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Designer Skin LLC v. S & L Vitamins, Inc., et al.
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...

Trademark - Initial Interest Confusion - Internet Library of Law and Court Decisions - Updated November 3, 2008

309 F.Supp.2d 467 (S.D.N.Y., Dec. 22, 2003), reversed in part and remanded, -- F.3d -- (2d. Cir., June 27, 2005)

Finding plaintiff likely to prevail on its claims of trademark infringement, the District court issued a preliminary injunction, enjoining the pop-up advertiser WhenU from delivering ads which are triggered by a consumer's entry of plaintiff's domain name in either his browser or a search engine, or from including plaintiff's domain name in defendant's proprietary directory, which is used to identify the ads to be delivered to consumers.  Defendant WhenU delivered pop-up ads of plaintiff's competitor to computer users when they typed plaintiff's domain name into either their browser or a search engine.  The court found such conduct likely to cause actionable "initial interest confusion" and to allow defendants to divert consumers seeking plaintiff's products to their own offerings, and thereby unfairly profit from plaintiff's goodwill.  Applying the eight factor Polaroid test, the court found that consumers were likely to be confused by defendants' actions, despite the branding of defendant's advertisements as "a WhenU offer."  As such, the court held that plaintiff was likely to prevail on its trademark infringement claims, and enjoined defendants from continuing to use plaintiff's domain name as a trigger for the delivery of advertisements. 

The court also held that plaintiff was unlikely to prevail on its copyright infringement claims, which arose out of the delivery of pop-up advertisements in a "window" which partially covered the 'window' in which plaintiff's site appeared on a consumer's computer screen.  The court found that this conduct neither violated plaintiff's right to display its copyrighted website, nor its right to create derivative works therefrom.  This later ruling was premised on the court's determination that defendant's ads are not sufficiently fixed to constitute an infringing derivative work.

The court's holding on plaintiff's trademark infringement claims is at odds with that reached by two other district courts - the District Court for the Eastern District of Virginia in U-Haul International, Inc. v. WhenU.com, 279 F.Supp. 2d 723 (E.D.Va. 2003), and the District Court for the Eastern District of Michigan in Wells Fargo & Co. v. WhenU., 2003 WL 22808692 (E.D. Mich. 2003), each of which refused to issue similar injunctive relief.  As the Southern District of New York court noted, "this Court disagrees with, and is not bound by these findings."

2000 U.S. Dist. Lexis 14180, 119 F. Supp. 2d 309 (S.D.N.Y., September 28, 2000)

Court refuses to enjoin defendants from operating web sites critical of plaintiffs' business, or from utilizing plaintiffs' common-law service mark in meta tags on those sites to attract visitors seeking information about plaintiffs. The court also refused to enjoin defendants from continuing to publish allegedly libelous statements about plaintiffs on their web sites.

332 F.Supp.2d 722, Civ. No. 00-5157 (WHW) (D.N.J., August 26, 2004)

Court holds that competitor's use of plaintiff's trademark in content and meta tags of a web site on which replacement parts for plaintiff's products are sold neither infringes nor dilutes plaintiff's mark in violation of the Lanham Act.  Defendant is allowed to use plaintiff's mark in this fashion both to promote the sale of replacement parts manufactured by plaintiff, as well as those manufactured for use in plaintiff's products by third parties.  The Court accordingly granted defendant's motion for summary judgment and dismissed the trademark infringement, unfair competition and dilution claims plaintiff advanced against defendant in this action.

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

Ninth Circuit, reversing the district court, enjoined defendant from using plaintiff's "moviebuff" trademark in either a domain name or meta tags found on defendant's web site.

The court rejected defendant's contention that it had superior rights to the mark by virtue of the fact that it commenced use of the mark before plaintiff. While defendant had used the mark in a domain name registered with NSI before plaintiff commenced its use of the mark on the Internet, defendant did not commence operation of a site at that domain name until well after plaintiff commenced use of the mark. Defendant's only use of the mark that arguably predated plaintiff's was in "limited e-mail correspondence." Such use was held insufficient to make defendant the senior user of the mark. "Registration with Network Solutions ... does not in itself constitute "use" for purposes of acquiring trademark priority." 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."

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 "moviebuff.com" 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. Significantly, 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 court accordingly enjoined defendant from operating a web site at "moviebuff.com."

The court also enjoined defendant from using the "moviebuff" mark in meta tags on its site. In reaching this conclusion, the court found that use of the "moviebuff" mark in meta tags would cause prohibited "initial interest confusion." "Web surfers looking for Brookfield's "MovieBuff" products who are taken by a search engine to "westcoastvideo.com" [as a result of the use of "moviebuff" in the site's meta tags] 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 "moviebuff.com" 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." Such use of plaintiff's mark, concluded the court, is indeed actionable.

