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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 - Internet Library of Law and Court Decisions - Updated November 3, 2008

This section of the Internet Library of Law and Court Decisions contains court decisions that address the legality of using the trademark or service mark of another in various online activities, such as in a web site's domain name or url, to drive traffic to a competitor's web site, in a web site critical of, or that parodies the trademark holder, or in the headers of spam or junk e-mail, among others.

414 F.3d 400 (2d Cir., June 27, 2005)

Reversing the court below, the Second Circuit dismisses trademark infringement claims brought by a mark holder and website operator against a distributor of pop-up ads.  Such claims fail because "as a matter of law, [defendant] WhenU does not 'use' [plaintiff] 1-800's trademarks within the meaning of the Lanham Act, 15 U.S.C. § 1127 when it (1) includes 1-800's website address … in an unpublished directory of terms that trigger delivery of WhenU's contextually relevant advertising to [computer] users; or (2) causes separate, branded pop-up ads to appear on a [computer] user's computer screen either above, below, or along the bottom edge of the 1-800 website window."

The absence of such a use by WhenU of plaintiff's trademarks is fatal to 1-800 Contacts' trademark infringement claims, and mandated reversal of the District Court's grant of preliminary injunctive relief.  The District Court had enjoined WhenU from including the domain name of plaintiff's website in its unpublished directory, or causing pop-up ads to be displayed when that domain name is entered into the URL bar of a web browser, or as a search term.

In reaching this result, the Second Circuit agreed with the decisions of two other district courts - the Eastern District of Virginia in U-Haul Inc. v. WhenU.com Inc., 279 F. Supp. 2d 723 (E.D.Va. 2003) and the Eastern District of Michigan in Wells Fargo & Co., et al. v. WhenU.com Inc., 293 F.Supp.2d 734 (E.D.Mich. 2003) - each of which similarly held that WhenU's activities did not infringe the respective plaintiffs' trademarks because such activities did not constitute the requisite use of the plaintiffs' respective marks.

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."

437 F. Supp. 2d 273 (D.N.J., July 13, 2006)

Federal District Court holds that the use of plaintiff's 'JR Cigars' trademark as a keyword in GoTo.com's pay-for priority search engine to trigger the display of advertisements from third party competitors constitutes a "trademark use" sufficient to support trademark infringement and dilution claims under the Lanham Act.  Such trademark use arises out of GoTo.com's acceptance of bids from JR Cigar's competitors for a linkage to plaintiff's marks, by which GoTo trades on the value of those marks.  Such trademark use also arises out of GoTo's act of giving such advertisers priority over 'natural' search results, and thereby steering potential customers away from JR Cigar to its competitors.  Finally, such trademark use arises out of GoTo.com's use of a "Search Term Suggestion Tool" to assist in marketing JR Cigar's marks to its competitors, which tool shows the search traffic attracted by plaintiff's mark.

The Court went on to deny cross-motions by JR Cigar and GoTo.com for summary judgment, holding issues of fact precluded its determination of the likelihood of consumer confusion arising out of such usage of plaintiff's marks, and hence from resolving the trademark infringement claims at issue.

Finally, the Court dismissed claims advanced by plaintiff under both New Jersey's Consumer Fraud Act, N.J.S.A. §56:8 et seq. and the federal Telemarketing and Consumer Fraud and Abuse Prevention Act, 15 U.S.C. §6102(b).  The Court held that plaintiff lacked standing to proceed under New Jersey's Consumer Fraud Act, and that the reach of the Telemarketing Act did not extend to the acts at issue in the case at bar.

Case No. 00-CV-4882 (FB), 2002 U.S. Dist. Lexis 1129 (E.D.N.Y., January 22, 2002)

In this domain name dispute, Court denies plaintiffs' motion for summary judgment, seeking to hold defendant liable for trademark infringement, as well as for violations of the Federal Trademark Dilution Act and the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of defendant's use of plaintiffs' trademark "ABC Carpet and Home" in a domain name. Court holds that issues of fact preclude it from determining whether defendant acted in bad faith in selecting this domain name, given that he had been doing business under the name "American Basic Craft Carpet and Home Restoration" since 1980, and claimed to have adopted the domain name at issue, "ABcarpetandhome.net", because it was an abbreviation of his business name. This issue of fact precluded the court from granting summary judgment on plaintiffs' ACPA claim, which requires, among other things, a finding that defendant used the mark at issue in bad faith. This issue of fact also led the Court to deny summary judgment on plaintiffs' infringement claim. The court denied plaintiffs' motion with respect to their dilution claim on the ground that issues of fact existed as to whether plaintiffs' mark was famous.

1998 U.S. Dist. Lexis 12700 (S.D.N.Y., August 17, 1998)

(Court dismissed trademark infringement and unfair competition suit arising out of the use by two separate individuals of the identical mark "Aisle Say" in conjunction with their publication of theatre reviews. The court determined that this use was not likely to confuse consumers because plaintiff's reviews appeared only in a print publication while defendant's appeared only on the Internet. The court's decision was also buttressed by a disclaimer that appeared on defendant's site, and by its determination that defendant, the junior user, had independently developed the title "Aisle Say" in good faith.)

46 F. Supp.2d 444, Civ. Act. No. 98-102-A, (E.D. Va., Nov. 10, 1998)

Court found that defendants were guilty of both dilution and false designation of origin in violation of the strictures of the Lanham act, because they sent approximately 92 million unsolicited spam e-mails to AOL subscribers advertising pornographic web sites, each of which contained a forged header falsely indicating that the spam was sent from an AOL account holder utilizing AOL computers. Because this conduct was prohibited by AOL's Terms of Service, the court also found that it constituted a trespass to chattels, and ran afoul of both the Computer Fraud and Abuse Act and the Virginia Computer Crime Act. The court further found that defendants violated the Computer Fraud and Abuse Act, 18 U.S.C. section 1030 (a)(2)(c), by becoming AOL subscribers and using the access accordingly granted to AOL's system to run extractor programs that harvested the e-mail addresses of potential spam targets in violation of AOL's Terms of Service. The court issued an injunction, enjoining defendants from continuing to send unsolicited spam, or harvest AOL subscriber e-mail addresses.

64 F. Supp. 2d 549 (E.D. Va., August 13, 1999), aff'd. in part, vacated and remanded in part, 243 F.3d 812 (4th Cir., February 28, 2001)

On defendant AT&T's motion for summary judgment, the court held that plaintiff America Online, Inc.'s trade and service marks "You Have Mail," "IM" and "Buddy List" are generic and accordingly not entitled to trademark protection. As a result, the court determined that AT&T could continue to use these marks over AOL's objection in the operation of a competing service.

AOL, the Internet Service Provider, uses the phrase "You Have Mail" to notify its subscribers of their receipt of new e-mail. (For those of you who have always wanted to know, the voice you hear reciting "You Have Mail" is that of Elwood H. Edwards, Jr.).

AOL'S use of "Buddy List" and "IM" were succinctly explained by the court:

BUDDY LIST (R) is the brand for a service provided by AOL that provides real-time chat between two or more persons who are simultaneously using the AOL Service. ... AOL and its members call the real-time chat component of the BUDDY LIST (R) service the "IM" (pronounced "eye em") feature.

AOL held a federal service mark registration for the service mark "Buddy List" and a pending application for trademark registration for "You Have Mail."

AT&T operates a competing service which, like AOL, offers subscribers Internet access. As part of its service, AT&T offers a feature it describes as "You Have Mail!" which provides AT&T subscribers with notification of their receipt of e-mail. AT&T also provides subscribers with a service it describes as "IM Here." AT&T uses this phrase to describe a service which both notifies its subscribers when those on its "buddy list" are online, and allows subscribers to engage in real-time chats with their "buddies."

Arguing that AT&T's use of the phrases "You Have Mail," "IM" and "Buddy List" infringed and diluted its marks, AOL brought suit under the Lanham Act. AT&T counterclaimed for a declaratory judgment affirming the validity of its conduct on the grounds AOL's marks are generic and not entitled to trademark protection.

On defendant AT&T's motion for summary judgment, the court found that each of the marks was generic and accordingly not entitled to trademark protection. ("Generic marks never qualify for the protections of the Lanham Act.") The court reached this conclusion as a result of its application of the "primary significance test." "Under this test, a plaintiff who is seeking to establish a valid trademark must show 'that the primary significance of the term in the minds of the consuming public is not the product but the producer.'" Applying this test, and analyzing the use to which AOL, its competitors, the trade and the media put the challenged marks, the court concluded that they were used to describe the product itself, and not its producer. Accordingly, the marks were generic and not entitled to protection under the Lanham Act.

Said the court:

The undisputed facts establish that AOL uses the YOU HAVE MAIL mark generically. AOL uses YOU HAVE MAIL to inform its users of the fact that they have e-mail, which is also known as mail When a common word or phrase is used as a mark for its ordinary meaning, the mark is generic.

24 F.Supp.2d 548 (E.D.Va., October 29, 1998)

Court awards AOL summary judgment against a spammer, finding that the sending of over 60 million pieces of unauthorized junk e-mail to AOL subscribers after receipt of cease and desist letters constituted an actionable trespass to AOL's computer network. In reaching this conclusion, the court relied on Compuserve Inc. v. Cyber Promotions, 962 F. Supp. 1015 (S.D. Ohio 1997). The court further held that by including forged headers in much of this e-mail which indicated the e-mail came from an "aol.com" member account, defendants had both diluted plaintiff's famous mark and used it to falsely designate the e-mails' origin in violation of the Lanham Act. Implicit in the court's decision is a holding that a famous mark is tarnished when associated with the sending of spam.

469 F.3d 534, No. 05-2359 (6th Cir., November 27, 2006)

The Sixth Circuit affirms the District Court's award of summary judgment to plaintiffs, and holds that defendant Bob D'Amato infringed and diluted plaintiffs' famous "Audi," "Quatro," and Audi Four Ring Logo marks, and violated the Anticybersquating Consumer Protection Act.  Defendant was held to have infringed plaintiffs' marks by operating a website at the domain www.audisport.com, at which both goods such as hats and shirts bearing the "Audi Sport" logo, and advertising space, were offered for sale.  The Sixth Circuit accordingly affirmed the District Court's decision, which permanently enjoined defendant from making continued infringing use of Audi's trademarks, directed D'Amato to transfer the audisport.com domain to plaintiffs, and awarded plaintiffs Audi AG ("Audi") and Volkswagen of America Inc. ("Volkswagen") attorneys' fees as the prevailing party.  The Court reached this result notwithstanding both defendant's claim that his use of Audi's marks on his website in connection with the sale of goods was orally authorized by an Audi dealer, and his placement of a disclaimer on defendant's site after receipt of a cease and desist letter.  A written agreement between Audi and the dealer made clear that the dealer lacked authority to so authorize defendant's use of Audi's trademarks.

189 F.3d 868 (9th Cir., August 23, 1999)

Overturning a decision by the District Court, the Ninth Circuit Court of Appeals held that defendants' registration of domain names containing plaintiff's trademarks "avery" and "dennison" for the purpose of licensing those domain names to third parties for use as "vanity" e-mail addresses did not dilute plaintiff's marks under either Federal or California law.

Defendant Freeview has registered thousands of domain name. While most of these domain names contain common surnames, a number contain common trademarks or "lewd" language. According to the Court, these domain names were registered for the purpose of offering "vanity e-mail addresses to users for [a] ...fee." Among the domain names defendant registered were "avery.net" and "dennison.net." Besides being trademarks, Avery and Dennison are common surnames.

Plaintiff Avery Dennison sells office products and industrial fasteners under its registered trademarks "Avery" and "Dennison" respectively. These marks have each been registered and in continuous use for over 60 years. Plaintiff spends more than $5 million per year advertising its products, and boasts annual sales of approximately $3 billion. Plaintiff markets its products on the Internet at the domains "avery.com" and "dennison.com."

Claiming that defendants' acts violated both the Federal Trademark Dilution Act and California Business and Professional Code Section 14330, plaintiff commenced suit. To prevail on a claim under the Federal Trademark Dilution Act, the plaintiff must "establish that (1) its mark is famous; (2) the defendant is making commercial use of the mark in commerce; (3) the defendant's use began after the plaintiff's mark became famous and (4) the defendant's use presents a likelihood of dilution of the distinctive value of the mark." The Ninth Circuit held that plaintiff failed to establish either that its marks were famous, or that defendant was making commercial use thereof. As a result, it granted summary judgment to defendants, dismissing plaintiff's dilution claims. The court held that defendants were not utilizing plaintiff's marks in commerce, but rather were utilizing the marks to capitalize on their status as surnames. Said the court:

 

[Defendants] do not use trademarks qua trademarks as required by the case law to establish commercial use. Rather, [defendants] use words that happen to be trademarks for their non-trademark value.

Of note, the court held that "cybersquatting dilution", caused by the registration of a famous trademark as a domain name, can occur. "Cybersquatting dilution ... can occur if potential customers cannot find a web page at 'trademark.com.'"

CV 97-407 JSL, 999 F.Supp. 1337 (C.D. Cal. Mar. 16, 1998) rev'd. 189 F.3d 868, 1999 U.S. App. Lexis 19954 (9th Cir., August 23, 1999)

Cybersquatters held to have violated Federal Trademark Dilution Act by registering domain names containing plaintiff's federally licensed marks for the purpose of licensing such names to third parties. Court directed defendants to convey to plaintiff two domain names containing plaintiff's marks for $600.

2005 WL 331561 (N.D. Ill., Feb. 8, 2005)

Court holds that defendant’s use of plaintiff’s famous mark, and 15 variants thereof, in domain names that take consumers to a website at which both plaintiff’s products and those of its competitors are sold, dilutes plaintiff’s mark.  As a result, the Court grants plaintiff’s motion for summary judgment on its claim for trademark dilution in violation of the Lanham Act.

29 F. Supp. 2d 1161 (C.D.Cal., Nov. 23, 1998)

In Bally, the court awarded defendant summary judgment, dismissing claims of trademark infringement and dilution brought by plaintiff as a result of defendant's operation of a web site titled "Bally sucks", at which defendant airs criticism of plaintiff's health club operations. The site opens with the image of plaintiff's federally registered trademark "Bally", across which appears the word "sucks." The site states it is unauthorized, and no products are sold or offered for sale on the site. Plaintiff's trademark infringement claims failed because plaintiff could not establish that consumers were likely to be confused by this use of the "Bally" mark as to the source of the "Bally sucks" website. Quite the contrary, the court concluded that the average consumer would assume that plaintiff Bally neither approved nor sponsored the site. Plaintiff's dilution claim failed, in part, because defendant's use of the mark was not commercial, an essential element of a dilution claim. The court also held that a dilution by tarnishment claim could not be sustained as a result of the placement of a link on a website that, without authorization, contains a parties' trademark, which link took the user to another site which allegedly contained offensive materials, but not the trademark at issue. Of note, the court determined that a party has the right to use an entity's trademark in meta tags to promote a non-commercial site critical of the entity that owns the mark.

330 F.3d 617, Civ. No. 02-1396 (4th Cir., June 2, 2003)

Reversing the decision of the court below, the Fourth Circuit holds that plaintiff, owner of the domain name Barcelona.com, established a valid reverse domain name hijacking claim under 15 U.S.C. §1114(2)(D)(v) against the City Council of Barcelona Spain as a result of the Council's successful prosecution of a Uniform Domain Name Dispute Resolution Policy ("UDRP") proceeding against plaintiff.  In that proceeding, the City Council claimed that plaintiff's domain name infringed the Council's Spanish trademarks in a number of multiword marks each of which contained the word "barcelona."  The arbitrator and the District Court agreed, and directed that the domain name be transferred to the Council.  The Fourth Circuit reversed, holding that the District Court improperly applied Spanish law, instead of US law, to this proceeding.  It further held that under US law, a party could not hold a valid trademark in the name of a geographical place. As such, plaintiff's registration of the domain name barcelona.com was lawful and entitled to protection under 15 U.S.C. §1114(2)(D)(v).  In reaching this result, the Court held that the City Council was subject to the jurisdiction of United States' courts by virtue of its commencement of the UDRP proceeding.

C.A. No. 6:06-109-HMH (D.S.C. October 22, 2007)

Granting defendant’s motion for summary judgment, the District Court dismisses defamation, trademark infringement, and invasion of privacy claims brought by plaintiffs against a blogger.  The claims arose out of defendant’s publication of articles on his blog, featuring plaintiff’s trademark, that were critical of plaintiffs’ eBay auction listing business. 

