Regulating Relevancy: Initial Interest Confusion and the Internet

Eric Goldman

Marquette University Law School

eric.goldman@marquette.edu

http://eric_goldman.tripod.com

 

 

How Search Engines Work

w   Search robots copy web pages

w   Every word on every page is indexed into large database

w   People search database using keywords

n    Keywords encapsulate consumer interests

w   Search engine displays search results

n    Results often list title, URL, initial text

n    Results ordered by proprietary algorithms

w  Google uses a combination of link weighting and keywords (location matters)

w  Some results based on pay-for-placement

n    Some search results may be cut off

 

Trademarks

w   Trademarks are words/symbols that identify/distinguish the source of goods in the marketplace

w   Trademark infringement occurs when there is likelihood of consumer confusion

w   Each circuit has its own multi-factor test to determine likelihood of confusion

n    Sleekcraft in 9th Circuit; Polaroid in 2nd Circuit

n    7th 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

w   IIC 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)

w   Historically, IIC was analyzed in connection with “purchaser care,” “actual confusion” or “competitive proximity” factors in multi-factor likelihood of confusion test

w   Starting with Brookfield, some courts treat IIC as a bypass to the multi-factor test

 

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    Some searchers might accept defendant’s database instead of continuing to seek plaintiff’s

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

 

Brookfield and Metatags

w   West Coast used “moviebuff” in metatags

n    Metatags are in hidden portions of web page

n    Historically, some search engines gave extra relevancy credit to metatags

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

w   The billboard analogy

w   Metatags created initial interest confusion

n    Misappropriation of search engine traffic because of goodwill association

n    But West Coast can say “Why pay for MovieBuff when you can get the same thing here for FREE?”

 

Post-Brookfield Abuses

w   Website criticizing/parodying newspaper (OBH)

n    Momentary confusion trumps disclaimer and negates parody defense

w   Website criticizing tax negotiator (JK Harris)

n    No fair use when website tried to improve ranking in relevancy algorithms

w   Website listing dealers of used equipment (Caterpillar v. TeleScan)

w   Website marketing travel services (hotels, airfare) to conference attendees (Key3Media)

 

Why IIC Doesn’t Work

w    Doctrine lacks a test or good definition

n     Possibility v. likelihood of confusion

w    Every word on a web page acts as marketing

n     It’s not just about metatags or domain names

w    Questionable assumptions about search behavior

n     Consumers searching on TM expect to find only TM owner

n     Consumers expect perfect relevancy in search results

n     Hitting the back button is a “harm”

n     Users reviewing search results are confused about what’s at the destination

n     Consumers stop their searches mid-stream

n     Users guess at domain names

n     Metatags make a difference in relevancy algorithms

n     Search engines don’t change their relevancy algorithms

n     Consumers tolerate search engines with irrelevant results

w    Permits TM owner to “own” a word

 

What Should We Do?

w   Eliminate IIC as a standalone way to establish likelihood of confusion

n    Consider the totality of circumstances to assess likelihood of confusion

n    Don’t allow possibility of confusion to suffice

w   Go back to using IIC as non-dispositive support for specific factors of multi-factor likelihood of confusion test

n    Should apply only when marketer is trying to arbitrage switching costs

w   Rely on search engines to continue improving relevancy algorithms