As a result, the court enjoined West Coast from using the Mark "MovieBuff" in its meta tags. The court did hold that West Coast could use the descriptive phrase "Movie Buff" in its meta tags, provided it included a space between the two words.

157 F. Supp. 2d 549, Civ. Act. No. 00-1793 (E.D.Pa. August 7, 2001)

Plaintiff, holder of a federally registered trademark in the mark "Chambord" for sale of a liqueur and assorted food products, brought this action under the Anticybersquatting Consumer Protection Act, and for trademark infringement and dilution, against defendant, who holds a federally registered trademark in the mark "Chambord" for the sale of coffee makers. The action was triggered by defendant's registration of the domain name "chambord.com," at which it planned to, but had not yet offered for sale its coffee makers. The court dismissed the action, holding, inter alia, that (a) the ACPA claim failed because defendant had not acted in bad faith in continuing to utilize its federally registered mark for the sale of coffee makers; (b) the trademark infringement claim failed because the initial interest confusion doctrine (a consumer looking for company's As site finds company B's instead) was inapplicable to situations where the parties in question did not offer competing goods; and (c) the dilution act claim failed because plaintiff's mark was not famous at the time defendant commenced its use of the mark.

No. CV 05-3699-PHX-JAT (D. Arizona, May 19, 2008)

Court holds that unauthorized internet reseller of plaintiff’s tanning products is not guilty of trademark infringement as a result of its use of plaintiff’s trademarks in the meta tags of a website at which such products are sold, and as search engine keywords triggering the display of a link to such a website.  In reaching this result, the Court rejected plaintiff’s claim that such use of its marks causes actionable ‘initial interest confusion’ by directing those searching for plaintiff’s site to that of the defendant.  To sustain such a claim, holds the court, defendant’s conduct must be deceptive.  Plaintiff failed to meet this burden because defendant’s site does indeed offer plaintiff’s products for sale, and thus, its use of plaintiff’s mark in the site’s meta tags is not deceptive, but rather accurately describes the contents of defendant’s site.  This was true, held the Court, notwithstanding the fact that S & L offered plaintiff’s competitors products for sale on its site as well.

The Court also dismissed trademark dilution claims arising out of defendant’s use of plaintiff’s marks.  The Court held that, under the circumstances, defendant’s use of plaintiff’s marks in the meta tags of its site, and as search engine key words, constituted a permissible nominative fair use of those marks.  To establish that a use of a trademark qualifies as a permissible nominative fair use, the defendant must ‘do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.’  Notably, the Court reached this result because plaintiff failed to submit adequate evidence as to the impact this use of its marks had on the listing of defendant’s site in search results for plaintiff’s mark.  The Court left open the possibility that such a use of plaintiff’s mark may not qualify as a nominative fair use if in fact it caused defendant’s site to appear at or near the top of search engine results for plaintiff’s mark, and thereby suggested that plaintiff sponsored or endorsed defendant’s site. 

The Court denied so much of defendant’s motion for summary judgment which sought dismissal of copyright infringement claims arising out of its use of electronic renderings of plaintiff’s products to promote the sale of such products on its web site.  Issues of facts as to whether defendant copied such images from plaintiff’s web site, or created its own, precluded an award of summary judgment.  In allowing this claim to proceed to trial, the Court rejected defendant’s argument that its alleged use of plaintiff’s images was protected as a fair use.  Notwithstanding the fact that defendant’s use did not effect the potential market for plaintiff’s images – which plaintiff does not offer for sale – the Court rejected defendant’s fair use argument, pointing to the fact that its use was commercial, and copied plaintiff’s image, which was a creative work, in its entirety.

Finally, the Court rejected plaintiff’s claim for intentional interference with contractual relations, which arose out of prohibitions contained in contracts with plaintiff’s distributors precluding their resale of plaintiff’s products to Internet resellers such as defendant.  Defendant obtained plaintiff’s products from tanning salons, to whom the distributors were permitted to sell such products.  Because there was no evidence either that such tanning salons were acting as defendant’s agent in purchasing goods from plaintiff’s distributors, or that defendant directly purchased such goods from the distributors in breach of the prohibitions contained in their agreements, this claim failed.

66 F. Supp. 2d 117 (D. Mass., Sept. 2, 1999), aff'd., 232 F.3d 1 (1st Cir., 2000)

In this domain name dispute, Court grants defendant summary judgment, dismissing claim that defendant's use of the domain name "www.clue.com" infringes and dilutes plaintiff Hasbro Inc.'s ("Hasbro") federally registered trademark "clue."

