Trademark Cases

1. Trademark Cases And now for something confusingly similar 3-6-08

2. What are the goals of trademark law? • Protect owner of marks from freeloaders • Protect consumers from being confused

3. What are the fundamental questions in trademark litigation? • Is the use of a mark likely to cause confusion in the marketplace between that mark and another mark? • Is the use of mark likely to cause dilution of another famous mark?

4. Can you recognize these trademarks?

5. Playboy v. Netscape (9th Cir. 2004) • Playboy owns trademarks for “playboy” and “playmate” • Netscape has list of terms that it “keys” to advertisers’ banner ads, including “playboy” and “playmate” • Netscape makes more $$ for higher “click through” rate • Playboy sues Netscape for trademark infringement and dilution. • Netscape wins on summary judgment in trial court

6. Playboy v. Netscape (9th Cir. 2004)On appeal: • Playboy argues “initial interest confusion” • Customer confusion creates initial interest in competitor’s product. • Example: • User types “playboy” into search engine • banner ad pops up that leads user to an adult site not affiliated with Playboy • While user understands that he is not at a Playboy site, nonetheless he has been drawn to site through unauthorized use of good will of Playboy

7. Strength of mark Proximity of the goods Similarity of the marks Evidence of actual confusion Marketing channels used Type of goods and degree of care exercised by purchaser Defendant’s intent in selecting mark Likelihood of expansion of the product lines Playboy v. Netscape (9th Cir. 2004) On appeal: Eight factor test:

8. Playboy v. Netscape (9th Cir. 2004) Netscape Defenses • Fair use • But fair use must not be confusing • Nominitive use • But product or service must not be readily identifiable without use of the mark • Functional use • Playboy’s use of the terms “playboy” and “playmate” are not functional

9. Playboy v. Netscape (9th Cir. 2004) Dilution • Elements: • Is mark “famous” • Did defendant engage in commercial use of mark • Was there “actual dilution” of the mark (not mere “likelihood of dilution”

10. Playboy v. Netscape (9th Cir. 2004) Result • Appellate court finds genuine issues of material fact exist on both infringement and dilution claims • Appellate court reverses and remands the trial court’s grant of summary judgment in favor of Netscape • Do you agree with Judge Berzon’s concurring opinion?

11. Morris Publishing Group v. SK*RT • National Arbitration Forum • Authorized by Internet Corporation for Assigned Names and Numbers (ICANN) to resolve domain name disputes • ICANN - Mandatory arbitration • Arbitrators are typically lawyers and former judges • Daniel Banks = former lawyer and judge, now concentrates on mediation and arbitration

12. Morris Publishing Group v. SK*RT • Morris Publishing owns trademarks: • SKIRT • SKIRT! • Morris Publishing publishes newspaper devoted to women’s issues (since 1994) • SK*RT.com registers (in 2007) domain name: • sk-rt.com • Social media ranking website and blog

13. Morris Publishing v. SK*RT • Morris Publishing files complaint with NAF • Seeks transfer of domain name

14. Morris Publishing v. SK*RT • Arbitrator’s Findings: • Domain name sk-rt.com is confusingly similar to the SKIRT marks • Looks similar • Sounds identical • SK*RT has rights and a legitimate interest in domain name • Legitimate business • Functional web site • Do not compete with Morris Publishing • Domain name comprised of a common term

15. Morris Publishing v. SK*RT • SK*RT did not register or use the domain name in bad faith • Domain name is comprised of a modified generic term