging defendant with trademark infringement and unfair competition in violation of the Lanham Act.

Brookfield sought to enjoin defendant both from operating a site at "", and from using the phrase "moviebuff" in meta tags contained on its site. The district court denied Brookfield's application. The Ninth Circuit reversed, and awarded Brookfield the requested injunctive relief.

West Coast argued that injunctive relief should not issue because it, and not Brookfield, was the senior user. As stated by the Court "the first to use a mark is deemed the 'senior' user and has the right to enjoin 'junior' users from using confusingly similar marks in the same industry and market or within the senior user's natural zone of expansion."

West Coast argued that it's use of the "moviebuff" mark on the Internet predated Brookfield's use in that medium, and that West Coast was, accordingly, the senior user. West Coast pointed to the fact that it registered its domain name "" with NSI in 1996, before Brookfield began offering a searchable database online.

The court rejected this argument on the ground that the mere registration of a domain name with NSI, without more, does not constitute use of the mark for the purpose of establishing trademark rights. This is true, determined the court, whether the registrant has plans to use the name in commerce at a latter point in time. What is required is actual use in commerce in connection with the sale of products or, at a minimum, "use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark."

West Coast was not operating a web site at its "" domain name at the time Brookfield commenced use of the "MovieBuff" mark on the Internet. Nor had West Coast extensively advertised it's intended use of the mark. Instead, it's use was limited to use of "moviebuff" in "limited e-mail correspondence with lawyers and a few customers ...". This was insufficient to establish the requisite use in commerce required to confer trademark rights. Said the court:

Registration with Network Solutions, however, does not in itself constitute "use" for purposes of acquiring trademark priority. The Lanham Act grants trademark protection only to marks that are used to identify and to distinguish goods or services in commerce - which typically occurs when a mark is used in conjunction with the actual sales of goods or services. The purpose of a trademark is to help consumers identify the source, but a mark cannot serve a source-identifying function if the public has never seen the mark and thus is not meritorious of trademark protection until it is used in public in a manner that creates an association among consumers between the mark and the mark's owner. ... The district court, while recognizing that mere registration of a domain name was not sufficient to constitute commercial use for purposes of the Lanham Act, nevertheless held that registration of a domain name with the intent to use it commercially was sufficient to convey trademark rights. This analysis, however, contradicts both the express statutory language and the case law which firmly establishes that trademark rights are not conveyed through mere intent to use a mark commercially nor through mere preparation to use a term as a trademark.

After finding that Brookfield had a protectable mark, the court held that West Coast's activities were likely to constitute trademark infringement because they were likely to confuse the public about the source or sponsorship of West Coast's "" web site.

In reaching this conclusion, the court relied on the fact that the marks at issue were identical, and were both using the Internet to marketed related products. The court held that the addition of ".com" to the phrase "moviebuff" was of no significance in comparing the identity of the marks used.

Because many companies use domain names comprised of ".com" as the top-level domain with their corporate name or trademark as the second-level domain, the addition of ".com" is of diminished importance in distinguishing the mark. The irrelevance of the ".com" becomes further apparent once we consider similarity in meaning. The domain name is more than a mere address; like trademarks, second level domain names communicate information as to source. As we explained in Part II many Web users are likely to associate "" with the trademark "MovieBuff" thinking that it is operated by the company that makes "MovieBuff" products and services.

As a result, the court enjoined West Coast from operating its web site at the "" domain.

The court also enjoined defendant from using the "moviebuff" mark in meta tags on its site. While recognizing that use of the "MovieBuff" mark in meta tags required a different analysis than that which governed use of the mark in a domain name, the court nonetheless held that such use was impermissible given the facts of the case before it.

In reaching this conclusion, the court found that use of the "moviebuff" mark in meta tags would cause prohibited "initial interest confusion." Use of the "moviebuff" mark in a meta tag would cause West Coast's site to join that of Brookfield on a list of search results produced by search engines. As a result, surfers originally seeking Brookfield by inputing "moviebuff" in a search engine might instead find West Coast's site. Once there, that surfer might make a purchase. While the surfer would not be confused as to the source of the product at the time of its purchase (West Coast's site plainly indicates that the site is operated by West Coast), the "initial interest confusion" which led the surfer to the site is nonetheless actionable. By capturing the consumer's attention by using plaintiff's mark, defendant is improperly benefitting from the goodwill associated with it.

Said the court:

West Coast's use of "" in metatags will still result in what is known as initial interest confusion. Web surfers looking for Brookfield's "MovieBuff" products who are taken by a search engine to "" will find a database similar enough to "MovieBuff" such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead. Although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using "" or "moviebuff" to divert people looking for "MovieBuff" to its web site, West Coast improperly benefits from the goodwill that Brookfield developed in its mark. Recently in Dr. Seuss, we explicitly recognized that the use of another's trademark in a manner calculated 'to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may be still an infringement."

As a result, the court enjoined West Coast from using the mark "MovieBuff" in its meta tags. The court held that West Coast could use the descriptive phrase "Movie Buff" in its meta tags, provided it includes a space between the two words. "In light of the fact that [moviebuff] is not a word in the English language, when the term "MovieBuff" is employed, it is used to refer to Brookfield's products and services, rather than to mean "motion picture enthusiast." The proper term for the "motion picture enthusiast" is "Movie Buff," which West Coast certainly can use. It cannot, however, omit the space."

The full text of this decision can be found on a web site maintained by Findlaw.

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