1. Trademark Cases And now for something confusingly similar 10-19-10 Steve Baron Bradley IM 350 Fall 2010

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

3. 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?

4. Can you recognize these trademarks?

5. 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

6. 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

7. 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

8. 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

9. 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”

10. 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?

11. I am the master of my domain…name  What’s a domain name name?  What’s a domain name dispute?  Why do trademark holder’s care?  Fundamental problem: many trademarks but only one domain

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

13. Toyota Motor Sales v. Farzad Tabari  Answers:  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?

14. 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.

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

16. 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.

17. What’s up with keyword advertising?  What is keyword advertising?  How do competitor’s use key words to attract business from competitors?  How does it implicate trademark infringement law?  Who is responsible?  Advertiser?  Search engine?

18. Rescuecom Corp. v. Google  Who’s who?  What are they fighting about?  What happens in the trial court?  What happens on appeal?

19. Rescuecom Corp. v. Google  Google offers:  Adwords  Keyword Suggestion Tool

20. Rescuecom Corp. v. Google

21.  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