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Trademark Cases

Trademark Cases . And now for something confusingly similar 10-19-10 Steve Baron Bradley IM 350 Fall 2010. What are the goals of trademark law? . Protect owner of marks from freeloaders Protect consumers from being confused. What are the fundamental questions in trademark litigation?.

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Trademark Cases

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  1. Trademark Cases And now for something confusingly similar 10-19-10 Steve Baron Bradley IM 350 Fall 2010

  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. I am the master of my domain…name • What’s a domain name name? • What’s a domain name dispute? • Why do trademark holder’s care? • Fundamental problem: many trademarks but only one domain

  12. Toyota Motor Sales v. Farzad Tabari • Basics: • What court? • Where? • What’s the case about? • What happened in the lower court? • What are the issues on appeal?

  13. Toyota Motor Sales v. Farzad Tabari • Answers: • Ninth Circuit Court of Appeals • California • Domain name dispute: Tabaris owns buy-a-lexis.com and buyorleaselexus.com • Trial court enjoins Tabaris from using LEXUS mark in domain names. • Does nominative fair use apply? Was the injunction too broad?

  14. Toyota Motor Sales v. Farzad Tabari • Nominative Fair Use Test – Consider whether: • Product “readily identifiable” without use of mark; • D used more of the mark than necessary; or • D falsely suggested he was sponsored or endorsed by the TM holder.

  15. Toyota Motor Sales v. Farzad Tabari • What does Ninth Circuit decide? • Why? • Do you agree?

  16. Toyota Motor Sales v. Farzad Tabari • Other interesting observations • Tabaris do not have lawyers – but they win anyway! • Judge Kozinski suggests that they receive appointed counsel. • Judge Kozinski makes repeated references to the level of sophistication and attitude of consumers on the internet – all without evidence in the record. • Judge Fernandez points this out in concurrence.

  17. What’s up with keyword advertising? • What is keyword advertising? • How do competitor’s use key words to attract business from competitors? • How does it implicate trademark infringement law? • Who is responsible? • Advertiser? • Search engine?

  18. Rescuecom Corp. v. Google • Who’s who? • What are they fighting about? • What happens in the trial court? • What happens on appeal?

  19. Rescuecom Corp. v. Google • Google offers: • Adwords • Keyword Suggestion Tool

  20. Rescuecom Corp. v. Google

  21. Rescuecom Corp. v. Google • Second Circuit holds: • Use of Rescuecom’s mark in Adwords or Keyword Suggestion Tool is a use in commerce • There is a question of fact as to whether Google’s practice causes a likelihood of confusion

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