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U.S. 9th Circuit Court of Appeals
BROOKFIELD v WEST COAST
9856918
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
BROOKFIELD COMMUNICATIONS, INC.,
Plaintiff-Appellant, No. 98-56918
v. D.C. No.
CV-98-09074-CRM
WEST COAST ENTERTAINMENT
CORPORATION, OPINION
Defendant-Appellee.
Appeal from the United States District Court
for the Central District of California
Carlos R. Moreno, District Judge, Presiding
Argued and Submitted
March 10, 1999--San Francisco, California
Filed April 22, 1999
Before: William C. Canby, Jr., Diarmuid F. O'Scannlain, and
Kim M. Wardlaw, Circuit Judges.
Opinion by Judge O'Scannlain
_________________________________________________________________
COUNSEL
Richard L. Stone (argued), Sheppard, Mullin, Richter &
Hampton, Los Angeles, California, for the plaintiff-appellant.
Dennis G. Martin (argued), Christina L. Johnson, Willmore F.
Holbrow, III, Blakely, Sokoloff, Taylor & Zafman, Los Ange-
les, California, for the defendant-appellee.
_________________________________________________________________
OPINION
O'SCANNLAIN, Circuit Judge:
We must venture into cyberspace to determine whether fed-
eral trademark and unfair competition laws prohibit a video
rental store chain from using an entertainment-industry infor-
mation provider's trademark in the domain name of its web
site and in its web site's metatags.
I
Brookfield Communications, Inc. ("Brookfield") appeals
the district court's denial of its motion for a preliminary
injunction prohibiting West Coast Entertainment Corporation
("West Coast") from using in commerce terms confusingly
similar to Brookfield's trademark, "MovieBuff. " Brookfield
gathers and sells information about the entertainment indus-
try. Founded in 1987 for the purpose of creating and market-
ing software and services for professionals in the
entertainment industry, Brookfield initially offered software
applications featuring information such as recent film submis-
sions, industry credits, professional contacts, and future proj-
ects. These offerings targeted major Hollywood film studios,
independent production companies, agents, actors, directors,
and producers.
Brookfield expanded into the broader consumer market
with computer software featuring a searchable database con-
taining entertainment-industry related information marketed
under the "MovieBuff" mark around December 1993.1 Brook-
field's "MovieBuff" software now targets smaller companies
and individual consumers who are not interested in pur-
chasing Brookfield's professional level alternative, The Stu-
dio System, and includes comprehensive, searchable,
entertainment-industry databases and related software appli-
cations containing information such as movie credits, box
office receipts, films in development, film release schedules,
entertainment news, and listings of executives, agents, actors,
and directors. This "MovieBuff" software comes in three ver-
sions -- (1) the MovieBuff Pro Bundle, (2) the MovieBuff
Pro, and (3) MovieBuff -- and is sold through various retail
stores, such as Borders, Virgin Megastores, Nobody Beats the
Wiz, The Writer's Computer Store, Book City, and Samuel
French Bookstores.
Sometime in 1996, Brookfield attempted to register the
World Wide Web ("the Web") domain name
"moviebuff.com" with Network Solutions, Inc. ("Network
Solutions"),2 but was informed that the requested domain
name had already been registered by West Coast. Brookfield
subsequently registered "brookfieldcomm.com" in May 1996
and "moviebuffonline.com" in September 1996. 3 Sometime
in 1996 or 1997, Brookfield began using its web sites
to sell its "MovieBuff" computer software and to offer an
Internet-based searchable database marketed under the
"MovieBuff" mark. Brookfield sells its "MovieBuff" com-
puter software through its "brookfieldcomm.com " and
"moviebuffonline.com" web sites and offers subscribers
online access to the MovieBuff database itself at its
"inhollywood.com" web site.
On August 19, 1997, Brookfield applied to the Patent and
Trademark Office (PTO) for federal registration of
"MovieBuff" as a mark to designate both goods and services.
Its trademark application describes its product as "computer
software providing data and information in the field of the
motion picture and television industries." Its service mark
application describes its service as "providing multiple-user
access to an on-line network database offering data and infor-
mation in the field of the motion picture and television
industries." Both federal trademark registrations issued on
September 29, 1998. Brookfield had previously obtained a
California state trademark registration for the mark
"MovieBuff" covering "computer software " in 1994.
In October 1998, Brookfield learned that West Coast--
one of the nation's largest video rental store chains with over
500 stores -- intended to launch a web site at
"moviebuff.com" containing, inter alia, a searchable enter-
tainment database similar to "MovieBuff." West Coast had
registered "moviebuff.com" with Network Solutions on Feb-
ruary 6, 1996 and claims that it chose the domain name
because the term "Movie Buff" is part of its service mark,
"The Movie Buff's Movie Store," on which a federal registra-
tion issued in 1991 covering "retail store services featuring
video cassettes and video game cartridges" and "rental of
video cassettes and video game cartridges." West Coast notes
further that, since at least 1988, it has also used various
phrases including the term "Movie Buff" to promote goods
and services available at its video stores in Massachusetts,
including "The Movie Buff's Gift Guide"; "The Movie Buff's
Gift Store"; "Calling All Movie Buffs!";"Good News Movie
Buffs!"; "Movie Buffs, Show Your Stuff!";"the Perfect
Stocking Stuffer for the Movie Buff!"; "A Movie Buff's Top
Ten"; "The Movie Buff Discovery Program";"Movie Buff
Picks"; "Movie Buff Series"; "Movie Buff Selection
Program"; and "Movie Buff Film Series."
On November 10, Brookfield delivered to West Coast a
cease-and-desist letter alleging that West Coast's planned use
of the "moviebuff.com" would violate Brookfield's trademark
rights; as a "courtesy" Brookfield attached a copy of a com-
plaint that it threatened to file if West Coast did not desist.
The next day, West Coast issued a press release announcing
the imminent launch of its web site full of "movie reviews,
Hollywood news and gossip, provocative commentary, and
coverage of the independent film scene and films in
production." The press release declared that the site would
feature "an extensive database, which aids consumers in mak-
ing educated decisions about the rental and purchase of" mov-
ies and would also allow customers to purchase movies,
accessories, and other entertainment-related merchandise on
the web site.
Brookfield fired back immediately with a visit to the
United States District Court for the Central District of Califor-
nia, and this lawsuit was born. In its first amended complaint
filed on November 18, 1998, Brookfield alleged principally
that West Coast's proposed offering of online services at
"moviebuff.com" would constitute trademark infringement
and unfair competition in violation of sections 32 and 43(a)
of the Lanham Act, 15 U.S.C. SS 1114, 1125(a).4 Soon there-
after, Brookfield applied ex parte for a temporary restraining
order ("TRO") enjoining West Coast "[f]rom using . . . in any
manner . . . the mark MOVIEBUFF, or any other term or
terms likely to cause confusion therewith, including
moviebuff.com, as West Coast's domain name, . . . as the
name of West Coast's website service, in buried code or
metatags on their home page or web pages, or in connection
with the retrieval of data or information on other goods or
services."
On November 27, West Coast filed an opposition brief in
which it argued first that Brookfield could not prevent West
Coast from using "moviebuff.com" in commerce because
West Coast was the senior user. West Coast claimed that it
was the first user of "MovieBuff" because it had used its fed-
erally registered trademark, "The Movie Buff's Movie Store,"5
since 1986 in advertisements, promotions, and letterhead in
connection with retail services featuring videocassettes and
video game cartridges. Alternatively, West Coast claimed
seniority on the basis that it had garnered common-law rights
in the domain name by using "moviebuff.com" before Brook-
field began offering its "MovieBuff" Internet-based search-
able database on the Web. In addition to asserting seniority,
West Coast contended that its planned use of
"moviebuff.com" would not cause a likelihood of confusion
with Brookfield's trademark "MovieBuff" and thus would not
violate the Lanham Act.
The district court heard arguments on the TRO motion on
November 30. Later that day, the district court issued an order
construing Brookfield's TRO motion as a motion for a pre-
liminary injunction and denying it. The district court con-
cluded that West Coast was the senior user of the mark
"MovieBuff" for both of the reasons asserted by West Coast.
The court also determined that Brookfield had not established
a likelihood of confusion.
Brookfield responded by filing a notice of appeal from the
denial of preliminary injunction followed by a motion in the
district court for injunction pending appeal, which motion the
district court denied. On January 16, 1999, West Coast
launched its web site at "moviebuff.com." Fearing that West
Coast's fully operational web site would cause it irreparable
injury, Brookfield filed an emergency motion for injunction
pending appeal with this court a few days later. On February
24, we granted Brookfield's motion and entered an order
enjoining West Coast "from using, or facilitating the use
of, in any manner, including advertising and promotion, the
mark MOVIEBUFF, or any other term or terms likely to
cause confusion therewith, including @moviebuff.com or
moviebuff.com, as the name of West Coast's web site service,
in buried code or metatags on its home page or web pages, or
in connection with the retrieval of data or information on
other goods or services." The injunction was to take effect
upon the posting of a $25,000 bond in the district court by
Brookfield. We scheduled oral argument on an expedited
basis for March 10.
West Coast thereupon filed a motion for reconsideration
and modification -- seeking a stay of the injunction pending
appeal and an increase in the bond requirement to $400,000
-- which we denied. After oral argument on March 10, we
ordered that our previously issued injunction remain in effect
pending the issuance of this opinion.
II
To resolve the legal issues before us, we must first under-
stand the basics of the Internet and the World Wide Web.
Because we will be delving into technical corners of the Inter-
net -- dealing with features such as domain names and
metatags -- we explain in some detail what all these things
are and provide a general overview of the relevant technol-
ogy.
The Internet is a global network of interconnected comput-
ers which allows individuals and organizations around the
world to communicate and to share information with one
another. The Web, a collection of information resources con-
tained in documents located on individual computers around
the world, is the most widely used and fastest-growing part of
the Internet except perhaps for electronic mail ("e-mail"). See
United States v. Microsoft, 147 F.3d 935, 939 (D.C. Cir.
1998). With the Web becoming an important mechanism for
commerce, see Reno v. ACLU, 117 S. Ct. 2329, 2334 (1997)
(citing an estimate that over 200 million people will use the
Internet in 1999), companies are racing to stake out their
place in cyberspace. Prevalent on the Web are multimedia
"web pages" -- computer data files written in Hypertext
Markup Language ("HTML") -- which contain information
such as text, pictures, sounds, audio and video recordings, and
links to other web pages. See id. at 2335; Panavision Int'l,
L.P. v. Toeppen, 141 F.3d 1316, 1318 (9th Cir. 1998).
Each web page has a corresponding domain address, which
is an identifier somewhat analogous to a telephone number or
street address. Domain names consist of a second-level
domain -- simply a term or series of terms (e.g., westcoast-
video) -- followed by a top-level domain, many of which
describe the nature of the enterprise. Top-level domains
include ".com" (commercial), ".edu" (educational), ".org"
(non-profit and miscellaneous organizations), ".gov" (govern-
ment), ".net" (networking provider), and ".mil" (military). See
Panavision, 141 F.3d at 1318. Commercial entities generally
use the ".com" top-level domain, which also serves as a catch-
all top-level domain. See id. To obtain a domain name, an
individual or entity files an application with Network Solu-
tions listing the domain name the applicant wants. Because
each web page must have an unique domain name, Network
Solution checks to see whether the requested domain name
has already been assigned to someone else. If so, the applicant
must choose a different domain name. Other than requiring an
applicant to make certain representations, Network Solutions
does not make an independent determination about a regis-
trant's right to use a particular domain name. See id. at 1318-
19.
Using a Web browser, such as Netscape's Navigator or
Microsoft's Internet Explorer, a cyber "surfer " may navigate
the Web -- searching for, communicating with, and retrieving
information from various web sites. See id.; Microsoft, 147
F.3d at 939-40, 950. A specific web site is most easily located
by using its domain name. See Panavision, 141 F.3d at 1327.
Upon entering a domain name into the web browser, the cor-
responding web site will quickly appear on the computer
screen. Sometimes, however, a Web surfer will not know the
domain name of the site he is looking for, whereupon he has
two principal options: trying to guess the domain name or
seeking the assistance of an Internet "search engine."