The Court held plaintiff’s trademark dilution claims failed because defendant used the mark in connection with “news reporting and news commentary,” a non-actionable use under the Federal dilution statute.  The Court held plaintiffs’ defamation claims failed because the statements at issue – which purportedly accused plaintiff Schmidt of being a “yes man” ‘who overpromised and underdelivered’ were non-actionable statements of opinion.  Finally, the Court held plaintiffs’ invasion of privacy claims – which were premised on a link on defendant’s blog to another site which contained a picture of plaintiffs – failed.  The Curt rested this holding on its determination both that South Carolina does not recognize a claim for false light invasion of privacy, and that, in any event, the link and article in question did not cast plaintiffs in a false light.  The Court also grounded its rejection of this claim on its holding that the link and corresponding use of the photo did not constitute a viable ‘wrongful appropriation of personalty’ invasion of privacy claim, given that plaintiffs had consented to the use of their photo on the internet site on which it was contained.

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.

478 F.Supp.2d 1240, No. C06-1002RSL (W.D. Wash., Jan. 18, 2007)

Court allows plaintiff Blue Nile to proceed with trade dress infringement claims against direct competitors arising out of their alleged creation of a web site that copied the "look and feel" of plaintiff Blue Nile's web site.  The Court denied defendants' motion to dismiss the trade dress claim, which motion was grounded on defendants' assertion that it was preempted by Copyright Act.  The Court held it could not resolve the preemption issue at the outset of the litigation given the limited factual record developed to date.  It also rested its decision on the precept that claims raising novel issues should not be resolved on motions to dismiss, without the benefit of a development of a complete factual record.

The Court did dismiss so much of plaintiff's complaint that alleged that defendants had violated the Washington Consumer Protection Act, and asserted claims for unfair competition, unjust enrichment and restitution.  These claims were all grounded on defendants' alleged copying of copyrighted elements of plaintiff's web site, and were thus preempted by the Copyright Act.  Notably, this copying formed the basis of copyright infringement claims that were also asserted in the complaint, and were not the subject of the instant motion.

403 F.3d 672 (9th Cir., April 4, 2005)

In this domain name dispute, the Ninth Circuit holds that the use of another’s trademark as the domain name for a non-commercial gripe site does not constitute trademark infringement or dilution in violation of the Lanham Act.  To run afoul of the Lanham Act, a mark must be used in connection with the sale of goods or services.  A web site which is merely critical of another’s goods or services does not fit this bill.  The Ninth Circuit accordingly affirmed the District Court’s grant of summary judgment, dismissing plaintiff’s trademark infringement and dilution claims.

The Ninth Circuit reversed, however, so much of the District Court’s decision which dismissed plaintiff’s Anticybersquatting Consumer Protection Act (“ACPA”) claim.  The ACPA does not have a commercial use requirement, and, accordingly, establishing that the mark was used as the domain for a non-commercial gripe site does not absolve the griper from potential liability under the ACPA.  Because that was the basis on which the lower court dismissed plaintiff’s ACPA claim, its dismissal was reversed.  The matter was remanded to the District Court to determine whether defendant used the mark with a bad faith intent to profit therefrom, in violation of the ACPA.

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.

950 F. Supp. 737 (E.D. Va. 1997)

In this domain name dispute, Court issued permanent injunction enjoining use of "cardservice" in domain name because such use infringed trademark in "cardservice international."  The court further awarded plaintiff attorneys fees under the Lanham Act to compensate plaintiff for its efforts in stopping defendant from continuing this conduct.

950 F. Supp. 737 (E.D.Va. Jan. 16, 1997)

In this domain name dispute, Court issued permanent injunction enjoining use of "cardservice" in domain name because such use infringed trademark in "cardservice international."  The court further awarded plaintiff attorneys fees under the Lanham Act to compensate plaintiff for its efforts in stopping defendant from continuing this conduct.

Civ. No. 000-3238, 153 F.Supp.2d 755 (E.D. Pa. July, 2001)

Court holds that insurers who issued a "business owners" policy and a "commercial umbrella liability" policy covering losses caused by an "advertising injury" have a duty to defend their insureds in an action alleging, inter alia, trademark infringement. Such claims, held the Court, fall within the policy's coverage for injury arising out of the "misappropriation of advertising ideas or style of doing business," which the policy includes within the definition of covered advertising injuries.

73 F.Supp.2d 106, 1999 U.S. Dist. Lexis 18187 (D. Mass. Nov. 18, 1999)

In this domain name dispute, the court denied plaintiff's application for a preliminary injunction, enjoining defendant from continuing to operate a website at a domain name which purportedly infringed plaintiff's trademark.

Plaintiff and defendant are direct competitors who offer information to investment professionals. Plaintiff offers its information for free at a web site it operates at "streetevents.com." Defendant offers its information at a web site located at the url "streetfusion.com." Unlike plaintiff, defendant charges its customers for access to its information, with prices ranging up to $400,000 for a one year subscription.

Claiming that defendant's use of the domain name and mark "streetfusion.com" infringed its rights in "streetevents.com," plaintiff commenced this suit, in which it alleged that defendant was engaging in unfair competition in violation of section 43 of the Lanham Act, 15 U.S.C. Section 1125(a). Plaintiff sought a preliminary injunction, enjoining defendant from continuing this conduct. Finding that plaintiff had not established a sufficient likelihood of prevailing on the merits, the court denied plaintiff's application.

Neither party possessed a federally registered trademark. Accordingly, their respective rights turned on which party first commenced use of their mark in commerce. The court, on the record before it, was unable to determine which party had first commenced use of the mark. The evidence plaintiff presented of its usage was insufficient to show that it had test marketed the mark. "Test marketing", held the court, "involves offering the product for sale through normal channels of trade in limited markets for limited times." Such use, the court determined, can constitute commercial use for trademark purposes. The court further held that plaintiff had not established sufficient likelihood of consumer confusion to entitle it to the requested relief. The court reached this result notwithstanding the fact that plaintiff submitted evidence of approximately 20 incidents in which investment professionals had actually confused the two services. Said the court "de minimus confusion, which is easily resolved and does not affect the ultimate purchasing decision, is of minimal relevance."

15 F.Supp.2d 986, Civil No. 97-793HA (D. Or., April 22, 1998)

Court holds that plaintiff can use "CDS.com" as the domain name of a website marketing "CD-ROM" products, despite the fact that defendants hold federal trademark registration in "CDS." Defendants cannot use the trademark laws to bar plaintiff's use of the term "CDs" in marketing a product that term describes -- CD-ROMs -- because the phrase "CDs" is a generic term.

425 F.3d 211, No. 03-4700 (3rd Cir., October 11, 2005)

In a 91 page decision, a three member panel of the Third Circuit, by a two to one margin, adopted a new test to determine the propriety of a defendant's use of another's mark to describe the mark holder's own product.  A classic example of such a nominative fair use is an advertisement by an independent auto repair shop that contains the marks "VW" and "Volkswagen" to accurately inform the public of the type of cars the shop repairs. 

The judges agreed that this issue should not be resolved by application of the "nominative fair use" test utilized by the Ninth Circuit in New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992) and its progeny.  But the panel was unable to agree on the appropriate test to apply. 

The two member majority "adopted a two step approach to nominative fair use cases."  Under the majority's test, the mark holder bears the burden of proving that the challenged use of its mark is likely to confuse the consumer as to the source of defendant's product, or its affiliation with, or endorsement by, the mark holder. 

In making such a showing, the mark holder cannot rely on the ten factors regularly examined by the Third Circuit in trademark cases, known as the Lapp factors, to determine likelihood of consumer confusion.  Instead, the majority instructs that two of those factors -- degree of similarity between the owner's mark and the allegedly infringing mark, and the strength of the owner's mark -- be ignored altogether.  The majority directs the courts to focus primarily on the following four of the remaining eight factors: (1) the price of the goods and other factors indicative of the care and attention that may be expected of consumers when making a purchase, (2) evidence of actual confusion, (3) the length of time, if any, defendant has used the mark without actual confusion, and (4) the intent of defendant in utilizing the mark.  While courts may, in an appropriate case, consider the remaining Lapp factors, listed below, in analyzing if the mark holder has met its burden of establishing likelihood of confusion, the four factors noted above are the ones on which the courts should primarily focus.  The remaining Lapp factors courts may consider are: (1) whether the parties' goods are marketed through the same channels and advertised through the same media, (2) the extent to which the targets of the parties' sales efforts are the same, (3) the relationship of the parties' respective goods in the mind of the consumer because of a similarity of function, and (4) facts suggesting the consuming public may expect the mark owner to expand into the defendant's market.

Once the mark holder meets its burden of proving confusion under this modified Lapp test, the burden shifts to the defendant to prove the affirmative defense of nominative fair use.   As announced by the majority, this requires the defendant to show: (1) the challenged use of plaintiff's mark is necessary to describe both plaintiff's product or service and defendant's product or service; (2) defendant has used only so much of plaintiff's mark as is necessary to describe plaintiff's products or services; and (3) the defendant's conduct or language reflects the true and accurate relationship between plaintiff and defendant's products or services.  If the defendant can show each of these elements, he may proceed with the challenged use, even if it will engender some confusion among consumers.

In a scathing dissent, Circuit Judge Fisher strongly criticized the majority's new test as being both contrary to binding precedent and judicially unmanageable.  He further opined that the test adopted by the majority impermissibly places on the defendant the burden of negating likelihood of consumer confusion. 

Judge Fisher set forth his own alternative test for determining the propriety of a nominative fair use.  Under this test, there is no bifurcated, burden shifting, approach.  Nor is nominative fair use an affirmative defense to be established by the defendant making a challenged use of the mark at issue.  Rather, the appropriate inquiry for the court is whether the challenged use of the mark is likely to confuse consumers, as to which issue the mark holder bears the burden of proof.  In analyzing this issue, Judge Fischer would also use a modified Lapp test.  Under Judge Fischer's test, like that of the majority, courts would ignore both the similarity of the marks, and the strength of the mark.  Similarly, the courts would focus primarily on the same four Lapp factors that are at the center of their examination of confusion under the majority's test.  However, under Judge Fisher's test, negative findings on the remaining four Lapp factors would counsel against a finding of confusion arising out of defendant's nominative use.  Thus, a finding that the parties' goods were marketed through different channels or sold to different consumers, or performed different functions, would weigh against a finding of confusion.

As was to be expected, given that the District Court did not apply the newly minted nominative fair use test pronounced in the majority's opinion, the District Court's decision was reversed, and the case remanded for further consideration in light of the Third Circuit's decision.

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.

214 F.3d 456, No.99-2318 (4th Cir., June 2, 2000)

The Fourth Circuit vacated an injunction issued by the District Court which directed defendants to remove content from their web site critical of the plaintiff. The court held such relief warranted because the injunction failed to properly specify the reasons for its issuance as required by Fed. R. Civ. P. 65(a). The court further held such relief warranted because the district court's injunction raised serious First Amendment concerns due to the injunction's apparent failure to "burden no more speech than necessary to serve a significant government interest." In reaching this conclusion, the Fourth Circuit stated: "[J]ust because speech is critical of a corporation and its business practices is not a sufficient reason to enjoin the speech. As the First Circuit stated, if a trademark owner could 'enjoin the use of his mark in a noncommercial context found to be negative or offensive, then a corporation could shield itself from criticism by forbidding the use of its name in commentaries critical of its conduct." The case was remanded to the District Court for further consideration.

No. C 97-0912CW (N.D.Cal. May 7, 1997)

Court enjoined defendants, inter alia, from advertising that their computer hardware was "compatible with Sound Blaster." This constituted false advertising in violation of Lanham Act because between 2 and 8% of software that functioned on a computer containing a Sound Blaster sound card would not function on a computer containing defendants' hardware, and defendants' hardware did not support a function supported by Sound Blaster

150 F.3d 620, No. 96-00429 (Sixth Cir., August 4, 1998)

The Sixth Circuit, reversing the court below, held that issues of fact precluded the court from determining on a motion for summary judgment that plaintiff's use of the domain name "DCI.com" infringed defendant's federal trademark in the mark "DCI." In reaching this determination, the Court of Appeals held that it could not determine on motion that consumers were likely to be confused by plaintiff's use of DCI in it domain name. Instead the "case appears to present too close a question to decide on a matter of law" because, inter alia, of the fact that there were at least 90 other websites which utilized DCI in their domain name, the differing services offered by plaintiff (software sales) and defendant (educational services) and plaintiff's lack of intent to infringe.

Civ. No. 3-96-0429 (M.D. Tenn., Jan. 31, 1997) reversed in part, affirmed in part, 150 F.3d 620 (6th Cir., August 4, 1998)

Court held that plaintiff's use of "DCI.COM" in its domain name constituted trademark infringement and unfair competition with defendant, who owned the federal trademark in "DCI ®". The court did permit plaintiff to continue to use "dci" in lower case letters in its domain name, finding such use did not infringe or unfairly compete with defendant.

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.

1997 U.S. Dist. Lexis 6713 (S.D.N.Y. May 13, 1997)

(Application for preliminary injunction enjoining defendant from using plaintiff's federal trademark on defendant's Internet site denied where (a) plaintiff knew of such use at least one year prior to seeking injunctive relief and (b) there was a sharp factual dispute as to whether or not defendant had used the mark in commerce prior to plaintiff's first use of the mark).

Civil Action No. 07-cv-286 (D. N.H., March 27, 2008)

Court holds that the Communications Decency Act immunizes defendants from various non-intellectual property claims arising out of their making available on their adult social networking sites an anonymous profile authored by an unknown third party which plaintiff claims falsely appears to people who know her to be her own.  The Court holds that this immunity also covers non-intellectual property claims arising out of defendants reposting this profile on third party sites, making slight alterations to the profile as to the participant’s age, and using the profile in teasers and other advertisements for defendants’ site.  As a result, the Court dismissed claims plaintiff advanced for defamation, intentional infliction of emotional distress, intentional, reckless, negligent and/or willful and wanton conduct, and violations of the New Hampshire Consumer Protection Act, arising out of such alleged misconduct.

The Court held that the Communications Decency Act did not, however, immunize defendants from intellectual property claims plaintiff advanced, both under applicable federal and state laws, including right of publicity claims advanced under New Hampshire state law.   Plaintiff was accordingly allowed to proceed with claims that defendants, by including identifiable aspects of plaintiff’s persona in advertisements and ‘teasers’ in an effort to increase the profitability of their websites, violated her right to publicity.

The Court further held that plaintiff could proceed with Lanham Act false designation of origin and false advertising claims against the defendants.   The false advertising claim was based on the inclusion of the profile at issue in ‘teasers’ and other advertisements for defendants’ site.  These acts allegedly deceived consumers into registering for defendants’ services in the hope of interacting with plaintiff, and caused injury to her reputation as a result, including alleged lost employment opportunities.  The false designation of origin claims similarly arose out of defendants’ use of the profile at issue in marketing their sites, which falsely implied plaintiff’s affiliation with, or sponsorship and approval of, defendants’ site and service.

Civ. Act. No. H-00-450, 129 F. Supp.2d 1033 (S.D. Tex., January 24, 2001) aff'd., 286 F.3d 270 (5th Cir., 2002)

In this domain name dispute, Court enjoined defendants from continuing to utilize the domain name ernestandjuliogallo.com, and directed them to transfer the name to plaintiff E. and J. Gallo Winery ("Gallo"), which holds a trademark in the mark "Ernest and Julio Gallo." The court further awarded Gallo statutory damages under the Anticybersquatting Consumer Protection Act ("ACPA") in the amount of $25,000 as a result, inter alia, of defendants' registration of the domain name at issue, and their use of that domain name to operate a web site that commented on this lawsuit, and contained articles critical of alcohol consumption. Defendants had also registered some 2000 other domain names, a number of which contained the names of famous companies, cities and buildings.

Case No. CV 00-03292 ABC (RNBx), 127 F. Supp.2d 1069 (C.D.Cal., October 30, 2000)

The court dismissed defendants' claim seeking cancellation of plaintiff's federal trademark registration of the mark "Ecash." The court held that plaintiff had no obligation to notify the PTO during the trademark registration process of defendants' use of the Ecash mark in a domain name because such use did not confer "clearly established" rights on defendants to use the mark in question.

Civ. No. 99-2288 (D.N.J., June 4, 1999)

In this domain name dispute, Court issues a preliminary injunction enjoining defendant from continuing to utilize the domain name "edgaronline.com." Such action, determined the court, is likely to falsely imply that plaintiff Edgar Online Inc. is the source of the material found at defendant's web site in violation of section 43(a) of the Lanham Act.

