Trademark Cases And now for something confusingly similar Note: readings listed today for day 17 are not on the exam

Text cases  Toeppen violates FTDA by not using trademark in commerce and by trying to sell it to Panavision  Faber gets protection for “bally sucks”: no use in commerce (no dilution), no confusion, critical comment/1 st amendment  March Madness v. Netfire: IHSA trademarks a very famous term: Netfire can’t use it.  U-Haul v WhenU: pop ups in the browser, block the view of U-Haul’s site, and that direct the user away. No trademark infringement or dilution.  Playboy v Wells: nominative use (tags DO have to comply, but with the tests, not with absolute use or not).

Playboy v. Netscape (9 th Cir. 2004)  Playboy owns trademarks for “playboy” and “playmate”  Netscape has list of terms that it “keys” to advertisers’ banner ads, including “playboy” and “playmate”  Netscape makes more $$ for higher “click through” rate  Playboy sues Netscape for trademark infringement and dilution.  Netscape wins on summary judgment in trial court

Playboy v. Netscape (9 th Cir. 2004) On appeal:  Playboy argues “initial interest confusion”  Customer confusion creates initial interest in competitor’s product.  Example:  User types “playboy” into search engine  anner ad pops up that leads user to an adult site not affiliated with Playboy  While user understands that he is not at a Playboy site, nonetheless he has been drawn to site through unauthorized use of good will of Playboy

Playboy v. Netscape (9 th Cir. 2004) On appeal: Eight factor test:  Strength of mark  Proximity of the goods  Similarity of the marks  Evidence of actual confusion  Marketing channels used  Type of goods and degree of care exercised by purchaser  Defendant’s intent in selecting mark  Likelihood of expansion of the product lines

Playboy v. Netscape (9 th Cir. 2004) Netscape Defenses  Fair use  But fair use must not be confusing  Nominitive use  But product or service must not be readily identifiable without use of the mark  Functional use  Playboy’s use of the terms “playboy” and “playmate” are not functional

Playboy v. Netscape (9 th Cir. 2004) Dilution  Elements:  Is mark “famous”  Did defendant engage in commercial use of mark  Was there “actual dilution” of the mark (not mere “likelihood of dilution”

Playboy v. Netscape (9 th Cir. 2004) Result  Appellate court finds genuine issues of material fact exist on both infringement and dilution claims  Appellate court reverses and remands the trial court’s grant of summary judgment in favor of Netscape

That was then, this is now: Dwyer v. Sensocon  More Evidence That the Initial Interest Confusion Doctrine is Dying  Notice what the court did here.... It required the plaintiff to provide some hard evidence of initial interest confusion, not just vague hypothetical assertions. Specifically, the court asks to see how many searchers actually saw any search results or other information that might have impacted their decision.  This reinforces that initial interest confusion is a relic doctrine designed to redress really weak consumer search processes like guessing domain names or search engines rankings influenced by inaccurate metatags.

NETWORK AUTOMATION, INC. (Plaintiff-counter- defendant) v. ADVANCED SYSTEMS CONCEPTS, INC. (Defendant-counter-claimant- Appellee). Appeal from the United States District Court for the Central District of California. December 8, 2010—Pasadena, California  Network Automation (“Network”) and Advanced Systems Concepts (“Systems”) are both in the business of selling job scheduling and management software, and both advertise on the Internet.  Network sells its software under the mark Auto-Mate, while Systems’ product is sold under the registered trademark ActiveBatch.  Network decided to advertise its product by purchasing certain keywords, such as “Active-Batch,” which when keyed into various search engines, most prominently Google and Microsoft Bing, produce a results page showing “ as a sponsored link.

NETWORK AUTOMATION, INC. (Plaintiff-counter- defendant) v. ADVANCED SYSTEMS CONCEPTS, INC  Systems’ objection to Network’s use of its trademark to interest viewers in Network’s website gave rise to this trademark infringement action.  The district court was confronted with the question whether Network’s use of ActiveBatch to advertise its products was a clever and legitimate use of readily available technology, such as Google’s AdWords, or a likely violation of the Lanham Act, 15 U.S.C. § The court found a likelihood of initial interest confusion by applying the eight factors we established more than three decades ago in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), and reasoning that the three most important factors in “cases involving the Internet” are  (1) the similarity of the marks; (2) the relatedness of the goods; and (3) the marketing channel used. The court therefore issued a preliminary injunction against Network’s use of the mark ActiveBatch.  Mindful that the sine qua non of trademark infringement is consumer confusion, and that the Sleekcraft factors are but a nonexhaustive list of factors relevant to determining the likelihood of consumer confusion, we conclude that Systems’ showing of a likelihood of confusion was insufficient to support injunctive relief. Therefore, we vacate the injunction and reverse and remand.  So initial confusion might be in play but isn’t enough to win.