Oftentimes, an Internet user will begin by hazarding a
guess at the domain name, especially if there is an obvious
domain name to try. Web users often assume, as a rule of
thumb, that the domain name of a particular company will be
the company name followed by ".com." See id.; Playboy
Enters. v. Universal Tel-a-Talk, Inc., No. 96-6961, 1998 WL
767440, at *2 (E.D. Pa. Nov. 3, 1998); Cardservice Int'l, Inc.
v. McGee, 950 F. Supp. 737, 741 (E.D. Va. 1997), aff'd by,
129 F.3d 1258 (4th Cir. 1997). For example, one looking for
Kraft Foods, Inc. might try "kraftfoods.com," and indeed this
web site contains information on Kraft's many food products.
Sometimes, a trademark is better known than the company
itself, in which case a Web surfer may assume that the domain
address will be " `trademark'.com." See Panavision, 141 F.3d
at 1327; Beverly v. Network Solutions, Inc., No. 98-0337,
1998 WL 320829, at *1 (N.D. Cal. June 12, 1998)
("Companies attempt to make the search for their web site as
easy as possible. They do so by using a corporate name, trade-
mark or service mark as their web site address."). One inter-
ested in today's news would do well visiting "usatoday.com,"
which features, as one would expect, breaking stories from
Gannett's USA Today. Guessing domain names, however, is
not a risk-free activity. The Web surfer who assumes that
" `X'.com" will always correspond to the web site of com-
pany X or trademark X will, however, sometimes be misled.
One looking for the latest information on Panavision, Interna-
tional, L.P., would sensibly try "panavision.com. " Until
recently, that Web surfer would have instead found a web site
owned by Dennis Toeppen featuring photographs of the City
of Pana, Illinois. See Panavision, 141 F.3d at 1319. Having
registered several domain names that logically would have
corresponded to the web sites of major companies such as
Panavision, Delta Airlines, Neiman Marcus, Lufthansa, Toep-
pen sought to sell "panavision.com" to Panavision, which
gives one a taste of some of the trademark issues that have
arisen in cyberspace. See id.; see also, e.g., Cardservice, 950
F. Supp. at 740-42.
A Web surfer's second option when he does not know the
domain name is to utilize an Internet search engine, such as
Yahoo, Altavista, or Lycos. See ACLU v. Reno, 31 F. Supp.
2d 473, 484 (E.D. Pa. 1999); Washington Speakers Bureau,
Inc. v. Leading Authorities, Inc., No. 98-634, 1999 WL
51869, at *9 (E.D. Va. Feb. 2, 1999). When a keyword is
entered, the search engine processes it through a self-created
index of web sites to generate a (sometimes long) list relating
to the entered keyword. Each search engine uses its own algo-
rithm to arrange indexed materials in sequence, so the list of
web sites that any particular set of keywords will bring up
may differ depending on the search engine used. See Niton
Corp. v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d
102, 104 (D. Mass. 1998); Intermatic Inc. v. Toeppen, 947 F.
Supp. 1227, 1231-32 (N.D. Ill. 1996); Shea v. Reno, 930 F.
Supp. 916, 929 (S.D.N.Y. 1996), aff'd, 117 S. Ct. 2501
(1997). Search engines look for keywords in places such as
domain names, actual text on the web page, and metatags.
Metatags are HTML code intended to describe the contents of
the web site. There are different types of metatags, but those
of principal concern to us are the "description " and
"keyword" metatags. The description metatags are intended to
describe the web site; the keyword metatags, at least in the-
ory, contain keywords relating to the contents of the web site.
The more often a term appears in the metatags and in the text
of the web page, the more likely it is that the web page will
be "hit" in a search for that keyword and the higher on the list
of "hits" the web page will appear. See Niton, 27 F. Supp. 2d
at 104.
With this basic understanding of the Internet and the Web,
we may now analyze the legal issues before us.
III
We review the district court's denial of preliminary injunc-
tive relief for an abuse of discretion. See, e.g., Foti v. City of
Menlo Park, 146 F.3d 629, 634-35 (9th Cir. 1998). Under this
standard, reversal is appropriate only if the district court based
its decision on clearly erroneous findings of fact or erroneous
legal principles. See FDIC v. Garner, 125 F.3d 1272, 1276
(9th Cir. 1997), cert. denied, 118 S. Ct. 1229 (1998). "A dis-
trict court would necessarily abuse its discretion if it based its
ruling on an erroneous view of the law," Cooter & Gell v.
Hartmarx Corp.,
496 U.S. 384, 405
(1990), so we review the
underlying legal issues injunction de novo, see, e.g.,
Barahona-Gomez v. Reno, No. 97-15952, 1999 WL 61709, at
*4 (9th Cir. Feb. 11, 1999); S.O.C., Inc. v. County of Clark,
152 F.3d 1136, 1142 (9th Cir. 1998), amended by , 160 F.3d
541 (9th Cir. 1998); Foti, 146 F.3d at 635; Garner, 125 F.3d
at 1276; San Antonio Community Hosp. v. Southern Cal. Dist.
Council of Carpenters, 125 F.3d 1230, 1234 (9th Cir. 1997).
"A plaintiff is entitled to a preliminary injunction in a
trademark case when he demonstrates either (1) a combina-
tion of probable success on the merits and the possibility of
irreparable injury or (2) the existence of serious questions
going to the merits and that the balance of hardships tips
sharply in his favor." Sardi's Restaurant Corp. v. Sardie, 755
F.2d 719, 723 (9th Cir. 1985). To establish a trademark
infringement claim under section 32 of the Lanham Act or an
unfair competition claim under section 43(a) of the Lanham
Act, Brookfield must establish that West Coast is using a
mark confusingly similar to a valid, protectable trademark of
Brookfield's.6 See AMF Inc. v. Sleekcraft Boats, 599 F.2d
341, 348 (9th Cir. 1979). The district court denied Brook-
field's motion for preliminary injunctive relief because it con-
cluded that Brookfield had failed to establish that it was the
senior user of the "MovieBuff" mark or that West Coast's use
of the "moviebuff.com" domain name created a likelihood of
confusion.
We review each of the district court's conclusions in turn.7
IV
[1] To resolve whether West Coast's use of
"moviebuff.com" constitutes trademark infringement or unfair
competition,8 we must first determine whether Brookfield has
a valid, protectable trademark interest in the "MovieBuff"
mark. Brookfield's registration of the mark on the Principal
Register in the Patent and Trademark Office constitutes prima
facie evidence of the validity of the registered mark and of
Brookfield's exclusive right to use the mark on the goods and
services specified in the registration. See 15 U.S.C.
SS 1057(b); 1115(a). Nevertheless, West Coast can rebut this
presumption by showing that it used the mark in commerce
first, since a fundamental tenet of trademark law is that own-
ership of an inherently distinctive mark such as "MovieBuff"9
is governed by priority of use. See Sengoku Words Ltd. v.
RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996) ("It is
axiomatic in trademark law that the standard test of ownership
is priority of use. To acquire ownership of a trademark it is
not enough to have invented the mark first or even to have
registered it first; the party claiming ownership must have
been the first to actually use the mark in the sale of goods or
services."), cert. denied,
521 U.S. 1103
(1997). The first to
use a mark is deemed the "senior" user and has the right to
enjoin "junior" users from using confusingly similar marks in
the same industry and market or within the senior user's natu-
ral zone of expansion. See Union Nat'l Bank of Tex., Laredo,
Tex. v. Union Nat'l Bank of Tex., Austin, Tex., 909 F.2d 839,
842-43 (5th Cir. 1990); Tally-Ho, Inc. v. Coast Community
College Dist., 889 F.2d 1018, 1023 (11th Cir. 1990); New
West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1200-01 (9th
Cir. 1979).
It is uncontested that Brookfield began selling
"MovieBuff" software in 1993 and that West Coast did not
use "moviebuff.com" until 1996. According to West Coast,
however, the fact that it has used "The Movie Buff's Movie
Store" as a trademark since 1986 makes it the first user for
purposes of trademark priority. In the alternative, West Coast
claims priority on the basis that it used "moviebuff.com" in
commerce before Brookfield began offering its "MovieBuff"
searchable database on the Internet. We analyze these conten-
tions in turn.
A
[2] Conceding that the first time that it actually used
"moviebuff.com" was in 1996, West Coast argues that its ear-
lier use of "The Movie Buff's Movie Store" constitutes use of
"moviebuff.com."10 West Coast has not provided any Ninth
Circuit precedent approving of this constructive use theory,
but neither has Brookfield pointed us to any case law rejecting
it. We are not without guidance, however, as our sister cir-
cuits have explicitly recognized the ability of a trademark
owner to claim priority in a mark based on the first use date
of a similar, but technically distinct, mark -- but only in the
exceptionally narrow instance where "the previously used
mark is `the legal equivalent of the mark in question or indis-
tinguishable therefrom' such that consumers `consider both as
the same mark.' " Data Concepts, Inc. v. Digital Consulting,
Inc., 150 F.3d 620, 623 (6th Cir. 1998) (quoting Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed.
Cir. 1991)); accord Van Dyne-Crotty, 926 F.2d at 1159.
This constructive use theory is known as "tacking," as the
trademark holder essentially seeks to "tack" his first use date
in the earlier mark onto the subsequent mark. See generally
2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition S 17:25-27 (4th ed. 1998)[hereafter
"McCarthy"].
[3] We agree that tacking should be allowed if two marks
are so similar that consumers generally would regard them as
essentially the same. Where such is the case, the new mark
serves the same identificatory function as the old mark. Giv-
ing the trademark owner the same rights in the new mark as
he has in the old helps to protect source-identifying trade-
marks from appropriation by competitors and thus furthers the
trademark law's objective of reducing the costs that customers
incur in shopping and making purchasing decisions. See
Qualitex Co. v Jacobson Prods. Co.,
514 U.S. 159
, 163-64
(1995); Falcon Rice Mill, Inc. v. Community Rice Mill, Inc.,
725 F.2d 336, 348 (5th Cir. 1984).
Without tacking, a trademark owner's priority in his mark
would be reduced each time he made the slightest alteration
to the mark, which would discourage him from altering the
mark in response to changing consumer preferences, evolving
aesthetic developments, or new advertising and marketing
styles. In Hess's of Allentown, Inc. v. National Bellas Hess,
Inc., for example, a department store ("Allentown") with
trademark rights in the terms "Hess Brothers" and "Hess" dat-
ing from 1899 began promoting itself in 1952 instead as
"Hess's," largely because customers and employees com-
monly referred to the store as "Hess's" rather than "Hess
Brothers" or "Hess." See 169 U.S.P.Q. 673, 674-75 (T.T.A.B.
1971). Another department store ("Bellas") first used "Hess"
in its mark around 1932. In light of the fact that Allentown
first used "Hess's" after Bellas commenced using "Hess,"
Bellas would have priority on the basis of the actual first use
dates of those two marks. Even though Allentown had
acquired over a half-century's worth of goodwill in the essen-
tially identical marks "Hess" and "Hess Brothers," Allentown
no longer had trademark rights in those terms because it had
ceased using those marks when it adopted "Hess's. " Never-
theless, the Trademark Board allowed the owner of "Hess's"
to tack his first use date of "Hess Brothers" and "Hess" onto
"Hess's" since those terms were viewed as identical by the
public. See id. at 677.
[4] The standard for "tacking," however, is exceedingly
strict: "The marks must create the same, continuing commer-
cial impression, and the later mark should not materially dif-
fer from or alter the character of the mark attempted to be
tacked." Van Dyne-Crotty, 926 F.2d at 1159 (emphasis added)
(citations and quotation marks omitted). In other words, "the
previously used mark must be the legal equivalent of the mark
in question or indistinguishable therefrom, and the consumer
should consider both as the same mark." Id. (emphasis
added); see also Data Concepts, 150 F.3d at 623 (adopting the
Van Dyne-Crotty test). This standard is considerably higher
than the standard for "likelihood of confusion, " which we dis-
cuss infra.