Plaintiff operates a website at the domain name "edgar-online.com" and claims a common law trademark in the mark "Edgar Online." Plaintiff's use of this mark commenced prior to defendant's. Plaintiff and defendant each operate competing web sites which offer users access to the SEC's EDGAR database. Plaintiff charges users a fee for the searches they are able to conduct on plaintiff's web site. Defendant offers his service for free, which service apparently lacks some of the functionality found on plaintiff's site.

Though unregistered, the court found that plaintiff's mark was entitled to protection under Section 43(a). Relying on Jews for Jesus v. Brodsky, 993 F. Supp. 993 F. Supp. 282 (D.N.J. Mar. 6, 1998) aff'd. 159 F. 3d 1351 (3d Cir. 1998) the court further held that defendant's use occurs in commerce in connection with goods and services, notwithstanding its conclusion that plaintiff "does not earn revenues from his website." Said the court:

As in Jews for Jesus v. Brodsky ... [defendant] uses a domain name that is virtually identical to plaintiff's name mark, he thereby impedes some Internet users from reaching plaintiff's website and interferes with plaintiff's distribution of its services. In Jews for Jesus, confronted with such circumstances, the Court determined that the false designation of origin occurred in interstate commerce "in connection with goods and services" within the meaning of Section 43(a). The same is true here."

2006 WL 737064, Civil No. 04-4371 (D. Minn. 2006) (JRT/FLN)

The Court holds that the purchase of keyword advertisements triggered by a search containing another's trademark constitutes a use of that mark in commerce sufficient to give rise to trademark infringement claims.  The Court accordingly denied a motion by defendant The MLS Online.com to dismiss trademark infringement claims arising out of its purchase of keyword advertisements from Google and Yahoo that displayed 'sponsored links' to defendant's website when a user entered plaintiff's Edina Realty trademark as a search term.

The Court also denied defendant's motion to dismiss trademark infringement claims arising out of its use of plaintiff's mark in hidden text and links found on its website, and in the text of its sponsored links, which motion was premised on the ground that this was a permitted nominative fair use of plaintiff's marks.  Adopting the 'fair use' test followed by the Third Circuit, the Court held such uses of plaintiff's mark were not necessary to the description of defendant's product or services.

Finally, the Court dismissed trademark dilution claims advanced by plaintiff Edina Realty as a result of its failure to provide evidence of actual dilution.

2000 U.S. Dist. LEXIS 15719 (E.D. Pa., October 30, 2000)

Court issues permanent injunction under the Anticybersquatting Consumer Protection Act ("ACPA"), enjoining defendant, described by the court as a "notorious cybersquatter," from continuing to operate web sites at domains containing common misspellings of plaintiff's registered service marks. The court also awarded plaintiff $530,653.34, which included both the maximum $100,000 statutory award for each domain name improperly used, as well as plaintiff's attorney's fees and costs.

2000 U.S. Dist. Lexis 794 (S.D.N.Y. Feb. 1, 2000)

In this domain name dispute, Court grants a preliminary injunction, enjoining defendant, after a sixty day period, from continuing to operate a web site at a domain which contains a variant spelling of plaintiff's federally registered trademark.

Plaintiffs own the federally registered trademark First Jewellery, which they use in connection with their business of selling jewelry at wholesale to jewelry retailers in both Canada and the United States. Plaintiff does not sell its products at retail. Jewellery is a British variant of the word Jewelry. Plaintiffs first registered their trademark in 1990.

Defendant Internet Shopping Network LLC operates a web site at the domain "firstjewelry.com" at which it sells jewelry products at retail to the public. Defendant commenced its use of this domain on or about June 23, 1999.

Plaintiffs moved for a preliminary injunction enjoining defendant from continuing to operate a web site at the firstjewelry.com domain. Finding that plaintiffs had succeeded in establishing a likelihood that they would prevail on their claim that defendant's activities infringed their mark, the court granted the injunction on the terms discussed below.

The court determined that plaintiff had shown that defendant's use was likely to cause the requisite consumer confusion because such use was likely to lead plaintiffs' wholesale customers to believe that plaintiffs had opened a directly competing retail outlet. The court also pointed to the fact that, while defendant did not adopt the name in a bad faith attempt to profit on the goodwill associated with plaintiffs' mark, it failed to engage in the simple precaution of performing a trademark search before it commenced its use of the domain.

Nonetheless, because of the extensive promotional expenditures defendant had made in connection with its site, and its lack of bad faith, the court did not direct defendant to immediately cease its infringing activities. Rather, the court granted defendant 60 days to change the domain name of its site, provided that in the interim, it posted on the home page of its web site a disclaimer stating that the defendant's operation is not affiliated with First Jewelery.

177 F. Supp. 2d 661, 2001 U.S. Dist. Lexis 21302 (E.D. Michigan, December 20, 2001)

Court denies Ford Motor Company's motion for a preliminary injunction seeking to enjoin defendants from continuing to automatically redirect users from a web site defendants operate at www.fuckgeneralmotors.com to the web site operated by Ford at www.ford.com. Defendants achieve this redirection via a link embedded in the programming code of defendants' web site, which link utilizes Ford's mark. The court held that Ford could not succeed on the merits of its federal trademark dilution claim, because defendants were not using plaintiff's mark in commerce. The court further held that Ford could not succeed on its trademark infringement and unfair competition claims, because defendants were not using plaintiff's mark in connection with the sale, or advertising for sale, of any goods or services. Finding that plaintiff would not succeed on the merits of its claims, the court denied plaintiff's motion.

Case No. CV 04-2619AHM (MANx) (C.D. Ca., May, 2004)

Finding plaintiff likely to prevail on claims of trademark infringement and cybersquatting, Court issues preliminary injunction directing defendants, purported competitors operating a business under the same name as plaintiff, to transfer to plaintiff 74 domain names which contain plaintiff's trademarks or variations thereof, during the pendency of this suit.  The Court further directed plaintiff to remove the existing content on the sites found at those domains and replace it with an "under construction" notification, and pay all registration fees for these domains which may become due.  The Court reached this result notwithstanding the fact that defendants had registered the main domain at issue, gardenoflife.com, before plaintiff commenced its use of that mark in commerce.  On this motion, the Court rejected defendants' claim that they had been using the mark "gardenoflife" in commerce continuously since 1974.  The Court found instead that defendants' use of the mark did not commence until after plaintiff's.  As a result, and because defendants registered many of the domains at issue after plaintiff had entered into negotiations with defendants for the purchase of the gardenoflife.com name, which domains contained variations of plaintiffs marks unrelated to defendants' business, the court found plaintiff likely to prevail on claims of trademark infringement and cyberquatting.

Case No. C03-05340-F (N.D. Cal., March 30, 2005)

Court denies Google's motion to dismiss trademark infringement and dilution claims asserted by American Blind, which claims arose out of Google's alleged use of American Blind's trademarks to trigger the display of third party advertisements in search engine results for those marks.  The Court declined, on this motion, to hold that use of American Blind's trademarks in this fashion was insufficient to give rise to trademark infringement or dilution claims because it did not constitute a use of the marks to identify the source of goods or services supplied by Google.  The Court did dismiss the tortious interference with prospective business advantage claim asserted by American Blind, holding that American Blind had failed to allege the interference with sufficiently certain economic relationships necessary to proceed with such a claim.

Case No. 03-5340 JF (RS) (N.D. Cal., April 18, 2007)

District Court holds that Google’s use of defendant American Blind & Window Factory’s (“ABWF”) trademarks to trigger the display of competitors’ ads as part of Google’s “Ad Words” program is a use of those marks in commerce within the meaning the Lanham Act.  These competitors’ ads are displayed by Google as ‘sponsored links’ and do not contain defendant’s trademarks.  The Court accordingly allows ABWF to proceed with trademark infringement claims arising from such use of its marks, finding that ABWF had presented sufficient evidence of consumer confusion to survive Google’s motion for summary judgment.  This evidence included the results of a survey that reported that 29% of consumers believed that such “sponsored links” were affiliated with the company that owned the trademark the consumer used to initiate his search.  The Court held as a result that whether consumers were in fact confused by “sponsored links” that do not contain defendant’s mark was an issue of fact requiring resolution at trial.

The Court did dismiss so much of defendant’s claims that were premised on its “American Blind” and “American Blinds” marks, which the Court held were descriptive.  Because ABWF did not submit sufficient evidence to establish that these (then) common law marks had developed sufficient secondary meaning to be entitled to protection from Google’s conduct at the time Google began its allegedly infringing activity, the Court dismissed so much of ABWF’s claims as were grounded on the alleged use of its American Blind and American Blinds marks.

Finally, the Court dismissed ABWF’s Federal and California dilution claims, finding that ABWF had failed to submit sufficient evidence that its marks were “famous,” a prerequisite to such dilution claims.  It should be noted that the court designated its decision as “not for citation.”

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. This green circle 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.

Plaintiff promptly objected to Disney's use of its "go logo" while Disney's Go Network was still being beta-tested. Disney refused to discontinue use of this logo, and officially launched 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 establish that defendant's use of its "go logo" 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 consumer 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 three factors favored a finding that the use in question was likely to cause consumer confusion. The logos used by the parties were "glaringly similar," 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.

Finding a likelihood of confusion, and rejecting Disney's claims that plaintiff should be denied the requested relief because of its delay in moving for and injunction, the Ninth Circuit affirmed the district court's grant of injunctive relief.

Civ. Action No. 1:04cv507 (E.D., Va., December 15, 2004)

In a bench ruling, Court holds that the display by search engine giant Google of third party advertisements denominated "sponsored links", which ads are triggered by the entry of a trademark as a search term, does not run afoul of the Lanham Act provided the "sponsored links" do not contain the searched-for trademark.  However, the display of "sponsored links" which do contain the searched-for trademark are likely to confuse consumers and thus was held to run afoul of the Lanham Act.

The Court did not resolve the issue of Google's potential liability for the display of such third party ads, noting that Google had a policy prohibiting its advertisers from displaying "sponsored links" containing trademarks of third parties when such marks are used as the triggering search term.  It should also be noted that the Court's finding that consumers would not be confused by "sponsored links" that did not contain a trademark was based, in large part, on its rejection of survey evidence presented by the mark holder.  The Court rejected this evidence, despite its showing of consumer confusion, because the consumers were simultaneously shown both ads that did and did not contain the trademarked term.

1:04cv507 (LMB/TCB) (E.D. Va. August 25, 2004)

Court denies motion to dismiss brought by search giants Google and Overture, and allows plaintiff GEICO to proceed with trademark infringement and unfair competition claims arising out of defendants' alleged practice of selling advertising triggered by the entry of plaintiff's trademarks as search terms, which advertisements are displayed in the search results generated by such searches.

135 F.Supp.2d 409, 00 Civ. 549 (S.D.N.Y., March 19, 2001)

Court holds that neither the Communications Decency Act or the First Amendment immunize an Internet hosting company from potential liability under the Lanham Act for hosting the website of a third party which allegedly infringed plaintiff's trademark. As a result, the court denied defendant Mindspring's motion to dismiss, and allowed Gucci to proceed with its claim that, by hosting a third parties' site containing allegedly infringing materials, despite notice of the same, Mindspring was guilty of direct or contributory trademark infringement and false designation of origin in violation of the Lanham Act, as well as violations of state trademark and unfair competition statutes.

1999 U.S. Dist. Lexis 8340 (S.D.N.Y. June 1, 1999)

The court holds that defendants' unauthorized use of plaintiff's marks to market CDs via framing occurs globally in violation of a licensing agreement between the parties.

In June, 1996, defendant Morton sold his interests in the Hard Rock Café business to plaintiff's parent the Rank Group PLC. At that time, the parties entered into several agreements (the "Agreements"), which permitted Morton to retain ownership of the Hard Rock Hotel and Casino he had opened in Las Vegas Nevada, and to open additional hotel/casinos in other designated territories, defined in the agreements as the "Morton Territories."

Under the parties' agreements, Morton was obligated to and did convey to plaintiff his ownership interest in the trademark Hard Rock Hotel. However, the agreements granted defendant "an exclusive license to use and exploit" the Hard Rock Hotel mark "only in the Morton Territories ... and solely in connection with the development, operation, ownership, management, operation of and promotion of Hard Rock Hotel/Casinos. Licensee shall not use or exploit the Hard Rock Hotel Marks outside the Morton Territories, except, however, Licensee may engage in the promotion, advertising, or marketing (not including the sale of merchandise) and broadcasting of Hard Rock Hotel Casinos and Hard Rock Casinos anywhere in the world." The agreements also granted Morton the right to "develop, maintain and update a web page for the Hard Rock Hotel/Casinos or Casinos in the Morton Territories." The Agreements further granted defendants the right to sell "Licensed Products" through the Internet provided those products "bear the Internet address as the Licensed Products' location" as well as the Hard Rock Hotel or Casino marks.

Defendants entered into an agreement with Tunes Network Inc. ("Tunes") to sell CDs to the public. Defendants installed a link on their website which contained the words "record store." Clicking on this link took the user to the Tunes web page which appeared in "frames" on defendants' website. In the frames above and to the left of the Tunes' content appeared the Hard Rock Hotel logo. The Tunes' frame permitted the user to listen to and order CDs from Tunes, who would be responsible for shipping the same. No Hard Rock logo appeared on the CDs. Defendant was to receive 5% on each CD sale. Only two CDs were sold in this fashion.

The court found that the use of the Hard Rock Hotel mark in frames around the Tunes web pages was a use that occurred outside the "Morton Territories" and therefore violated the parties' Agreements. As set forth above, the Agreements prohibited defendants from using the marks outside the Morton Territories except in connection with the sale of "Licensed Products", which did not include the materials marketed by Tunes on its web site. The court held that by using frames in this fashion, defendants were using the Hard Rock Hotel marks to advertise and sell CDs, even though the actual sales were being conducted by Tunes.

The court also concluded that this activity was occurring both inside and outside the Morton Territories. In reaching this conclusion, the court relied on principles of trademark law that "the wrong takes place ... where the passing off occurs." The court also pointed to those cases that hold that "advertisements alone can constitute actionable use of a trademark and in such cases the trademark is used wherever the advertisement has its effect on consumers." Because the "defendants have advertised and offered CDs for sale to a global audience" their activities occurred both within and without the Morton Territories, and thus violated the Agreements. Of note, the court said:

The geographical coordinates in the physical world of the various elements of defendants' Internet activity do not bear on "where the passing off occurs" under the Vanity Fair test or where the Hard Rock Hotel Mark is used or exploited within the meaning of the License Agreement.

The court also found that defendants' sale of merchandise and use of logos that did not conform with the parties' license agreement constituted a breach of those agreements and a violation of the Lanham Act.

The court further held that the Agreements did not prohibit defendants from registering with NSI as the owner of domain name "hardrockhotel.com," or require them to transfer ownership of that domain name to plaintiff. This was true despite the fact that the agreements provided that plaintiff shall have "sole right for the registration or renewal of trademarks and service marks or other proprietary rights for the Hard Rock Hotel Marks ..." and that defendant "shall not at any time apply for any registration of any copyright, trademark or other designation which would affect the ownership of or encumber, damage, dilute or modify the Hard Rock Hotel marks..." and "shall not file any document requesting any governmental authority to take any action, nor take any action itself which would affect the ownership of or damage, dilute or modify the hard Rock Hotel Marks or the Hard Rock Casino marks." As stated above, the agreements permitted defendants to operate a web site promoting its Hard Rock Hotel and to use the Hard Rock Hotel mark in promotion efforts for its hotel anywhere in the world. As such, concluded the court, defendants were permitted to maintain registration of the hardrockhotel.com domain name. Said the court "[defendants'] reservation and use of the "hardrockhotel.com" domain name ... has not affected [plaintiff's] ownership of the Hard Rock Hotel Mark, or encumbered, damaged, diluted or modified the Hard Rock Hotel Mark ..." within the meaning of the Agreements.

Notwithstanding its finding that defendants had breached the Agreements, and committed trademark infringement, the court was unwilling to award plaintiff damages. Said the court:

In light of plaintiff's long term voluntary association with defendants and their web site, plaintiff's delay in bringing any complaint about the content of the web site, defendants' good faith efforts at arbitration and voluntary corrective action following the failure of mediation in which they participated and the branding of defendants' web site, there is insufficient basis for a finding of bad faith infringement or willful intent to deceive consumers. Accordingly, plaintiff's demands for actual damages, an accounting of defendants' profits, attorney fees, and punitive damages under state law are denied.

