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.

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Author:Ron Coleman

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11 Responses to “The Worm Turns on “Initial Interest Confusion””

  1. Tal Benschar
    October 5, 2009 at 9:37 pm #

    Sorry, but I find Harold’s reasoning all wet. The problem with initial interest confusion — going back to Mobil Oil v. Pegasus Petroleum — is that you are using someone else’s identity to get a lead on business, even though by the time you clinch the sale everyone understands what’s what. You can’t pretend to be Mobil Oil just to get someone to talk to you, even though you make it clear later on that you really are someone else.

    Turning to the internet, simple domain names (CompanyName.com) are generally understood to represent the company or trademark owner’s site. What would you expect to find at Coca-cola.com? Wal-Mart.com? Bringing it closer to home, most people would think that JerryFalwell.com is maintained by Jerry Falwell or a closely affiliated church. They would likely be quite surprised to find out it is actually maintained by a homosexual critic.

    Some critical websites make their nature clear in their domain name — there is one D.N.J. case involving BallysSucks.com where the site was critical of the Bally’s health club. That kind of a domain name, IMO, is beyond reproach.

    So how come Rev. Falwell’s critic did not use a similar name — FalwellIsAHomophobe.com or FalwellIsWrong.com or something like that?

    Answer: he wants to trick people into thinking, at least initially, that they are going to Falwell’s site.

    In the old days that was called bait and switch. Under Mobil Oil, the owner of the mark used as the “bait” has cause to complain. Same thing applies here.

  2. October 8, 2009 at 5:41 pm #

    A tort, Tal, requires harm.

    Initial interest confusion is an attempt to remove harm from that fundamental common law concept and replace it with a per se or strict liability rule: If you use a trademark on the Internet, you’ve infringed it, period.

    You as much as admit that in your Falwell example:

    Bringing it closer to home, most people would think that JerryFalwell.com is maintained by Jerry Falwell or a closely affiliated church. They would likely be quite surprised to find out it is actually maintained by a homosexual critic.

    Yes? And?

    Surprised people = trademark infringement? You are reading “consumer care” right out of the Polaroid factors all because on the Internet, clicking a link is considered, for some reason, to be a meaningful transaction. And I don’t see what the legal basis is for making this leap and eliminating this factor from the law.

  3. October 8, 2009 at 6:36 pm #

    If the site is for noncommercial purpose, JerryFalwell.org or FalwellIsWrong.org would be more appropriate than the .com address, though.

    • October 8, 2009 at 7:49 pm #

      That’s a nice housekeeping point, Dan, but a long way from liability for trademark infringement!

  4. Tal Benschar
    October 12, 2009 at 9:06 pm #

    Ron, the harm is misappropriation of someone’s name and reputation to get a leg up on the competition. That is the whole point of initial interest confusion. For that matter, that is the whole point of unjust enrichment at common law.

    Suppose I borrow your shovel without asking you, dig a hole on my property (need to plant those tulip bulbs you know) and then return the shovel to you unharmed. Have you been damaged? At most only slightly. Yet that is conversion and if there is a real threat that I intend to repeat that act in the future, then you would be entitled to an injunction (although probably only nominal damages.)

    Supposed I started a blog and named it RonColeman.com. That would be using YOUR name and legal reputation to attract readers. Even if the home page announced in bold letters: NOT RON COLEMAN’S BLOG, then I have committed trademark infringement (assuming your name is a valid mark).

    Your assertion that we are replacing confusion with a “per se or strict liability rule: If you use a trademark on the Internet, you’ve infringed it, period” is simply false. There are many ways to use another’s mark or name which are nonconfusing and hence non-infringing. I think it is clear that the gripe sites themselves (apart from the domain name) are using the trademarks at issue in a non-infringing way — because they make clear that they intend to criticize or “gripe” about the intended target.

    The issue then is the domain name, which is often far from clear. One solution is to include the gripe feature in the name — balleyssucks.com is the classic example (or here, as someone suggested, FalwellsWrong.com) Or one can use more generic names –FundamentalistsAreWrong.Com or GodLovesGays.com, etc.