Plaintiff Hasbro sells children's toys and related items, including the board game "Clue." Hasbro obtained federal trademark registration for the mark "clue" in 1950, which it has used continuously since in its sales of the "Clue" board game. During this period of time, Hasbro has spent millions of dollars advertising its mark, which, according to the Court, "has gained widespread recognition [both] in the United States and abroad." Defendant Clue Computing Inc. is a small computer consulting firm which in 1994 registered the domain name "www.clue.com" at which it operates a web site to promote its business.

On defendant's motion, the court dismissed plaintiff's claim that defendant's use of its mark in this fashion infringed and diluted plaintiff's famous mark in violation of both the Lanham Act and Massachusetts Anti-Dilution Act. Plaintiff's infringement claim failed because, as determined by the Court, plaintiff failed to show the likelihood of consumer confusion needed to establish such a claim. In reaching this conclusion, the Court relied on a number of factors, including the limited evidence of actual consumer confusion arising out of defendant's use of the "clue.com" domain name during the four year period in which defendant was engaged in such conduct, and the dissimilar nature of the products offered by the parties.

In reaching this conclusion, the court rejected the "initial interest confusion" doctrine which formed the basis of the Ninth Circuit's decision in Brookfield Communications. Said the Court:

 

[T]he kind of confusion that is more likely to result from Clue Computing's use of the "clue.com" domain name - namely, that consumers will realize they are at the wrong site and go to an Internet search engine to find the right one - is not substantial enough to be legally significant. "[A]n initial confusion on the part of web browsers ... is not cognizable under trademark law."

The Court also held that plaintiff had failed to establish its entitlement to relief under the Federal Trademark Dilution Act because plaintiff's mark was not famous. In reaching this result, the court relied primarily on the fact that "clue", the mark in question, was a common term used in a significant number of trademarks not owned by plaintiff.

The Court further held that even if the mark "clue" was famous, plaintiff was not entitled to relief because defendant's use did not dilute the distinctive quality of plaintiff's mark, another prerequisite to relief under the Act.

The Court rejected plaintiff's claim that defendant's mere use of the "clue" mark in a domain name, without more, constituted per se dilution of plaintiff's "famous" mark in violation of the Act. Said the Court:

 

Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.

328 F.3d 1108 (9th Cir. May 9, 2003), amended and superseded by Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 67 U.S.P.Q.2d 1532, 3 Cal. Daily Op. Serv. 6649, 2003 Daily Journal D.A.R. 8380 (9th Cir.(Cal.) Jul 29, 2003) (NO. 01-56733, 02-55142) , Petition for Certiorari Filed, 72 USLW 3393 (Nov 20, 2003)(NO. 03-773)

The Ninth Circuit affirmed so much of the District Court's decision which held that defendant infringed plaintiff's trademark by his "pervasive" use of plaintiff's mark in both the metatags and text of his websites, on which he sold a competing product.  The Ninth Circuit also affirmed so much of the District Court's decision which awarded plaintiff substantial attorneys' fees for this infringement, agreeing with the lower court's determination that this was an "exceptional" case justifying such an award in light of defendant's willful use of the mark.

The Ninth Circuit reversed and remanded so much of the District Court's decision that held that defendant's conduct diluted plaintiff's mark, in light of the Supreme Court's recent decision in Moseley v. V. Secret Catalogue, Inc, which mandated proof of actual dilution to sustain a trademark dilution claim.

253 F.Supp.2d 1120, Civ. No. 02-0400 CW (N.D.Ca., Mar. 28, 2003)

Court denies plaintiff's request for a preliminary injunction, and refuses to enjoin defendant, a direct competitor, from repeatedly using plaintiff's trade name on a web site containing information critical of plaintiff.  The challenged uses were designed to and did dramatically increase the site's ranking on search engines in response to queries for plaintiff's name.  The Court held that such use was a permitted nominative fair use of plaintiff's trade name. 

The Court rendered this decision on defendants' motion for reconsideration.  In reaching this result, the Court vacated its prior order, enjoining defendants from using plaintiff's mark in ways designed to dramatically increase the site's ranking on search engines.  In this vacated order, the court had enjoined defendants from "using 'J.K. Harris' or any permutation thereof as a keyword for the taxes.com website more often than is necessary to identify the content of the website," from using header tags and underline tags around sentences containing plaintiff's trade name, or from increasing the prominence and font size of sentences which include plaintiff's trade name.  In this vacated order, the court denied plaintiff's request to enjoin defendants from making any use of plaintiff's trade name on the site however, holding that defendants could use the trade name in links to other sources of information about plaintiff on the web, as well as in disseminating truthful factual information about plaintiff, provided such use was "reasonably necessary" and not excessive.

