Regulating Relevancy: Initial
Interest Confusion and the Internet
Eric
Goldman
Marquette
University Law School
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