Tag Archives: Initial Interest Confusion

He’s got the key

Originally posted 2009-12-01 17:06:25. Republished by Blog Post Promoter

Worthy of inclusion

Worthy of inclusion

Eric Goldman, author of one of the bona-fide-deserving, regularly updatedABA-Blawg-100-listed and actually fairly indispensable Technology & Marketing Law Blog updates us on a beat I’ve written on a whole bunch but given up hope on following comprehensively.  It is, however, a topic that anyone involved in trademark use on the Internet must stay on top of:  Keyword advertising litigation.

Here’s the latest, a report on a case called Morningware, Inc. v. Hearthware Home Products, Inc., 2009 WL 3878251 (N.D. Ill. Nov. 16, 2009), which involves a fairly novel question of what happens when one advertiser uses the phrase “Why buy an imitation?” in the small copy space Google ads allow you, along with the brand name of the competitor — suggesting the competitor is imitating the advertiser.

Eric walks you through the opinion, which he acknowledges is unremarkable in many respects.  But these observations are the ones I was particularly motivated to cut and paste here:

The advertiser also argued for a 12(b)(6) motion to dismiss on lack of consumer confusion grounds. While I understand the advertiser’s hope, I think it’s hard to convince a judge that the trademark owner failed to allege sufficient confusion in the complaint. This is especially true when plaintiffs invoke the stupid “initial interest confusion” doctrine, which has no doctrinal contours and therefore is simply impossible for defendants to refute at the motion-to-dismiss stage (obligatory cite to my anti-initial interest confusion rant from 2005). Citing to the abysmal 2002 Promatek case, the court says the plaintiff alleged enough initial interest confusion to survive the 12(b)(6).

Thanks, as ever, on that point Eric!  (Obligatory cite to my anti-initial interest confusion rant from 2003 here.)   Actually there were two points — I just get excited whenever he starts talking about initial interest confusion.  The first point is a good one, too:  Judges really don’t like to dismiss a trademark infringement complaint on 12(b)(6) grounds.*  Really good judges do, but they unfortunately are not in abundance in as many times and places as would be wished.

This paragraph is worth repeating too, as a summation of “what’s going on” this area of litigation:

I keep getting calls from reporters operating under the misimpression that trademark owner-vs.-search engine keyword advertising lawsuits are more common than trademark owner-vs.-keyword advertiser lawsuits. While the lawsuits against search engines certainly get way more press coverage, in reality they are relatively rare. I don’t have an exact count of pending lawsuits, but only 10 immediately come to my mind (9 against Google and the AA v. Yahoo case). In contrast, trademark owner-vs.-advertiser lawsuits are so numerous that I don’t blog on every complaint I see, and most trademark owners are wise enough to leave the search engines out of their litigation.

There you have it.   Reporters, keep calling Eric Goldman — he knows these things!  That’s why I ask him for free answers, too.RDC BIG BEARD

Defendants, on the other hand — “who you gonna call”?


*  The awfulness of this fact on legal, policy and justice grounds cannot be contained in this post, but is essentially the topic of about one fifth of the LIKELIHOOD OF CONFUSION® blog.

Jews for Jesus v. Google and Brodsky – update and analysis

Originally posted 2006-01-22 12:59:35. Republished by Blog Post Promoter

Jews for Jesus

I was on a panel called “Trademark Rights vs. Free Speech” at the Fall 2000 INTA Trademarks in Cyberspace Conference with Marty Schwimmer and David Bernstein. (Five years later I’m still glowing from the reflected brilliance!) The moderator was IP superstar Brendan O’Rourke, who cruelly, on-the-record, and correctly reminded me, “Ron, you lost the Jews for Jesus case, okay? Okay?” Yeah, well, okay. But that doesn’t mean the next guy–in this case, Google–has to! The “Jews for Jesus Whistle Blower” writes, at his Jews for Jesus blog:

Google has a few more days to respond to Jews for Jesus’ lawsuit over the rights to a blog. I bet Jews for Jesus is praying ferverently (and keeping their collective fingers crossed) that Google will give in. What is the likelihood that Google will set a precedent that all anyone has to do is sue Google and they’ll give in? Seems to me that Google is principled. And if they are willing to defend themselves against the government, there’s a good chance they’ll defend themselves against Jews for Jesus.

