Internet Trademark Case Summaries
Oracle Corp. v. Light Reading Inc.
233 F. Supp. 2d 1228 (N.D. Cal. 2002).
Plaintiff, owner of the ORACLE trademark for database software, moved for a preliminary injunction against defendant's use of the marks “OpticalOracle” and “WirelessOracle” for two online newsletters for the fiberoptic networking and wireless industries, respectively. Defendant also used their domain names “opticaloracle.com” and “wireless-oracle.com.” The court granted plaintiff’s motion, finding that there was a sufficient likelihood of confusion to support plaintiff's infringement claim, particularly initial-interest confusion. In particular, plaintiff's mark was strong, the parties' marks were sufficiently similar, and both parties used the Internet to promote their products. The likelihood of confusion was not so clear, however, that it required a complete ban on defendant’s use of “oracle.” The court chose to grant only a tailored injunction, however, because the marks were similar but not identical, and because of the probable economic harm defendant demonstrated if a complete ban were imposed. The injunction required defendant: (1) to use its house mark Light Reading on the home pages for the OpticalOracle and WirelessOracle websites immediately preceding or above or below those names and in a comparable size; (2) to portray the word "Oracle" in defendant's marks in the same color as the remaining portions of the marks; (3) to display a disclaimer of any affiliation with plaintiff on its homepages and interior web pages, and in advertisements and other materials associated with the newsletters, in a size at least as prominent as the main text on those materials; (4) to refrain from using the capitalized word "Oracle" alone unless at the beginning of a sentence; and (5) to refrain from using or registering any additional marks, titles, or domain names containing the word “Oracle.” Regarding plaintiff's dilution claim, its likelihood of prevailing was "less evident." The court noted that although plaintiff's mark was a "very well known brand," even outside the database-software field, it was not an "arbitrary, universal household word like 'CocaCola' or 'Kodak'."