The court also enjoined defendants from continuing to post on its website several identified negative statements about plaintiff, derived from third parties, which plaintiff claimed were false and/or misleading.

Civ. No. 02-0400 CW (N.D.Ca., Mar. 22, 2002) vacated and amended (N.D.Ca., Mar. 28, 2003)

Court issues preliminary injunction, enjoining defendants, direct competitors of plaintiffs who operate a commercial website containing information critical of plaintiff, from continuing certain uses of plaintiff's trade name on that site.  The injunction enjoined defendants from using plaintiff's mark in ways designed to dramatically increase the site's ranking on search engines in response to queries for plaintiff's trade name.  The court enjoined defendants from "using 'J.K. Harris' or any permutation thereof as a keyword for the taxes.com website more often than is necessary to identify the content of the website," from using header tags and underline tags around sentences containing plaintiff's trade name, or from increasing the prominence and font size of sentences which include plaintiff's trade name.  The court denied plaintiff's request to enjoin defendants from making any use of plaintiff's trade name on the site however, holding that defendants could use the trade name in links to other sources of information about plaintiff on the web, as well as in disseminating truthful factual information about plaintiff, provided such use, as noted above, was "reasonably necessary" and not excessive.

The court also enjoined defendants from continuing to post on its website several identified negative statements about plaintiff, derived from third parties, which plaintiff claimed were false and/or misleading.

378 F.3d 1002 (9th Cir., 2004), cert. denied (2005)

Applying the "initial interest confusion" doctrine, the Ninth Circuit holds that defendant Nissan Computer's display of advertisements promoting the sale of automobiles on its Nissan.com website infringes the trademark held by plaintiff Nissan Motors in its federally registered "Nissan" trademark, and accordingly affirms the District Court's decision enjoining defendants from continuing such activity. 

The Court further holds, however, that Nissan Computer's display of links on its site to a web site operated by a company owned by Uzi Nissan, the owner of Nissan Computer, which web site purports to describe the instant litigation and contains disparaging remarks about Nissan Motors, is non-commercial speech that neither infringes plaintiffs' mark nor runs afoul of the Federal Trademark Dilution Act despite its potentially negative impact on plaintiffs' commercial activities.  The Ninth Circuit holds such speech protected by operation of the First Amendment, and accordingly reverses so much of the District Court's decision that enjoined defendant Nissan Computer from placing such links on its Nissan.com site. 

Finally the Court held that issues of fact prevented a determination at this time as to whether defendants' use of plaintiffs' Nissan mark violated the FTDA.  To establish such a dilution claim, held the Court, the plaintiff must establish that its mark was famous when defendant first commenced a potentially diluting use thereof.  Disagreeing with the court below, the Ninth Circuit held that such use commenced when defendant began to call its business 'Nissan Computer,' and not when it subsequently registered the Nissan.com domain name for use in that business.  As there was an issue of fact as to whether the Nissan mark was famous as of 1991, when Nissan Computer commenced its operations, the court denied plaintiffs' motion for summary judgment, and remanded the question of defendants' violation of the Federal Trademark Dilution Act to the District Court.

89 F. Supp. 2d 1154 (C.D.Cal. 2000) aff'd. without opinion, 246 F.3rd 675 (9th Cir. 2000)

Court holds that plaintiffs Nissan Motor Co. and its licensee are likely to prevail on their trademark infringement claims against defendant Nissan Computer Corporation arising out of defendant's display on its nissan.com and nissan.net websites of third party advertisements for automobiles. The court accordingly issued a preliminary injunction, enjoining defendant from displaying automotive-related advertising and links on the web sites in question. The court further directed defendant to place a prominent disclaimer on the site, informing visitors that it is not affiliated with plaintiffs, and providing users with plaintiffs' web site address. The court permitted defendant to continue to operate web sites at nissan.com and nissan.net at which it advertised its computer business and non-automotive products, in part because Nissan is the surname of defendant's principal, and in part because plaintiffs are not in the computer business. The court also denied defendant's motion to dismiss the case for want of personal jurisdiction, both because the effects of its infringing activities were felt in California, where one of the plaintiffs was headquartered, and because defendant had contracted with a number of California concerns to obtain the automobile advertising at issue.

115 F. Supp.2d 1108, Civ. No. 00-308 (DSD/JMM) (D. Minn. September 25, 2000)

Court denies plaintiff's application for a preliminary injunction, enjoining defendant from operating a web site critical of plaintiff and its business practices at the domain www.northlandinsurance.com

115 F. Supp. 2d 772 (E.D. Mich., August 25, 2000), aff'd. in part, vacated in part and remanded, 319 F.3d 243 (6th Cir. 2003)

In this trademark infringement suit, the court enjoined defendant, a truck listing service, from using plaintiff's registered federal trademarks in either the domain name, meta tags, site title or wallpaper of web sites that inform consumers of entities offering plaintiff's trucks for sale.