If Google doesn’t give in, will Jews for Jesus wilt? How much money do they have to pursue the control of a simple blog?

WB, they have plenty of money, and, as you cannily point out, they’re using this litigation to raise more. Jews for Jesus claimed (off the record) during the Brodsky litigation to have raised more in sympathetic donations than they spent on Thelen Reid’s legal fees. We’ll never know if that was true, but it’s food for thought.

As far as the “other side” went, although Steve Brodsky was the sole defendant and there was nothing but the most casual (well, and virtual) link between him and Rabbi Toviah Singer, certainly the two were aligned sympathetically. Rabbi Singer later told me that as a result of the controversy and the traffic that was generated as a result of the publicity for his website, a number of Messianic Jews (i.e., Christians with gefilte fish) returned to the Jewish fold. Maybe he was able to raise a dollar or too himself.

It is fair enough to say that the litigation was more helpful for J4J than it was for either Steve Brodsky, Rabbi singer or anti-J4J missionaries. The real loser, of course, was the law of trademark infringement, which still has not fully recovered. The most egregious aspect of J4J’s arguments on this point (as opposed to the even worse arguments–such as the cooked up “commercial use”–in the opinion) is the very premise that there is, with respect to these website cases, anything even approximating LIKELIHOOD OF CONFUSION.

As we put it in the Third Circuit brief which, among others, future Supreme Court justice Samuel Alito by all indications did not read (although he was on the panel that rubber-stamped the District Court decision with one sentence of affirmation):

Liability under the Lanham Act requires a showing, inter alia, of likelihood of confusion as to source. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). But, appellee has submitted no admissible proof to support a finding that confusion is likely.
. . .

[I]t takes virtually no time for even self-described “unsophisticated” users to quickly realize they are at Mr. Brodsky’s site, not that of appellee. The honesty of the non-confusing message on Mr. Brodsky’s website is in stark contrast to the defendant’s website in Planned Parenthood:

Because the words on the top of the page load first, the user is first greeted solely with the “Welcome to the Planned Parenthood Page!” It is highly likely that an Internet user will still believe that she has found plaintiff’s web site at that point.

42 U.S.P.Q.2d at 1438. That kind of confusion is simply impossible in the case of Mr. Brodsky’s website . . . In response to this argument, the District Court found that an individual may be a sophisticated consumer of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization.

The last two clauses in the excerpt above constitute a non-sequitur. They also make no sense in the context of the actual website at issue, which explicitly states its opposition to “the Jews for Jesus cult” and disclaims any affiliation with appellee. Concluding that Mr. Brodsky is not part of a Jews for Jesus organization does not require any particular “sophistication.” It only requires the ability to read.

In fact, the courts routinely define “sophistication” in much less “sophisticated” terms than did the court below, where a simple grasp of the obvious is all that is required to negate confusion. Thus, in Girls Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), the court ruled that “rational analysis” precluded confusion about whether the Girl Scouts were the source of a poster depicting a pregnant girl in the well-known uniform of the Girl Scouts appearing with the caveat “BE PREPARED.” Similarly, in Stop the Olympic Prison v. United States Olympic Committee, supra, 489 F. Supp. at 1123, a poster reading “Stop the Olympic Prison” was held not to violate the trademark of the United States Olympic Committee. The court reasoned as follows:

On the basis of its own examination of the poster, the Court finds it extremely unlikely that anyone would presume it to have been produced, sponsored or in any way authorized by the U.S.O.C. While at a fleeting glance, someone might conceivably mistake it for a poster advertising the Olympics, nobody could conceivably retain such a misconception long enough to do any harm: for example, there is no danger that anyone would purchase or display it as such.