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.

165 F. Supp. 2d 1082, Case No. CV 01-0495 RJK (RNBx) (C.D. Cal. 2001)

Court grants defendants' motion for summary judgment, and dismisses claims brought by plaintiff, the owner of a copyright in the documentary "Manson", against defendant eBay arising out of the use by unaffiliated third parties of the eBay auction site to sell unauthorized copies of the Manson documentary. The Court held that plaintiff's claims for contributory and vicarious copyright infringement were barred by operation of Section 512(c) of the Digital Millennium Copyright Act. The DMCA offers service providers such as eBay protection from copyright infringement claims arising out of the storage of material on their web site provided, inter alia, (i) they do not have actual knowledge of the infringing activity or promptly upon gaining such knowledge move to prevent the use of their service to further it, (ii) do not receive a financial benefit directly attributable to infringing activity they have the ability to control, and (iii) expeditiously remove material from their service on receipt of an appropriate notice. The court held that eBay was entitled to protection under this section because (i) it did not have actual notice of the infringing activity, (ii) could not control it as the transactions were consummated off-line without eBay's involvement, and (iii) eBay had not received the requisite notice of infringing activity because, inter alia, the infringing articles were not appropriately specified in the notice sent by plaintiff. Plaintiff's claims for trademark infringement were mooted, held the Court, because of eBay's status as an innocent infringer, and its removal from its site of those advertisements plaintiff identified as improperly offering infringing copies of his movie for sale.

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.

C98-20064 (N.D. Ca., April 20, 1998)

Court enjoined defendants both from sending spam which falsely stated it came from plaintiff's e-mail service, and from using Hotmail accounts as mailboxes for "spam" reply. Court held that such conduct violated plaintiff's Term's of Service, which prohibited the use of Hotmail accounts to facilitate the transmission of spam. To use plaintiff's service defendants, after being afforded the opportunity to view the Terms of Service, clicked on a box indicating their assent to be bound thereby. As such, the Court's holding reflects its willingness to uphold the validity of a click-wrap agreement between the parties. The Court also held that defendants' conduct constituted trademark infringement and dilution, as well as trespass to chattels and a violation of the Computer Fraud and Abuse Act.

2000 U.S. Dist. Lexis 10259, 120 F.Supp. 2d 870 (C.D. Ca., July 21, 2000)

Court holds that the generic top level domain ".web", when used in connection with domain name registration services, is not a trademark entitled to protection, as it does not identify the source of such registration services, but rather the type of content one may expect to find on a web site containing the ".web" top level domain name.

1996 U.S. Dist. Lexis 7160, 937 F. Supp. 161, (D. Conn. April 17, 1996)

A commercial web site's accessibility to forum residents, standing alone, is sufficient to sustain jurisdiction in a trademark infringement suit arising out of the operation of the site.

326 F.3d 687, No. 01-3590 (6th Cir., April 10, 2003)

The Sixth Circuit Court of Appeals affirms the District Court's dismissal of trademark infringement and false advertising claims arising out of defendants' use of plaintiff's trademark in the path of the domain name of one of the pages of defendant a2z's website, and out of a statement posted on defendant a2z's web site concerning the invention of the product plaintiff sold under the mark at issue.  As to the former, the Court held that a domain name's path, unlike the domain name itself, normally does not signify the source of the website.  As such, use of the mark in the path of a site would not confuse users as to the source of the products sold thereon, and thus would not typically serve as the basis for a trademark infringement claim.  The false advertising claims were dismissed because the statements in question were either true or non-actionable opinion.

(N.D. Ill. October 3, 1996)(Magistrate's Report)

The unauthorized use of a famous trademark in a domain name of a non-commercial site for the purpose of selling or licensing the same to the trademark owner constitutes a violation of both the Federal and Illinois Anti-Dilution statutes and will be enjoined.

983 F. Supp. 1331 (D. Oregon, Nov. 20, 1997), aff'd. 184 F.3d 1107 (9th Cir.), petition for cert. denied, No. 99-925 (Feb. 2, 2000)

(Plaintiff's use in its domain name of defendant's trademark did not constitute trademark infringement or unfair competition because the products advertised on plaintiff's site (a theatre production) are dramatically different from those offered for sale by defendant (video imaging equipment) and because plaintiff selected the name of its site without knowledge of defendant's mark, and without intending to benefit from the use thereof).

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.

2000 U.S. Dist. Lexis 4891, 94 F.Supp.2d 457 (S.D.N.Y., April 18, 2000)

Court refuses to hold defendants in contempt for violating an order and judgment which "enjoined defendants, in the United States, from 'advertising or promoting' apparel bearing Jeri-Jo's registered trademark ENERGIE ...". While plaintiffs held a valid US trademark in the ENERGIE mark, defendants held trademarks in the ENERGIE mark in Italy, France and Germany, as well as the right to market products bearing the mark in a number of other foreign countries as well. As a result, the court refused to hold defendants in contempt as a result of their operation of a web site at the domain "www.energie.it" at which United States users could view but apparently not buy clothing bearing the "ENERGIE" mark, nor did the court require defendants to delist the "energie.it" url from search engines. The court did, however, require defendants to remove hyperlinks to the "energie.it" site containing the word "ENERGIE" from two other web sites defendants operated at www.missixty.com and www.sixty.net, at which sites defendants apparently sold non-infringing apparel. The court also awarded plaintiffs the attorneys' fees expended in bringing on the instant application.

993 F. Supp. 282 (D.N.J. Mar. 6, 1998) aff'd. 159 F. 3d 1351 (3d Cir. 1998)

In this domain name dispute, the court enjoined defendant's unauthorized operation of a website at "jewsforjesus.org" which site was highly critical of the plaintiff organization "Jews for Jesus." Plaintiff owned a federally registered trademark in the phrase "jews for jesus" with the "o" depicted as a Jewish Star, and a common law service mark in the phrase "jews for jesus." Defendant's conduct constituted violations of the Lanham Act's prohibitions against trademark infringement, dilution and unfair competition, as well as various New Jersey state statutes. Neither the fact that defendant did not use an identical replica of plaintiff's mark in its domain name nor the disclaimer that appeared on defendant's site pronouncing its nonaffilation with plaintiff's organization were sufficient to alter the court's view. Moreover, defendant's conduct was found to be "in commerce" and "in connection with goods or services", essential prerequisites to plaintiff's federal Lanham Act claims, even though defendant did not offer anything for sale on his site, nor solicit funding for his activities. The fact that defendant's site was intended to harm and disparage plaintiff, and contained a link to an unaffiliated site which sold merchandise made such conduct commercial.)

Case No. C 06-2057 JF (RS) (N.D. Ca., March 16, 2007)

Court dismisses action seeking redress as a result of Google’s alleged downward manipulation of the “Page Rank” it assigned plaintiff’s website.  This act allegedly reduced the ranking of plaintiff Kinderstart.com’s search engine in various Google Search results which, in turn, adversely impacted both the traffic and advertising revenue plaintiff Kinderstart.com’s site generated.  “Page Rank” is a system offered by Google for rating the usefulness of websites.  Google’s search engine utilizes the relative “Page Ranks” it assigns to websites in determining the order in which to deliver responsive search results to a user’s query. 

In its Second Amended Complaint, plaintiff claimed such acts constituted violations of the Sherman Antitrust Act, the Lanham Act and California Business and Professions Code Section 17200, as well as plaintiff’s right to free speech under both the Federal and California constitutions.  Plaintiff Kinderstart.com also alleged that it was defamed by Google’s alleged statement that the low “Page Rank” it assigned plaintiff’s site was arrived at objectively, without human manipulation.

The Court found that Kinderstart.com had failed to state a claim, and accordingly dismissed its complaint with prejudice.

205 F.Supp.2d 942, Case No. 02 C 2171 (N.D. Ill., June 7, 2002)

Court finds that plaintiff Kraft Foods Holding, Inc. ("Kraft"), owner of the famous federal trademark "Velveeta," is likely to prevail on its claim of trademark dilution as a result of defendant's use of the mark "King VelVeeda" on a website featuring adult images and illustrations of drug use, and at which defendant offers for sale various non-cheese products.  As a result of the tarnishment of plaintiff's mark arising out of such activities, the court issued a preliminary injunction, enjoining defendant from further use of his "King VelVeeda" mark.

360 F. Supp. 2d 768 (E.D. Va., August 5, 2004)

Court holds plaintiff infringed defendants' trademarks, and violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his operation of a 'typo' web site at the domain Fallwell.com at which he criticized the Rev. Falwell's views on homosexuality, and expressed his own contrary views on that subject.  At one time, the site informed interested visitors of a book plaintiff considered relevant to this discussion, and provided a link to Amazon.com at which they could purchase it.  The Court reached this result notwithstanding the fact that plaintiff's site featured a prominent disclaimer, advising users that it was not defendants' official site.

447 F. Supp. 2d 941 (W.D. Wis., September 1, 2006)

Court denies summary judgment motion by Lands' End "affiliates," seeking dismissal of claims arising out of affiliates' undisclosed use of typo domains to redirect traffic to Lands' End's website, and to profit on the sales made to consumers delivered to Lands' End's site in this fashion.  As affiliates, defendants received a percentage of sales made by Lands' End to consumers they brought to Lands' End's website.  The Court accordingly allowed plaintiff to proceed with claims that defendants' conduct violated the Anticybersquatting Consumer Protection Act ("ACPA") and breached the parties' affiliate agreements.  The Court also allowed plaintiff to pursue fraud claims arising out of defendants' concealment of this use of Lands' End typo domains.  The Court did grant so much of the defendants' summary judgment motion which sought dismissal of false advertising claims plaintiff advanced under both the Lanham Act and Wisconsin state law, holding that defendants did not mislead consumers by their conduct.  Consumers were unaware of the redirection, and received exactly what they expected to receive - Lands' End merchandise from Lands' End.

Civ. No. 96-CV-4693 (District Ct. of the State of Colorado, Co. of Denver, Sept. 26, 1997)

Plaintiffs' used the famous trademark "Rockies," owned by defendant the Colorado Rockies Baseball Club, Ltd., in connection with plaintiffs' sports-oriented website. The Court held that such use on a site which included copyrighted materials belonging to defendants and a link to a site offering to sell "official Rockies Merchandise" constituted trademark infringement, unfair competition and a violation of federal antidilution statutes and enjoined plaintiffs from continuing such conduct.

947 F. Supp. 1328 (D. Mo. August 19, 1996) reconsideration denied and preliminary injunction denied, 947 F. Supp. 1338 (1996).

A commercial web site's accessibility to forum residents, standing alone, was sufficient to sustain jurisdiction in a trademark infringement suit arising out of the operation of the site

97 Civ. 7191 (SS) (S.D.N.Y., September 10, 1998)

Defendants' use on their website of plaintiff's federally registered mark "Barbie" to advertise the sale of adult entertainment services held to tarnish plaintiff's famous mark in violation of the Federal Trademark Dilution Act. As a result, the court permenantly enjoined defendants from further use of plaintiff's mark. The Court also found that defendants willfully intended to trade on the goodwill of plaintiff's mark. This was evidenced by the fact that defendants caused the phrase "Barbie's Playhouse" to appear on their site in a font and colors virtually identical to those used by plaintiff to market its products. The court accordingly awarded plaintiff damages in an amount equal to the gross sales defendants derived from the website.

314 F. Supp. 2d 362 (D.N.J., March 30, 2004)

Court holds that defendant's use of plaintiff's service mark in the domain names of noncommercial web sites critical of plaintiff does not constitute a violation of the Anticybersquatting Consumer Protection Act ("ACPA") because this was a "bona fide noncommercial" use of the mark which defendant had reasonable grounds to believe was lawful.  In reaching this result, the Court determined that defendant was motivated not by an intent to use his critical web site to extract money from plaintiff, but instead by a desire to express his dissatisfaction with plaintiff's alleged conduct.  The Court accordingly granted defendant's motion for partial summary judgment, and dismissed plaintiff's ACPA claim.  Left for another day were libel and trade libel claims arising out of the sites' content, as well as a Federal Dilution Act claim under 15 U.S.C. § 1125(c) arising out of the defendant's use of plaintiff's service mark.

425 F.Supp.2d 402 (S.D.N.Y., March 30, 2006)

In six related lawsuits arising out of the sale by online Canadian-based pharmacies of both branded and generic versions of plaintiff's popular anticholesterol medication "Zocor," the Court granted motions to dismiss trademark infringement claims challenging defendants' purchase of the keyword "Zocor" from search engines to trigger the display of "sponsored links" to defendants' websites.  Such purchases do not constitute the requisite 'use in commerce' of plaintiff's mark necessary to sustain such claims.  The Court also granted defendant CrossBorder's motion to dismiss trademark infringement claims arising out of its use of plaintiff's trademark "Zocor" on its website, at which CrossBorder sold both plaintiff's own product, as well as a generic version described as "generic simvastatin."  "Simvastatin" is the active ingredient in "Zocor."  Because it sold branded Zocor at its website, this was a permitted fair use of plaintiff's mark.

The Court declined at this early stage of the proceedings to dismiss the trademark infringement and dilution claims advanced against the remaining defendants.  Defendants link the "Zocor" mark to web pages at which they sold both branded Zocor and generic products described alternatively as "generic Zocor," "Zocor generic" or "Zocor-generic."  The Court was unwilling on this motion to determine whether such uses were likely to confuse consumers as to the source and sponsorship of these generic products, and hence unwilling to declare them permitted fair uses of plaintiff's trademarks.

Finally, the Court granted the motion to dismiss for want of personal jurisdiction of defendant CanadaDrug's CEO.  This individual, a Canadian resident, was neither alleged to have personally undertaken any actions in the United States in furtherance of the infringing activities at issue, nor been a "primary actor" therein.

376 F.Supp.2d 877, Civ. No. 03 C 4349 (N.D. Ill., July 12, 2005)

After a bench trial, court holds that defendant Bitstream Inc. is neither guilty of contributory copyright infringement nor indirect trademark infringement as a result of its creation and distribution of a software program which permits the user to copy and incorporate into a document any typeface font, whether or not the owner of the copyright in such font has consented to such copying and use.  In an earlier decision, the court, on defendant’s summary judgment motion, dismissed claims of direct copyright and trademark infringement, as well as vicarious copyright infringement, arising out of defendant’s activities.  The court’s decision was grounded principally on the absence of admissible evidence that defendant’s software had been used by its licensees to copy typeface fonts in which plaintiffs held copyright.  The Court also based its decision on its holding that defendant Bitstream neither was aware of any such infringing activities, nor sought to increase the sales of its software by advertising that its products could be used for that purpose.

573 US 418 (Supreme Court, March 4, 2003)

Resolving a split in the Circuits, the Supreme Court holds that a plaintiff must submit evidence of actual dilution, rather than a likelihood of dilution, to prevail on a dilution claim brought under the Federal Trademark Dilution Act ("FTDA").  The Court accordingly reversed the decision of the Sixth Circuit, which had granted summary judgment to the owners' of the trademark "Victoria's Secret" on their federal dilution claims.  These claims arose out of defendants' operation of a store under the name "Victor's Little Secret" at which defendants sold adult novelties and lingerie.  The Sixth Circuit's decision was based on the likelihood that plaintiffs' mark would be tarnished by association with such products.  The Supreme Court reversed because the record was devoid of any evidence of actual dilution or injury to plaintiffs' mark as a result of defendants' activities.

378 F. Supp.2d 715 (E.D. Va., July 14, 2005)

Court denies motion to dismiss made by foreign domain name registrant, and allows trademark owner to proceed with in rem action, seeking relief under both the Anticybersquatting Consumer Protection Act, and the Lanham Act for trademark infringement.  The ACPA gives a trademark holder the right to proceed in rem to have a domain name transferred to it, or its registration cancelled, and allows a United States court to exercise jurisdiction over a res – the domain name – where the registry or registrar for such domain name is located in the United States.  This is true notwithstanding the fact that the United States court lacks personal jurisdiction over the domain name registrant.

46 F. Supp. 2d 722 (N.D. Ohio, April 14, 1999)

Court holds defendants in contempt of court for violating injunction prohibiting defendants from continuing to use plaintiff's name in meta tags found on defendant IWI's web site, "in connection with the advertising or promotion of [defendant IWI's] goods, services or web site" or in such a way that might lead consumers to believe that defendant's services were authorized, sponsored or connected with plaintiff.