354 F.3d 1020 (9th Cir., Jan. 14, 2004)

Reversing the decision of the court below, the Ninth Circuit Court of Appeals denied the motion of defendants Netscape Communications Corp. ("Netscape") and Excite, Inc. ("Excite")  for summary judgment, and allowed plaintiff Playboy Enterprises Inc. ("Playboy") to proceed with trademark infringement and dilution claims brought as a result of defendants' practice of keying banner ads for 'adult' products to plaintiff's trademarks.  Keying is a practice used by the operators of search engines to generate revenue via the sale of banner ads.  For a fee, the search engine operator will display an advertiser's ad along with, and on, a search results page, when a consumer types one of a series of designated terms into the operator's search engine.  In this fashion, defendants keyed the display of their clients' adult-oriented ads to plaintiff's marks.  The Ninth Circuit held that when the advertiser's banner ad is not labeled so as to identify its source, this practice could result in trademark infringement by application of the 'initial interest confusion' doctrine.  The Ninth Circuit accordingly refused to dismiss plaintiff's trademark infringement claims.  The Ninth Circuit further held that issues of fact also precluded the dismissal of plaintiff's dilution claims.

Judge Berzon wrote a concurring opinion, in which he sharply criticized Brookfield Communications, the Ninth Circuit decision from which the 'initial interest confusion' doctrine springs, and the overbroad interpretation he believes it has been given by other jurists. Specifically, Judge Berzon believes that keying clearly labeled ads to plaintiff's marks should not give rise to a trademark infringement claim because the consumer is not confused when he elects to visit the clearly labeled web site of the mark holder's competitor, in lieu of that of the mark holder.

55 F. Supp. 2d 1070, 1999 U.S. Dist. Lexis 9638, Case No. CV 99-320 AHS (C.D. Cal., June 24, 1999), aff'd. 202 F.3d 278 (9th Cir. 1999)

The court denied plaintiff's motion for a preliminary injunction enjoining defendants from continuing to "key" advertisements for adult entertainment products to the words "playboy" and "playmate." Plaintiff Playboy holds federal trademarks in both "Playboy" and "Playmate," which marks it uses in connection with the sale of adult entertainment products. Defendants Netscape and Excite each operate search engines. For a fee, defendants will display an advertiser's banner ads in random rotation on web pages containing the results of searches produced by defendants' search engines. For an increased fee, defendants will display an advertiser's banner ads whenever a user utilizes one of a series of designated terms in his search. This practice, known as "keying," allows the advertiser to target his ads and reach a more receptive audience.

Defendants key various adult entertainment ads to a group of over 450 terms, which include the terms "playboy" and "playmate." As a result, individuals who use one of those terms in a search are greeted not only by a list of web sites which contain the word "playboy" or "playmate", but also by a paid banner advertisement from a purveyor of adult entertainment services. These banner ads do not contain either the word "playboy" or "playmate."

Plaintiff argued that this practice constitutes both trademark infringement and dilution, in violation of federal law and the laws of the State of California. The court disagreed.

The court held that defendants' activities did not constitute either trademark infringement or dilution because defendants were not using plaintiff's trademarks, a perquisite for such a claim. Instead, held the court, defendants were simply using words found in the English language over which plaintiff did not hold a monopoly. Defendants' use of "playboy" and "playmate" in their keying activities is but one of several permitted uses that do not require a trademark owner's consent.

The court further held that plaintiff's infringement claim failed because plaintiff had not shown consumer confusion, or that individuals who saw the banner ads on web pages containing their search results believed that those ads were affiliated with or endorsed by Playboy. In reaching this conclusion, the court held the Ninth Circuit's "initial interest confusion" doctrine, set forth in Brookfield, inapplicable to the case at bar.

Plaintiff's dilution claim failed because plaintiff could not show that defendants' actions blurred or tarnished plaintiff's marks, or otherwise lessened their ability to serve as an advertising agent for goods or services.

Lastly, the court held that defendants' use of "playboy" and "playmate" in keying was both a permitted fair use of plaintiff's marks, as well as a use protected by the First Amendment.