The Federal Circuit, for example, concluded that priority in
"CLOTHES THAT WORK. FOR THE WORK YOU DO"
could not be tacked onto "CLOTHES THAT WORK." See
Van Dyne-Crotty, 926 F.2d at 1160 (holding that the shorter
phrase was not the legal equivalent of the longer mark). The
Sixth Circuit held that "DCI" and "dci" were too dissimilar to
support tacking. See Data Concepts, 150 F.3d at 623-24. And
the Trademark Board has rejected tacking in a case involving
"American Mobilphone" with a star and stripe design and
"American Mobilphone Paging" with the identical design, see
American Paging, Inc. v. American Mobilphone, Inc. , 13
U.S.P.Q.2d 2036 (T.T.A.B. 1989), aff'd, 17 U.S.P.Q.2d 1726
(Fed. Cir. 1990), as well as in a case involving "PRO-CUTS"
and "PRO-KUT," see Pro-Cuts v. Schilz-Price Enters., 27
U.S.P.Q.2d 1224, 1227 (T.T.A.B. 1993).
[5] In contrast to cases such as Van Dyne-Crotty and
American Paging, which were close questions, the present
case is clear cut: "The Movie Buff's Movie Store" and
"moviebuff.com" are very different, in that the latter contains
three fewer words, drops the possessive, omits a space, and
adds ".com" to the end. Because West Coast failed to make
the slightest showing that consumers view these terms as
identical, we must conclude that West Coast cannot tack its
priority in "The Movie Buff's Movie Store" onto
"moviebuff.com." As the Federal Circuit explained, "it would
be clearly contrary to well-established principles of trademark
law to sanction the tacking of a mark with a narrow commer-
cial impression onto one with a broader commercial
impression." Van Dyne-Crotty, 926 F.2d at 1160 (noting that
prior use of "SHAPE UP" could not be tacked onto "EGO,"
that prior use of "ALTER EGO" could not be tacked onto
"EGO," and that prior use of "Marco Polo could not be tacked
onto "Polo").
[6] Since tacking does not apply, we must therefore con-
clude that Brookfield is the senior user because it marketed
"MovieBuff" products well before West Coast began using
"moviebuff.com" in commerce: West Coast's use of "The
Movie Buff's Movie Store" is simply irrelevant. Our priority
determination is consistent with the decisions of our sister cir-
cuits in Lone Star Steakhouse & Saloon, Inc. v. Longhorn
Steaks, Inc., 106 F.3d 355, 362-63 (11th Cir. 1997), modified
by, 122 F.3d 1379 (11th Cir. 1997) (per curiam), and J. Wiss
& Sons Co. v. W. E. Bassett Co., 462 F.2d 567, 568-69
(C.C.P.A. 1972). Like the present case, J. Wiss & Sons is a
three-competing-trademark situation in which one company
owned a single mark with a first use date in between the first
use dates of the two marks owned by the other company. In
that case, the intervening mark ("Trim") was found to be con-
fusingly similar with the later mark ("Trim-Line"), but not
with the earlier mark ("Quick-Trim"); similarly here, the
intervening mark ("MovieBuff") is purported to be confus-
ingly similar with the later mark "moviebuff.com," see infra
Part V, but is not confusingly similar with the earlier used
mark "The Movie Buff's Movie Store," see infra pp. 3739.
The Court of Customs and Patent Appeals (now the Court of
Appeals for the Federal Circuit) concluded that priority
depended upon which of the two confusingly similar marks
was used first -- disregarding the first use date of the earlier
used mark since it was not confusingly similar with the oth-
ers. It thus awarded priority to the holder of the intervening
mark, as we do similarly here.
Longhorn Steaks, involving the same basic three-
competing-trademark situation, is particularly instructive. The
defendant owned the mark "Lone Star Steaks" with a first use
date between the plaintiff's earlier used mark "Lone Star
Cafe" and its later used mark "Lone Star Steakhouse &
Saloon." In its initial opinion, the Eleventh Circuit awarded
priority to the holder of "Lone Star Steaks" on the basis that
"Lone Star Steaks" was used before "Lone Star Steakhouse &
Saloon." See Longhorn Steaks, 106 F.3d at 362-63. The Elev-
enth Circuit, however, later modified its opinion, stating that
the conclusion reached in its initial opinion would be correct
only if defendant's "Lone Star Steaks" was not confusingly
similar to plaintiff's earlier used mark, "Lone Star Cafe." See
Longhorn Steaks, 122 F.3d 1379 (11th Cir. 1997). 11
[7] West Coast makes a half-hearted claim that
"MovieBuff" is confusingly similar to its earlier used mark
"The Movie Buff's Movie Store." If this were so, West Coast
would undoubtedly be the senior user. See id. "Of course, if
the symbol or device is already in general use, employed in
such a manner that its adoption as an index of source or origin
would only produce confusion and mislead the public, it is not
susceptible of adoption as a trademark." Hanover Star Milling
Co. v. Metcalf,
240 U.S. 403, 415
(1916). West Coast, how-
ever, essentially conceded that "MovieBuff" and "The Movie
Buff's Movie Store" are not confusingly similar when it
stated in its pre-argument papers that it does not allege actual
confusion between "MovieBuff" and West Coast's federally
registered mark. We cannot think of more persuasive evi-
dence that there is no likelihood of confusion between these
two marks than the fact that they have been simultaneously
used for five years without causing any consumers to be con-
fused as to who makes what. See Libman Co. v. Vining Indus.,
Inc., 69 F.3d 1360, 1361 (7th Cir. 1995) ("Vining sold several
hundred thousand of the allegedly infringing brooms, yet
there is no evidence that any consumer ever made such an
error; if confusion were likely, one would expect at least one
person out of this vast multitude to be confused. . . ."). The
failure to prove instances of actual confusion is not disposi-
tive against a trademark plaintiff, because actual confusion is
hard to prove; difficulties in gathering evidence of actual con-
fusion make its absence generally unnoteworthy. See Eclipse
Assocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1118-19 (9th
Cir. 1990); Sleekcraft, 599 F.2d at 353. West Coast, however,
did not state that it could not prove actual confusion; rather,
it conceded that there has been none. This is a crucial differ-
ence. Although there may be the rare case in which a likeli-
hood of future confusion is possible even where it is conceded
that two marks have been used simultaneously for years with
no resulting confusion, West Coast has not shown this to be
such a case.
Our conclusion comports with the position of the PTO,
which effectively announced its finding of no likelihood of
confusion between "The Movie Buff's Movie Store " and
"MovieBuff" when it placed the latter on the principal register
despite West Coast's prior registration of "The Movie Buff's
Movie Store." Priority is accordingly to be determined on the
basis of whether Brookfield used "MovieBuff" or West Coast
used "moviebuff.com" first.12
B
West Coast argues that we are mixing apples and oranges
when we compare its first use date of "moviebuff.com" with
the first sale date of "MovieBuff" software. West Coast
reminds us that Brookfield uses the "MovieBuff " mark with
both computer software and the provision of an Internet data-
base; according to West Coast, its use of "moviebuff.com"
can cause confusion only with respect to the latter. West
Coast asserts that we should accordingly determine seniority
by comparing West Coast's first use date of "moviebuff.com"
not with when Brookfield first sold software, but with when
it first offered its database online.
As an initial matter, we note that West Coast's argument is
premised on the assumption that its use of "moviebuff.com"
does not cause confusion between its web site and Brook-
field's "MovieBuff" software products. Even though Brook-
field's computer software and West Coast's offerings on its
web site are not identical products, likelihood of confusion
can still result where, for example, there is a likelihood of
expansion in product lines. See Official Airline Guides, Inc.
v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993). As the leading
trademark commentator explains: "When a senior user of a
mark on product line A expands later into product line B and
finds an intervening user, priority in product line B is deter-
mined by whether the expansion is `natural' in that customers
would have been confused as to source or affiliation at the
time of the intervening user's appearance." 2 McCarthy
S 16:5. We need not, however, decide whether the Web was
within Brookfield's natural zone of expansion, because we
conclude that Brookfield's use of "MovieBuff" as a service
mark preceded West Coast's use.
[8] Brookfield first used "MovieBuff" on its Internet-based
products and services in August 1997,13 so West Coast can
prevail only if it establishes first use earlier than that. In the
literal sense of the word, West Coast "used" the term
"moviebuff.com" when it registered that domain address in
February 1996. Registration with Network Solutions, how-
ever, does not in itself constitute "use" for purposes of acquir-
ing trademark priority. See Panavision, 141 F.3d at 1324-25.
The Lanham Act grants trademark protection only to marks
that are used to identify and to distinguish goods or services
in commerce -- which typically occurs when a mark is used
in conjunction with the actual sale of goods or services. The
purpose of a trademark is to help consumers identify the
source, but a mark cannot serve a source-identifying function
if the public has never seen the mark and thus is not meritori-
ous of trademark protection until it is used in public in a man-
ner that creates an association among consumers between the
mark and the mark's owner.
Such use requirement is firmly established in the case law,
see, e.g., Armstrong Paint & Varnish Works v. Nu-Enamel
Corp.,
305 U.S. 315, 334
(1938); New West , 595 F.2d at
1198-99, and, moreover, is embodied in the Lanham Act
itself. See 15 U.S.C. S 1127 ("The term `trademark' includes
any word, name, symbol, or device, or any combination
thereof . . . used by a person . . . to identify and distinguish
his or her goods.") (emphasis added); id. ("The term `service
mark' means any word, name, symbol, or device, or any com-
bination thereof . . . used by a person . . . to identify and
distinguish the services of one person) (emphasis added). In
fact, Congress amended the Lanham Act in 1988 to strengthen
this "use in commerce" requirement, making clear that trade-
mark rights can be conveyed only through "the bona fide use
of a mark in the ordinary course of trade, and not[use] made
merely to reserve a mark." 15 U.S.C. S 1127. Congress pro-
vided more specifically:
For purposes of this chapter, a mark shall be deemed
to be in use in commerce--
(1) on goods when--
(A) it is placed in any manner on the
goods or their containers or the displays
associated therewith or on the tags or labels
affixed thereto, or if the nature of the goods
makes such placement impracticable, then
on documents associated with the goods or
their sale, and
(B) the goods are sold or transported in
commerce, and
(2) on services when it is used or displayed in the
sale or advertising of services and the services are
rendered in commerce, or the services are rendered
in more than one State or in the United States and a
foreign country and the person rendering the services
is engaged in commerce in connection with the ser-
vices.
Id.
The district court, while recognizing that mere registration
of a domain name was not sufficient to constitute commercial
use for purposes of the Lanham Act, nevertheless held that
registration of a domain name with the intent to use it com-
mercially was sufficient to convey trademark rights. This
analysis, however, contradicts both the express statutory lan-
guage and the case law which firmly establishes that trade-
mark rights are not conveyed through mere intent to use a
mark commercially, see, e.g., Allard Enters. v. Advanced Pro-
gramming Resources, Inc., 146 F.3d 350, 356 (6th Cir. 1998);
Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 504 (7th Cir.
1992) ("[A]n intent to use a mark creates no rights a competi-
tor is bound to respect."), nor through mere preparation to use
a term as a trademark, see, e.g., Hydro-Dynamics, Inc. v.
George Putnam & Co., 811 F.2d 1470, 1473-74 (Fed. Cir.
1987); Computer Food Stores, Inc. v. Corner Store
Franchises, 176 U.S.P.Q. 535, 538 (T.T.A.B. 1973).
[9] West Coast no longer disputes that its use -- for pur-
poses of the Lanham Act -- of "moviebuff.com " did not com-
mence until after February 1996. It instead relies on the
alternate argument that its rights vested when it began using
"moviebuff.com" in e-mail correspondence with lawyers and
customers sometime in mid-1996. West Coast's argument is
not without support in our case law -- we have indeed held
that trademark rights can vest even before any goods or ser-
vices are actually sold if "the totality of [one's] prior actions,
taken together, [can] establish a right to use the trademark."
