1. Trademark Cases And now for something confusingly similar 3-12-09

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. 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

12. 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

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

14. 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 businenss  Functional web site  Do not compete with Morris Publishing  Domain name comprised of a common term

15. 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

16. DeVry, Inc. v. University of Medicine  Court = USDC ND ILL  Plaintiffs = DeVry, Inc. and Global Education  Defendant = University of Medicine and Health Sciences – St. Kitts

17. DeVry, Inc. v. University of Medicine

18.  Plaintiff owns trademarks:  ROSS  ROSS UNIVERSITY  Educational services  Defendant:  Shares campus with Robert Ross International University of Nursing  Signs say: “Founded by Dr. Robert Ross”  Brochures mention “Ross University”

19. DeVry, Inc. v. University of Medicine  Plaintiff sues for trademark infringement and unfair competition  Defendant files a motion to dismiss  Argues “fair use” is “impenetrable defense”

20. DeVry, Inc. v. University of Medicine Court denies motion to dismiss:  Statutory fair use cannot be decided without fact discovery  Nominative Fair Use:  Def. uses plf.’s marks to refer to plf’s goods or services in a non-confusing manner.  Test:  Product or service not readily identifiable without use of mark  Use only so much of mark as is necessary  Don’t imply sponsorship or endorsement by trademark holder  Can’t decide these issues without discovery