Defendant IWI, a competitor of plaintiff, placed plaintiff's name "Nettis" in meta tags on its web site. IWI also registered its web site with over 500 search engines. As part of this process, IWI provided the search engines with the terms "Nettis" and "Nettis Environmental" as "search engine" key words.

Promptly upon the court's issuance of an injunction, defendant had the term "Nettis" removed from the meta tags on its site. Defendants did not, however, take any additional steps to remove "Nettis" from the list of key words associated with its web site by search engines. Instead, defendants relied on the advice of their computer consultant that such key words would automatically be delisted when the search engines updated their listing of the IWI site, and discovered that those terms were no longer found in IWI's meta tags. This, defendants were advised, would occur within days of their removal as meta tags.

When defendant's site came up on searches for the term "Nettis" plaintiff moved to hold defendant in contempt of court. Upon receipt of this motion, defendant immediately pulled its site from the Internet, and instructed the search engines to deregister it.

The court held that defendants' belated efforts to instruct the search engines to deregister the site, in reliance on the advice of its computer consultant that this would occur automatically, was not sufficient to avoid the entry of a contempt finding. According to the court, defendant should have "check[ed] whether the search engines had automatically been updated [so as to delist the IWI site and] also ... taken affirmative action to "undo" the registrations."

As a sanction, the court awarded plaintiff the attorney's fees expended in making its motion for contempt. The court also directed defendant to keep the IWI web site inaccessible from the URL listed with the search engines during the pendency of the lawsuit. Defendants were granted permission to operate its web site at a different URL.

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.

No. 07-11574 (11th Cir., April 7, 2008)

Eleventh Circuit holds that defendant’s unauthorized use of a competitor’s trademarks in meta tags of its website, which use caused those trademarked terms to appear in search result descriptions of defendant’s website, is likely to infringe plaintiff’s marks.  The Court held such use was likely to falsely lead consumers to believe defendant’s site was affiliated with plaintiff or sold plaintiff’s products.  Importantly, other than in meta tags, plaintiff’s trademarks appeared nowhere on defendant’s website.  In reaching this result, the Eleventh Circuit found that such use of plaintiff’s trademarks constituted a use of such marks in commerce.

Nonetheless, the Eleventh Circuit vacated the preliminary injunction issued by the District Court, which barred defendant from further use of plaintiff’s trademarks in its site’s meta tags.  In reaching this result, the Court called into question the traditional presumption of irreparable injury available to trademark holders who have demonstrated a likelihood of success on the merits of their trademark infringement claim.  Demonstration of such irreparable injury is a prerequisite to injunctive relief.  In light of the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 US 388 (2006), the Eleventh Circuit remanded the case to the District Court with instructions to determine whether plaintiff had sufficiently demonstrated irreparable injury as a result of defendant’s infringing use of its trademarks in its site’s meta tags to warrant the issuing of injunctive relief.   The Court did not, however, decide whether the traditional presumption of irreparable injury in such circumstances survived eBay.

The Eleventh Circuit further upheld the District Court’s ruling that plaintiff was likely to prevail on its claims that defendant engaged in false advertising in violation of the Lanham Act.  The Eleventh Circuit held that defendant’s claims of an affiliation between NASA and either Axiom or one of its products, the DRX 9000, or that that product was FDA ‘approved,’ were literally false, and likely to be material in consumers’ purchasing decisions. 

Nonetheless, the Eleventh Circuit vacated the preliminary injunction issued by the District Court, prohibiting further use of such advertisements, and remanded for further consideration as to whether plaintiff had adequately demonstrated that it would sustain irreparable injury in the absence of such relief.  The Eleventh Circuit held that no presumption of irreparable injury exists in such circumstances, as the claims were not made in the context of comparative advertising about the parties’ respective products.  As the District Court had presumed irreparable injury, the matter was remanded to it for further consideration.

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

No. C00-0724 JCS, 2001 US Dist. Lexis 22520 (N.D.Cal. November 13, 2001)

Court grants in part and denies in part defendant's motion for summary judgment. Plaintiff alleged that defendant and/or its agent posted meta tags on defendant's web site which were identical to those found on plaintiff's own site, and included a description of the plaintiff company and, apparently, plaintiff's trademark. Upon receiving a complaint from plaintiff, defendant removed the offending meta tags from its site. Plaintiff thereafter brought an action seeking redress, alleging that defendant's conduct constituted trademark infringement in violation of the Lanham Act and the California Civil Code, copyright infringement, and trespass to chattels. The court granted in part defendant's motion for summary judgment, finding that plaintiff had not submitted sufficient evidence to be entitled to an award of lost profits arising out of the alleged trademark infringement, despite plaintiff's showing that its web site traffic was adversely impacted during the period of defendant's infringing activities. The court reached this conclusion because of plaintiff's inability to demonstrate that its web site had actually generated business. The court denied the balance of defendant's motion, finding the evidence sufficient to require a trial as to plaintiff's trespass claim, its copyright infringement claim, and its entitlement, as a result of trademark infringement, to an accounting and injunctive relief.

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.

Civ. No. 04-CV-3918 (E.D. Pa., March 10, 2006), affirmed -- F.3d – (3rd Cir., July 10, 2007).

District Court dismisses claims charging Google with direct copyright infringement as a result both of its archiving Usenet postings that contain excerpts of plaintiff’s copyrighted works, and its display of excerpts of plaintiff’s copyrighted website in search results.  The District Court holds that Google has not engaged in the requisite volitional conduct necessary to be held guilty of direct copyright infringement because such copying is a by-product of the automated operation of Google’s search engine and related technologies.  As such, Google’s acts are akin to a user’s use of its ISP to transmit infringing material to a third party, which do not give rise to direct infringement claims against the ISP.  On appeal, the Third Circuit affirmed the dismissal of Parker’s direct infringement claims, on the grounds that Google’s archiving of infringing Usenet postings lacked the requisite “volitional conduct.”

Relying on Field v. Google, (D. Nevada 2006), the District Court also dismisses direct copyright infringement claims arising out of Google’s presentation to users of “archival” copies of plaintiff’s website in search results denominated “cache.”  The District Court holds that Section 512(b) of the Digital Millennium Copyright Act (“DMCA”), applicable to copyright infringement claims arising out of “system caching,” bars such claims here.

The District Court also dismissed vicarious and contributory copyright infringement claims arising out of Google’s archiving of Usenet posts created by third parties that themselves allegedly infringe plaintiff’s copyright, both because Google lacks the requisite knowledge of such inadequately identified infringing activity, and because it does not derive sufficient direct financial benefit therefrom.  This decision too was affirmed by the Third Circuit on appeal.

The District Court further dismissed defamation, invasion of privacy and negligence claims advanced by plaintiff arising both out of Google’s archiving of Usenet posts authored by third parties that allegedly defamed plaintiff, as well as out of Google’s storage and display in its “cache” of a website that purportedly defamed plaintiff.  Such claims are barred by the immunity afforded Google by Section 230 of the Communications Decency Act (“CDA”), a decision affirmed on appeal.

Finally, the District Court dismissed Lanham Act claims brought against Google as a result of its alleged republication of a website operated by a third party titled “the Official Roy Gordon FAQ.”  The District Court held that the third party was not violating the Lanham Act both because it was not using a mark in commerce as it was not selling anything on its site, and because consumers were not likely to be confused as to the origin of the site, given the criticism of plaintiff found thereon.  The Lanham Act claims against Google also failed because it was not a “moving force” or “active participant” in the creation of this site, or the alleged use thereon of plaintiff’s ‘mark.’  The Third Circuit affirmed the dismissal of the Lanham Act claims because of the absence of a likelihood of consumer confusion.  The Court also affirmed the dismissal of plaintiff’s trade disparagement claims because the statements at issue on the third party website were not made in the context of commercial advertising.

It should be noted that the plaintiff appeared pro se.  In addition, the Third Circuit’s opinion was denoted “Not Precedential.”

No. C96-2703 TEH, 1997 U.S. Dist. Lexis 20877 (N.D. Cal. December 18, 1997)

Use of plaintiff's trademark in the "path" or "second level" of a domain name does not constitute trademark infringement because the "path" or "second level" does not identify the origin of the web site, but rather only describes the site's organization. In addition, limited use of plaintiff's federally registered mark to describe a product being sold by defendant constitutes 'nominative fair use' of the mark, and not trademark infringement, because, inter alia, the product is one not readily identifiable without the use of the mark.

263 F.3d 359, No. 00-1918 (4th Cir., August 23, 2001)

The Fourth Circuit, affirming the decision of the district court below, held that defendant was guilty of service mark infringement and unfair competition, and had violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his creation and operation of a web site at the domain www.peta.org, which contained plaintiff's federally registered service mark "peta." In reaching this conclusion, the Fourth Circuit rejected defendant's defense that his site, titled "People Eating Tasty Animals," was a parody of plaintiff's "People for the Ethical Treatment of Animals" organization because the domain name containing plaintiff's mark did not appear simultaneously with that aspect of the web site containing the parody of plaintiff's organization.

No. 05-56794 (9th Cir. November 5, 2007).

Ninth Circuit holds that plaintiff Perfumebay.com, Inc.’s use of the trademark “PerfumeBay” as a cojoined term infringes defendant eBay’s famous trademark, and is likely to cause consumer confusion.  The Ninth Circuit rested this determination on the similarity of the parties’ marks – PerfumeBay contains the entire eBay mark – the similarity of the products and services offered by the parties to the public – each facilitate the public’s purchase of perfume – and the fact that both parties use the Internet to market their products. 

The Court further held that plaintiff’s use of PerfumeBay as a cojoined term diluted defendant eBay’s famous mark.  Due to the strength and highly distinctive nature of eBay’s mark, plaintiff’s mark did not need to be ‘identical or nearly identical’ to eBay to sustain a dilution claim.  Instead, given the fame of the eBay mark, eBay could prevail even if plaintiff’s mark was ‘a bit different’ provided consumers would view it as essentially the same as eBay’s mark, as was the case here. 

As a result, the Ninth Circuit enjoined plaintiff from continuing to use PerfumeBay as a cojoined mark, either in the domain name of its site, on its website, or in Internet advertising.

The Ninth Circuit held that plaintiff’s use of the mark “Perfume Bay” as separate words, however, did not infringe eBay’s mark.  When separated, “Perfume Bay” did not contain defendant eBay’s entire mark, nor was it likely to cause consumer confusion.  As a result, the Ninth Circuit allowed plaintiff to continue its use of “Perfume Bay” on its website, or otherwise, so long as the words were not cojoined.

Finally, the Ninth Circuit affirmed the District Court’s denial of plaintiff’s application for attorneys’ fees, holding it was not the prevailing party in this litigation.

2007 WL 725412 (S.D.N.Y., March 12, 2007)

Court denies defendants’ motion to dismiss and allows plaintiff Philip Morris USA Inc. (“Philip Morris”) to pursue trademark infringement claims arising out of defendants’ alleged distribution into the US of gray market cigarettes from their websites.  The Court rejected defendants’ argument that plaintiff’s trademark infringement claims should be dismissed because the disclaimers on defendants’ websites adequately disclosed that the cigarettes offered for sale are ‘gray market’ goods – goods manufactured by Philip Morris for different markets - and that the defendants’ websites are not affiliated with or sponsored by Philip Morris.  These disclaimers did not warrant dismissal because they failed to disclose that the ‘gray market’ cigarettes offered for sale by defendants were ‘materially different’ from those intended for the US market.  As such, consumers may be confused and led to believe they were purchasing a product they would not in fact receive.

The Court also rejected defendants’ motion to dismiss on the ground that the Court lacked personal jurisdiction over the defendants.  The Court held the complaint’s allegations that defendants shipped gray market goods into New York in violation of the Lanham Act were sufficient to establish that a New York federal court could exercise personal jurisdiction over the defendants.  Notably, defendants did not seek to challenge these factual assertions, or offer evidence as to either their lack of contact with the forum  or their actual location.

Finally, the Court denied that branch of defendants’ motion to dismiss which asserted that service of the complaint by fax and email pursuant to Fed. Rule Civ. Pro. Rule 4(f)(3) violated Due Process.

97 Civ. 0629 (KNW)(S.D.N.Y. March 26, 1997), aff'd. 152 F. 3d 920 (2d Cir., Feb. 9, 1998), cert. denied, 525 U.S. 834 (1998)

Defendant enjoined from continuing to utilize plaintiff's service mark, Planned Parenthood, in its domain name, at which is found a web site featuring references to a book espousing anti-abortion positions. Such use held to violate Lanham Act and not to be protected by First Amendment

839 F.Supp. 1552 (M.D. Fla. 1993)

In this case, Playboy charged the defendants, operators of a bulletin board system, with copyright and trademark infringement, as well as unfair competition. Defendants' bulletin board system is accessible via telephone modem to subscribers. Subscribers uploaded onto the bulletin board various pictures published by Playboy to which Playboy owned the applicable copyright. In addition, these subscribers, in the description of the material they provided other bulletin board users, utilized Playboy's trademarks Playboy and Playmate. Lastly, in some instances, Playboy's trademark was removed from the photograph, and replaced with the name of the bulletin board service and its telephone number.

On these facts, the court granted plaintiff's motion for partial summary judgment, finding defendants guilty of copyright and trademark infringement, as well as unfair competition. The court reached such conclusion notwithstanding defendant Frena's claim both that he did not upload the images onto his bulletin board system (subscribers did) and he was unaware of the presence of such images on his service until such time as he was served with the summons and complaint in this action, at which time he caused them to be deleted.

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.

7 F. Supp. 2d 1098 (S.D. Ca., February 27, 1998), aff'd. in part, reversed in part, 162 F.3d 1169 (9th Cir., Feb. 1, 2002)

Defendant, a former "Playmate of the Month" and "Playmate of the Year," was permitted to use those trademarks on her website, and to use the marks "Playboy" and "Playmate" in meta tags, despite plaintiff Playboy's objections. Such was a permissible fair use of plaintiff's marks because such marks described who defendant was.

279 F3d 796 (9th Cir., February 1, 2002)

The Ninth Circuit Court of Appeals holds that defendant Terri Welles' use of plaintiff's trademarks "Playboy" and "Playboy Playmate of the Year" in the meta tags, masthead and various banner advertisements appearing on her web site neither infringe nor dilute those marks. These uses of plaintiff's marks by defendant, a model named by plaintiff as "Playmate of the Year" in 1981, are permissible nominative uses necessary to allow Ms. Welles to accurately describe herself and the content of her site. Such nominative uses of a mark are permissible when (1) the product being described is not readily identifiable without use of the trademark; (2) only so much of the mark is used as is reasonably necessary to identify the product; and (3) the user of the mark does nothing that suggests sponsorship by the owner of the mark. Plaintiff's trademark dilution claims failed because a nominative use is exempt from anti-dilution laws, as such a use refers to plaintiff's own product and therefore does not create an improper association between plaintiff's mark and the product of another. In reaching these determinations, the Ninth Circuit affirmed the decision of the district court below.

The Ninth Circuit also held that defendant's repeated use of the alleged mark "PMOY '81" in the wallpaper of her site was not a permitted nominative use because it was not necessary to describe Ms. Welles in light of the court's determination that she can use the phrase "Playboy Playmate of the Year 1981" on her web site. As such, the court reversed so much of the decision of the district court which dismissed the trademark infringement and dilution claims plaintiff asserted as a result of this use, and remanded those claims to the district court for a determination as to whether "PMOY '81" is a mark entitled to trademark protection.

Civ. Action No. 96-6961, 1998 U.S. Dist. Lexis 17282 (E.D. Pa., November 2, 1998)

After a bench trial, the court held that defendant Universal infringed, counterfeited and diluted plaintiff's trademarks "Playboy" and "Bunny" in violation of the Lanham Act by utilizing these marks without authorization on a subscription website offering access to "hard core" erotic pictures. Defendant Universal titled its site "Playboy's Private Collection," which title appeared on every page of the site. In addition, defendant Universal used the term "bunny" in its navigational bar, used the mark "Playboy" in the path of its domain name (www.adultsex.com/playboy/members/pictures), invited users to "send e-mail to Playboy at adultsex.com" and linked its site to one operated by plaintiff Playboy. Because the court concluded that "defendants' intentionally adopted Playboy and Bunny trademarks in an effort to capitalize on [Playboy's] established reputation," the court awarded plaintiff statutory damages of $10,000, together with reasonable costs and attorneys' fees. Defendant's principal was also held liable because he made the decision to use plaintiff's marks on defendant's site.