New West, 595 F.2d at 1200. Under New West , however, West
Coast must establish that its e-mail correspondence consti-
tuted " `[u]se in a way sufficiently public to identify or distin-
guish the marked goods in an appropriate segment of the
public mind as those of the adopter of the mark.' " Id. (quot-
ing New England Duplicating Co. v. Mendes, 190 F.2d 415,
418 (1st Cir. 1951)); see also Marvel Comics Ltd. v. Defiant,
837 F. Supp. 546, 550 (S.D.N.Y. 1993) ("[T]he talismanic test
is whether or not the use was sufficiently public to identify or
distinguish the marked goods in an appropriate segment of the
public mind as those of the adopter of the mark.") (quotation
marks and citation omitted).
[10] West Coast fails to meet this standard. Its purported
"use" is akin to putting one's mark "on a business office door
sign, letterheads, architectural drawings, etc." or on a proto-
type displayed to a potential buyer, both of which have been
held to be insufficient to establish trademark rights. See Steer
Inn Sys., Inc. v. Laughner's Drive-In, Inc., 405 F.2d 1401,
1402 (C.C.P.A. 1969); Walt Disney Prods. v. Kusan, Inc., 204
U.S.P.Q. 284, 288 (C.D. Cal. 1979). Although widespread
publicity of a company's mark, such as Marvel Comics's
announcement to 13 million comic book readers that
"Plasma" would be the title of a new comic book, see Marvel
Comics, 837 F. Supp. at 550, or the mailing of 430,000 solici-
tation letters with one's mark to potential subscribers of a
magazine, see New West, 595 F.2d at 1200, may be sufficient
to create an association among the public between the mark
and West Coast, mere use in limited e-mail correspondence
with lawyers and a few customers is not.
[11] West Coast first announced its web site at
"moviebuff.com" in a public and widespread manner in a
press release of November 11, 1998, and thus it is not until
at least that date that it first used the "moviebuff.com" mark
for purposes of the Lanham Act.14 Accordingly, West Coast's
argument that it has seniority because it used
"moviebuff.com" before Brookfield used "MovieBuff" as a
service mark fails on its own terms. West Coast's first use
date was neither February 1996 when it registered its domain
name with Network Solutions as the district court had con-
cluded, nor April 1996 when it first used "moviebuff.com" in
e-mail communications, but rather November 1998 when it
first made a widespread and public announcement about the
imminent launch of its web site. Thus, West Coast's first use
of "moviebuff.com" was preceded by Brookfield's first use of
"MovieBuff" in conjunction with its online database, making
Brookfield the senior user.
For the foregoing reasons, we conclude that the district
court erred in concluding that Brookfield failed to establish a
likelihood of success on its claim of being the senior user.
V
[12] Establishing seniority, however, is only half the battle.
Brookfield must also show that the public is likely to be
somehow confused about the source or sponsorship of West
Coast's "moviebuff.com" web site -- and somehow to asso-
ciate that site with Brookfield. See 15 U.S.C. S 1114(1);
1125(a).15 The Supreme Court has described "the basic objec-
tives of trademark law" as follows: "trademark law, by pre-
venting others from copying a source-identifying mark,
`reduce[s] the customer's costs of shopping and making pur-
chasing decisions,' for it quickly and easily assures a potential
customer that this item -- the item with this mark -- is made
by the same producer as other similarly marked items that he
or she liked (or disliked) in the past. At the same time, the law
helps assure a producer that it (and not an imitating competi-
tor) will reap the financial, reputation-related rewards associ-
ated with a desirable product." Qualitex,
514 U.S. at 163
-64
(internal citations omitted). Where two companies each use a
different mark and the simultaneous use of those marks does
not cause the consuming public to be confused as to who
makes what, granting one company exclusive rights over both
marks does nothing to further the objectives of the trademark
laws; in fact, prohibiting the use of a mark that the public has
come to associate with a company would actually contravene
the intended purposes of the trademark law by making it more
difficult to identify and to distinguish between different
brands of goods.
[13] "The core element of trademark infringement is the
likelihood of confusion, i.e., whether the similarity of the
marks is likely to confuse customers about the source of
the products." Official Airline Guides, 6 F.3d at 1391 (quoting
E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280,
1290 (9th Cir. 1992)) (quotation marks omitted); accord
International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d
819, 825 (9th Cir. 1993); Metro Publ'g, Ltd. v. San Jose Mer-
cury News, 987 F.2d 637, 640 (9th Cir. 1993). We look to the
following factors for guidance in determining the likelihood
of confusion: similarity of the conflicting designations; relat-
edness or proximity of the two companies' products or ser-
vices; strength of Brookfield's mark; marketing channels
used; degree of care likely to be exercised by purchasers in
selecting goods; West Coast's intent in selecting its mark; evi-
dence of actual confusion; and likelihood of expansion in
product lines. See Dr. Seuss Enters. v. Penguin Books USA,
Inc., 109 F.3d 1394, 1404 (9th Cir. 1997), petition for cert.
dismissed by, 118 S. Ct. 27 (1997); Sleekcraft, 599 F.2d at
348-49; see also Restatement (Third) of Unfair Competition
SS 20-23 (1995). These eight factors are often referred to as
the Sleekcraft factors.
A word of caution: this eight-factor test for likelihood of
confusion is pliant. Some factors are much more important
than others, and the relative importance of each individual
factor will be case-specific. Although some factors -- such as
the similarity of the marks and whether the two companies are
direct competitors -- will always be important, it is often pos-
sible to reach a conclusion with respect to likelihood of confu-
sion after considering only a subset of the factors. See
Dreamwerks Prod. Group v. SKG Studio, 142 F.3d 1127,
1130-32 (9th Cir. 1998). Moreover, the foregoing list does not
purport to be exhaustive, and non-listed variables may often
be quite important. We must be acutely aware of excessive
rigidity when applying the law in the Internet context; emerg-
ing technologies require a flexible approach.
A
We begin by comparing the allegedly infringing mark to
the federally registered mark.16 The similarity of the marks
will always be an important factor. Where the two marks are
entirely dissimilar, there is no likelihood of confusion.
"Pepsi" does not infringe Coca-Cola's "Coke." Nothing fur-
ther need be said. Even where there is precise identity of a
complainant's and an alleged infringer's mark, there may be
no consumer confusion -- and thus no trademark infringe-
ment -- if the alleged infringer is in a different geographic
area or in a wholly different industry. See Weiner King, Inc.
v. Wiener King Corp., 615 F.2d 512, 515-16, 521-22
(C.C.P.A. 1980) (permitting concurrent use of "Weiner King"
as a mark for restaurants featuring hot dogs in New Jersey and
"Wiener King" as a mark for restaurants in North Carolina);
Pinocchio's Pizza Inc. v. Sandra Inc., 11 U.S.P.Q.2d 1227,
1228 (T.T.A.B. 1989) (permitting concurrent use of
"PINOCCHIO'S" as a service mark for restaurants in Mary-
land and "PINOCCHIOS" as a service mark for restaurants
elsewhere in the country). Nevertheless, the more similar the
marks in terms of appearance, sound, and meaning, the
greater the likelihood of confusion. See, e.g. , Dreamwerks,
142 F.3d at 1131; Goss, 6 F.3d at 1392 ("The court assesses
the similarity of the marks in terms of their sight, sound, and
meaning."). In analyzing this factor, "[t]he marks must be
considered in their entirety and as they appear in the
marketplace," Goss, 6 F.3d at 1392 (citing Nutri/System, Inc.
v. Con-Stan Indus., Inc., 809 F.2d 601, 605-06 (9th Cir.
1987)), with similarities weighed more heavily than differ-
ences, see id. (citing Rodeo Collection Ltd. v. West Seventh,
812 F.2d 1215, 1219 (9th Cir. 1987)).
[14] In the present case, the district court found West
Coast's domain name "moviebuff.com" to be quite different
than Brookfield's domain name "moviebuffonline.com."
Comparison of domain names, however, is irrelevant as a
matter of law, since the Lanham Act requires that the alleg-
edly infringing mark be compared with the claimant's
trademark, see 15 U.S.C. S 1114(1), 1125(a), which here is
"MovieBuff," not "moviebuffonline.com." Properly framed, it
is readily apparent that West Coast's allegedly infringing
mark is essentially identical to Brookfield's mark
"MovieBuff." In terms of appearance, there are differences in
capitalization and the addition of ".com" in West Coast's
complete domain name, but these differences are inconse-
quential in light of the fact that Web addresses are not caps-
sensitive and that the ".com" top-level domain signifies the
site's commercial nature.
[15] Looks aren't everything, so we consider the similarity
of sound and meaning. The two marks are pronounced the
same way, except that one would say "dot com" at the end of
West Coast's mark. Because many companies use domain
names comprised of ".com" as the top-level domain with their
corporate name or trademark as the second-level domain, see
Beverly, 1998 WL 320829, at *1, the addition of".com" is of
diminished importance in distinguishing the mark. The irrele-
vance of the ".com" becomes further apparent once we con-
sider similarity in meaning. The domain name is more than a
mere address: like trademarks, second-level domain names
communicate information as to source. As we explained in
Part II, many Web users are likely to associate
"moviebuff.com" with the trademark "MovieBuff," thinking
that it is operated by the company that makes "MovieBuff"
products and services.17 Courts, in fact, have routinely con-
cluded that marks were essentially identical in similar con-
texts. See, e.g., Public Serv. Co. v. Nexus Energy Software,
Inc., No. 98-12589, 1999 WL 98973, at *3 (D. Mass. Feb. 24,
1999) (finding "energyplace.com" and "Energy Place" to be
virtually identical); Minnesota Mining & Mfg. Co. v. Taylor,
21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-
it.com" and "Post-It" to be the same); Interstellar Starship
Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or.
1997) ("In the context of Internet use, [`epix.com'] is the
same mark as [`EPIX']."); Planned Parenthood Federa-
tion of America, Inc. v. Bucci, No. 97-0629, 1997 WL
133313, at *8 (S.D.N.Y. Mar. 24, 1997) (concluding that
"plannedparenthood.com" and "Planned Parenthood" were
essentially identical), aff'd by, 152 F.3d 920 (2d Cir. 1998),
cert. denied, 119 S. Ct. 90 (1998). As "MovieBuff" and
"moviebuff.com" are, for all intents and purposes, identical in
terms of sight, sound, and meaning, we conclude that the sim-
ilarity factor weighs heavily in favor of Brookfield.18
[16] The similarity of marks alone, as we have explained,
does not necessarily lead to consumer confusion. Accord-
ingly, we must proceed to consider the relatedness of the
products and services offered. Related goods are generally
more likely than unrelated goods to confuse the public as to
the producers of the goods. See Official Airline Guides, 6 F.3d
at 1392 (citing Sleekcraft, 599 F.2d at 350). In light of the vir-
tual identity of marks, if they were used with identical prod-
ucts or services likelihood of confusion would follow as a
matter of course. See Lindy Pen Co. v. Bic Pen Corp., 796
F.2d 254, 256-57 (9th Cir. 1986) (reversing a district court's
finding of no likelihood of confusion even though the six
other likelihood of confusion factors all weighed against a
finding of likelihood of confusion); Interpace Corp. v. Lapp,
Inc., 721 F.2d 460, 462 (3d Cir. 1983). If, on the other hand,
Brookfield and West Coast did not compete to any extent
whatsoever, the likelihood of confusion would probably be
remote. A Web surfer who accessed "moviebuff.com " and
reached a web site advertising the services of Schlumberger
Ltd. (a large oil drilling company) would be unlikely to think
that Brookfield had entered the oil drilling business or was
sponsoring the oil driller. See, e.g., Toys "R" Us, Inc. v.
Feinberg, 26 F. Supp. 2d 639, 643 (S.D.N.Y. 1998) (no likeli-
hood of confusion between "gunsrus.com" firearms web site
and "Toys `R' Us" trademark); Interstellar Starship, 983 F.
Supp. at 1336 (finding no likelihood of confusion between use
of "epix.com" to advertise the Rocky Horror Picture Show
and "Epix" trademark registered for use with computer circuit
boards). At the least, Brookfield would bear the heavy burden
of demonstrating (through other relevant factors) that con-
sumers were likely to be confused as to source or affiliation
in such a circumstance.