300 F.3d 808, No. 00-4276 (7th Cir., August 13, 2002)

The Seventh Circuit Court of Appeals holds that defendant is not allowed to use the trademark of its competitor in the meta tags of its web site, notwithstanding the fact that defendant services the product described by that mark.  The Seventh Circuit accordingly affirms the decision of the court below, which both enjoined defendant's continued use of the mark in meta tags, and required defendant to post on its web site the URL of plaintiff Promatek's web site, as well as the following language: "If you were directed to this site through the term "Copitrak," that is in error as there is no affiliation between Equitrac and that term.  The mark "Copitrak" is a registered trademark of Promatek Industries, Ltd., which can be found at www.promatek.com or www.copitrak.com."

51 F. Supp.2d 554 (E.D. Pa., June 9, 1999)

To fully understand this decision, the reader must also read the court's prior decision in this same matter, reported at 51 F. Supp.2d 542. Relevant portions of both decisions will be discussed below.

The Court held that defendants' use of plaintiffs' common law trademark in both the domain name "www.seawind.net" of their website and in meta tags found thereon infringed plaintiffs' mark. The Court accordingly enjoined defendants from continuing such use.

Plaintiffs SNA, Inc. and Silva Enterprises Ltd. (collectively "SNA") manufacture and market do-it-yourself kits which contain most of the parts (excluding the engine) necessary to construct an amphibious aircraft called the Seawind. Plaintiffs hold a federal trademark in the mark "Seawind and design" and a common law trademark in the mark "Seawind."

Defendant Paul Array owns defendant Horizon Unlimited. Together, these defendants publish a newsletter titled "The Seawind Builders Newsletter" which they send to Seawind customers and builders and publish on a website they operate at www.seawind.net. At this website, defendants publish copies of each Seawind Builder Newsletter, as well as other information and commentary about the Seawind, SNA and Silva. Much of this latter information is derogatory and highly critical of plaintiffs. Each issue of the newsletter contains a disclaimer that the newsletter is "not affiliated with any aircraft manufactures [sic], kit builders or marketers."

Notwithstanding its determination that defendants' use of the mark in the title of the newsletter did not infringe plaintiffs common law trademark, the court determined that defendants' use of the exact Seawind mark in the domain name of their site did. The court found that such use was likely to confuse the public as to the source of the materials on the website, even though a disclaimer was posted on the website, and the site's content were highly critical of the plaintiffs. Said the court "the relevant confusion that the domain name causes is drawing the web user to the site in the first place, and the disclaimer cannot fix that."

The Court further enjoined defendants from continuing to use the mark "Seawind" in the meta tags at their website. The court found that defendants used the mark in this fashion in an effort to confuse consumers and lure them to defendants' site in lieu of plaintiffs'. The Court rested this finding of trademark infringement on the defendants' repeated use of the Seawind mark in their meta tags, and their general intent to harm plaintiffs.

Case No. 06-C-843 (E.D. Wis., April 18, 2008)

Court holds that unauthorized reseller of plaintiff Standard Process Inc.’s products can use Standard Process’ trademark on its website, and in the website’s meta tags, to advertise the sale of such products.  The Court held that consumers were not likely to be confused by such conduct, because defendant’s site featured a prominent disclaimer that advised consumers that defendant is “not an authorized seller” of plaintiff’s products, “purchases Standard Process supplements from authorized third parties for resale, and is in no way affiliated with, authorized, sponsored or related to Standard Process Inc.”  In reaching this result, the Court rejected plaintiff’s argument that the use of its marks in the meta tags of defendant’s site was barred by application of the “initial interest confusion” doctrine, because the consumer who came to defendant’s site was presented with an opportunity to purchase actual Standard Process products. 

Finally, the Court rejected plaintiff’s claim that defendant was improperly selling ‘gray market’ goods which were ‘materially different’ from those plaintiff intended for sale in this market.  Plaintiff grounded this argument on the fact that authorized resellers are required to have a one-on-one consultation with the consumer before sale of the products, which consultation does not take place when the consumer purchases the product from defendant’s website.  The Court rejected this argument, because the products being resold were in fact the same as those offered by Standard Process, and because consumers were not likely to be confused, as they knew they were not receiving a one-on-one consultation prior to purchase.

162 F.Supp. 2d 372, Civ. Act. No. 00-3343 (E.D. Pa., August 27, 2001)

In this domain name dispute, Court grants defendant's motion for summary judgment, dismissing the claims of unfair competition and trademark dilution advanced by plaintiff, owner of the federally registered trademark "Strick," against defendant as a result of defendant's registration of the domain name "strick.com." The Court reached this decision, in large part, because (a) the parties' respective businesses did not compete for the same customers, as plaintiff sold transportation equipment such as freight semi-trailers, while defendant sold computer consulting services, and (b) "strick" was defendant Strickland's nickname.