Network Automation, Inc. v. Advanced System Concepts, Inc. Network Automation, Inc. v. Advanced System Concepts, Inc.  buying keyword ads constitutes a use in commerce.  the most relevant factors to the analysis of the likelihood of confusion are: (1) the strength of the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.

Is a new standard needed for online?  With regard to search, courts have obliterated confusion (initial or real) and dilution  Should there be a “misdirection” standard?  That is, are confusion and dilution too tied to physical/front stage/old media circumstances (the law will not solve) such that a new standard is needed to protect trademarks?

Toyota Motor Sales v. Farzad Tabari  Basics:  Parties?  Jurisdiction?  What’s the case about?  What happened in the lower court?  What are the issues on appeal?

Toyota Motor Sales v. Farzad Tabari  Answers:  Federal Ninth Circuit Court of Appeals (California)  Domain name dispute: Tabaris owns buy-a- lexis.com and buyorleaselexus.com  Trial court enjoins Tabaris from using LEXUS mark in domain names.  Does nominative fair use apply? Was the injunction too broad?

Toyota Motor Sales v. Farzad Tabari  Nominative Fair Use Test – Consider whether:  Product “readily identifiable” without use of mark;  D used more of the mark than necessary; or  D falsely suggested he was sponsored or endorsed by the TM holder.

Toyota Motor Sales v. Farzad Tabari  What does Ninth Circuit decide?  Why?  Do you agree?

Toyota Motor Sales v. Farzad Tabari  Other interesting observations  Tabaris do not have lawyers – but they win anyway!  Judge Kozinski suggests that they receive appointed counsel.  Judge Kozinski makes repeated references to the level of sophistication and attitude of consumers on the internet – all without evidence in the record.  Judge Fernandez points this out in concurrence.

Rescuecom Corp. v. Google  Who’s who?  Jurisdiction?  Issues?  What happens in the trial court?  What happens on appeal?

Rescuecom Corp. v. Google  Second Circuit holds:  Use of Rescuecom’s mark in Adwords or Keyword Suggestion Tool is a use in commerce  There is a question of fact as to whether Google’s practice causes a likelihood of confusion  Rescuecom “wins” but later drops the action.

Rosetta Stone v. Google  goldman:   the 4th circuit's opinion:  =historical  “For the reasons that follow, we affirm the district court’s order with respect to the vicarious infringement and unjust enrichment claims; however, we vacate the district court’s order with respect to the direct infringement, contributory infringement and dilution claims and remand these claims for further proceedings.”  Vicarious infringement and use in commerce.  Google settles Rosetta Stone lawsuit (Nov. 2012) Google settles Rosetta Stone lawsuit Google settles Rosetta Stone lawsuit

Tide might be turning  Google didn’t risk going back, on Rosetta Stone, and risking the trial court deciding that vicarious infringement is occurring, combined with the now TWICE appellate that search terms are a use in commerce.

Apple Settles iPad Trademark Dispute With Chinese Company  HONG KONG — A Chinese provincial court said in a statement on Monday that Apple had settled a lawsuit there by paying $60 million into a court-approved bank account for the legal rights to use the iPad trademark in China.  “It was done last week, and it was confirmed with a ruling by the higher court,” that was issued on Monday morning, said Xie Xianghui, a lawyer for the Chinese company involved, Proview Technology (Shenzhen). It should take only a week or two for China’s national trademark authority to transfer the iPad trademark for China to Apple, added Mr. Xie, of the Grandall Legal Group in Shenzhen.  Mr. Xie said that Proview Technology did not regard the settlement amount as especially large, “but it is O.K.” Proview Technology is insolvent and close to liquidation, and the money in the court-approved bank account will be used to repay some of its creditors, he said.  Apple retained British lawyers several years ago to set up a company, IP Application Development, to buy up rights to the iPad name around the world. Apple paid only £35,000 to a Proview Technology affiliate in Taiwan for that company’s iPad trademarks in various countries.  But when Apple introduced the iPad with immediate success, Proview Technology (Shenzhen) said that the transaction had not included the trademark for China. The operation in the city of Shenzhen, in Guangdong Province in southeastern China, filed a trademark infringement case against Apple in a Shenzhen court, and the case ended up in provincial court  =====