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."

36 F. Supp. 2d 436 (D. Mass., February 24, 1999)

(Court enjoins defendant from continuing its use of plaintiff's service mark "energy place" in either its domain name or on its web site. Such use was held likely to confuse the public and thus constitute trademark infringement. In reaching this conclusion, the court relied on the virtual identity of the appearance of the parties' respective marks, as well as the fact that both parties offer consumers information relating to energy services on the Internet.

The court further held that plaintiff's mark was suggestive, and not descriptive, and therefore entitled to trademark protection. Plaintiff uses the "energy place" mark on a web site at which it offers information services regarding the most efficient and cost-effective use of energy resources. Said the court: "[a]lthough the term "Energy Place" suggests that it is a place related to energy, it does not convey an immediate idea of the ingredients, qualities or characteristics of the services [plaintiff] offers.")

98 Civ. 4799 (RPP), 1999 U.S. Dist. Lexis 2577 (S.D.N.Y., March 5, 1999), aff'd. mem. 201 F.3d 432 (2d Cir., Nov. 17, 1999)

(Court held that defendant's use of the phrase "Radio Channel" on its website, at which it offered "streaming media programming" to the public, did not infringe the rights of plaintiff, which operated a website entitled "The Radio Channel" at www.radiochannel.com," in that mark. Defendant used "Radio Channel" to describe the content contained in one of sixteen program groupings found on its site. Each of these other program groupings was also called a "channel" and featured names such as the Business Channel and the Education Channel. Each page on which such phrase appeared also contained defendant Broadcast.com's trademark and logo. The court held that this was a permissible fair use of the mark because defendant used the mark "(1) in good faith and (2) in its descriptive sense.")

126 F. Supp. 2d 238 (S.D.N.Y., December 12, 2000) (Jones, J.) aff'd. 356 F.3d 393 (2d Cir. 2004)

Court issues a preliminary injunction enjoining Verio, Inc. from either utilizing a search robot to obtain information from Register.com's Whois database, or utilizing information derived from that database for mass unsolicited advertising by telephone, direct mail or electronic mail. Court holds that Verio's actions will likely constitute a breach of plaintiff's Terms of Use, as well as a violation of both the Computer Fraud and Abuse Act and the Lanham Act and a trespass to chattels. In reaching this conclusion, the court holds that Register.com's Terms of Use are likely to create a contract between Register.com and the users of its Whois database, notwithstanding the fact that these users are not required to click an "I Agree" button indicating their agreement to be so bound.

456 F.Supp.2d 393 (N.D.N.Y., September 28, 2006)

Federal District Court holds that Google's use of plaintiff's trademark "Rescuecom" as a keyword in Google's "Ad words" program to trigger the display of "sponsored link" advertisements from third party competitors for a fee is not a "trademark use" of plaintiff's mark, as the mark is not being used to identify the source of any goods or services.  The same holds true of Google's use of plaintiff's trademark in its "Keyword Suggestion Tool," in which Google recommends to potential advertisers, including plaintiff's competitors, keywords they may be interested in using, for a fee, as a trigger for the display of their advertising.  Notably the advertisements themselves, which appear along with search results for plaintiff's mark, were not alleged to display plaintiff's Rescuecom mark. 

As a result, the Court grants Google's motion to dismiss trademark infringement, unfair competition and dilution claims brought by plaintiff under the Lanham Act, as such claims require a showing of actionable "trademark use" which, the Court holds, Rescuecom cannot make.  Having dismissed plaintiff's federal claims, the Court declined to exercise pendant jurisdiction over plaintiff's state law claims, including a claim for tortuous interference.

In reaching this result, the District Court elected not to follow decisions reached by the courts in Geico v. Google, 330 F.Supp. 2d 700 (E.D. Va. 2004) and Edina Realty v. MLS Online.com, 2006 WL 737064 (D.Minn., March 20, 2006) which had denied motions to dismiss trademark infringement claims arising out of similar activity.  The Court, instead, followed the path taken by the court in Merck & Co. Inc. v. Mediplan Health Consulting, Inc., 425 F.Supp. 2d 402 (S.D.N.Y. 2006), which dismissed similar claims on the ground, inter alia, that there was no "trademark use."

No. 98-3165, 1998 U.S. Dist. Lexis 11537 (E.D. Pa., July 28 1998)

Holder of federal trademark in the mark "World Beat" which was registered in connection with the sale of pre-recorded music was not entitled to enjoin defendant's use of the mark either as the name of a television program presenting music news concerning a variety of music styles from around the globe, or in a companion website. The court held that plaintiff, a successful reggae musician who operated a record label which only sold reggae music, was not likely to prevail on his trademark infringement claim because there was no evidence that consumers were likely to be confused by defendant's use of the mark as to the origin of goods or services, and because defendant's use of the mark in connection with the operation of a music news program not solely related to reggae music was not within the use for which plaintiff had registered and used the mark, the sale of pre-recorded reggae music.

Alternatively, the court held that plaintiff's claim, insofar as it sought to stop defendant from using the "World Beat" mark to describe a style or type of music, must fail because that mark had become a generic description of a style of music.

Claim No. FA0604000672431, (NAF June 5, 2006)

In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel holds that Respondent has a legitimate interest in the domain name safeguard-storage.com because of the preparations it undertook to operate a self storage business under the name “Safeguard Storage” prior to receiving notice of the instant domain name dispute.  As a result, the Panel refused to direct Respondent to transfer the disputed domain to Complainant Safeguard Operations LLC, owner of several federally registered trademarks containing the word “Safeguard,” which marks its uses in connection with its operation of self storage facilities.

391 F.3d 439, 2004 U.S. App. Lexis 25479 (2d Cir., December 10, 2004)

In this domain name dispute, Second Circuit affirms the dismissal of trademark infringement claims brought by Savin Corporation, a maker of photocopiers, printers, fax machines, and other office equipment, against the Savin Group, Savin Engineers and Savin Consultants arising out of defendants' use of plaintiff's "Savin" trademark in, among other things, web site domain names, to market their professional engineering companies.  The Second Circuit held that consumers were unlikely to be confused by these competing uses of the "Savin" mark, in part because of the differing services and products the parties offer to the public.

The Second Circuit reversed so much of District Court's decision that dismissed claims plaintiff brought under the Federal Trademark Dilution Act ("FTDA") and its New York State counterpart, New York Gen. Bus. Law §360-1, and remanded those claims to the District Court for reconsideration.  The Second Circuit held that the District Court had improperly concluded that the Supreme Court's decision in Moseley mandated, in the instant case, that plaintiff must provide evidence of actual dilution to proceed with claims under either statute.  As to the FTDA, the Second Circuit held that such a showing is not necessary where the junior user used a mark identical to the famous mark owned by the senior user.  As to New York law, the Second Circuit held that Moseley's pronouncement did not effect the showing necessary under New York State law.  Under New York State law, a claim for dilution could proceed on a showing of a mere likelihood of dilution -- the submission of evidence of actual dilution mandated by the Supreme Court in Moseley was not required.

Civ. No. 99-738 (D. Minn., December 22, 1999)

In this trademark infringement action, the court denied plaintiff's motion for a preliminary injunction, enjoining defendant from continuing to use a domain name that plaintiff contended infringed its common law trademark. Plaintiff operated a web site at "home-market.com" and defendant operated a web site at "home-market.net." Notwithstanding this fact, and the further fact that plaintiff's use commenced before defendant's, the court was unwilling to issue the requested injunctive relief. The court found that plaintiff had failed to establish that it had a protectable common law mark in 'home-market.com" which the court determined was a descriptive mark, prior to the time defendant commenced the use in question. The court reached this conclusion because plaintiff had failed to submit evidence sufficient to establish that secondary meaning had developed in its mark prior to the time defendant commenced the challenged use. The court further found that plaintiff had failed to establish a likelihood of consumer confusion, which conclusion was based on the fact the plaintiff's mark was not strong, that the products offered at the sites at "home-market.net" and "home-market.com" were distinct, that there was no evidence that defendant adopted his domain name in bad faith, and that there was "only the barest evidence of actual confusion."

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. 97 C 5803, 1997 U.S. Dist. Lexis 14851 (N.D. Ill. Sept. 19, 1997)

(Court denies plaintiffs' request for a Temporary Restraining Order enjoining defendant from using plaintiffs' federally registered trademark "Snap-On" as part of its logo "Snap! Online." Such use did not constitute dilution of a famous mark in violation of the Lanham Act, given, inter alia, that (a) plaintiffs' mark was not famous outside the automotive industry; (b) defendant's use did not target the automotive industry but rather was related to a venture designed to help individuals find their way on and around the Internet; and (c) there was little likelihood that defendant's use of the mark within its own logo would blur or reduce the ability of plaintiffs' to use their mark to sell their products.)

Docket Nos. 98-7452 (L), 98-7538 (XAP), 202 F.3d 489(2d Cir. Feb. 2, 2000)

In this domain name dispute, the Second Circuit affirmed the holding of the District Court, which enjoined plaintiff Sporty's Farm LLC ("Farm") from continuing to use a domain name containing defendant's federally registered trademark "Sporty's" and directed plaintiff to take such steps as were necessary to transfer the domain name at issue to defendant. The Second Circuit's decision was based on the newly enacted Anticybersquatting Consumer Protection Act, and not on the Federal Trademark Dilution Act, which had been relied upon by the District Court below.

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.

343 F.3d 249, No. 02-2069 (4th Cir., Sept. 4, 2003)

Vacating the decision of the court below, the Fourth Circuit Court of Appeals holds that defendant Travelers Indemnity Company of America ("Travelers") is obligated under an insurance policy it issued to defend Nissan Computer Corporation ("NCC") in a trademark infringement and dilution suit brought by Nissan Motor Company ("Nissan") arising out of NCC's use of the "Nissan" mark in the domain names of NCC's web sites. NCC had used the "Nissan" mark, which is also the last name of NCC's owner, on web sites which contained advertisements for both competitors' automobiles and NCC's own hosting and internet access services.  The Fourth Circuit held that Travelers was obligated to defend NCC against Nissan's claims under an insurance policy which protected NCC from any "advertising injury" sustained by a third party which was caused by an  "offense [NCC] committed in the course of advertising NCC's goods, products or services."

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.

319 F.3d 770 (6th Cir., February 7, 2003)

Reversing the court below, the Sixth Circuit dissolves an injunction which enjoined defendants from using plaintiff's trademarks in conjunction with the word "sucks" in the domain name of several "complaint" sites, as well as in the domain name of a non-commercial "fan" site.  The Sixth Circuit held that defendants' use of plaintiff's mark in a 'fan' site did not run afoul of Section 1114 of the Lanham Act because of the presence of both a prominent disclaimer on the site disavowing any affiliation with plaintiff, and a link to plaintiff's official web site.  Defendant's use of plaintiff's marks in conjunction with the word "sucks" in the domain names of non-commercial complaint sites did not violate Section 1114 of the Lanham Act because there was no likelihood of consumer confusion arising therefrom, and because such speech is protected by the First Amendment.

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.

Case No. 96-8377 MRP (D. Cal. May 9, 1997)

Court enjoins defendant from using plaintiff's famous federally registered service mark "Teletech" in the domain name "teletech.com" on the grounds that such use violates the Federal Trademark Dilution Act. Court holds that defendant can continue to operate a website at "tele-tech.com", a mark defendant was using in commerce prior to plaintiff's use of its "Teletech" mark to promote a business that provides different services to its clientele than those provided by plaintiff. 

20 F. Supp. 2d 775 (D. N.J., Sept. 25,1998)

Court holds that defendant's use of "Citigroup" as the name for the entity resulting from the merger of Citicorp and Travelers' Group does not infringe plaintiff's federally registered trademark "The CIT Group" when used in mediums other than the Internet. Notwithstanding the fact that plaintiff and defendant are direct competitors in a number of financial services markets, the court found that consumers were not likely to be confused by the two names. In reaching this conclusion, the court relied principally on the fact that the services offered by both parties were very expensive, and would be purchased by sophisticated consumers who would take great care to insure they were dealing with the entity they wanted to do business with. The court also relied on the fact that the names were frequently presented in logo form, which emphasized their differences.

The court further held that defendant's use of "Citigroup" would not dilute plaintiff's mark in violation of the Federal Anti-Dilution Act, both because plaintiff's mark was not famous, and because consumers would not confuse the two marks. The court found that plaintiff's mark was not famous despite the fact that plaintiff had expended over $50 million in advertising its mark over a ten year period, had net income in 1997 of in excess of $2 billion, and that "in certain markets the CIT Group mark has achieved a degree of success, particularly in the fields of equipment financing and leasing and commercial financing."

Lastly, the court held that if used as a domain name, "citigroup.com" would cause consumer confusion between the parties, as plaintiff operated a website at "citgroup.com." This, according to the court, arose predominantly from the fact that in this medium, both names appeared in block capital letters. Defendant Citicorp had not yet determined whether it intended to operate a site at this domain name. The court accordingly granted plaintiff permission to challenge such use in the future should defendant elect to proceed with operation of a website at "citigroup.com."

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.

No. 98 CV 7338 (N.D. Ohio, June 16, 1998)

Operation of website titled "Web-A-Sketch" on which users could draw pictures in a manner similar to the famous "Etch-A-Sketch" toy, and deployment on that site of the trademark "Etch-A-Sketch" in ways designed to attract those using search engines to find "Etch-A-Sketch," constituted dilution of plaintiff's famous "Etch-A-Sketch" mark, as well as trademark infringement. The court further held that posting notices on the site requesting users to object to plaintiff's attempt to enforce its trademark rights constituted denigration of plaintiff without cause in violation of Ohio state unfair competition statutes.

497 F.3d 144 (2d Cir., August 9, 2007)

Second Circuit holds plaintiff Time Warner Cable Inc. (“Time Warner”) likely to prevail on false advertising claims advanced under Section 43 of the Lanham Act as a result television advertisements defendant Directv ran, which were found to be literally false.  Affirming the decision of the District Court, the Second Circuit held that, when seen in context, these advertisements falsely claim that the quality of the picture a user of an HD TV receives from Directv is better than the picture received from Time Warner cable.  Irreparable injury was presumed because, even though the advertisements at issue did not directly refer to Time Warner, the viewing audience would see the advertisement as targeted at plaintiff.  As a result, the Second Circuit affirmed so much of the District Court’s decision that enjoined Directv from further publication of these offending advertisements in markets where Time Warner operates.

In reaching this result, the Second Circuit held that an “advertisement can be literally false even though it does not explicitly make a false assertion, if the words or images, considered in context, necessarily and unambiguously imply a false message.”

The Second Circuit held, however, that internet banner advertisements that promoted Directv’s products, while literally false, constituted non-actionable puffery, because they made claims so exaggerated that no consumer could rely on them.  The banner advertisements at issue depicted a split screen.  One side of the screen presented a clear, crisp picture that was represented to be the picture a user would view if receiving his signal from Directv.  The other side of the screen contained a picture that was blurry and pixilated, which was represented as the picture the consumer would see if receiving a signal from “other tv”, or “basic cable.”  The ads urged consumers to “find out why Directv’s picture beats cable.”  While this depiction was literally and demonstrably false, because the pictures from both sources were equivalent, the Second Circuit held it was so exaggerated as to constitute non-actionable puffery on which no consumer could rely.  As a result, the Second Circuit reversed so much of the District Court’s decision which enjoined Directv from continuing to run these banner advertisements. 

Said the Court: “[T]he category of non-actionable puffery encompasses visual depictions that, while factually inaccurate, are so grossly exaggerated that no reasonable consumer would rely on them in navigating the marketplace.”

97 Civ. 8673 (S.D.N.Y., August 27, 1998)

(Court awards plaintiffs summary judgment, finding that defendants' acts of registering the domain name "toysareus.com" and offering to sell it to plaintiffs, the owners of the famous trademark "Toys 'R' Us," diluted plaintiffs' famous mark in violation of both the Lanham Act and New York state statutes. The court concluded that defendants had improperly used the mark in commerce even though they had never actually carried out their threat to commence operation of a website at the "toysareus.com" domain name. Of particular interest was the relief awarded by the court which included, in addition to a permanent injunction and attorneys' fees, a direction that defendants transfer the domain name to plaintiff Geoffrey Inc. Given defendants' willful misconduct, "allowing the defendants to retain title to the domain names would, in effect, nullify the anti-dilution provisions.")