Id. . . .  As in Girl Scouts and Olympic Prison, no rational person could believe that Mr. Brodsky’s message was in any way affiliated with appellee. The District Court nonetheless held that confusion is likely because Mr. Brodsky’s site is “related” to that of appellee [and that the use of the trademark was in fact more, not less, protected for this reason, on fair use grounds!– RDC]. The court below inexplicably rejected the inescapable conclusion that consumers can dispel any confusion if they merely trouble to read Mr. Brodsky’s message, the way Chellathurai, Kalstein and Sanchez did.

If you’re still with me, here’s a last nail from the Third Circuit reply brief:

In defending the District Court’s likelihood of confusion analysis, appellee comes again to its prized exhibits: the three “confusion affidavits” of Chellathurai, Kalstein and Sanchez. There is little left to debate regarding whether these affidavits demonstrate confusion, or, more likely, the absence of confusion. This Court will simply have to read them. A076, A080, A257. Appellee suggests that the District Court found “initial interest confusion” here. Opp. Brief. at 37. But this doctrine is mentioned nowhere in the opinion below. Developed in a sales context, it has been applied only where “a potential purchaser is initially confused [such that] the [senior seller] may be precluded from further consideration.”

Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Thus it does not apply here. In fact, in Girl Scouts the Southern District of New York rejected transient confusion as proof of trademark harm in a social-commentary context:

Even if we hypothesize that some viewers might at first believe that the subject of the poster is actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.

304 F. Supp. at 1231. As the Girl Scouts court recognized, ephemeral moments of confusion that do not threaten to divert sales are not evidence of actionable harm under the Lanham Act. Real harm must be shown to overcome the constitutional protection of free speech:

No evidence is found anywhere in the record before the court that the poster has to date damaged the plaintiff in any way. No facts are presented to show that contributions to the organization have fallen off, that members have resigned, that recruits have failed to join, that sales . . . have decreased, or that voluntary workers have dissociated themselves or declined to support the honorable work of the organization.

Id. at 1235. Similarly, there is no evidence in this case of any actionable or even discernible harm that appellee has suffered as a result of Mr. Brodsky’s website. Even the court below admitted that the publicity surrounding this dispute was, far from harmful, undoubtedly a boon for appellee. A436-37. And all three supposedly confused affiants found their way to appellee’s website, undeterred by Steven Brodsky and more zealous than ever in their devotion to appellee. In fact, their reports to appellee negate the suggestion of confusion; again from Girl Scouts:

[I]ndignation is not confusion. To the contrary, the indignation of those who [reported the offending use] would appear to make it clear that they feel that the Girl Scouts are being unfairly put upon, not that the Girl Scouts are the manufacturers or distributors of the object of indignation.

Id. at 1231. This passage perfectly describes the three “confusion” affidavits here: indignant, yes, but certain that appellee was not the source of Mr. Brodsky’s website. They were not confused.

They were not confused. Unfortunately, a lot of people were, and are–about what the Lanham Act is, and is not, meant to protect, and don’t get this key point:  Indignation is not confusion. We can survive that, as long as too many of them aren’t judges.

It’s a good bet, as Whistle Blower suggests, that Google will get a better hearing than lone idealist Steve Brodsky did in his case, and not just because it is better heeled. (My old firm, Pitney Hardin, handled the Brodsky litigation pro bono.) And the issues are somewhat different.

Still, Whistle Blower says that the Reverend David Brickner, the pleasant, non-Jewish head of Jews for Jesus, thinks this is the second coming of the Brodsky case. Jews for Jesus attorneys Thelen Reid probably hope so (though perhaps not every Thelen Ried partner is singing from the same sheet of music on the topic of God and intellectual property). WB beleives that from a legal point of view this seems like somewhat wishful thinking. (Not to mention the fact that this case was filed in the federal court in New York, not New Jersey, and that Judge Lechner of the former court has retired and moved onto bigger and better things.)

Then again, the Rev. Brickner’s statement is hardly the first instance of wishful confusion to eminate from the the precincts of Jews for Jesus–not hardly.

Canada: Courts can distinguish TM fraud from error

Originally posted 2009-02-04 04:15:08. Republished by Blog Post Promoter

Larry Munn:

The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material misstatement in the processing of a registration renders the entire resulting registration void. . . .

While the U.S. doctrine appeared “initially attractive”, Canadian law allows for an amendment “where the misstatement is innocent and in good faith”.

