A. INTRODUCTION

B. TRADEMARK INFRINGEMENT

C. DOMAIN NAMES, METATAGS, AND BANNER ADVERTISING: DEFINITIONS

The legal norms of the Internet are often described by reference to the "Wild, Wild, West," where shoot-from-the-hip practices and rough justice trump the norms of civil society. In Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999), the Ninth Circuit made this frontier a little tamer by resolving two recurrent issues: (i) who prevails in a contest between a trademark owner and the owner of a domain name incorporating the trademark, and (ii) whether a Web site owner may use another entity's trademark as a metatag (hidden code on a Web site). The court applied traditional trademark principles to these issues and concluded that West Coast should have been preliminarily barred from using "moviebuff.com" as its domain name and in metatags on its Web site, because Brookfield had priority of use of the trademark "MovieBuff" and there was a likelihood of confusion between "moviebuff.com" and "MovieBuff."

The following discussion kicker is based on the Brookfield decision, as well as other recent significant trademark decisions relating to the Internet.

A TRADEMARK can be a word, phrase, symbol, design, or a combination of these elements used to distinguish the source of goods or services. Trademarks arise from use, although certain advantages flow from registration of trademarks that do not arise from use alone.

LIKELIHOOD OF CONFUSION is the hallmark of trademark infringement. The circuit courts of appeal use various tests of likelihood of confusion, but all are multi-factored tests that take into account such things as the marketing channels used by both parties and the degree of care likely to be exercised by consumers of the goods or services at issue. The Ninth Circuit generally uses an eight-factor test known as the Sleekcraft test, which includes the following non-exclusive factors:

1. Similarity of the marks

2. Relatedness of the goods

3. Marketing channels

4. Strength of mark

5. Alleged infringer's intent

6. Evidence of actual confusion

7. Likelihood of expansion of product lines; and

8. Level of purchaser care.

DOMAIN NAMES are administered by a number of entities. Until recently, all domain names ending in ".com" were administered by Network Solutions, Inc. None of the companies that administer domain names perform any trademark search to determine whether an individual or entity seeking to register a given domain name will infringe another's trademark rights by using that name.

METATAGS are hidden code on a Web site, which is invisible to the human reader, but which can be read by search engines. Metatags are also referred to as "buried code," "machine readable code," or "hidden code." The practice of using metatags to skew search results such that a Web site is ranked higher in the search results than it would be based only on the text visible to the human reader is sometimes called "cyber-stuffing."

BANNER ADVERTISING is advertising space commonly found at the top of a page of search results - a listing of Web sites generated based on terms typed into a search engine. The ads are often animated and are designed to induce an Internet user to click on them and be transported to the advertiser's Web site.

In the Internet context, the first 3 factors above - SIMILARITY OF THE MARKS, RELATEDNESS OF THE GOODS, and the MARKETING CHANNELS -- have been considered the most important factors, although the Brookfield court cautioned that the test is "pliant," particularly in the context of emerging technologies such as the Internet.

1. Similarity of the Marks Courts analyze whether the marks at issue are similar in sight, sound, and meaning. In Brookfield, the court concluded that the marks MovieBuff and moviebuff.com were essentially identical in sight, sound, and meaning, because the differences between them were inconsequential in the Internet context, where addresses are not caps-sensitive and ".com" merely signifies a commercial site.

2. Relatedness of the Goods/Services In considering the relatedness of goods or services, the focus is on whether the consuming public is likely somehow to associate the infringer's goods with the trademark owner. In Brookfield, the court cautioned that the focus should not be on each company's "prime directive" - in other words, the district court had erred in that case by focusing on each party's principal line of business, which over-emphasized the fact that West Coast's Web site was used more by amateur movie enthusiasts than by the entertainment industry professionals who made up Brookfield's primary consumers.

3. Marketing Channels "Simultaneous use of the Web as a marketing channel," as in Brookfield, favors the trademark owner.

DILUTION is "the lessening of the capacity of a famous mark to identify and distinguish goods or services." (15 U.S.C. § 1127.) Dilution is not intended to serve as "mere fallback protection" for trademark owners unable to prove infringement. (Playboy Enterprises v. Netscape Communications, 1999 WL 428233, *4 (June 24, 1999)). Rather, to establish dilution, a plaintiff must prove (1) that the defendant made use of a mark sufficiently similar to the famous mark to evoke in a relevant universe of consumers a mental association of the two that (2) has caused (3) actual economic harm to the famous mark's economic value by lessening its selling power as an advertising agent for its goods and services. (Id.)

The Ninth Circuit addressed dilution in another recent decision, Avery Dennison Corp. v. Sumpton, 1999 WL 637085 (9th Cir. Aug. 23, 1999), and applied a very strict standard for determining what qualifies as a "famous" mark for purposes of the federal and California anti-dilution statutes. The court held that commercial use of the words "avery" and "dennison," which happen to be trademarks, did not constitute dilution where the alleged infringer was profiting on the use of the words as surnames, not as trademarks.

With Internet usage ever increasing and electronic commerce becoming more and more mainstream, it will become increasingly important to retain a domain name once it has been chosen and registered. The most important thing a domain name registrant can do to retain its domain name is establish its own trademark rights in the name at the earliest possible time. Short of launching the site, widespread publicity, such as a press release announcing the future launch, can start the trademark "use" clock ticking in favor of the registrant, as discussed in the accompanying Q&A. Given the time and expense of launching a Web site, and the disruption that will likely result if a site has to be shut down because of a trademark dispute, it is wise to consult an attorney and conduct a professional trademark search prior to committing to a particular domain name.

YADDA, YADDA, YADDA

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