[17] The district court classified West Coast and Brookfield
as non-competitors largely on the basis that Brookfield is pri-
marily an information provider while West Coast primarily
rents and sells videotapes. It noted that West Coast's web site
is used more by the somewhat curious video consumer who
wants general movie information, while entertainment indus-
try professionals, aspiring entertainment executives and pro-
fessionals, and highly focused moviegoers are more likely to
need or to want the more detailed information provided by
"MovieBuff." This analysis, however, overemphasizes differ-
ences in principal lines of business, as we have previously
instructed that "the relatedness of each company's prime
directive isn't relevant." Dreamwerks, 142 F.3d at 1131.
Instead, the focus is on whether the consuming public is likely
somehow to associate West Coast's products with Brookfield.
See id. Here, both companies offer products and services
relating to the entertainment industry generally, and their
principal lines of business both relate to movies specifically
and are not as different as guns and toys, see Toys "R" Us,
26 F. Supp. 2d at 643, or computer circuit boards and the
Rocky Horror Picture Show, see Interstellar Starship, 983 F.
Supp. at 1336. Thus, Brookfield and West Coast are not prop-
erly characterized as non-competitors. See American Int'l
Group, Inc. v. American Int'l Bank, 926 F.2d 829, 832 (9th
Cir. 1991) (concluding that although the parties were not
direct competitors, they both provided financial services and
that customer confusion could result in light of the similarities
between the companies' services).
[18] Not only are they not non-competitors, the competitive
proximity of their products is actually quite high. Just as
Brookfield's "MovieBuff" is a searchable database with
detailed information on films, West Coast's web site features
a similar searchable database, which Brookfield points out is
licensed from a direct competitor of Brookfield. Undeniably
then, the products are used for similar purposes."[T]he rights
of the owner of a registered trademark . . . extend to any
goods related in the minds of consumers," E. Remy Martin &
Co. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525, 1530
(11th Cir. 1985), and Brookfield's and West Coast's products
are certainly so related to some extent. The relatedness is fur-
ther evidenced by the fact that the two companies compete for
the patronage of an overlapping audience. The use of similar
marks to offer similar products accordingly weighs heavily in
favor of likelihood of confusion. See Sleekcraft , 599 F.2d at
348 (concluding that high-speed waterskiing racing boats are
sufficiently related to family-oriented recreational boats that
the public is likely to be confused as to the source of the
boats); Fleischmann Distilling Corp. v. Maier Brewing Co.,
314 F.2d 149, 153-55 (9th Cir. 1963) (concluding that beer
and whiskey are sufficiently similar to create a likelihood of
confusion regarding the source of origin when sold under the
same trade name); see also Champions Golf Club, Inc. v.
Champions Golf Club, Inc., 78 F.3d 1111, 1118 (6th Cir.
1996).
[19] In addition to the relatedness of products, West Coast
and Brookfield both utilize the Web as a marketing and adver-
tising facility, a factor that courts have consistently recog-
nized as exacerbating the likelihood of confusion. See, e.g.,
Public Serv. Co., 1999 WL 98973, at *3; Washington Speak-
ers Bureau, Inc. v. Leading Auths., Inc., No. 98-634, 1999
WL 51869, at *9 (E.D. Va. Feb. 2, 1999); Jews for Jesus v.
Brodsky, 993 F. Supp. 282, 304-05 (D.N.J. 1998), aff'd, 159
F.3d 1351 (3d Cir. 1998); Interstellar Starship Servs., 983 F.
Supp. at 1336; Planned Parenthood Fed'n of America, 1997
WL 133313, at *8. Both companies, apparently recognizing
the rapidly growing importance of Web commerce, are
maneuvering to attract customers via the Web. Not only do
they compete for the patronage of an overlapping audience on
the Web, both "MovieBuff" and "moviebuff.com" are utilized
in conjunction with Web-based products.
[20] Given the virtual identity of "moviebuff.com" and
"MovieBuff," the relatedness of the products and services
accompanied by those marks, and the companies' simulta-
neous use of the Web as a marketing and advertising tool,
many forms of consumer confusion are likely to result. People
surfing the Web for information on "MovieBuff " may confuse
"MovieBuff" with the searchable entertainment database at
"moviebuff.com" and simply assume that they have reached
Brookfield's web site. See, e.g., Cardservice Int'l, 950 F.
Supp. at 741. In the Internet context, in particular, entering a
web site takes little effort -- usually one click from a linked
site or a search engine's list; thus, Web surfers are more likely
to be confused as to the ownership of a web site than tradi-
tional patrons of a brick-and-mortar store would be of a
store's ownership. Alternatively, they may incorrectly believe
that West Coast licensed "MovieBuff" from Brookfield, see,
e.g., Indianapolis Colts, Inc. v. Metropolitan Baltimore Foot-
ball Club Ltd., 34 F.3d 410, 415-16 (7th Cir. 1994), or that
Brookfield otherwise sponsored West Coast's database, see E.
Remy Martin, 756 F.2d at 1530; Fuji Photo Film Co. v. Shino-
hara Shoji Kabushiki Kaisha, 754 F.2d 591, 596 (5th Cir.
1985). Other consumers may simply believe that West Coast
bought out Brookfield or that they are related companies.
Yet other forms of confusion are likely to ensue. Consum-
ers may wrongly assume that the "MovieBuff" database they
were searching for is no longer offered, having been replaced
by West Coast's entertainment database, and thus simply use
the services at West Coast's web site. See, e.g. , Cardservice
Int'l, 950 F. Supp. at 741. And even where people realize,
immediately upon accessing "moviebuff.com," that they have
reached a site operated by West Coast and wholly unrelated
to Brookfield, West Coast will still have gained a customer by
appropriating the goodwill that Brookfield has developed in
its "MovieBuff" mark. A consumer who was originally look-
ing for Brookfield's products or services may be perfectly
content with West Coast's database (especially as it is offered
free of charge); but he reached West Coast's site because of
its use of Brookfield's mark as its second-level domain name,
which is a misappropriation of Brookfield's goodwill by West
Coast. See infra Part V.B.
The district court apparently assumed that likelihood of
confusion exists only when consumers are confused as to the
source of a product they actually purchase. It is, however,
well established that the Lanham Act protects against the
many other forms of confusion that we have outlined. See
Pebble Beach, 155 F.3d at 544; Indianapolis Colts, 34 F.3d
at 415-16; Fuji Photo Film, 754 F.2d at 596; HMH Publ'g Co.
v. Brincat, 504 F.2d 713, 716-17 & n.7 (9th Cir. 1974);
Fleischmann Distilling, 314 F.2d at 155.
The factors that we have considered so far -- the similarity
of marks, the relatedness of product offerings, and the overlap
in marketing and advertising channels -- lead us to the tenta-
tive conclusion that Brookfield has made a strong showing of
likelihood of confusion. Because it is possible that the remain-
ing factors will tip the scale back the other way if they weigh
strongly enough in West Coast's favor, we consider the
remaining likelihood of confusion factors, beginning with the
strength of Brookfield's mark. The stronger a mark -- mean-
ing the more likely it is to be remembered and associated in
the public mind with the mark's owner -- the greater the pro-
tection it is accorded by the trademark laws. See Kenner Par-
ker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353 (Fed.
Cir. 1992); Nutri/System, 809 F.2d at 605. Marks can be con-
ceptually classified along a spectrum of generally increasing
inherent distinctiveness as generic, descriptive, suggestive,
arbitrary, or fanciful.19 See Two Pesos,
505 U.S. at 768
. West
Coast asserts that Brookfield's mark is "not terribly
distinctive," by which it apparently means suggestive, but
only weakly so. Although Brookfield does not seriously dis-
pute that its mark is only suggestive, it does defend its
(mark's) muscularity.
[21] We have recognized that, unlike arbitrary or fanciful
marks which are typically strong, suggestive marks are pre-
sumptively weak. See, e.g., Nutri/Systems, 809 F.2d at 605.
As the district court recognized, placement within the concep-
tual distinctiveness spectrum is not the only determinant of a
mark's strength, as advertising expenditures can transform a
suggestive mark into a strong mark, see id., where, for exam-
ple, that mark has achieved actual marketplace recognition,
see Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743-
44 (2d Cir. 1998). Brookfield, however, has not come forth
with substantial evidence establishing the widespread recogni-
tion of its mark; although it argues that its strength is estab-
lished from its use of "MovieBuff" for over five years, its
federal and California state registrations, and its expenditure
of $100,000 in advertising its mark, the district court did not
clearly err in classifying "MovieBuff" as weak. Some weak
marks are weaker than others, and although "MovieBuff" falls
within the weak side of the strength spectrum, the mark is not
so flabby as to compel a finding of no likelihood of confusion
in light of the other factors that we have considered. Impor-
tantly, Brookfield's trademark is not descriptive because it
does not describe either the software product or its purpose.
Instead, it is suggestive -- and thus strong enough to warrant
trademark protection -- because it requires a mental leap
from the mark to the product. See Self-Realization Fellowship
Church v. Anada Church of Self-Realization, 59 F.3d 902,
910-11 (9th Cir. 1995). Because the products involved are
closely related and West Coast's domain name is nearly iden-
tical to Brookfield's trademark, the strength of the mark is of
diminished importance in the likelihood of confusion analysis.
See McCarthy P 11:76 ("Whether a mark is weak or not is of
little importance where the conflicting mark is identical and
the goods are closely related.").
We thus turn to intent. "The law has long been established
that if an infringer `adopts his designation with the intent of
deriving benefit from the reputation of the trade-mark or trade
name, its intent may be sufficient to justify the inference that
there are confusing similarities.' " Pacific Telesis v. Interna-
tional Telesis Comms., 994 F.2d 1364, 1369 (9th Cir. 1993)
(quoting Restatement of Torts, S 729, Comment on Clause
(b)f (1938)). An inference of confusion has similarly been
deemed appropriate where a mark is adopted with the intent
to deceive the public. See Gallo, 967 F.2d at 1293 (citing
Sleekcraft, 599 F.2d at 354). The district court found that the
intent factor favored West Coast because it did not adopt the
"moviebuff.com" mark with the specific purpose of infringing
Brookfield's trademark. The intent prong, however, is not so
narrowly confined.
[22] This factor favors the plaintiff where the alleged
infringer adopted his mark with knowledge, actual or con-
structive, that it was another's trademark. See Official Airline
Guides, 6 F.3d at 1394 ("When an alleged infringer know-
ingly adopts a mark similar to another's, courts will presume
an intent to deceive the public."); Fleischmann Distilling, 314
F.2d 149 at 157. In the Internet context, in particular, courts
have appropriately recognized that the intentional registration
of a domain name knowing that the second-level domain is
another company's valuable trademark weighs in favor of
likelihood of confusion. See, e.g., Washington Speakers, 1999
WL 51869, at *10. There is, however, no evidence in the
record that West Coast registered "moviebuff.com " with the
principal intent of confusing consumers.20 Brookfield cor-
rectly points out that, by the time West Coast launched its
web site, it did know of Brookfield's claim to rights in the
trademark "MovieBuff." But when it registered the domain
name with Network Solutions, West Coast did not know of
Brookfield's rights in "MovieBuff" (at least Brookfield has
not established that it did). Although Brookfield asserts that
West Coast could easily have launched its web site at its alter-
nate domain address, "westcoastvideo.com," thereby avoiding
the infringement problem, West Coast claims that it had
already invested considerable sums in developing its
"moviebuff.com" web site by the time that Brookfield
informed it of its rights in the trademark. Considered as a
whole, this factor appears indeterminate.
[23] Importantly, an intent to confuse consumers is not
required for a finding of trademark infringement. See
Dreamwerks, 142 F.3d at 1132 n.12 ("Absence of malice is
no defense to trademark infringement"); Daddy's Junky
Music Stores, 109 F.3d at 287 ("As noted, the presence of
intent can constitute strong evidence of confusion. The con-
verse of this proposition, however, is not true: the lack of
intent by a defendant is largely irrelevant in determining if
consumers likely will be confused as to source.") (internal
quotation marks and citations omitted); Fleischmann
Distilling, 314 F.2d at 157. Instead, this factor is only relevant
to the extent that it bears upon the likelihood that consumers
will be confused by the alleged infringer's mark (or to the
extent that a court wishes to consider it as an equitable con-
sideration). See Sleekcraft Boats, 599 F.2d at 348 n.10. Here,
West Coast's intent does not appear to bear upon the likeli-
hood of confusion because it did not act with such an intent
from which it is appropriate to infer consumer confusion.
