Internet Trademark Case Summaries

Brookfield Communications Inc. v. W. Coast Entm't Corp.

174 F.3d 1036 (9th Cir. 1999)

Plaintiff owned the federally registered mark “MovieBuff” for a database of information pertaining to the motion picture and television industry. When defendant, a large video rental store chain, attempted to launch a website at “www.moviebuff.com” where it would provide a similar searchable entertainment database, plaintiff filed suit for trademark infringement and dilution. When plaintiff moved for a temporary restraining order, the district court construed it as a preliminary injunction and denied the motion, finding that defendant was the senior user of the mark “MovieBuff” and that plaintiff had not established a likelihood of confusion. Shortly after defendant posted its website, the Ninth Circuit granted plaintiff’s emergency motion for relief pending appeal. In this opinion, the Court of Appeals reversed the district court’s denial of plaintiff’s motion for preliminary injunction.

The appellate court first determined which party had priority in the “MovieBuff” mark. Defendant claimed that its use of the registered mark “The Movie Buff’s Movie Store” constituted use of “moviebuff.com” sufficient to defeat plaintiff’s claim of priority. The court explained, however, that tacking of an earlier date may be permitted only where the marks created the same continuing commercial impression. Here, the marks were different in that the latter contained fewer words, omitted a space, and added “.com” at the end. The court thus focused the analysis on the date that defendant began using the actual “moviebuff.com” mark. Noting that the mere registration of a term as a domain name does not constitute “trademark use,” the court determined that defendant first used the mark in November 1998, when it first announced its website in a public and widespread manner. The court also rejected defendant’s argument that it first “used” the mark by including it in limited e mail correspondence to its lawyers and a few customers. It thus held that the plaintiff had established priority by virtue of its federal registration of the mark some fifteen months earlier.

Turning to the issue of likelihood of confusion, the Ninth Circuit noted that the district court had erroneously compared defendant’s “moviebuff.com” domain name with plaintiff’s “moviebuffonline.com” domain name rather than with plaintiff’s registered mark “MovieBuff.” Properly compared, the court noted, the marks were essentially identical, with differences only in capitalization and the addition of “.com.” Because it was common for corporate names or trademarks to be used as second-level domain names, these differences were of minimal importance. The court then considered the relatedness of the parties’ goods or services. It found that both parties offered products and services relating to the entertainment industry, primarily to movies. It also held that the parties both utilized the Internet as a means of marketing and advertising. As a result of these factors alone, the court concluded that the plaintiff had made a strong showing of a likelihood of confusion. It did, however, consider the remaining factors and determined that they did not weigh heavily against the plaintiff to sway the court’s initial conclusion. The court addressed and rejected defendant’s laches defense, noting that although plaintiff did not file suit when defendant first registered the “moviebuff.com” domain name, it did so the same day that defendant publicly announced the launch of its website.

Plaintiff also sought relief enjoining defendant from using the “MovieBuff” mark as metatags or buried HTML code. The court determined that use other than as a domain name was not likely to cause consumer confusion. If a consumer entered the term into a search engine, the results would probably pull up both defendant’s and plaintiff’s websites, and the consumer could choose between the two. Furthermore, even if defendant’s site was chosen, it would prominently display defendant’s own mark, and a consumer would not likely be confused. The court explained, however, that use of “MovieBuff” as metatags was likely to cause initial-interest confusion, which is actionable. A consumer intending to find plaintiff’s website might instead stumble upon defendant’s site and decide to stay there, despite having full knowledge that it is not the plaintiff’s website. The court thus found that use of the plaintiff’s mark as metatags constituted a type of misappropriation of goodwill, and it enjoined such use. Finally, the court addressed the defendant’s fair-use defense. It held that defendant was free to use the term “movie buff” in a descriptive sense. It could not, however, use the term without a space between the two words—a crucial distinction that changes the meaning of the term from describing a “motion picture enthusiast” to designating the source of plaintiff’s goods and services. The court noted that defendant was not barred from using plaintiff’s mark to describe the plaintiff’s product. It could, for example, include some form of comparative advertising on its website.