Recent Trademark Challenges in Cyberspace and the Growth of the Initial Interest Confusion and Nominative Fair Use Doctrines

Authors

• Jeffrey M. Becker
• Purvi J. Patel

Abstract

The relatively recent legal doctrines of "initial interest confusion" and "nominative fair use" have become the dominant buzz words for defining the scope of permissible trademark use on the Internet, especially in the on-line advertising context. The prevalence of recent trademark cases applying these doctrines stems from the difficulty involved in assessing trademark liability in cyberspace, particularly when the trademark is not used as visible expression, but is instead used as an invisible tool, such as a metatag or keyword. For example, in its well-publicized opinion of Brookfield Communications, Inc. v. W. Coast Entm 't Corp., the Ninth Circuit adopted the initial interest confusion test with respect to the Defendant's use of a Plaintiff's registered mark in its metatags, noting that the traditional multi-factor likelihood of confusion analysis is not always suitable for assessing trademark liability in the Internet world.

In reviewing the Internet trademark cases decided in the past two years, one thing is clear - the parameters of the initial interest confusion doctrine and the nominative fair use defense have not yet been firmly defined. No clear rules for their consistent application exist. These doctrines are still in their infancy, and because cyberspace trademark issues are virtual and novel, courts are wrestling with their application and formulating brick and mortar analogies to bring about an equitable result. In doing so, courts are attempting to protect the intellectual property rights of companies without creating undue restrictions on competition and consumer choice. This has proven to be a difficult feat. The implications are significant; where the courts ultimately strike the balance will directly impact the future for search engines operators, contextual marketers, and competitive advertising on the Internet.

Recommended Citation

Jeffrey M. Becker & Purvi J. Patel, Recent Trademark Challenges in Cyberspace and the Growth of the Initial Interest Confusion and Nominative Fair Use Doctrines, 9 Computer L. Rev. & Tech. J. 1 (2004)