State of Initial Interest Confusion After Promatek v. Equitrac

Eric Goldman

Marquette University Law School

eric.goldman@marquette.edu

http://eric_goldman.tripod.com

Case citations can be found at http://eric_goldman.tripod.com/resources/iiccasesummary.htm.

1. What is Initial Interest Confusion?

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, Initial Interest Confusion was part of multi-factor likelihood of confusion analysis, evaluated under:

n Purchaser care/sophistication

n Actual confusion

n Competitive proximity

2. Brookfield v. West Coast, 174 F.3d 1056 (9^th Cir. April 22, 1999)

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 algorithms have changed

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

w Metatags create initial interest confusion

w The billboard analogy

3. Some 7^th Circuit Initial Interest Confusion Cases

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

n Trade dress case between corn wet milling manufacturers

n Initial Interest Confusion 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 Initial Interest Confusion 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 Initial Interest Confusion doesn’t overcome a finding of no consumer confusion

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

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

n District court analyzes Initial Interest Confusion under actual confusion factor and finds likelihood of confusion

n 7^th circuit reverses Initial Interest Confusion analysis but affirms ruling; bad faith demonstrated by metatag usage

4. Promatek v. Equitrac, 300 F.3d 808 (7^th Cir. Aug. 13, 2002, amended Oct. 18, 2002)

w Defendant includes competitor’s name in metatags

n But Equitrac also provided maintenance and service for Copitrak equipment

w Court evaluates Initial Interest Confusion under purchaser care factor

w Likelihood of confusion found due to goodwill misappropriation

n Redefines Initial Interest Confusion: “when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated”

n Duration of confusion irrelevant; “Equitrac cannot unring the bell”

n “Customers who are directed to Equitrac’s webpage are likely to learn more about Equitrac and its products before beginning a new search for Promatek and Copitrak”

w Later, via amendment, court says metatag usage is actionable only when TM is used to deceive consumers into thinking Equitrac was Copitrak

n How did Equitrak’s metatags deceive?

w Is “passing off” an element of Initial Interest Confusion or not?

n AM Gen. v. DaimlerChrysler (Nov. 18, 2002)

w Remedy: Equitrac’s home page displays disclaimer containing plaintiff’s TMs

n Who won this case?

5. If you are plaintiff…

w Initial Interest Confusion permits you to bypass standard likelihood of confusion multi-factor test (Brookfield)

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

w Initial Interest Confusion occurs when consumers experience momentary confusion (NYSSCPA, OBH)

w Initial Interest Confusion occurs when defendant obtain marketplace attention through goodwill association (Mobil Oil, Elvis Presley, Promatek)

6. If you are defendant…

w Initial Interest Confusion requires passing off/bait ‘n’ switch (Dorr-Oliver, Northland Ins.)

w No Initial Interest Confusion unless word is used as source identifier (Netscape)

w Nominative fair use (Welles)

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 cure any Initial Interest Confusion (Bihari)

w Initial Interest Confusion only applies if parties are competitors (Dorr-Oliver, Netscape, TNN, Checkpoint, Clue)

w Initial Interest Confusion is insufficient confusion (TeleTech, Chatam, Strick)

7. Academic Criticism

w Initial Interest Confusion 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 use Initial Interest Confusion to curtail publication of criticism, parody, neutral information, comparative advertising and ads by ancillary servicers without any real confusion

w Courts make 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 are 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?.