[24] The final three Sleekcraft factors -- evidence of actual
confusion, likelihood of expansion in product lines, and pur-
chaser care -- do not affect our ultimate conclusion regarding
the likelihood of confusion. The first two factors do not merit
extensive comment. Actual confusion is not relevant because
Brookfield filed suit before West Coast began actively using
the "moviebuff.com" mark and thus never had the opportunity
to collect information on actual confusion. The likelihood of
expansion in product lines factor is relatively unimportant
where two companies already compete to a significant extent.
See Official Airline Guides, 6 F.3d at 1394. In any case, it is
neither exceedingly likely nor unlikely that West Coast will
enter more directly into Brookfield's principal market, or vice
versa.
Although the district court did not discuss the degree of
care likely to be exercised by purchasers of the products in
question, we think that this issue deserves some consideration.
Likelihood of confusion is determined on the basis of a
"reasonably prudent consumer." Dreamwerks , 142 F.3d at
1129; Sleekcraft, 599 F.2d at 353. What is expected of this
reasonably prudent consumer depends on the circumstances.
We expect him to be more discerning -- and less easily con-
fused -- when he is purchasing expensive items, see, e.g.,
Official Airline Guides, 6 F.3d at 1393 (noting that confusion
was unlikely among advertisers when the products in question
cost from $2,400 to $16,000), and when the products being
sold are marketed primarily to expert buyers, see, e.g.,
Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1537
(9th Cir. 1989). We recognize, however, that confusion may
often be likely even in the case of expensive goods sold to
discerning customers. See Sleekcraft, 599 F.3d at 353; see
also, e.g., Daddy's Junky Music Stores, 109 F.3d at 286;
Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 492
(2d Cir. 1988). On the other hand, when dealing with inex-
pensive products, customers are likely to exercise less care,
thus making confusion more likely. See, e.g., Gallo, 967 F.2d
at 1293 (wine and cheese).
[25] The complexity in this case arises because we must
consider both entertainment professionals, who probably will
take the time and effort to find the specific product they want,
and movie devotees, who will be more easily confused as to
the source of the database offered at West Coast's web site.
In addition, West Coast's site is likely to be visited by many
casual movie watchers. The entertainment professional, movie
devotee, and casual watcher are likely to exercise high, little,
and very little care, respectively. Who is the reasonably pru-
dent consumer? Although we have not addressed the issue of
purchaser care in mixed buyer classes, another circuit has held
that "the standard of care to be exercised by the reasonably
prudent purchaser will be equal to that of the least sophisti-
cated consumer." Ford Motor Co. v. Summit Motor Prods.,
Inc., 930 F.2d 277, 283 (3d Cir. 1991); see also Omega
Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190,
1200 (2d Cir. 1971) (instructing that, where a product is tar-
geted both to discriminating and casual buyers, a court must
consider the likelihood of confusion on the part of the rela-
tively unknowledgeable buyers as well as of the former
group); 3 McCarthy S 23:100 (advocating this approach). This
is not the only approach available to us, as we could alterna-
tively use a weighted average of the different levels of pur-
chaser care in determining how the reasonably prudent
consumer would act. We need not, however, decide this ques-
tion now because the purchaser confusion factor, even consid-
ered in the light most favorable to West Coast, is not
sufficient to overcome the likelihood of confusion strongly
established by the other factors we have analyzed.
[26] West Coast makes one last ditch argument -- that,
even if there is a likelihood of confusion, Brookfield should
be estopped from asserting its trademark rights because it
waited too long to file suit. Although we have applied laches
to bar trademark infringement claims, we have done so only
where the trademark holder knowingly allowed the infringing
mark to be used without objection for a lengthy period of
time. See E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607
(9th Cir. 1983). In E-Systems, for example, we estopped a
claimant who did not file suit until after the allegedly infring-
ing mark had been used for eight years where the claimant
had known of the infringing use for at least six years. See id.;
see also Carter-Wallace, Inc. v. Procter & Gamble Co., 434
F.2d 794, 803 (9th Cir. 1970). We specifically cautioned,
however, that "had defendant's encroachment been minimal,
or its growth slow and steady, there would be no laches." E-
Systems, 720 F.2d at 607; accord Carter-Wallace, 434 F.2d at
803 n.4. Here, although Brookfield waited over two years
before notifying West Coast that its intended use of
"moviebuff.com" would infringe on Brookfield's trademark,
West Coast did not do anything with its domain address dur-
ing that time, and Brookfield filed suit the very day that West
Coast publicly announced its intention to launch a web site at
"moviebuff.com." Accordingly, we conclude that Brook-
field's delay was not such that it should be estopped from pur-
suing an otherwise meritorious claim. See generally American
Int'l Group, 926 F.2d at 831 (outlining six-factor test for
determining whether laches operates to bar a claim of trade-
mark infringement).21
[27] In light of the foregoing analysis, we conclude that
Brookfield has demonstrated a likelihood of success on its
claim that West Coast's use of "moviebuff.com " violates the
Lanham Act. We are fully aware that although the question of
"[w]hether confusion is likely is a factual determination
woven into the law," we nevertheless must review only for
clear error the district court's conclusion that the evidence of
likelihood of confusion in this case was slim. See Levi Strauss
& Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 (9th Cir. 1985)
(en banc). Here, however, we are "left with the definite and
firm conviction that a mistake has been made." Pacific Telesis
Group v. International Telesis Comms., 994 F.2d 1364, 1367
(9th Cir. 1993).22
Volume 2 of 2
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
BROOKFIELD COMMUNICATIONS, INC.,
Plaintiff-Appellant, No. 98-56918
v. D.C. No.
CV-98-09074-CRM
WEST COAST ENTERTAINMENT
CORPORATION, OPINION
Defendant-Appellee.
Appeal from the United States District Court
for the Central District of California
Carlos R. Moreno, District Judge, Presiding
Argued and Submitted
March 10, 1999--San Francisco, California
Filed April 22, 1999
Before: William C. Canby, Jr., Diarmuid F. O'Scannlain, and
Kim M. Wardlaw, Circuit Judges.
Opinion by Judge O'Scannlain
_________________________________________________________________
B
So far we have considered only West Coast's use of the
domain name "moviebuff.com." Because Brookfield
requested that we also preliminarily enjoin West Coast from
using marks confusingly similar to "MovieBuff " in metatags
and buried code, we must also decide whether West Coast
can, consistently with the trademark and unfair competition
laws, use "MovieBuff" or "moviebuff.com " in its HTML code.23
[28] At first glance, our resolution of the infringement
issues in the domain name context would appear to dictate a
similar conclusion of likelihood of confusion with respect to
West Coast's use of "moviebuff.com" in its metatags. Indeed,
all eight likelihood of confusion factors outlined in Part V-A
-- with the possible exception of purchaser care, which we
discuss below -- apply here as they did in our analysis of
domain names; we are, after all, dealing with the same marks,
the same products and services, the same consumers, etc. Dis-
posing of the issue so readily, however, would ignore the fact
that the likelihood of confusion in the domain name context
resulted largely from the associational confusion between
West Coast's domain name "moviebuff.com" and Brook-
field's trademark "MovieBuff." The question in the metatags
context is quite different. Here, we must determine whether
West Coast can use "MovieBuff" or "moviebuff.com" in the
metatags of its web site at "westcoastvideo.com " or at any
other domain address other than "moviebuff.com" (which we
have determined that West Coast may not use).
Although entering "MovieBuff" into a search engine is
likely to bring up a list including "westcoastvideo.com" if
West Coast has included that term in its metatags, the result-
ing confusion is not as great as where West Coast uses the
"moviebuff.com" domain name. First, when the user inputs
"MovieBuff" into an Internet search engine, the list produced
by the search engine is likely to include both West Coast's
and Brookfield's web sites. Thus, in scanning such list, the
Web user will often be able to find the particular web site he
is seeking. Moreover, even if the Web user chooses the web
site belonging to West Coast, he will see that the domain
name of the web site he selected is "westcoastvideo.com."
Since there is no confusion resulting from the domain address,
and since West Coast's initial web page prominently displays
its own name, it is difficult to say that a consumer is likely to
be confused about whose site he has reached or to think that
Brookfield somehow sponsors West Coast's web site.
[29] Nevertheless, West Coast's use of "moviebuff.com" in
metatags will still result in what is known as initial interest
confusion. Web surfers looking for Brookfield's "MovieBuff"
products who are taken by a search engine to
"westcoastvideo.com" will find a database similar enough to
"MovieBuff" such that a sizeable number of consumers who
were originally looking for Brookfield's product will simply
decide to utilize West Coast's offerings instead. Although
there is no source confusion in the sense that consumers know
they are patronizing West Coast rather than Brookfield, there
is nevertheless initial interest confusion in the sense that, by
using "moviebuff.com" or "MovieBuff" to divert people look-
ing for "MovieBuff" to its web site, West Coast improperly
benefits from the goodwill that Brookfield developed in its
mark. Recently in Dr. Seuss, we explicitly recognized that the
use of another's trademark in a manner calculated "to capture
initial consumer attention, even though no actual sale is
finally completed as a result of the confusion, may be still an
infringement." Dr. Seuss, 109 F.3d at 1405 (citing Mobil Oil
Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 257-58 (2d
Cir. 1987)).24
The Dr. Seuss court, in recognizing that the diversion of
consumers' initial interest is a form of confusion against
which the Lanham Act protects, relied upon Mobil Oil. In that
case, Mobil Oil Corporation ("Mobil") asserted a federal
trademark infringement claim against Pegasus Petroleum,
alleging that Pegasus Petroleum's use of "Pegasus" was likely
to cause confusion with Mobil's trademark, a flying horse
symbol in the form of the Greek mythological Pegasus. Mobil
established that "potential purchasers would be misled into an
initial interest in Pegasus Petroleum" because they thought
that Pegasus Petroleum was associated with Mobil. Id. at 260.
But these potential customers would generally learn that Peg-
asus Petroleum was unrelated to Mobil well before any actual
sale was consummated. See id. Nevertheless, the Second Cir-
cuit held that "[s]uch initial confusion works a sufficient
trademark injury." Id.
Mobil Oil relied upon its earlier opinion in Grotrian, Helf-
ferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523
F.2d 1331, 1341-42 (2d Cir. 1975). Analyzing the plaintiff's
claim that the defendant, through its use of the "Grotrian-
Steinweg" mark, attracted people really interested in plain-
tiff's "Steinway" pianos, the Second Circuit explained:
We decline to hold, however, that actual or potential
confusion at the time of purchase necessarily must
be demonstrated to establish trademark infringement
under the circumstances of this case.
The issue here is not the possibility that a pur-
chaser would buy a Grotrian-Steinweg thinking it
was actually a Steinway or that Grotrian had some
connection with Steinway and Sons. The harm to
Steinway, rather, is the likelihood that a consumer,
hearing the "Grotrian-Steinweg" name and thinking
it had some connection with "Steinway," would con-
sider it on that basis. The "Grotrian-Steinweg " name
therefore would attract potential customers based on
the reputation built up by Steinway in this country
for many years.
Grotrian, 523 F.2d at 1342.
Both Dr. Seuss and the Second Circuit hold that initial
interest confusion is actionable under the Lanham Act, which
holdings are bolstered by the decisions of many other courts
which have similarly recognized that the federal trademark
and unfair competition laws do protect against this form of
consumer confusion. See Green Prods., 992 F. Supp. 1070,
1076 (N.D. Iowa 1997) ("In essence, ICBP is capitalizing on
the strong similarity between Green Products' trademark and
ICBP's domain name to lure customers onto its web page.");
Securacomm Consulting, Inc. v. Securacomm Inc., 984 F.
Supp. 286, 298 (D.N.J. 1997) (" `Infringement can be based
upon confusion that creates initial customer interest, even
though no actual sale is finally completed as a result of the
confusion.' ") (citing 3 McCarthy S 23:6), rev'd on other
grounds, 166 F.3d 182, 186 (3d Cir. 1999) ("In this appeal,
[appellant] does not challenge the district court's finding of
infringement or order of injunctive relief."); Kompan A.S. v.
