wEvery word on every page is indexed into large
database
wPeople search database using keywords
nKeywords
encapsulate consumer interests
wSearch engine displays search results
nResults
often list title, URL, initial text
nResults
ordered by proprietary algorithms
wGoogle uses a combination of link weighting and keywords
(location matters)
wSome results based on pay-for-placement
nSome
search results may be cut off
Trademarks
wTrademarks are words/symbols that
identify/distinguish the source of goods in the marketplace
wTrademark infringement occurs when there is
likelihood of consumer confusion
wEach circuit has its own multi-factor test to
determine likelihood of confusion
nSleekcraft
in 9th Circuit; Polaroid in 2nd Circuit
n7th
Circuit “digits”: mark similarity; product similarity; area and manner of
mark’s use; consumer care; mark strength; actual confusion; and intent to
palm-off (Forum, Schwinn, AHP)
Initial Interest Confusion
wIIC is “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)
wHistorically, IIC was analyzed in connection
with “purchaser care,” “actual confusion” or “competitive proximity” factors in
multi-factor likelihood of confusion test
wStarting with Brookfield, some courts treat IIC
as a bypass to the multi-factor test
Brookfield v. West Coast
wVideo rental store launches website at
“moviebuff.com” and uses “moviebuff” in metatags
wHigh-end entertainment publisher has senior TM
rights in “moviebuff”
wParties have some competitive proximity
nSome
searchers might accept defendant’s database instead of continuing to seek
plaintiff’s
wUsing standard multi-factor test, court
concludes the domain name infringes
Brookfield and Metatags
wWest Coast used “moviebuff” in metatags
nMetatags
are in hidden portions of web page
nHistorically,
some search engines gave extra relevancy credit to metatags
wCourt says standard multi-factor test doesn’t
apply to metatag analysis
wThe billboard analogy
wMetatags created initial interest confusion
nMisappropriation
of search engine traffic because of goodwill association
nBut
West Coast can say “Why pay for MovieBuff when you can get the same thing here
for FREE?”
Post-Brookfield Abuses
wWebsite criticizing/parodying newspaper (OBH)
nMomentary
confusion trumps disclaimer and negates parody defense
wWebsite criticizing tax negotiator (JK Harris)
nNo
fair use when website tried to improve ranking in relevancy algorithms
wWebsite listing dealers of used equipment
(Caterpillar v. TeleScan)
wWebsite marketing travel services (hotels,
airfare) to conference attendees (Key3Media)
Why IIC Doesn’t Work
wDoctrine lacks a test or good definition
nPossibility v. likelihood of confusion
wEvery word on a web page acts as marketing
nIt’s not just about metatags or domain names
wQuestionable assumptions about search behavior
nConsumers searching on TM expect to find only TM
owner
nConsumers expect perfect relevancy in search
results
nHitting the back button is a “harm”
nUsers reviewing search results are confused
about what’s at the destination
nConsumers stop their searches mid-stream
nUsers guess at domain names
nMetatags make a difference in relevancy
algorithms
nSearch engines don’t change their relevancy
algorithms
nConsumers tolerate search engines with
irrelevant results
wPermits TM owner to “own” a word
What Should We Do?
wEliminate IIC as a standalone way to establish
likelihood of confusion
nConsider
the totality of circumstances to assess likelihood of confusion
nDon’t
allow possibility of confusion to suffice
wGo back to using IIC as non-dispositive support
for specific factors of multi-factor likelihood of confusion test
nShould
apply only when marketer is trying to arbitrage switching costs
wRely on search engines to continue improving
relevancy algorithms