If that “initially attractive” is something silly like “initial interest confusion,” then I get the joke, and the irony, seeing as how just as error is not fraud, there’s nothing attractive about the monster that’s become “fraud on the Trademark Office” in the U.S.:

Unlike general law where the intent of the party plays a critical role in a finding of fraud, the current line of cases decided by the Trademark Trial and Appeal Board (“TTAB”) results in a finding of fraud where the applicant or registrant “knew or should have known” that the statements were false. The subjective intent of the party is not a factor — it is the objective manifestation of the party’s intent that is determinative in a finding of fraud before the TTAB.

Thanks, Canada!  Now, I was never in favor of their splitting off from Vermont, or whatever it was, and it’s not as if they always get it right.  But this one’s a keeper.  “Fraud on the Trademark Office” has become the “gotcha” of trademark practice, presenting not only the threat of malpractice and severe prejudice to clients on the prosecution end for what can often be judgment calls or miscommunication, but potentially turning almost all litigation involving a trademark registration of any complexity into a game of Russian Roulette.

Seeing as how we’re all working our way toward one-world jurisprudence in trademark — despite the odd speed bump — is it too much to hope that Canada’s approach will cool some fevered thinking on “fraud” next time around here, too?

Best of 2009: “While my guitar gently weeps”

This was first posted on March 31, 2009.

One of the first posts on LIKELIHOOD OF CONFUSION® was about Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), and the question of whether “only a Gibson guitar can make a Gibson-looking guitar.” Not long after that decision came down, Gibson’s rival Fender filed for what it now evidently believed it had a shot at getting — a trademark registration for guitar shapes.

Fender had an uphill battle, though. Not only would it have to satisfy the post-TrafFix Devices standard for protection of a product configuration as a trademark, namely showing that the feature claimed as a trademark is not functional. In addition, because in the case of a musical instrument the product is the packaging, Fender would have to prove “acquired distinctiveness” for its would-be trademark-protected products, such that “the primary significance of the product configuration in the minds of consumers is not the product but the source of that product.” (Remember that.)
fender-bodies
Obviously, however, Fender was emboldened by the Gibson decision. Never mind that in September, 2005, the Sixth Circuit reversed the Middle District of Tennessee ruling in Gibson, in an opinion which rejected a unique theory of LIKELIHOOD OF CONFUSION. It was a variation of downstream or post-sale likelihood of confusion divided by “initial-interest confusion,” a combination the court termed “smoky-bar confusion”:

smoking-guitar

Smokin' Guitar

Finally, Gibson argues that, taken together, the initial-interest-confusion and post-sale confusion doctrines should be extended to include something that we can only describe as a “smoky-bar theory of confusion.” Initial-interest-confusion doctrine, which we have already rejected on the facts of this case, applies when allegedly improper use of a trademark attracts potential purchasers to consider products or services provided by the infringer. Post-sale-confusion doctrine, which we have also rejected on the facts of this case, applies when allegedly improper use of protected trade dress on a lower-quality product diminishes the reputation of the holder of the rights to that trade dress. In the smoky-bar context, however, Gibson does not suggest that consumer confusion as to the manufacturer of a PRS guitar would lead a potential purchaser to consider purchasing a PRS, rather than a Gibson, or that Gibson’s reputation is harmed by poor-quality PRS guitars. Rather, Gibson argues that this confusion occurs when potential purchasers see a musician playing a PRS guitar and believe it to be a Gibson guitar:

smokey-bar

Smokey B'ar

In the context of guitar sales, initial interest confusion is of real consequence. Guitar manufacturers know that they can make sales by placing their guitars in the hands of famous musicians. On a distant stage, a smoky bar, wannabe musicians see their heroes playing a guitar they then want.

As Gibson concedes that PRS produces high-quality guitars, we do not believe such an occurrence could result in confusion harmful to Gibson. If a budding musician sees an individual he or she admires playing a PRS guitar, but believes it to be a Gibson guitar, the logical result would be that the budding musician would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any such confusion.

