ARE WEB SEARCHERS IMMUNE TO INITIAL INTEREST CONFUSION?

Recent case law suggests that the theory of trademark infringement on the Internet based on initial interest confusion may be on the wane, and that companies may feel more comfortable including trademarks other than their own in their Website metatags and purchasing advertisements keyed to another's mark.

Metatags are words invisibly embedded in Web pages. They cause search engines such as Google to identify the tagged Web pages in response to queries containing the tagged term. Many trademark practitioners have objected to the practice of including trademarks other than one’s own in metatags on Websites.

The basis for the objection is initial interest confusion. The theory of initial interest confusion is that a consumer looking for a particular product, if wrongly directed to the source of a similar product, may buy the similar product instead. Picture, for example, a hungry family looking for McDonald’s who see a sign pointing east and follow it to Mac’s Diner. When they arrive, they might just eat at Mac’s rather than doubling back and continuing to search for McDonald’s. Translated to the Web, the thought is that if a competitor were to include the words “Fox Rothschild” in its metatags, one who sees the competitor’s site in the list of sites returned by search for “Fox Rothschild” might go to the competitor’s site instead of the Fox Rothschild site.

At least two courts this year have now rejected the initial interest confusion theory for Internet users. The first was the U.S. Court of Appeals for the 9th Circuit in Toyota Motor Sales v. Tabari, 610 F.3d 1171. In that case, Judge Kozinski wrote:

When a domain name making nominative use of a mark does not actively suggest sponsorship or endorsement, the worst that can happen is that some consumers may arrive at the site uncertain as to what they will find. But in the age of FIOS, cable modems, DSL and T1 lines, reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. They skip from site to site, ready to hit the back button whenever they’re not satisfied with a site’s contents. They fully expect to find some sites that aren’t what they imagine based on a glance at the domain name or search engine summary. Outside the special case of trademark.com, or domains that actively claim affiliation with the trademark holder, consumers don’t form any firm expectations about the sponsorship of a website until they’ve seen the landing page—if then. This is sensible agnosticism, not consumer confusion. So long as the site as a whole does not suggest sponsorship or endorsement by the trademark holder, such momentary uncertainty does not preclude a finding of nominative fair use. (citations omitted.)

The Massachusetts Superior Court adopted the same reasoning earlier this month in Jenezebar v. Long Bow Group, quoting portions of the Toyota opinion and elaborating that: “This court finds that this initial uncertainty does not qualify as confusion and is an inevitable part of Web searching.”

These two cases suggest a possible trend of judicial skepticism regarding initial interest confusion as a theory of trademark infringement on the Internet.
 

A FAIR USE NO BRAINER?

Copyright cases involving contentions of fair use tend to be among the most difficult to handicap. The vagaries of the four factor test (the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion taken, and the effect of the use upon the potential market), and the fact that it seems almost no two fact patterns are ever the same,  often combine to create room for reasonable minds to differ.

How fun, then, to come across a no brainer.  A slam dunk, guaranteed loser for the accused infringer. Add to the mix a famous tweeting author and a misinformed, smart aleck defendant, and the inevitable result becomes all the more entertaining.

HarperCollins v. Gawker was just such a case. Last month, Gawker obtained a pre-release copy of Sarah Palin’s new book

and posted first 21 and then 12 pages of it on its Website without commentary or analysis. Governor Palin got wind of what Gawker had done, and reportedly tweeted “The publishing world is LEAKING out-of –context excerpts of my book w/out my permission? Isn’t that illegal?”, and complained to her publisher which, predictably, sued. One of the folks at Gawker got wind of the Governor’s tweet and, presumably before consulting Gawker’s counsel, reportedly posted on Gawker: “Sarah: If you’re reading this—and if you are, welcome—you may want to take a moment to familiarize yourself with the law. Try starting here or here. Or, skip the totally boring reading and call one of your lawyers. They’ll walk you through it.”

Turns out, the Supreme Court decided a case much like this one in 1985. The appropriate “really boring reading” is Harper & Row Publishers v. Nation Enterprises, 471 U.S. 539. In that case, the Court held that early publication by The Nation of 300 words of the soon to be released memoirs of President Ford, with analysis and commentary did not qualify as fair use. Not surprisingly, the district court HarperCollins followed the Supreme Court and entered a TRO requiring Gawker to take down the excerpts. The case settled shortly thereafter.

I invite to supply your own moral to this story. For me, it’s as simple as “smart aleck infringers provide entertainment for IP bloggers.”