Regulating Relevancy: Initial
Interest Confusion and the Internet
Eric
Goldman
Marquette
University Law School
What is Initial Interest Confusion?
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Defined: “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)
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Historically, IIC influenced the “actual
confusion” or “purchaser care” analysis in a multi-factor likelihood of
confusion test
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Now, some courts allow IIC to bypass a
multi-factor likelihood of confusion test
Pro-Plaintiff Holdings
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Any search engine indexing provides evidence of
IIC (Brookfield)
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Any search engine optimization provides evidence
of IIC (JK Harris)
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Any possibility of temporary confusion on a
user’s part provides evidence of IIC (NYSSCPA, OBH)
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IIC occurs when there’s potential goodwill
association (Mobil Oil, Elvis, Nissan)
Defenses to IIC
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Word is not being used as a source identifier
(Playboy v. Netscape)
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Nominative fair use (Welles 9th
Circuit)
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Product
not readily identifiable without the mark
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Mark
used only as reasonably necessary to identify the product
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No
suggestion of sponsorship or endorsement
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Insufficient confusion (Chatam, Strick)
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No passing off bait ‘n’ switch (Dorr-Oliver,
Northland)
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Parties aren’t competitors (TNN, BigStar,
Checkpoint)
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Disclaimers? (Brookfield, Bihari)
Criticisms of the Doctrine
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Weak policy justifications
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Bypasses
multi-factor likelihood of confusion test
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Ignores
low “switching costs” by searchers
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Relic of past search engine practices?
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Makes
questionable assumptions about search engine indexing practices
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Assumes
inefficiencies in marketplace for search tools
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Assumes
searchers expect perfect relevancy
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Confers trademark rights in gross
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Doesn’t limit itself to product classes
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Protects non-famous marks
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Can be used to stifle criticism and parody
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Can be used to prevent comparative product and
pricing information