1996 U.S. Dist. Lexis 17090 (N.D. Cal. October 29, 1996)

(Use of "Adults R Us" in domain name enjoined because such use impermissibly dilutes plaintiffs' famous federal trademarks in "Toys R Us" and the "R US" family of marks in violation of 15 U.S.C. §1125(c)(1). Such dilution was found to occur as a result of the tarnishing of the marks caused by their association with defendants' sale of sexual devices and clothing under the "Adults R Us" banner).

26 F. Supp. 2d 639 (S.D.N.Y., October 28, 1998) vacated, 201 F.3d 432 (2d. Cir., Nov. 10, 1999)

Court held that defendants' use of the domain name "gunsareus.com" in connection with the operation of a website selling firearms neither infringed nor diluted plaintiffs' famous Toys "R" Us family of marks. In rejecting plaintiffs infringement and unfair competition claims, the court determined that consumers were not likely to be confused by defendants' use of the "gunsareus" domain name into believing that plaintiffs were affiliated with defendants, who sold firearms out of a single small shop and on their website. Plaintiffs' dilution claims failed because, in the court's opinion, defendants' "are us" domain name was not sufficiently similar to plaintiffs' "R" us family of marks to cause consumers to relate defendants' business to that of plaintiffs. As such, defendants' use of "are us" in its domain name would neither tarnish nor blur plaintiffs' marks.

306 F.3d 509 (7th Cir., October 4, 2002)

Reversing the decision of the court below, the Seventh Circuit Court of Appeals holds that a reseller of "Beanie Babies" did not violate the Federal Trademark Dilution Act when she used plaintiff Ty Inc.'s "Beanies" trademark in the title and domain name of her web site, at which site approximately 80% of the toys offered for sale are used "Beanie Babies" manufactured by Ty.

279 F. Supp.2d 723 (E.D. Va., September 5, 2003)

Court grants defendants' motion for summary judgment, and dismisses trademark infringement, copyright infringement and unfair competition claims brought by website owner against distributor of pop-up ads.  Defendants distribute a software program, which causes pop-up ads to be displayed on a user's computer screen in a window that covers all or part of plaintiff's website.  The court held that such conduct does not constitute a use of plaintiff's trademark, a prerequisite to a trademark infringement claim.  Quite the contrary, the display results from the computer user's consensual download of defendants' software, and his ability to control, via the multitasking capabilities of window's operating environment, what appears on his own computer screen.  Similarly, defendants' acts do not infringe plaintiff's copyright in the material that appears on plaintiff's website, because defendants neither display plaintiff's copyrighted materials nor make a derivative work thereof.  Defendants' ads instead appear in a separate window on a user's computer screen, which operates independently of plaintiff's website, and leaves the content appearing thereon untouched.

478 F.3d 413, No. 06-1826 (1st Cir., February 23, 2007)

Court dismisses cyberstalking and security law claims advanced by plaintiffs under Florida state law against defendant Lycos, holding such claims barred by the immunity afforded Lycos under Section 230 of the Communications Decency Act (“CDA”).  Such claims arose out of statements critical of plaintiff Universal Communication Systems (“UCS”) and its CEO, Michael Zwebner, that were posted by third parties on a message board found on a website operated by Lycos at the domain Raging Bull.com  Plaintiffs claimed that defendants, including Lycos, were involved in a scheme to manipulate plaintiff’s stock price.  Plaintiffs claimed that defendants shorted UCS stock, and then posted derogatory comments on RagingBull.com in an attempt to drive the stock price down.  Such a claim, held the court, sought to hold Lycos liable for its role in the publication of these statements, which were authored by third parties, and as such was barred by operation of the CDA.  The cyberstalking claim was similarly barred because the act on which such claim rested was the publication of derogatory statements on the RagingBull.com message board authored by third parties.  As such, this claim too, sought to hold Lycos liable for its role in the publication of such statements, and was barred by application of the CDA. 

The court also dismissed federal cyberstalking claims asserted by plaintiffs against Lycos under 47 USC Section 223, holding that this statute did not create a private right of action for a civil suit.

Finally, the Court dismissed trademark dilution claims advanced by plaintiffs under Florida state law.  These claims were premised on the use of UCS’ trademark as the name for a message board on Raging Bull.com at which third parties posted statements critical of plaintiffs.  The Court held that, despite the fact that the message boards contained advertising, such a use did not constitute the requisite use in commerce of plaintiffs’ mark.  In addition, such use of plaintiffs’ mark to describe a message board that contained statements about plaintiffs was not actionable under the dilution act.

No. 07-4095 (10th Cir., May 29, 2008)

Affirming the decision of the district court below, the Tenth Circuit dismisses trademark infringement, unfair competition and cybersquatting claims brought by plaintiff Utah Lighthouse Ministry as a result of defendant Allen Wyatt’s operation of a non-commercial website at domains containing the names of both plaintiff and its principals, which website in turn linked to articles criticizing plaintiff’s principals found on defendant Fair’s website.  Plaintiff was created to criticize the Church of Jesus Christ of Latter-day Saints.  Fair is an organization that responds to criticisms of that Church.  Wyatt’s website was designed to look like that of the plaintiff, incorporating elements and content found thereon with slight alterations, and contained no disclaimer as to the site’s affiliation with the plaintiff. 

The Tenth Circuit affirmed the dismissal of plaintiff’s Lanham Act trademark infringement and unfair competition claims on the grounds that plaintiff had failed to establish that defendant had used its trademark in commerce.  In reaching this result, the Court held that links from Wyatt’s website to that of Fair, at which books were offered for sale, were too attenuated to constitute a commercial use because the links took the user to pages of that site containing criticism of plaintiff, and not to those pages of the site at which books were offered for sale.  The Court further held that the use of plaintiff’s trademark in the operation of a site that diverted consumers from plaintiff’s commercial site to a non-commercial site was not a commercial use sufficient to sustain a Lanham Act claim.  In reaching this result, the Court refused to follow a contrary decision of the Fourth Circuit. 

The Tenth Circuit also dismissed plaintiff’s trademark infringement claim on the ground that plaintiff failed to establish the requisite likelihood of consumer confusion arising out of defendant Wyatt’s operation of his site.  The Court relied both on its analysis of the traditional likelihood of confusion factors, as well as its determination that defendant’s site was a successful parody of that of the plaintiff.

Finally, the Tenth Circuit dismissed plaintiff’s cybersquatting claim, advanced under the Anticybersquatting Consumer Protection Act (“ACPA”), on the ground that the defendants lacked the requisite bad faith intent to profit from their use of plaintiff’s mark, given their site was non-commercial, and intended to criticize plaintiff.   The Tenth Circuit held that such claim also failed because defendant Wyatt fell within the protection of the ACPA’s safe-harbor provision, which precludes a finding of bad faith intent to profit if ‘the court determines that the [defendant] believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.’

2000 U.S. Dist. Lexis 2670, 106 F. Supp. 2d 845 (E.D.Va., Feb. 24,2000) aff'd., 238 F3d.264 (4th Cir., January 22, 2001)

In this domain name dispute, Court grants defendants Volkswagen AG and Volkswagen of America Inc. (collectively "Volkswagen") summary judgment, holding that plaintiff's use of defendants' famous "vw" trademark in the domain name "vw.net", which also happen to be the initials of plaintiff's firm, constitutes cyberpiracy, trademark dilution and trademark infringement.

The court found that plaintiff had run afoul of the newly enacted Anticybersquatting Consumer Protection Act by registering a domain name containing defendants' famous trademark. The court held that plaintiff undertook such registration with a bad faith intent to profit from a previously registered mark within the meaning of the Act. In reaching this conclusion, the court relied on the fact that "Virtual Works has never registered a trademark or conducted business using [the vw] initials," "vw" was not the legal name plaintiff's entity, plaintiff's use of the vw mark has created a likelihood of confusion and that there was evidence of actual consumer confusion in the form of e-mails received by plaintiff that were intended for defendants, plaintiff has posted disparaging remarks about defendants at the web site it operates at the vw.net domain, plaintiff had offered to sell the domain to defendants and defendants' trademark was famous. Although not recited in the court's opinion, it appears from plaintiff's web site that plaintiff and its predecessors registered the domain name in 1996, and used it to promote their web site hosting and development business.

The court further found that plaintiff had infringed and diluted defendants' trademark. On this latter point, the court stated:

Recent case law holds that internet cyberpiracy constitutes per se trademark dilution. ... VW being associated with Virtual Works instead of Volkswagen constitutes trademark dilution.

238 F.3d 262 (4th Cir., January 22, 2001)

The Fourth Circuit, affirming the determination of the district court below, held that plaintiff violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering and offering to sell to defendant the domain name vw.net, which contains defendant Volkswagen's famous "vw" mark.

2:01-CV-00294-LRH-LRL (D. Nev., December 27, 2007)

On remand, the District Court adheres to its initial decision, and holds that defendant’s use of the domain name evisa.com to promote its language service business dilutes plaintiff Visa International Service Association’s famous ‘visa’ trademark.  Following the Supreme Court’s interpretation of the Federal Trademark Dilution Act (“FTDA”) announced in Moseley v. V Secret Catalogue, the District Court found the requisite evidence of actual dilution in the defendant’s use of a trademark – evisa – substantially similar to plaintiff’s famous Visa mark in its own domain name.  This, the Court held, had the effect of both preventing plaintiff from using that domain to market its products, and of placing plaintiff’s reputation at the mercy of defendant.  Importantly, the Court did not rely on direct evidence of actual dilution, or on evidence that consumers actually associated defendant’s evisa mark with plaintiff or its products.  As a result, the District Court granted plaintiff summary judgment on its trademark dilution claim.

33 F. Supp. 2d 488 (E.D. Va., Feb. 2, 1999)

In this domain name dispute, Court holds that defendant's use of the domain names www.washingtonspeakers.com, www.washington-speakers.com, www.washingtonspeakers.net and www.washington-speakers.net infringed the common law trade name of its competitor the plaintiff in "Washington Speakers Bureau" and accordingly directed defendant to relinquish ownership of those domains. Both parties aid the public in locating speakers for lectures.

The court concluded that the plaintiff had shown the requisite likelihood that consumers would be confused by defendant's use of a "colorable imitation" of plaintiff's mark in a domain name. The court determined that the public did not associate the abbreviated phrase "Washington Speakers," descriptive of services offered by both parties to the lawsuit, with the plaintiff. The court nonetheless determined that defendant's actions were likely to confuse the public because the services the parties offered to the public were virtually identical, the parties advertised in the same medium (the Internet), the mark was used in a domain name, which gives rise to a particular potential for confusion, and the fact that, in the court's opinion, defendant adopted the domain names at issue in a bad faith effort to attract business otherwise headed for plaintiff. This latter finding was premised in large part on the fact that defendant, at the time it registered the domain names at issue, had also registered the domain names of a number of its competitors, and was aware of plaintiff and its tradename.

Lastly, the court found that plaintiff's dilution claim was without merit because plaintiff's mark was not famous.

C.A. No. 02-909-A (E.D. Va., July 12, 2002)

Court issues a preliminary injunction, enjoining defendant Gator Corporation ("Gator") from causing pop-up ads to appear on a user's computer screen at the same time the user is viewing any of the 16 web sites operated by the plaintiff news organizations.  Such ads appear as a result of the operation of Gator's software, which a user has installed on his computer.  Gator's software apparently tracks the user's Internet usage, and delivers ads to his computer that defendant believes will interest the user based on his prior Internet usage  When these ads appear on a user's screen, they partially cover up the web site that also appears there.  Gator did not have plaintiffs' permission to cause ads to appear in this fashion.  The court held that plaintiffs were likely to prevail on their claim that causing pop-up ads to appear in this manner is an infringement of plaintiffs' trademarks, which are found on the web pages the pop-up ads partially cover up.   The court accordingly issued a preliminary injunction enjoining defendant from continuing this activity "on" plaintiffs' sites.

No. 99-2350, 1999 U.S. App. Lexis 28884 (7th Cir., Oct. 26, 1999)

The Seventh Circuit affirmed the district court's dismissal of plaintiff's claim that Network Solutions Inc. ("NSI") violated the Sherman Antitrust Act, the Lanham Act and Indiana's common law prohibitions against unfair competition by registering the domain name "birthdayballons.com" to a third party. Plaintiff claimed ownership of a common law trademark in the phrase "Birthday Balloons," but was unable to obtain the domain name in question because a third-party registered it first.

The court rejected plaintiff's claim that NSI was guilty of contributory infringement, which occurs when "a manufacturer or distributor (1) intentionally induces another to infringe a trademark or (2) continues to supply a product to one whom it knows or has reason to know is engaging in trademark infringement." This claim failed because plaintiff did not establish that NSI "knew or had reason to know" that Schwab's use of the birthdayballons.com domain name infringed plaintiff's alleged mark. Plaintiff's contributory unfair competition claim failed because such a claim is not recognized under Indiana law. Lastly, plaintiff's Sherman Act claim failed because plaintiff did not establish that he had sustained an "antitrust injury," an essential prerequisite to such a claim.

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

Ballistic Products Inc. v. Precision Reloading, Inc.
2003 WL 21754816, Civil No. 03-2950 ADM/AJB (D. Minn., July 28, 2003)

Court finds plaintiff Ballistic Products Inc. likely to prevail on its claim that its competitor - defendant Precision Reloading Inc. – violated the  Anticybersquatting Consumer Protection Act as a result of its registration of two “typo” domain names, containing misspellings of plaintiff’s then common law trademark.  Defendants registered these domain names to “attract potential customers” and pointed them to their own web site, at precisionreloading.com, where they sold competing products.  Finding such actions likely to confuse consumers, the Court issued a preliminary injunction, enjoining defendants from further use of the “typo” domains, and directed their immediate transfer to the plaintiff.

The Court further held that it could assert personal jurisdiction over the non-resident defendants.  The Court held that defendant Precision Reloading Inc. had sufficient contact with Minnesota to permit the assertion of general personal jurisdiction over it.  It had over the last 18 months sold over $21,000 in product to Minnesota customers, and purchased over $32,000 of merchandise from Minnesota sellers.  It had also distributed 223 catalogues to Minnesota residents, advertising its products, advertised nationally in publications sent to Minnesota and operated a website that received numerous ‘hits’ some of which were likely to be from Minnesota residents.  Specific jurisdiction could be exercised over both Precision and the remaining defendants under the ‘effects test’ articulated by the Supreme Court in Calder v. Jones.  The Corporate defendants committed tortuous misconduct directed against the plaintiff, a Minnesota company, the effects of which would be felt by that company in Minnesota.  Said the Court:

Defendants’ registration of domain names that are slight misspellings of Ballistic’s trademark and domain name was an action directed at Minnesota such that Defendants’ should ‘reasonably anticipate being haled into court’ in Minnesota. … ‘[a]n individual injured in Minnesota need not got to Connecticut to seek redress from persons who, though remaining in Connecticut, knowingly caused the injury in Minnesota.’ 

The Court held that the individual defendants, officers of Precision, “are primary participants in an alleged wrongdoing intentionally directed at a forum state resident, and jurisdiction over them is proper on that basis.”  It was the individual defendants who came up with the idea of registering the ‘typo’ domain names at issue to attract business for the defendant Precision Reloading. 

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Boston Duck Tours, L.P. v. Super Duck Tours, LLC, et al.
Civ. Act. No. 07-11222-NMG (D. Mass., December 5, 2007).

Court holds that competitor’s purchase of sponsored links from Google that are triggered by the entry of plaintiff’s “Boston Duck Tours” mark constitute a trademark use of plaintiff’s mark actionable under the Lanham Act.  Recognizing that the courts have reached conflicting answers to this question, the Court stated:

In short, the emerging view outside of the Second Circuit is in accord with the plain language of the statute.  Because sponsored linking necessarily entails the ‘use’ of the plaintiff’s mark as part of a mechanism of advertising, it is ‘use’ for Lanham Act purposes.

The Court further holds that the display of such sponsored link advertisements by defendant in the case at bar does not violate either the Lanham Act, or a prior preliminary injunction issued by the Court, because the ads market defendant as “Super Duck Excursions” and ‘serve[] to distinguish the defendant from the plaintiff.”  The preliminary injunction previously issued by the Court had enjoined defendant from continuing to use the phrase “duck tours” as a trademark or service mark in the greater Boston area, as such use was likely to infringe plaintiff’s ‘Boston Duck Tours’ mark.  As a result, defendant had changed its name from “Super Duck Tours” to “Super Duck Excursions.”

