Course No.: 9200 710 801
Course ID:  17261
Tu 6:30-9:30 p.m.
Room W-215
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2008   Jay Dratler, Jr.  
For permission, see CMI.

Notes and Questions on Playboy v. Netscape and Brookfield

1.  The universal standard for trademark infringement (or for unfair competition in the nature of trademark infringement) is likelihood of confusion.  See Jay Dratler, Jr., Intellectual Property Law: Commercial, Creative and Industrial Property § 10.01 (Law Journal Press 1991, updated semiannually).  But confusion as to what?  Over the years the courts have expanded and categorized the types of confusion that the trademark-infringement standard recognizes.

2.  The oldest and simplest type of confusion is confusion as to the source or origin of goods or services, i.e., as to who produces or offers them.  For example, in the paradigmatic case of "passing off," the defendant causes confusion by making customers think that its goods or services come from someone else.  See William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 527-528, 530, 44 S.Ct. 615, 68 L.Ed. 1161 (1924) (drug maker induced druggists to pass off its combination of chocolate and quinine as plaintiff's unpatented mixture by selling it wholesale at lower price and suggesting that druggists sell it as plaintiff's, for higher price, and pocket the difference).  This type of confusion might be called "point-of-sale" confusion because the consumer buys a product or service thinking it is produced or sold by someone other than the actual producer or seller.

3.  A second type of confusion is also easy to understand: confusion as to sponsorship, affiliation or approval.  If a well-known mark is used for goods or services not produced by the trademark owner, the purchaser may think that the trademark owner, although not actually producing or selling the goods or services, sponsors or approves of them or is affiliated with the actual producer.  This type of confusion occurs commonly in modern commerce because mergers, acquisitions, affiliated groups of companies, and trademark licensing are so common.  As a result, even a well informed consumer might be led to think that there is some such relationship between the offeror of a good or service and the trademark owner, even if there is none.  See Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing Co., 510 F.2d 1004, 1012 (5th Cir.), cert. denied, 423 U.S. 868 (1975) (unauthorized use of National Hockey League teams' insignia on cloth emblems created likelhood of confusion as to source or sponsorship).  Can you articulate precisely how this sort of confusion harms consumers and mark owners?  what trademark policies it implicates?

4.  Once one moves beyond confusion as to source, sponsorship, affiliation or approval, however, the sorts of confusion that the law recognizes require a little more explanation.  One additional variety of confusion, called "post-sale" confusion, depends on prospective purchasers of similar goods bearing similar marks viewing them in a third party's possession after purchase.  The classic case is Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 822 (9th Cir. 1980), in which Levi's won an injunction against Wrangler's use of Levi's registered pocket tabs, even though Wrangler's competing jeans were prominently labeled at the point of sale.  As articulated better in later cases, the theory was that prospective buyers of jeans generally would see people wearing the Wrangler jeans without the labels and take them for Levi's jeans, thereby putting Levi's goodwill and reputation beyond its control.  See also, Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148-149 (4th Cir. 4th Cir. 1987) (imitation of plaintiff's polo player symbol on front of shirt would cause post-sale confusion notwithstanding label on inside of back of neck).

5.  The final variety of confusion is the one at issue in Playboy v. Netscape and Brookfield: so-called "initial interest confusion."  Unlike post-sale confusion, initial interest confusion affects that actual purchaser of a product or service, and not a third party.  The theory is that, although the purchaser learns by the time of sale that the trademark owner is not the source of the goods or services, their seller has gained an opportunity to make the sale by trading on the goodwill associated with the trademark.  After using the trademark (without authorization) to eliciti the purchaser's "initial interest," the seller says, in effect, "we're not the company you wanted, but we can offer you something just as good, or maybe cheaper."

The Brookfield court cited this kind of confusion in enjoining the use of plaintiff's trademark "MovieBuff" (with no space) as part of defendant's domain name "moviebuff.com," and in defendant's metatags (hidden HTML code used to attract search engines) for similar movie-related and movie-industry-related information services. It did so although defendant's Website was prominently marked with defendant's own name, trademarks, and contact information.  See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1057-1058, 1061, 50 U.S.P.Q.2d (BNA) 1545 (9th Cir. 1999) (domain name); 174 F.3d at 1062-1066 (metatags).  Playboy v. Netscape, of course, involved neither domain names nor metatags, but so-called search-engine "keys."  Such a key is a list of words which a Website can "purchase" from a search engine, so that links to the Website appear in the list of search results whenever the user types in one or more words on the "key" list as part of a search request.  

6.   Which type of activity produces the most egregious type of initial interest confusion and why: (1) using plaintiff's trademark as a domain name; (2) using it as one of several or many search terms in metatags hidden in one's own Web pages; or (3) using plaintiff's trademark as one of the words in the list in a search-engine key?  Can you articulate reasons for your answer?  As you consider these questions, consider the major policies of trademark protection: (1) providing consumers with an efficient "shorthand" language to identify goods and services quickly and reliably in the marketplace; (2) avoiding consumer confusion and the disappointment, frustration and inefficiency that it produces; (3) protecting producers' investment in the quality and reputation of their goods and services, thereby providing an incentive to make that investment; and (4) preventing "dirty tricks," i.e., unfair competition, by which a rival reaps where he has not sown.  See generally, Jay Dratler, Jr., Intellectual Property Law: Commercial, Creative and Industrial Property § 9.02[1] (Law Journal Press 1991, updated semiannually) (discussing trademark-protection policies and citing authorities).

