Forward, into the past
Eric Goldman reports on a couple of cases that are doin’ the Time Warp — again:
It’s not uncommon for courts to make judgments based on outdated understandings of precedent and technology, especially when dealing with dynamically evolving areas like Internet trademark law. Nevertheless, it can be a little dispiriting to read opinions that ignore modern sensibilities and look like they could have been written years ago. Two such cases came out in June:
Standard Process, Inc. v. Total Health Discount, Inc., 2008 WL 2337279 (E.D. Wis. June 6, 2008) . . .
[T]hinking that consumers assume that high ad placement for the trademark implies sponsorship by the trademark owner is SO five years ago. Though this issue has come up in a few prior cases (for example, an analogous issue was central to the Playboy v. Netscape case from 2004), I’ve never seen any empirical evidence validating this assumption, and I am fairly confident that a reliable survey conducted today would thoroughly destroy this line of thinking.
Finance Express LLC v. Nowcom Corp., 2008 WL 2477430 (C.D. Cal. June 18, 2008)
The court goes through numerous gyrations to find potential trademark liability here. For example, Finance Express has a number of weak descriptive trademarks, but the court circularly uses the fact that Nowcom targeted the trademarks as evidence that the descriptive trademarks had derived secondary meaning. The court also struggles with the Ninth Circuit’s ambiguous caselaw on whether metatags and “keying” constitutes a use in commerce, but the court says that it sees lots of commercial activity on Nowcom’s part, so it must qualify. (Cite to two 2006 cases Edina Realty and Humble Abode–hey judge, there have been just a few use in commerce cases since 2006!). And finally on the likelihood of consumer confusion question, the court uses the initial interest confusion doctrine as a crutch (extensive cites to Brookfield). Overall, this analysis reads more like a ruling from 1999 than 2008. Preliminary injunction for Finance Express.
NB: Eric cites six cases besides the two he’s reporting on in the course of his discussion. We were counsel in four of them! If LIKELIHOOD OF CONFUSION® were an IP lawyer, why, I’d be … demanding something here! (How about a recount? — ed. Never you mind!*)
*Apologies to Mickey Kaus.