Trademark Cases And now for something confusingly similar

What are the goals of trademark law?  Protect owner of marks from freeloaders  Protect consumers from being confused

What are the fundamental questions in trademark litigation?  Is the use of a mark likely to cause confusion in the marketplace between that mark and another mark?  Is the use of mark likely to cause dilution of another famous mark?

Can you recognize these trademarks?

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  banner 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  Do you agree with Judge Berzon’s concurring opinion?

Morris Publishing Group v. SK*RT  National Arbitration Forum  Authorized by Internet Corporation for Assigned Names and Numbers (ICANN) to resolve domain name disputes  ICANN - Mandatory arbitration  Arbitrators are typically lawyers and former judges  Daniel Banks = former lawyer and judge, now concentrates on mediation and arbitration

Morris Publishing Group v. SK*RT  Morris Publishing owns trademarks:  SKIRT  SKIRT!  Morris Publishing publishes newspaper devoted to women’s issues (since 1994)  SK*RT.com registers (in 2007) domain name:  sk-rt.com  Social media ranking website and blog

Morris Publishing v. SK*RT  Morris Publishing files complaint with NAF  Seeks transfer of domain name

Morris Publishing v. SK*RT  Arbitrator’s Findings:  Domain name sk-rt.com is confusingly similar to the SKIRT marks  Looks similar  Sounds identical  SK*RT has rights and a legitimate interest in domain name  Legitimate business  Functional web site  Do not compete with Morris Publishing  Domain name comprised of a common term

Morris Publishing v. SK*RT  SK*RT did not register or use the domain name in bad faith  Domain name is comprised of a modified generic term