Fender, nonetheless, forged ahead. This did not go unnoticed: a phalanx of guitar manufactures promptly opposed the application. And now, according to the blog of Musical Instrument Professional magazine, MIPro:

MMR Magazine has reported that FMIC’s US trademark applications concerning its Stratocaster, Telecaster and Precision guitar body shapes have been rejected. Similar applications have previously been rejected, both in the UK and the rest of Europe. Read More…

Best of 2009: “Adverference?”

"The Interloper" (Norman Rockwell)

"The Interloper" (Norman Rockwell)

This was originally published on January 22, 2009:

Working from home today after a bruising few weeks at work (see yesterday’s post!), I finally figured out what was going on with banner ads on my Internet browsing. It raises an interesting question about Internet-related copyright and trademark law.

We use a filtered Internet service at home. It is a service marketed to orthodox Jews such as ourselves.  There are others, too, including the free, self-managed OpenDNS service.  This way we know that not only do our children not have access to or permission to use the Internet, but even if they “happen to” get to it anyway, the worst of the worst is not coming into our house. This is good for the grownups too, of course.

I recently adjusted the filtering level on the service and by virtue of that change the filter now happens to block banner ads. This I did not mind, because many such ads, especially on Yahoo! mail, are quite garish and often rather gross and, frankly, indecent. After this change I also started seeing a filtering message in the place of familiar, and relatively high-class, banner ads on my favorite “big” blogs that feature ads, such as Instapundit. It was not a great aesthetic experience but I got used to it.

A little while later I had the jarring experience of realizing that ads for charity auctions on behalf of orthodox educational institutions — including a client of mine! — and solicitations for fundraising on behalf of penurious young couples in Israel were appearing on that very same site, one of the most popular English-language blogs in the world! Well, I would say Glenn Reynolds is pretty Jewish-friendly, to say the least, but this struck me as pretty odd.

instapundit-jewish-after-all

Once I could focus on the question, however, I realized what was going on: My filtering service was reselling the filtered advertising real estate to advertisers interested in the orthodox Jewish Internet user market!

This seems to raise some interesting questions, doesn’t it? Read More…

Hall of shame

Trademark infringement claims, especially based on Internet use — where no real damage need ever be proved, or even pleaded, to maintain an action — remain the handmaidens of litigants with deep pockets and think skins utilizing the courts to silence critics.  Paul Levy reports:

Jenzabar, a company that makes software systems for colleges and universities, has joined the trademark abusers’ hall of shame by relentlessly pursuing trademark claims against the makers of a documentary film about the student protests at Tiananmen Square.  Jenzabar objects to the fact that, on the handful of pages on a web site about the film that discusses Jenzabar, the name “Jenzabar” appears in the keyword meta tags.

The trademark claims are based on the fact that a Google search for “Jenzabar” brings up the main Jenzabar-related page on the web site about the film in the first ten search results.   But these claims are preposterous, for many reasons.  Not only has Google announced that it stopped supporting keyword meta tags in its search algorithm “many years ago,” (Yahoo! has also dropped keywords) but even if meta tags still mattered, their use would be protected as truthful speech that accurately describes the content of those web pages.  Moreover, trademarks are “infringed” only if users are confused about the source of a product or service, and no reasonable Internet user would be confused about whether Jenzabar is the sponsor of the web page.  Jenzabar also relies on the questionable theory of “initial interest confusion”; but as Public Citizen’s brief explains, that doctrine has no application here and in any event runs afoul of the First Amendment.  [Yeah, Paul!  Tell it! — RDC]

Because the trademark claims are so tenuous, it is hard not to assume that Jenzabar’s real agenda lies elsewhere.

As Paul goes on to explain, it’s not even hard to demonstrate where it does lie.  Hint:  What exactly is the purported (I wouldn’t know first hand) “root of all evil,” again?  Hmm… maybe I’ll look it up in my little red book

The Worm Turns on “Initial Interest Confusion”

Originally posted 2005-10-01 22:05:15. Republished by Blog Post Promoter

Harold Feld, vice president of the Media Access Project, writes about “initial interest confusion,” on the Wet Machine blog:

Two recent developments are worthy of note here. First, the Fourth Circuit reached the right decision in the fight over the jerryfalwell.com website. After nearly ten years of bad decisions by ignorant judges, it is good to see some common sense coming into play. Too bad it is too late to help my former comrade in arms Mike Doughney and his Peta.Org website.

