Initial Interest Confusion

Eric Goldman

Marquette University Law School

eric.goldman@marquette.edu

http://eric_goldman.tripod.com

Defined

w “The use of another’s trademark in a manner reasonably calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion” (Brookfield)

w Initially, IIC was part of multi-factor likelihood of confusion analysis, evaluated under:

n Purchaser care/sophistication

n Actual confusion

n Competitive proximity

Brookfield v. West Coast

w Video rental store launches website at moviebuff.com and uses “moviebuff” in metatags

w High-end entertainment publisher has senior TM rights in “moviebuff”

w Parties have some competitive proximity

n Court says some searchers might settle for defendant’s database instead of continuing to search for plaintiff’s

w Using standard multi-factor test, court holds domain name infringes

w A word about search engine operations

n Robots index every word on web pages

n Consumers do keyword searches

n Search engines display sites containing keyword

n Relevancy algorithms historically gave credit for metatags placement, but is this still true?

w Court says standard multi-factor test doesn’t apply to metatag analysis

w Metatags create initial interest confusion

w The billboard analogy

Some 7^th Circuit IIC Cases

w Dorr-Oliver, 94 F.3d 376 (1996)

n Trade dress case between corn wet milling manufacturers

n IIC requires competitive passing-off: “luring potential customers away from a product by initially passing off its goods as those of the producer’s”—not found here

w Rust Environment, 131 F.3d 1210 (1997)

n Former employees launch environmental consulting firm under abandoned name

n IIC evaluated under purchaser care factor—not found

w Syndicate Sales, 192 F.3d 633 (1999)

n Trade dress case involving plastic baskets for funeral bouquets

n IIC doesn’t overcome a finding of no consumer confusion

w Eli Lilly, 233 F. 3d 456 (2000)

n Natural Prozac alternative marketed using “Herbrozac” and “Prozac” in metatags

n District court analyzes IIC under actual confusion factor and finds likelihood of confusion

n 7^th circuit reverses IIC analysis but upholds based on bad faith demonstrated by metatag usage

w Promatek, 2002 U.S. App. LEXIS 16207 (Aug. 13, 2002)

n Defendant includes competitor’s name in metatags

n Court evaluates IIC under purchaser care factor and finds likelihood of confusion

n Remedy: defendant’s home page must include disclaimer containing plaintiff’s TMs

n Who won this case?

Plaintiff-Favorable Arguments

w IIC is a bypass to multi-factor test (Brookfield)

w IIC when defendant tries to influence search listing placement through metatags or otherwise (Eli Lilly, Promatek, JK Harris)

w IIC when consumers experience momentary confusion (NYSSCPA, OBH)

w IIC when defendant obtain marketplace attention through association (Mobil Oil, Elvis Presley)

Defenses to IIC

w No passing off/bait ‘n’ switch (Dorr-Oliver, Northland Insurance)

w Word not being used as source identifier (Netscape)

w Nominative fair use (Wells)

n Product not readily identifiable without the mark

n Mark used only as reasonably necessary to identify the product

n No suggestion of sponsorship or endorsement

w Disclaimers (Bihari)

w Not competitors (Dorr-Oliver, Netscape, TNN, Checkpoint)

w Insufficient confusion (TeleTech, Chatam, Strick)

Academic Criticism

w Doctrine lacks definition and structure

w Efforts to attract attention are everywhere

n By definition, marketing tries to “capture initial consumer attention”

n Search engines index every word

n Possibility v. likelihood of confusion

w TM owners can curtail publication of criticism, parody and neutral information without any real confusion

w Questionable assumptions about consumer/search behavior

n Consumers expect perfect relevancy in searches

n Consumers searching on TM expect to find only TM owner

n Consumers seeing search listing will be confused about what’s at the destination

n Consumers stop their searches mid-stream

n Hitting the back button is a “harm”

n Metatags make a difference in relevancy algorithms

n Consumers accept irrelevant search results

w An emerging TM right in gross?