Case No. 1:04cv510 (S.D. Ohio June 15, 2007)

Court allows plaintiff Taylor Building Corporation of America (“Taylor Building”) to proceed with libel claims arising out of the publication of a gripe site critical of plaintiff’s work by a relative of a disgruntled customer.  The Court denies so much of defendant’s motion for summary judgment which sought to dismiss these claims holding, inter alia, that issues of fact as to whether publication of the statements on this website were sufficiently limited to ‘proper parties’ so that their publication was protected by the qualified privilege applicable to statements made to protect the public interest precluded such an award.

The Court did grant so much of defendant’s motion for summary judgment which sought to dismiss “initial interest confusion” Lanham Act claims plaintiff asserted arising out of defendant’s use on his gripe site of a service mark and trade dress allegedly similar to those of the plaintiff.  The Court held such claims failed because consumers were not likely to be confused as to the source of defendant’s site, or attribute it to the plaintiff, as the site was critical of plaintiff, was found at the domain Taylor Homes – Ripoff.com, and bore a “header” that stated “Taylor Homes Ripoff.  Badly Fingering Your Dreams.  Taylor Sold Us A Quality Home and Gave Us Garbage.”

Finally, the Court dismissed plaintiff’s tortuous interference with contractual and business relations claims.  The Court held that plaintiff had failed to demonstrate that defendant had sufficient knowledge of the actual contracts or relationships allegedly interfered with by the operation of his gripe site to sustain such claims.

79 F.Supp. 2d 331 (S.D.N.Y., Dec. 2, 1999)

The court awarded $46,000 to compensate for the attorney's fees expended in stopping defendant's infringement of plaintiff's common law trademark, which defendant used in both its domain name and meta tags.

293 F.Supp.2d 734 (E.D. Mich., November 19, 2003)

Court denies website operators' application for a preliminary injunction, and refuses to enjoin defendant WhenU.com, Inc. from delivering advertisements, triggered by a computer user's visit to plaintiffs' sites, that either pop-up or under those sites.  Defendant WhenU delivers such ads via its software applications Save and Save Now!  These applications are typically consensually downloaded by the user to his or her computer as the quid pro quo of his free receipt of another software application.

The Court held that WhenU's delivery of these ads neither infringes the trademarks found on plaintiffs' sites, nor their copyrights in the material thereon.  WhenU's activities - including the use of plaintiffs' marks in a directory which determines the ads a user receives, and the display of ads in windows that partially obscure plaintiffs' websites but do not contain plaintiffs' marks - do not constitute a use of plaintiffs' marks in commerce, a prerequisite to a trademark infringement claim.  Plaintiffs' trademark infringements claims also failed because plaintiffs did not present evidence sufficient to establish that users would likely be confused by WhenU's activities, and conclude that plaintiffs sponsored WhenU's ads.  Rather, the Court held, users with Save and Save Now! installed on their computers are likely to conclude that WhenU is the sponsor of the ads in question, both because the ads so inform the user, and because of their familiarity with such displays.

The Court held that plaintiffs' copyright infringement claims failed because the appearance of WhenU's ads in a window that partially obscures plaintiffs' sites does not constitute the creation of an unauthorized derivative work in violation of plaintiffs' exclusive right to create the same.  Rather, plaintiffs' copyrighted works - the content of their websites - remain unaltered on the servers on which they are hosted, and simply appear simultaneously with WhenU's advertisements in separate windows opened by and with the consent of the user on whose computer screen they appear.  Plaintiffs' copyright infringement claims also failed because any images appearing on a user's screen are simply too transitory to constitute the creation of a work.  As such, WhenU and the users cannot be held to have created a derivative work, and thus cannot be held to have infringed plaintiffs' copyrights.

Quick Hits

Chris Gregerson v. Vilana Financial Inc., et al.
2007 U.S. Dist. Lexis 64960, Civ. No. 06-1164 ADM/AJB (D. Minn., August 31, 2007)

On the parties’ cross-motions for summary judgment, the Court finds the corporate defendants guilty of copyright infringement as a result of their unauthorized use of two of plaintiff’s copyrighted photographs in advertisements for their businesses. 

The Court further held that defendant Andrew Vilenchik, the sole board member and shareholder of defendant Vilana Financial, could not be held vicariously liable for defendant’s copyright infringement, because he did not have or derive a sufficiently direct financial interest from the use of plaintiff’s photographs.