7   It is black-letter trademark law that truthful comparative advertising is not trademark infringement, even if it relies on unauthorized use of a rival's trademarks to make the comparison.  See generally, Dratler, supra, § 10.04[2].  For an extreme case, see Societe Comptoir de L`Industrie Cotonniere Etablissements Boussac v. Alexander's Department Stores, 299 F.2d 33, 35-36 (2d Cir. 1962).  Is using a rival's trademark in a metatag or search-engine key just another form of comparative advertising?   Is it under the circumstances described in Playboy v. Netscape?  Is using a rival's trademark as your own domain name just another form of comparative advertising?

8.  Comparative advertising usually relies on the defense of trademark "fair use," as outlined in Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4).  Most courts say the defense has two elements: (1) descriptive (non-trademark) use and (2) good faith.  Which of these elements was most at issue in Playboy v. Netscape?  in Brookfield?   Did the defendant's use of "moviebuff.com" as its own domain name support or undermine its defense of fair use with respect to the metatags?   Why?

As explained in Playboy v. Netscape, the Ninth Circuit applies a special doctrine, called "nominative use," rather than the general doctrine of trademark fair use, whenever confusion seems likely.   The requirements of nominative use are outlined in the court's decision at footnote 21.  Is it narrower or broader than the general doctrine of fair use?  Is it consistent with the statute?  with trademark policy?

9.  With regard to comparison shopping, do you remember the old yellow-pages slogan, "let your fingers to the walking?"  If the telephone greatly assisted comparison shopping (especially in inclement weather), isn't the Web the greatest comparison-shopping tool yet invented?  Some Web browers (such as Netscape and Safari) now provide a feature known as "tabbed browsing."  See Walter S. Mossberg, "For Tabbed Browsing and Other New Tricks,
Try Explorer's Rivals," Wall Street Journal, Thus. Jan. 8, 2004 at B1.
[YOU HAVE TO HAVE A SUBSCRIPTION OR REGISTER FOR A FREE TRIAL SUBSCRIPTION TO USE THIS LINK.]  This technology allows you (among other things) to open a series of screens containing prices, features, and pictures of competing products simultaneously and switch among them with a single click of your mouse.  Search engines, which rely in part on key lists and metatags, are what make this type of shopping possible, for you have to locate the desired Websites from among tens of millions before you can use product-specific screens like this to comparison shop.

10.  Are trademarks a valuable tool for comparison shopping?  Is using them for that purpose consistent with the policies underlying trademark protection?  In particular, is comparison shopping consistent with the economic policy of providing a reliable, efficient "shorthand" language for identifying products and services?

Which approach toward the use of trademarks in metatags and search-engine keys best accomodates use of the Web for comparison shopping and, at the same time, promotes trademark-protection policies: (1) the approach of the Brookfield court; (2) the approach of the majority in Playboy v. Netscape; or (3) the approach of Judge Berzon, concurring in Playboy v. Netscape?  Can you justify your answer?

11.  Suppose that you were Netscape's general counsel, and that the Ninth Circuit had just handed down its decision in Playboy v. Netscape.  What, if anything, would you advise Netscape to change in: (1) its use of search-engine keys; (2) its restrictions on how customers can purchase and use those keys; (3) the words used in the keys; and (4) its hit-monitoring and pricing practices?   How would you explain and justify your recommendations to Netscape's CEO?

12.  In its analysis of likelihood of confusion, the Brookfield court made much of the fact that the defendant's domain name and metatags, like plaintiff's trademark, had no space between the words "movie" and "buff."  See Brookfield, supra, 174 F.3d at 1049, 1066.   Indeed, that court opined that defendant could use the words "movie buff" in its metatags, but only with the space.  See id. at 1066.  Is this result appropriate, or is it legal hairsplitting?  Is it consistent with custom and usage of words on the Web?  in domain names?  in metatags?  Is it consistent with the law's general approval for comparative advertising?  Is it necessary to protect trademark owners' legitimate interests?

13.  For Web pages drafted in native HTML ("hypertext mark-up language"), you can view hidden metatags by using the "View: Source" or "View: Page Source" feature of your Browser's menu.  The metatags word lists will appear after an HTML "tag" or marker containing the word "meta".  You can search for such a tag visually or use your Browser's "Edit: Find and Replace" feature.  Many Web pages today, however, are generated on demand by scripting programs such as PHP.  You may not be able to display the "page source" or "source HTML code" for these pages, and so you may not be able to view their metatags.

14.  In the early days of search engines, some would "rank" search results by the number of times a particular word or phrase appeared in the Web pages, whether in text or metatags.  (Most search engines are now more sophisticated and use other ranking techniques.)  Suppose one of Netscape's customers had put the mark "Playboy" one hundred times in the metatags for his home page, so that, in a search for "Playboy," his Website appeared first, even before PEI's own and affiliated sites.  Should he be liable for trademark infringement or unfair competition as a result of these acts?  What if his metatags include the words "nude women" one hundred times,with the same operational result?

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