Park Structures, Inc., 890 F. Supp. 1167, 1180 (N.D.N.Y.
1995) ("Kompan argues correctly that it can prevail by show-
ing that confusion between the Kompan and Karavan lines
and names will mistakenly lead the consumer to believe there
is some connection between the two and therefore develop an
interest in the Karavan line that it would not otherwise have
had."); Blockbuster Entertainment Group v. Laylco, Inc., 869
F. Supp. 505, 513 (E.D. Mich. 1994) ("Because the names are
so similar and the products sold are identical, some unwitting
customers might enter a Video Busters store thinking it is
somehow connected to Blockbuster. Those customers proba-
bly will realize shortly that Video Busters is not related to
Blockbuster, but under [Ferraria S.P.A. Esercizio v. Roberts,
944 F.2d 1235 (6th Cir. 1991)] and Grotrian that is
irrelevant."); Jordache Enters., Inc. v. Levi Strauss & Co.,
841 F. Supp. 506, 514-15 (S.D.N.Y. 1993) ("Types of confu-
sion that constitute trademark infringement include where . . .
potential consumers initially are attracted to the junior user's
mark by virtue of its similarity to the senior user's mark, even
though these consumers are not actually confused at the time
of purchase."); Sara Lee Corp. v. Kayser-Roth Corp., No. 92-
00460, 1992 WL 436279, at *24 (W.D.N.C. Dec. 1, 1992)
("That situation offers an opportunity for sale not otherwise
available by enabling defendant to interest prospective cus-
tomers by confusion with the plaintiff's product."); Television
Enter. Network, Inc. v. Entertainment Network, Inc. , 630 F.
Supp. 244, 247 (D.N.J. 1986) ("Even if the confusion is cured
at some intermediate point before the deal is completed, the
initial confusion may be damaging and wrongful."); Koppers
Co. v. Krupp-Koppers GmbH, 517 F. Supp. 836, 844 (W.D.
Pa. 1981) ("[S]ecuring the initial business contact by the
defendant because of an assumed association between the par-
ties is wrongful even though the mistake is later rectified.").
See also Forum Corp. of North America v. Forum, Ltd. , 903
F.2d 434, 442 n.2 (7th Cir. 1990) ("We point out that the fact
that confusion as to the source of a product or service is even-
tually dispelled does not eliminate the trademark infringement
which has already occurred."). But see Astra Pharm. Prods.,
Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206-08
(1st Cir. 1983) (suggesting that only confusion that affects
"the ultimate decision of a purchaser whether to buy a particu-
lar product" is actionable); Teletech Customer Care Mgmt.
(Cal.), Inc. v. Tele-Tech Co., 977 F. Supp. 1407, 1410, 1414
(C.D. Cal. 1997) (finding likelihood of initial interest confu-
sion but concluding that such "brief confusion is not cogniza-
ble under the trademark laws").
Using another's trademark in one's metatags is much like
posting a sign with another's trademark in front of one's
store. Suppose West Coast's competitor (let's call it
"Blockbuster") puts up a billboard on a highway reading --
"West Coast Video: 2 miles ahead at Exit 7" -- where West
Coast is really located at Exit 8 but Blockbuster is located at
Exit 7. Customers looking for West Coast's store will pull off
at Exit 7 and drive around looking for it. Unable to locate
West Coast, but seeing the Blockbuster store right by the
highway entrance, they may simply rent there. Even consum-
ers who prefer West Coast may find it not worth the trouble
to continue searching for West Coast since there is a Block-
buster right there. Customers are not confused in the narrow
sense: they are fully aware that they are purchasing from
Blockbuster and they have no reason to believe that Block-
buster is related to, or in any way sponsored by, West Coast.
Nevertheless, the fact that there is only initial consumer con-
fusion does not alter the fact that Blockbuster would be mis-
appropriating West Coast's acquired goodwill. See
Blockbuster, 869 F. Supp. at 513 (finding trademark infringe-
ment where the defendant, a video rental store, attracted cus-
tomers' initial interest by using a sign confusingly to its
competitor's even though confusion would end long before
the point of sale or rental); see also Dr. Seuss , 109 F.3d at
1405; Mobil Oil, 818 F.2d at 260; Green Prods., 992 F. Supp.
at 1076.
The few courts to consider whether the use of another's
trademark in one's metatags constitutes trademark infringe-
ment have ruled in the affirmative. For example, in a case in
which Playboy Enterprises, Inc. ("Playboy") sued AsiaFocus
International, Inc. ("AsiaFocus") for trademark infringement
resulting from AsiaFocus's use of the federally registered
trademarks "Playboy" and "Playmate" in its HTML code, a
district court granted judgment in Playboy's favor, reasoning
that AsiaFocus intentionally misled viewers into believing
that its Web site was connected with, or sponsored by, Play-
boy. See Playboy Enters. v. AsiaFocus Int'l, Inc., No. 97-734,
1998 WL 724000, at *3, *6-*7 (E.D. Va. Apr. 10, 1998).
In a similar case also involving Playboy, a district court in
California concluded that Playboy had established a likeli-
hood of success on the merits of its claim that defendants'
repeated use of "Playboy" within "machine readable code in
Defendants' Internet Web pages, so that the PLAYBOY
trademark [was] accessible to individuals or Internet search
engines which attempt[ed] to access Plaintiff under Plaintiff's
PLAYBOY registered trademark" constituted trademark
infringement. See Playboy Enters. v. Calvin Designer Label,
985 F. Supp. 1220, 1221 (N.D. Cal. 1997). The court accord-
ingly enjoined the defendants from using Playboy's marks in
buried code or metatags. See id. at 1221-22.
In a metatags case with an interesting twist, a district court
in Massachusetts also enjoined the use of metatags in a man-
ner that resulted in initial interest confusion. See Niton, 27 F.
Supp. 2d at 102-05. In that case, the defendant Radiation
Monitoring Devices ("RMD") did not simply use Niton Cor-
poration's ("Niton") trademark in its metatags. Instead,
RMD's web site directly copied Niton's web site's metatags
and HTML code. As a result, whenever a search performed on
an Internet search engine listed Niton's web site, it also listed
RMD's site. Although the opinion did not speak in terms of
initial consumer confusion, the court made clear that its issu-
ance of preliminary injunctive relief was based on the fact that
RMD was purposefully diverting people looking for Niton to
its web site. See id. at 104-05.
[30] Consistently with Dr. Seuss , the Second Circuit, and
the cases which have addressed trademark infringement
through metatags use, we conclude that the Lanham Act bars
West Coast from including in its metatags any term confus-
ingly similar with Brookfield's mark. West Coast argues that
our holding conflicts with Holiday Inns, in which the Sixth
Circuit held that there was no trademark infringement where
an alleged infringer merely took advantage of a situation in
which confusion was likely to exist and did not affirmatively
act to create consumer confusion. See Holiday Inns, 86 F.3d
at 622 (holding that the use of "1-800-405-4329" -- which is
equivalent to "1-800-H[zero]LIDAY" -- did not infringe
Holiday Inn's trademark, "1-800-HOLIDAY"). Unlike the
defendant in Holiday Inns, however, West Coast was not a
passive figure; instead, it acted affirmatively in placing
Brookfield's trademark in the metatags of its web site, thereby
creating the initial interest confusion. Accordingly, our con-
clusion comports with Holiday Inns.
C
[31] Contrary to West Coast's contentions, we are not in
any way restricting West Coast's right to use terms in a man-
ner which would constitute fair use under the Lanham Act.
See New Kids on the Block v. News Amer. Publ'g, Inc. , 971
F.2d 302, 306-09 (9th Cir. 1992); see also August Storck K.G.
v. Nabisco, Inc., 59 F.3d 616, 617-18 (7th Cir. 1995). It is
well established that the Lanham Act does not prevent one
from using a competitor's mark truthfully to identify the com-
petitor's goods, see, e.g., Smith v. Chanel, Inc., 402 F.2d 562,
563 (9th Cir. 1968) (stating that a copyist may use the origina-
tor's mark to identify the product that it has copied), or in
comparative advertisements, see New Kids on the Block, 971
F.2d at 306-09. This fair use doctrine applies in cyberspace as
it does in the real world. See Radio Channel Networks, Inc.
v. Broadcast.Com, Inc., No. 98-4799, 1999 WL 124455, at
*5-*6 (S.D.N.Y. Mar. 8, 1999); Bally Total Fitness Holding
Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998); Welles,
7 F. Supp. 2d at 1103-04; Patmont Motor Werks, Inc. v. Gate-
way Marine, Inc., No. 96-2703, 1997 WL 811770, at *3-*4 &
n.6 (N.D. Cal. Dec. 18, 1997); see also Universal Tel-A-Talk,
1998 WL 767440, at *9.
In Welles, the case most on point, Playboy sought to enjoin
former Playmate of the Year Terri Welles ("Welles") from
using "Playmate" or "Playboy" on her web site featuring pho-
tographs of herself. See 7 F. Supp. 2d at 1100. Welles's web
site advertised the fact that she was a former Playmate of the
Year, but minimized the use of Playboy's marks; it also con-
tained numerous disclaimers stating that her site was neither
endorsed by nor affiliated with Playboy. The district court
found that Welles was using "Playboy" and "Playmate" not as
trademarks, but rather as descriptive terms fairly and accu-
rately describing her web page, and that her use of "Playboy"
and "Playmate" in her web site's metatags was a permissible,
good faith attempt to index the content of her web site. It
accordingly concluded that her use was permissible under the
trademark laws. See id. at 1103-04.
[32] We agree that West Coast can legitimately use an
appropriate descriptive term in its metatags. But "MovieBuff"
is not such a descriptive term. Even though it differs from
"Movie Buff" by only a single space, that difference is piv-
otal. The term "Movie Buff" is a descriptive term, which is
routinely used in the English language to describe a movie
devotee. "MovieBuff" is not. The term "MovieBuff" is not in
the dictionary. See Merriam-Webster's Collegiate Dictionary
762 (10th ed. 1998); American Heritage College Dictionary
893 (3d ed. 1997); Webster's New World College Dictionary
889 (3d ed. 1997); Webster's Third New Int'l Dictionary 1480
(unabridged 1993). Nor has that term been used in any pub-
lished federal or state court opinion. In light of the fact that
it is not a word in the English language, when the term
"MovieBuff" is employed, it is used to refer to Brookfield's
products and services, rather than to mean "motion picture
enthusiast." The proper term for the "motion picture
enthusiast" is "Movie Buff," which West Coast certainly can
use. It cannot, however, omit the space.
Moreover, West Coast is not absolutely barred from using
the term "MovieBuff." As we explained above, that term can
be legitimately used to describe Brookfield's product. For
example, its web page might well include an advertisement
banner such as "Why pay for MovieBuff when you can get
the same thing here for FREE?" which clearly employs
"MovieBuff" to refer to Brookfield's products. West Coast,
however, presently uses Brookfield's trademark not to refer-
ence Brookfield's products, but instead to describe its own
product (in the case of the domain name) and to attract people
to its web site in the case of the metatags). That is not fair use.
VI
[33] Having concluded that Brookfield has established a
likelihood of success on the merits of its trademark infringe-
ment claim, we analyze the other requirement for preliminary
injunctive relief inquiry, irreparable injury. Although the dis-
trict court did not address this issue, irreparable injury may be
presumed from a showing of likelihood of success on the mer-
its of a trademark infringement claim. See Metro Publ'g, Ltd.
v. San Jose Mercury News, 987 F.2d 637, 640 (9th Cir. 1993)
("Once the plaintiff has demonstrated a likelihood of confu-
sion, it is ordinarily presumed that the plaintiff will suffer
irreparable harm if injunctive relief is not granted."). Prelimi-
nary injunctive relief is appropriate here to prevent irreparable
injury to Brookfield's interests in its trademark "MovieBuff"
and to promote the public interest in protecting trademarks
generally as well.