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Buying for the Home, LLC v. Humble Abode LLC
Civ. Act. No. 03-cv-2783 (JAP) (D.N.J., Oct. 19, 2006)

Court holds that alleged purchase and use of a competitor’s trade marks as key words to trigger the display of sponsored ads in a search engine is a use of that mark in commerce subject to the strictures of the Lanham Act.  The ads in question did not feature the searched-for mark.  Said the District Court of New Jersey:

The Court is mindful of the challenges that sometime arise in applying existing legal principles in the context of newer technologies.  As expressed by the Edina Realty court, supra, Defendants’ alleged use of Plaintiff’s mark is certainly not a traditional ‘use I commerce.’  Nonetheless, the Court finds Plaintiff has satisfied the ‘use’ requirement of the Lanham Act in that Defendants’ alleged use was ‘in commerce’ and was ‘in connection with any goods or services.’15 U.S.C. Section 1125(a)(1).  First, the alleged purchase of the keyword was a commercial transaction that occurred “in commerce,’ trading on the value of Plaintiff’s mark.  Second, Defendants’ alleged use was both “in commerce” and “in connection with any goods or services” in that Plaintiff’s mark was allegedly used to trigger commercial advertising which included a link to Defendants’ furniture retailing website.  Therefore, not only was the alleged use of Plaintiff’s mark tied to the promotion of Defendants’ goods and retail services, but the mark was used to provide a computer user with direct access (i.e. a link) to Defendants’ website through which the user could make furniture purchases.  The court finds that these allegations clearly satisfy the Lanham Act’s “use” requirements.

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Eurotech Inc. v. Cosmos European Travels Aktiengesellschaft
213 F. Supp.2d 612 (E.D. Va., July 24, 2002)

Court finds plaintiff guilty of trademark infringement and unfair competition in violation of the Lanham Act, and cybersquatting in violation of the Anticybersquatting Consumer Protection Act, as a result of its purchase and use in commerce of the domain name cosmos.com.  Plaintiff’s use infringed the rights of defendant in its registered trademarks Cosmos and Cosmos Tourama, which were used by affiliated companies, through licenses, to promote and market travel and vacation tours.  Plaintiff’s website featured information on travel tours provided by third parties.  Plaintiff both purchased its domain, and began this use, after Cosmos European Travels had registered its mark, and commenced its use in commerce.

In finding that plaintiff’s conduct ran afoul of the Anticybersquatting Consumer Protection Act, the court found that plaintiff had acted with a bad faith intent to profit from its use of its mark.  In reaching this result, the Court relied, in part, on the fact that plaintiff had failed to conduct a trademark search at the time it purchased the cosmos.com domain from a third party.  Such a search, held the Court, would have made plaintiff aware of defendant’s rights in its mark, and its use in the travel industry.  The Court also relied on the fact that plaintiff, after being conducted by consumers seeking defendant, offered for a fee to enter into various arrangements with defendant that would give it access to the cosmos.com domain.  Said the Court:

It is equally important … to step back and examine the larger picture to determine whether it is consistent with a finding of bad faith.  It is.  The larger picture does not reveal an ongoing business entity that, prior to purchasing a domain name, made a reasonable investigation to ensure that the name was non-infringing and then purchased a relatively obscure domain name.  to the contrary, the big picture here reflects that plaintiffs did not engage in any business until they purchased the disputed domain name and when they did so, they made no effort to ascertain whether the ‘cosmos’ name was a registered trademark, as it then had been for eleven years.  Nor did plaintiffs make any reasonable investigation to determine whether the name was used in the travel industry.  Had plaintiffs conducted the proper investigation, they not only would have easily discovered that defendant had registered the cosmos’ and ‘cosmos tourama’ marks, but they also likely would have seen evidence of the fact that defendant had spent millions of dollars promoting the ‘cosmos’ mark and had succeeded in generating a large amount of revenue in the travel business ($400 million over five years).  In the larger picture, these facts loom large, and  it is hard to see how they could have been missed by plaintiffs.  Furthermore, within three years of purchasing the cosmos.com domain name, plaintiffs, armed with the certain knowledge that many consumers thought the cosmos.com website belonged to defendant, sought to sell defendant space and access to the site for a substantial sum of money.  This is closely akin to purchasing a domain name with an intent to exploit it by selling it to the registered owner of the trademark incorporated in the domain name.  In sum, the big picture is fully consistent with a finding of bad faith.

In addition, the fact that plaintiff was now known as CosmosTravels.com, Inc., did not permit it to avoid a finding of bad faith., as this name change occurred only after the domain name at issue had been purchased.  Said the Court “If such a name change could preclude a finding of bad faith, an entity could escape the effect of the ACPA simply by registering an infringing domain name and then changing its business name to match the infringing domain name.”

As a result of its determination, the Court directed plaintiff to transfer the cosmos.com domain to defendant. 

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FragranceNet.com, Inc. v. FragranceX.com, et al.
No. 06-CV-2225 (JFB)(ART)(E.D.N.Y., June 12, 2007)

Following the lead of the Second Circuit in 1-800 Contacts, Inc. v. WhenU.com, 414 F.3rd 400 (2d Cir. 2005) and of other district courts in the Second Circuit, the Court holds that the use of plaintiff’s mark either as a keyword to prompt the appearance of sponsored links advertising defendant’s site in Google’s search engine, or in the metatags of defendant’s site to trigger higher search engine placement, does not constitute a use in commerce of plaintiff’s mark sufficient to give rise to trademark infringement or dilution claims, either under the Lanham Act or New York state law.  Such use of plaintiff’s mark, reasoned the court, is the equivalent to store product placement, where the store places its own generic products on store shelves adjacent to more well-known brands to take advantage of the consumer’s attraction thereto.  As such a use is permissible, so to is the use of plaintiff’s mark in keyword advertising. 

The Court relied on decisions in Merck & Co., 425 F.Supp.2d 402, Rescuecom Corp. v. Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y., 2006) , and Site Pro-1 Inc. v. Better Metal LLC, No. 06-CV-6508 (ILG)(RER)(EDNY, May 9, 2007), each of which “held that the purchase of a trademark as a ‘Sponsored Link’ is not ‘use’ within the meaning of the Lanham Act.” 

Said the Court:

It would be inconsistent with the reasoning set forth in 1-800 Contacts to conclude that the use of trademarks in keywords and metatags constitutes Lanham Act ‘use’ where, as here, defendant does not place the trademark on any product, good or service nor is it used in any way that would indicate source or origin.  Here, the use of plaintiff’s trademark is strictly internal, and, because such use is not communicated to the public, the use does not indicate source or origin of the mark.

As a result, the Court denied plaintiff’s motion to amend its complaint to assert, inter alia, claims of trademark infringement and dilution arising out of the use of its mark in keyword advertising and metatags.  The Court held that such amendment would be futile, as the proposed claims could not withstand a motion to dismiss.

In should be noted that, according to the court, ‘courts in other circuits have generally sustained such claim.’  However, the Court elected to follow the precedent cited above and deny plaintiff’s motion to amend.

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Hartog & Co., AS v. Swix.com and Swix.net
2001 U.S. Dist Lexis 3568, Civ Act. No. 99-1788-A (E.D. Va., March 16, 2001)

In this in rem action brought under the Anticybersquatting Consumer Protection Act (“ACPA”), court holds that registrant of the domain names at issue did not register or use them with a bad faith intent to profit therefrom, and that plaintiff trademark holder is therefore not entitled to relief under the ACPA. Plaintiff holds a United States trademark registration in the mark “Swix” which it has used since 1949 to market ski waxes, in the United States and abroad. Pedram Burgin (“Burgin”) provides Internet services to the public as a sole proprietorship under the name “Swix Internet Dienste” and holds a Swiss trademark in the mark “Swix” for use in connection with that business. Burgin’s clientele is located in Switzerland – he neither does business in the United States, nor does he sell ski wax or any related products. Under these circumstances, the Court held that Burgin’s registration and use of the domains swix.com and swix.net in connection with his Internet business was not undertaken in bad faith. Among other things, Burgin has intellectual property rights in the Swix mark by virtue of his Swiss registration, the domain is part of the name by which he does business, he has made a bona fide use of the mark in the sale of internet related services, he had no intent to divert plaintiff’s customers, as his business is wholly unrelated to plaintiff’s sale of ski wax, he never offered to sell the domains at issue to plaintiffs, and he was unaware of plaintiff’s mark at the time he commenced his use. As a finding of bad faith is a prerequisite to in rem relief under the ACPA, the Court determined that plaintiff’s claim failed.  

New.net, Inc. v. Lavasoft
356 F. Supp. 2d 1071 (C.D.Cal. 2003)

Court denied plaintiff New.net Inc.’s motion for a preliminary injunction, which sought to enjoin defendant Lavasoft from both informing consumers via its Ad-Aware software that NewDotNet, a software program distributed by plaintiff, is installed and running on their computers, and providing consumers with tools that enable them to uninstall that software if they so desire.  Ad-Aware is a popular software program that aids consumers in removing unwanted “spyware.”  Plaintiff charged that by so identifying its software, Lavasoft was mislabeling and disparaging its NewDotNet software by associating it with such unwanted spyware.  As a result, Net.net charged Lavasoft with false advertising, unfair competition, trade libel and tortuous interference with prospective economic advantage. 
The court denied plaintiff’s motion, finding that by informing consumers that NewDotNet was installed and running on their computers, Lavasoft was engaging in speech about a matter of public interest protected by the First Amendment.  As such, the injunction plaintiff sought was an impermissible prior restraint on speech plaintiff claimed was defamatory, before that speech was actually determined to be false.  Said the Court:

For more than thirty years, it has been established that allegations of falsity are insufficient to warrant prior restraint. …  “Equity will not restrain by injunction the threatened publication of a libel, as such, however great the injury to property may be.  This is the universal rule in the United States …”

This prohibition on prior restraint applies to “all causes of action having as their gravamen the alleged injurious falsehood of a statement,” which here included both the Lanham Act and state law claims asserted by the plaintiff.

The court noted that once speech is found to be defamatory and false, a defendant can be enjoined from repeating it.  Said the Court:

The First Amendment offers no protection for false or deceptive commercial speech. …  By contrast, “once a jury has determined that a certain statement is libelous, it is not a prior restraint for the court to enjoin the defendant from repeating that statement.”

New.net generates revenue through the sale of domain names in nonstandard format, such as .free and .shop.  Because the internet does not recognize these domain names, they must be linked to domain names that the internet does recognize for a user to be able to locate them, such as those using traditional extensions such as .com.  According to the court, “without special software, either loaded onto a users computer or incorporate into the software of an internet service provider, an internet user who types a nonstandard domain name in his or her browser will not be able to locate the website.  New.net deals with this problem by providing software “newdotnet” that recognizes the nonstandard extension and connects the user to the web site without requiring the user to know and enter the site’s “true” name.”  According to the court, “New.net is typically introduced onto home computers through ‘bundling’ a process by which an individual who intentionally requests and downloads certain desired software actually gets a bundle of other software the was not sought by the user.”  Often “New.net’s presence is disclosed deep within complicated user agreements that do not allow users to opt out of downloading the bundled conglomeration.”  The court presumed that often, the consumer is unaware that Newdotnet is actually installed on their computers.  Ad-Aware apprises the consumer of the presence of this program, and allows them to remove it if they so choose.

Pinehurst, Inc. v. Brian Wick, et al.
256 F. Supp. 2d 424 (M.D. N.C., 2003).

Finding that defendant cybersquatters violated both the Anticybersquatting Consumer Protection Act (“ACPA”) and the Federal Trademark Dilution Act (“FTDA”), the court directed defendants to transfer to plaintiff domain names containing plaintiff’s famous “Pinehurst” mark, enjoined defendants from further using “Pinehurst” in a domain name, and awarded plaintiff both statutory damages in the amount of $100,000 and attorneys fees.   Plaintiff is the owner of the world famous Pinehurst Golf Resort.  The court found that defendants had registered the domain names in question – pinehurstresort.com and pinehurstresorts.com - with a bad faith intent to profit therefrom because, among other things, they had registered over 8000 domain names, many of which contained the trademarks of well-known corporations, golf courses or law firms, had offered, in settlement, to transfer the domain names at issue to plaintiff in exchange for a ‘contribution’ to their legal expenses and had registered additional ‘typo’ domains after the commencement of this suit.  Such a finding also rested on defendants’ stated purpose in registering these and other domains, which was to “mess” with “corporate America,” as well as on the fact that the domains at issue had been registered by an entity named NameIsForSale.com 

In reaching this result, the court rejected defendants’ claim that their conduct was a permissible ‘parody’ of plaintiff’s mark.  Such a defense failed, in part, because the content of defendants’ site – on which was located images of a miniature golf course and a trailer park – was not seen until after the user had already made a decision to enter the site based on the domain names at issue, which did not parody plaintiff or its golf course.  Said the court “A parody must convey two simultaneous and contradictory messages, that it is the original but also that it is not the original and is instead a parody. … Looking at Defendants’ domain names alone, there is no suggestion of a parody. … The domain names convey the first message, that it is the original, but the second message, that it is ‘not the original and that it is a parody, is discovered only by accessing the website and reading through the website’s content.”

The court further held that defendant had violated the FTDA by virtue of having registered the domain names in question, and thereby having prevented plaintiff from using them in commerce.  This reduced the selling power of plaintiff’s famous
”Pinehurst” mark, thereby diluting it.  Said the court:  “Because of the unique nature of domain names in electronic commerce and the resulting economic harm when marks are registered as domain names by cyberpirates, Defendants’ use of Plaintiff’s service marks in their Pinehurst domain names constitutes dilution.”

SMC Promotions, Inc., et al. v. SMC Promotions, et al.
355 F. Supp.2d 1127 (C.D. Cal. 2005)

Court finds web developer guilty of copyright infringement by copying without authorization plaintiff Specialty Merchandise Corporation’s (“SMC”) copyrighted photographs and descriptions of its products, and an uploading them on clients’ websites, who are authorized distributors of plaintiffs’ products.  In reaching this result, the Court held the web developer was not authorized to engage in such activity, notwithstanding the fact that its clients were licensed by SMC to place the photos on their own websites.  This license was expressly limited by SMC to the distributor, who was not allowed to “delegate or authorize any other person to do so, whether on [the distributor’s] behalf, or otherwise.”  Because the web developer had copied works in which plaintiff SMC held copyright without authorization, it was found guilty of copyright infringement.

The Court also found the web developer guilty of trademark infringement, by using plaintiff’s ‘SMC’ trademark in the domains of various websites at which it advertised it web development services for SMC distributors.  These domains included SMCPromotions.com, SellSMC.com, and SMCForums.com.  The Court found that defendants’ use was likely to cause consumer confusion.  In reaching this result, because the matter arose ‘in the context of the Internet,’ the Court relied on three of the 9th Circuit’s eight ‘Sleekcraft’ factors for evaluating consumer confusion, known as the ‘internet trinity.’  Each of these three factors, held the Court – the similarity of the marks used, the related nature of the parties’ goods and services, and the parties’ simultaneous use of the internet as a marketing channel – pointed strongly in favor of a finding of likely consumer confusion.  Notably, defendants were competing with an affiliate of SMC, plaintiff eMerchants Club, which also offered web development services to SMC distributors.  The use on defendants’ site of a disclaimer, disclaiming affiliation with plaintiffs, and the addition of generic terms such as ‘sell’ ‘promotion’ or ‘forum’ in the domain names, did not alter this conclusion.  Said the Court:

The use of such confusingly similar marks in Defendants' domain names and on their websites creates initial interest confusion, regardless of Defendants' use of a disclaimer on their websites that they are not "owned, operated, endorsed or recommended" by Plaintiffs.

The Court’s finding was buttressed by the presence of actual confusion on the part of a SMC distributor who thought defendants were affiliated with plaintiffs when he hired them.  Because the remaining five “Sleekcraft” factors did not ‘weigh strongly’ against a finding of likelihood of confusion, the Court found defendants guilty of copyright infringement. 

Plaintiff SMC and its affiliates import and distribute various products through a network of distributors known as members.  The products plaintiffs sell are depicted in catalogues, which contain copyrighted photos and descriptions of those products.  Members can access these photographs and descriptions on a secure portion of plaintiff’s website, and are allowed to display them on their own website.  Plaintiff SMC’s affiliate offers SMC members web development services.  Defendants were attempting to compete with this affiliate for the web development business of SMC members, which efforts gave rise to this suit.

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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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Additional cases can be found in the Domain Name section of the Index.

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