    One other point. You state:

    “because on the Internet, clicking a link is considered, for some reason, to be a meaningful transaction.”

    You bet it is! Driving traffic to a particular internet site is a goal of every site, and indeed has monetary value. Many sites sell advertising and are recompensed based on the number of “hits” their site achieves. So absolutely yes, getting somone to go to your site in the first place out of the millions of sites out there is something highly coveted and sought after in the internet world and has great value.

    (Compare this to Mobil Oil. One has the impression that the defendant there was a nobody oil company who could not get the time of day, let alone a return phone call, from most potential customers. So he adopted a winged horse as a mark — which reminds one of the famous Mobil Oil. That opened the door to new business. Borrowing someone else’s mark and goodwill for that purpose was, in my view, properly held to be an infringement.)

    Here is the nub, really: why did the defendant pick Falwell.com instead of FalwellsWrong.com as his domain name? He could maintain a website critical of Rev. Falwell’s views on homosexuality and theology just as well (even better I would say) using the latter domain name than the former. The answer is, I suspect, he wanted to attract readers who were interested in Falwell and his views to his own critical site. That kind of deceptive conduct — albeit only initially deceptive — is actionable trademark infringement.

    • October 20, 2009 at 2:47 pm #

      Ron, the harm is misappropriation of someone’s name and reputation to get a leg up on the competition.

      Are you describing, Tal, a mere unearned benefit to me as a harm to you? That is certainly selfish of you! You use the example of the tort of conversion, and say that by using my shovel without permission, and “damaging” it in only a trivial way, you have still converted my shovel, and you say I am entitled to an injunction to prevent me from doing it again. In fact, can you cite a case where an injunction has been issued on a conversion claim? Conversion is in fact a tort of strict liability, which trademark infringement is not; and, everywhere I look, it does in fact have damages as one of its elements. You know: Harm.

      In contrast, if anyone besides you were to a start a blog and name it after me, I probably could prove damages. In your case, however, it would be difficult, given your high level of talent; indeed I might end up owing you money! But that only supports my proposition: Tort remedies should always follow the money, one way or another.

      Here is the nub, really: why did the defendant pick Falwell.com instead of FalwellsWrong.com as his domain name? He could maintain a website critical of Rev. Falwell’s views on homosexuality and theology just as well (even better I would say) using the latter domain name than the former. The answer is, I suspect, he wanted to attract readers who were interested in Falwell and his views to his own critical site. That kind of deceptive conduct — albeit only initially deceptive — is actionable trademark infringement.

      Yeah. I don’t think “attracting” by use of a trademark is “infringing” unless there are trademark damages. Because trademark is a tort. And if you want to make a special rule for domain names based on trademarks, well, that might not be an unreasonable rule of law to posit. But it is not in the Lanham Act.

  5. Tal Benschar
    October 12, 2009 at 9:19 pm #

    BTW, the Fourth Circuit in the Falwell case touched upon, but avoided, a much more fundamental question: whether the use was a “use in commerce.” The website in question was in no way commercial — it did not sell nor advertise any goods or services, nor even solicit contributions of any kind. In fact, from my own checking, it has no advertising at all.

    A much stronger argument, IMHO, is that this is not a use in commerce. The Fourth Circuit noted that issue but decided to rest its decision on a different theory.

Trackbacks/Pingbacks

  1. Ron Coleman - October 8, 2009

    Initial interest confusion: Tal Benschar defends this concept (and see my response) at LIKELIHOOD OF CONFUSION® http://bit.ly/31u3NU

  2. Ron Coleman - October 8, 2009

    Initial interest confusion: Tal Benschar defends this concept (and see my response) at LIKELIHOOD OF CONFUSION® http://bit.ly/31u3NU

  3. InternetLaw - October 10, 2009

    “The Worm Turns on ‘Initial Interest Confusion’” http://tinyurl.com/yjqay4j

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