VII
As we have seen, registration of a domain name for a Web
site does not trump long-established principles of trademark
law. When a firm uses a competitor's trademark in the
domain name of its web site, users are likely to be confused
as to its source or sponsorship. Similarly, using a competitor's
trademark in the metatags of such web site is likely to cause
what we have described as initial interest confusion. These
forms of confusion are exactly what the trademark laws are
designed to prevent.
Accordingly, we reverse and remand this case to the district
court with instructions to enter a preliminary injunction in
favor of Brookfield in accordance with this opinion.
REVERSED and REMANDED.
the end
_______________________________________________________________
FOOTNOTES
1 The parties quibble over whether the exact date was in December 1993
or in January 1994, but this dispute is irrelevant.
2 Pursuant to a contract with the National Science Foundation, Network
Solutions was, at all relevant times, the exclusive registrar of certain
domain names, including those ending in ".com " The intricacies of the
Internet and the Web are explained in detail in Part II.
3 It also registered "inhollywood.com," but exactly when it did so is
unclear from the record.
4 Brookfield also asserted a trademark dilution claim under 15 U.S.C.
S 1125(c) and California state law trademark and unfair competition
claims.
5 West Coast applied for a federal trademark registration for this term in
1989, which issued in 1991 and became incontestable in 1996. West Coast
purports to have spent over $15,000,000 on advertisements and promo-
tions featuring this mark.
6 Section 32(1) of the Lanham Act applies to federally registered marks
and provides in pertinent part:
Any person who shall, without the consent of the registrant --
(a) use in commerce any reproduction, counterfeit, copy,
or colorable imitation of a registered mark in connection
with the sale, offering for sale, distribution, or advertising of
any goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or to
deceive; . . .
shall be liable in a civil action by the registrant for the remedies
hereinafter provided.
15 U.S.C. S 1114(1). The same standard is embodied in section 43(a)(1)
of the Lanham Act, which applies to both registered and unregistered
trademarks:
Any person who, on or in connection with any goods or ser-
vices, . . . uses in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false designation of
origin, false or misleading description of fact, or false or mislead-
ing representation of fact, which --
(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin, sponsor-
ship, or approval of his or her goods, services, or commercial
activities by another person, . . .
shall be liable in a civil action by any person who believes that
he or she is or is likely to be damaged by such act.
15 U.S.C. S 1125(a)(1).
7 Brookfield chose not to argue its trademark dilution claim or its state
law causes of action in its opening brief. We accordingly deem those
issues waived, see All Pacific Trading, Inc. v. Vessel M/V Hanjin Yosu, 7
F.3d 1427, 1434 (9th Cir. 1993), and limit our attention to Brookfield's
trademark infringement and unfair competition claims.
8 As is often done, Brookfield frames its claims under sections 32 and
43(a) of the Lanham Act in terms of trademark infringement and unfair
competition, respectively. Whereas section 32 provides protection only to
registered marks, section 43(a) protects against infringement of unregis-
tered marks and trade dress as well as registered marks, see, e.g., Kendall-
Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1046 (9th
Cir. 1998), and protects against a wider range of practices such as false
advertising and product disparagement, see 15 U.S.C. S 1125(a)(1)(B);
Two Pesos, Inc. v. Taco Cabana,
505 U.S. 763, 768
(1992). Despite these
differences, the analysis under the two provisions is oftentimes identical.
Because we find this to be the case here, we use, for simplicity's sake, the
term "infringement" to refer to Brookfield's claims under both sections 32
and 43(a) throughout the remainder of the opinion.
9 Both parties agree that "MovieBuff" is a suggestive mark, which falls
within the category of inherently distinctive marks. The issue of inherent
distinctiveness is discussed in further detail in Part V-A, infra.
10 West Coast's federally registered trademark "The Movie Buff's
Movie Store" is now incontestable, meaning that its validity and legal pro-
tectability, as well as West Coast's ownership therein, are all conclusively
presumed (subject to certain defenses not relevant here). See 15 U.S.C.
SS 1065, 1115(b); Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.
189, 196 (1985).
11 The court then remanded the case to the district court to make a deter-
mination on this question. See id. at 1382.
12 The present case differs from the Fourth Circuit's Lone Star case (yet
another involving the same three-trademark setup) for exactly the same
reason that it differs from the Eleventh Circuit's Lone Star case. See Lone
Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (4th
Cir. 1995). The Fourth Circuit awarded priority to the company owning
the earlier and later trademarks over the company owning the intervening
mark, because the intervening mark ("Lone Star Grill") was found to be
confusingly similar with the earlier of the other two marks ("Lone Star
Cafe") as well as with the later mark ("Lone Star Steakhouse & Saloon").
See id. at 931-32.
13 The exact date that Brookfield began offering "MovieBuff" products
over the Web is the subject of bitter dispute. In its opening brief, Brook-
field specifically averred: "In January of 1996, Brookfield also launched
a web site that made the MOVIEBUFF software and database available
via the Internet." West Coast questions the veracity of Brookfield's
claims, pointing out that Brookfield did not even register a domain name
with Network Solutions until May 1996. Having reviewed the evidence
before us, we too find it a mystery how Brookfield could have "launched
a web site" in January 1996 when it did not have a domain address at
which it could operate a web site until May 1996. See infra Part II.
Accordingly, we conclude that Brookfield failed to produce evidence
establishing its claim that it began using the "MovieBuff" in conjunction
with its Internet database in January 1996. Because "MovieBuff" is a fed-
erally registered trademark, however, Brookfield is entitled to a presump-
tive first used date equivalent to the filing date of its trademark registration
application, which was August 1997. See Rolley, Inc. v. Younghusband,
204 F.2d 209, 210 (9th Cir. 1953).
14 Brookfield is willing to grant West Coast a first use date of November
11, 1998. Thus, we need not decide here whether the issuance of the press
release was indeed sufficient to constitute use in commerce under the Lan-
ham Act. See 15 U.S.C. S 1127.
15 More precisely, because we are at the preliminary injunction stage,
Brookfield must establish that it is likely to be able to show such a likeli-
hood of confusion. See Sardi's Restaurant, 755 F.2d at 723.
16 Many cases begin the likelihood of confusion analysis by considering
the strength of the allegedly infringed mark. Heeding our repeated warn-
ings against simply launching into a mechanical application of the eight-
factor Sleekcraft test, see, e.g.,Dreamwerks, 142 F.3d at 1129; Dr. Seuss,
109 F.3d at 1404, and rather than automatically adopting the ordering ofSleekcraft and Dr. Seuss, we consider the Sleekcraft factors (roughly) in
order of their importance in this particular case. See, e.g., Dreamwerks,
142 F.3d at 1130-31 (considering the eight Sleekcraft factors "out of
order").
Although the Ninth Circuit has yet to apply the likelihood of confusion
analysis in the Internet context, a district court applying Ninth Circuit law
based its finding of likelihood of confusion on (1) the virtual identity of
marks, (2) the relatedness of plaintiff's and defendant's goods, and (3) the
simultaneous use of the Web as a marketing channel. See Comp Examiner
Agency, Inc. v. Juris, Inc., No. 96-0213, 1996 WL 376600, at *1 (C.D.
Cal. Apr. 26, 1996). Consistently with Comp Examiner, we conclude that
these three Sleekcraft factors are the most important in this case and
accordingly commence our analysis by examining these factors first.
17 In an analogous context, courts have granted trademark protection to
phone numbers that spell out a corporation's name, trademark, or slogan.
See Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 677-78 (2d
Cir. 1989) (granting trademark protection to "(area code)-MATTRES");
American Airlines, Inc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F. Supp.
673, 683-84 (N.D. Ill. 1985); see also Dranoff-Perlstein Assocs. v. Sklar,
967 F.2d 852, 856-58 (3d Cir. 1992). But see Holiday Inns, Inc. v. 800
Reservation, Inc., 86 F.3d 619, 622 (6th Cir. 1996).
18 The fact that West Coast's second-level domain is exactly the same as
Brookfield's mark is particularly important since potential customers of
"MovieBuff" will go to "moviebuff.com," and not, for example,
"moviebuffs.com." Had West Coast used the latter mark, the similarity
factor would have favored Brookfield to a lesser extent.
19 Generic terms are those used by the public to refer generally to the
product rather than a particular brand of the product. See, e.g., Blinded
Veterans Assoc. v. Blinded American Veterans Found. , 872 F.2d 1035,
1041 (D.C. Cir. 1989) ("Blinded Veterans"); Miller Brewing Co. v. G.
Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977) ("Light Beer" or "Lite
Beer"). Descriptive terms directly describe the quality or features of the
product. See, e.g., Application of Keebler Co., 479 F.2d 1405 (C.C.P.A.
1973) ("Rich `N Chips" chocolate chip cookies). A suggestive mark con-
veys an impression of a good but requires the exercise of some imagina-
tion and perception to reach a conclusion as to the product's nature. See,
e.g., American Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103
(2d Cir. 1978) ("Roach Motel" insect trap). Arbitrary and fanciful marks
have no intrinsic connection to the product with which the mark is used;
the former consists of words commonly used in the English language, see,
e.g., Fleischmann Distilling, 314 F.2d 149 ("Black & White" scotch whis-
key), whereas the latter are wholly made-up terms, see, e.g., Clorox Chem.
Co. v. Chlorit Mfg. Corp., 25 F. Supp. 702 (E.D.N.Y. 1938) ("Clorox"
bleach).
20 Nor did West Coast register its domain name for the specific purpose
of subsequently selling the domain name to the trademark owner. See, e.g.,
Minnesota Mining, 21 F. Supp. 2d at 1005; Intermatic, 947 F. Supp. at
1229 (involving the infamous cyber squatter Dennis Toeppen who regis-
tered domain names including "aircanada.com,""deltaairlines.com,"
"eddiebauer.com," and "neiman-marcus.com " and has been the subject of
many lawsuits).
21 We note, however, that Brookfield should have suspected that West
Coast would eventually open a web site at the domain name it had regis-
tered, and that the present dispute might have been more easily resolved
at an earlier time had Brookfield acted in a more prompt manner.
22 Although there are no other circuit opinions addressing the issue of
trademark infringement via domain name use, our holding comports with
the decisions of many district courts. See, e.g. , Public Serv. Co., 1999 WL
98973, at *2-*3; ("energyplace.com" and "Energy Place"); Washington
Speakers Bureau, 1999 WL 51869, at *8 ("washingtonspeakers.com" and
"Washington Speakers Bureau"); Minnesota Mining, 21 F. Supp. 2d at
1004-05 ("post-it.com" and "Post-it"); Cardservice Int'l, 950 F. Supp. at
741-42 ("cardservice.com" and "Card Service"); Green Prods., 992 F.
Supp. at 1079 ("greenproducts.com" and "Green Products"); Comp Exam-
iner Agency, 1996 WL 376600, at *1 ("juris.com" and "Juris"). Compare
Toys "R" Us, 26 F. Supp. 2d at 643-44 (no likelihood of confusion
between "gunsrus.com" and "Toys `R' Us"); CD Solutions, Inc. v. Tooker,
15 F. Supp. 2d 986, 989 (D. Or. 1998) (no likelihood of confusion
between "cds.com" and "CDS" as latter is a generic term).
23 As we explained in Part II, metatags are HTML code not visible to
Web users but used by search engines in determining which sites corre-
spond to the keywords entered by a Web user. Although Brookfield never
explained what it meant by "buried code," the leading trademark treatise
explains that "buried code" is another term for the HTML code that is
used by search engines but that is not visible to users. See 3 McCarthy,
supra, at S 25:69 n. 1. We will use the term metatags as encompassing
HTML code generally.
24 The Dr. Seuss court discussed initial interest confusion within its pur-
chaser care analysis. As a district court within our circuit recognized in a
recent case involving a claim of trademark infringement via metatags
usage, "[t]his case . . . is not a standard trademark case and does not lend
itself to the systematic application of the eight factors." Playboy Enters.
v. Welles, 7 F. Supp. 2d 1098 (S.D. Cal. 1998). Because we agree that the
traditional eight-factor test is not well-suited for analyzing the metatags
issue, we do not attempt to fit our discussion into one of the Sleekcraft fac-
tors.
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