. . .

First, the Jerry Falwell.com case. As the cited article points out, Chris Lamparello uses the domain name falwell.com to criticize Falwell’s position on homosexuality. Falwell won a district court injunction against Lamperello requiring Lamperello to stop using falwell.com because it infringed on Jerry Falwell’s trademark. Much to everyone’s surprise, the Fourth Circuit Court of Appeals reversed. The court found that Lamperello’s site did not infringe on Falwell.

The opinion was a fairly strong win for gripe cites, which the court noted have recently won some good victories in Ninth and Sixth Circuits. The court found that the website in question made clear that it was not affiliated with Falwell in any way, so that no confusion was possible. The court also expressed skepticism about “initial interest confusion” and criticized two very bad cases from the early days of 1998.

“Initial interest confusion” works like this — I use someone else’s trademark to attract your attention, then I sell you my competing product. While not classic infringement, since I have not decieved you into thinking my product _is_ the other person’s product, I have stolen business from the mark holder by using his or her mark.

This doctrine had little currency before the proliferation of the Internet. It was seized upon by a passle of ignorant judges early on who (a) knew they hated the idea that someone other than the commercial mark holder had registered “their” domain name, but (b) couldn’t make out a case for infringement, since just registering a domain name and having it lead to radically different content wasn’t infringement.

So judges came up with this idea that if I, dumb head internet user, typed www.panavision.com and came upon a picture of Pana, Il. instead of the company Panavision, I would become so frustrated with the Internet I would never use it, depriving Panavision of the commercial benefit of my visit. Or so said the Ninth Circuit in Panavision v. Toepen back in the 1990s.

Time goes on and judges eventually catch up with reality. While initial interest confusion might make sense in the context of fungible products, it doesn’t make sense anymore. The _Falwell_ court was critical of early cases such as “Jews for Jesus v. Brodsky,” which found initial interest confusion when someone set up a webpage at jewsforjesus.org that proclaimed “Jews Cannot Be For Jesus! For information about real Judaism, click here” and linking to a website for a traditional Jewish organization. (Jews for Jesus also invented the idea that if your site is non-commercial but links to someone else’s site that encourages a commercial transaction, your use of the website is “in commerce.”)

I’m happy with result but bitter that it took so long and did not come fast enough to help Mike Doughney.

I know the feeling, Harold.

Adverference?

"The Interloper" (Norman Rockwell)

"The Interloper" (Norman Rockwell)

Working from home today after a bruising few weeks at work (see yesterday’s post!), I finally figured out what was going on with banner ads on my Internet browsing.  It raises an interesting question about Internet-related copyright and trademark law.

We use a filtered Internet service at home.  This way we know that not only do our children not have access to or permission to use the Internet, but even if they “happen to” get to it anyway, the worst of the worst is not coming into our house.  This is good for the grownups too, of course.

I recently adjusted the filtering level on the service and by virtue of that change the filter now happens to block banner ads.  This I did not mind, because many such ads, especially on Yahoo! mail, are quite garish and often rather gross and, frankly, indecent.  After this change I also started seeing a filtering message in the place of familiar, and relatively high-class, banner ads on my favorite “big” blogs that feature ads, such as Instapundit. It was not a great aesthetic experience but I got used to it.

A little while later I had the jarring experience of realizing that ads for charity auctions on behalf of orthodox educational  institutions — including a client of mine! — and solicitations for fundraising on behalf of penurious young couples in Israel were appearing on that very same site, one of the most popular English-language blogs in the world!  Well, I would say Glenn Reynolds is pretty Jewish-friendly, to say the least, but this struck me as pretty odd.

instapundit-jewish-after-all

Once I could focus on the question, however, I realized what was going on:  My filtering service was reselling the filtered advertising real estate to advertisers interested in the orthodox Jewish Internet user market!

This seems to raise some interesting questions, doesn’t it?  Read More…