The Court granted plaintiff summary judgment, dismissing defendants’ claim that his use of defendants’ trademark in the path of his site’s domain name violated the Anticybersquatting Consumer Protection Act.  Defendants’ claim failed both because they failed to submit sufficient evidence that plaintiff had a bad faith intent to profit from this use of the mark, and because use of the mark in the path of the domain name does not constitute actionable use of the mark in a domain name

The Court also dismissed trademark infringement claims brought by defendants as a result of plaintiff’s use of their trademark in a website that purportedly disparaged defendants as a result of their use of the photographs at issue, and in the meta tags of that site.  The court held defendants failed to establish the requisite likelihood of consumer confusion sufficient to sustain such a claim, given that the parties were not competitors – plaintiff was a photographer, and defendants sold real estate and mortgage services – and plaintiff’s website was highly critical of defendants.  In reaching this result the court noted that “a defendant’s use of a trademark in metatags in a descriptive manner can constitute a non-infringing fair use.”

Finally, the Court left for trial defendants’ remaining claims, which included deceptive trade practices, interference with contractual and business relationships, and misappropriation of name and likeness, all of which arose out of the disparaging remarks posted on plaintiff’s website about the defendants.  This site included a photograph of defendant Vilenchik.  Because issues of fact existed as to the truth of these statements, the court reserved decision on these claims until trial.

It should be noted that plaintiff ultimately prevailed at trial, was awarded approximately $20,000 on his copyright infringement claims, and that defendants’ remaining claims were dismissed.

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Chris Gregerson v. Vilana Financial Inc., et al.
2006 WL 3227762, Civil No. 06-1164 ADM/AJB (D. Minn., Nov. 7, 2006)

Court denies defendants’ motion for a preliminary injunction, which sought to enjoin plaintiff from using defendants’ registered service and trademarks in the meta tags and “subject lines” of his website.  Plaintiff is a photographer who claimed that defendants, without authorization or payment, used a photograph in which he held copyright in an advertisement.  Plaintiff commenced suit against defendants for copyright infringement.  Plaintiff’s website described his view of defendants’ conduct, in a manner which disparaged, and according to defendants, defamed them.  As the site existed at the time of the hearing, it contained a prominent disclaimer, announcing it “is a criticism of” defendants.  Defendants’ counterclaim asserted claims of defamation and trademark infringement, and relied, in part, on the initial interest confusion created by plaintiff’s use of defendants’ marks.

The Court denied defendants’ motion for injunctive relief, holding defendants had not sufficiently established a likelihood of success on the merits.  Said the Court:

In the instant case, Defendants’ motion must be denied because they are unable to establish the first prong of the analysis, likelihood of success on the merits.  ‘A defendant’s use of a trademark in metatags in a descriptive manner can constitute a non-infringing fair use.’

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The Network Network v. CBS Inc., et al
No. CV 98-1349, 2000 US Dist. Lexis 4751, 2000 WL 362016 (C.D. Cal. Jan. 18, 2000)

The Network Network's registration and use of the domain name "www.tnn.com" neither infringed CBS's famous trademark "TNN" - (shorthand for "The Nashville Network") - nor diluted that mark. The Nashville Network is a cable television network that broadcasts country music and country lifestyle programming; The Network Network provides consulting and training to information technology managers and professionals.

On the parties’ cross-motions for summary judgment, the District Court held that The Network Network’s use of its tnn.com domain did not dilute CBS’s famous mark under the Federal Trademark Dilution Act because such use commenced before that mark became famous.  “[T]he statute looks to the mark’s fame at the time of the mark’s first commercial use, not when the first use occurs that the mark owner finds objectionable.”

The Court also rejected CBS’s trademark infringement claims, finding there was little likelihood that consumers would be confused by plaintiff’s use of tnn.com given the widely divergent nature of the product and services offered by the parties to the public. 

There is a difference between inadvertently landing on a website and being confused.  Thousands of Internet users every day take a stab at what they think is the most likely domain name for a particular website.  Given the limited number of letters in the alphabet, and the tendency toward the use of abbreviations in commerce generally and in domain names in particular, it is inevitable that consumers will often guess wrong.  But the fact that aficionados of The Nashville Network may initially type “tnn.com” into their browsers in the hope of locating Grand Ole Opry programming information does not, standing alone, demonstrate confusion. … The Court can conceive of few, if any, circumstances in which a person of average intelligence, seeking information on NASCAR racing schedules, would be seriously confused upon reaching Network’s website which, by its terms, offers “Strategic Planning , design, implementation, and management of Broadband Voice/Data/Video Networks.

The Court rejected CBS’s initial interest confusion claim for the same reason.  Said the Court:

Unlikely indeed is the hapless Internet searcher who, unable to find information on the schedule of upcoming NASCAR broadcasts or  Dukes of Hazzard' reruns, decides to give up and purchase a computer network maintenance seminar instead. 

For the same reasons, the Court also rejected CBS’s corresponding California state law dilution and infringement claims, and accordingly resolved this domain name dispute in plaintiff's favor.

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