You’ve probably never heard of the Initial Interest Confusion Doctrine. You probably don’t want to hear about it now. You probably should turn the page. But let’s face it, even reading this drivel is better than drafting that motion for summary judgment that’s hanging over your head. So sit back and relax. It’s almost quitting time anyway.
The Initial Interest Confusion Doctrine is a little known judicially created hangnail that exists under trademark law. See generally 15 U.S.C. §§ 1114, 1125. (Relax. A little trademark diatribe won’t hurt you.) The doctrine looks at whether the defendant’s use of the plaintiff’s mark was done “in a manner calculated to capture initial consumer attention even though no actual sale is finally completed as a result of the confusion.” Dr. Seuss Entrs. v. Penguin Books (9th Cir. 1997) 109 F.3d 1394, 1405. In order to appreciate its significance, you need to understand how it differs from traditional trademark law.
Trademarks are intended to prevent mistake, deception and consumer confusion with regards to the origin of goods sold. See Time, Inc. v. Motor Publications, Inc., (4th Cir. (Md.), Dec 15, 1955) 227 F.2d 954, 108 U.S.P.Q. 4. Before any infringement can be found, the plaintiff must typically establish a fundamental question a court will ask is whether there is any likelihood of consumer confusion as to the product’s source – or origin – due to a similarity between the parties’ trademarks. E & J. Gallow Winery v. Gallo Cattle Co. (9th Cir. 1993) 967 F.2d 1280, 1290 [15 U.S.C. §§ 1114(a)(a), 1125(a)(1)]. This usually requires an application of a multi-factor test that looks at the strength of the plaintiff’s mark, the similarity of the marks at issue, the area of commerce in which the products at issue are sold, the sophistication of the potential buyers, evidence of actual confusion, and the likelihood that the defendant intends to expand into the plaintiff’s market. AMF Inc. v. Sleekcraft Boats, (9th Cir. 1979) 599 F.2d 341, 348-349.
The Initial Interest Confusion Doctrine has allowed some courts to do away with this traditional analysis, creating a short-cut to infringement, like a judicial game of “Shoots and Ladders”. This is because the doctrine simply considers whether the defendant’s use of the plaintiff’s mark evoked in a potential customer “initial interest”, even if it did not result in ultimate confusion or sale.
If it sounds to you like the Initial Confusion Doctrine relies on an amorphous standard that falls far short of a reasoned analysis, join the club. And that’s the problem. It is so amorphous that it is a potent weapon for keeping legitimate competitors out of the market.
Let’s take a real world example: Let’s say I’m looking online for a new bank where I can park the gobs of cash I make partner at a large national law firm. I mean, I want to make sure that $4.95 stays safe and sound, and grows at a healthy rate. Sure, I’ve heard of Bank of America and feeling in a red-white-and-blue mood, so I decided to have a look at them first.
Now let’s also say that there’s a new bank in town. It’s specifically targeted to partners at large law firms seeking to park their dough each month. It’s called Big Time Partners’ Business Bank of America (“BTPBBA”). When I type “Bank of America” into my search engine, I retrieve a link to BTPBBA, and it appears in the rankings – ahead of B of A. Now let’s assume BTPBBA is distinct enough from B of A that it would fail the “likelihood of confusion” test. With Initial Interest Confusion, a claim for infringement may still lie if I – for a moment – believe that an association exists between the two banks. Remember, the Initial Interest Confusion Doctrine holds that trademark infringement results even where there is no source confusion at the time of the ultimate transaction. Even though I knew that BTPBBA was not B of A before depositing a nickel, the initial confusion I experienced was enough under the Initial Interest Confusion Doctrine. Mobil Oil Corp. v. Pegasus Petroleum Corp. (2d Cir. 1987) 818 F.2d 254, 257-58; Grotrian, Helfferich, Schults., Th. Steinweg Nachf. V. Steinway & Sons (2d Cir. 1975) 523 F.2d 1331, 1341, 42.
That some courts have found infringement under this doctrine without an analysis under the multi-faction test is a major departure from traditional trademark law. Without naming names, a good deal of the blame has to be laid at the collective “feet” of our own 9th Circuit. The Ninth Circuit expressly adopted (and originally coined the name) the Initial Interest Confusion Doctrine in Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, 1061-66. In Brookfield, two online retailers with tangentiually related products went to battle over the defendant’s use of plaintiff’s trademark in defendant’s internet website “metatags.” (Metatags, for those of you who slept through the last decade, are the computerized code words that play some role in attracting internet search engines to a website – although exactly how much of a role is a closely guarded secret.) Rather than applying a traditional analysis, the court applied the Initial Interest Confusion Doctrine, finding that the use of plaintiff’s mark could result in the improper initial interest in defendant’s site, and therefore trademark infringement. The court’s reasoning is encapsulated in its oft-quoted analogy about one video store putting up a billboard that misdirects customers by using the name of its more popular competitor, Blockbuster.
In a nutshell, this is the Court’s example: It’s late at night. You need a movie. You’e driving down a dark, desolate highway far enough from home to justify the mood music that’ playing ominously in the background. You know there’ a Blockbuster somewhere along this stretch of land, but where? Where?! Beads of sweat gather on your forehead like religious zealots at a Republican convention. Then, like a surprise ending to a Hollywood movie, up ahead, you see: Blockbuster Video, this exit. Relieved, you get off, and find… There is no Blockbuster Video. Only a Hollywood Video store!! Now you’re presented with a quandary. Do you: (1) get back on that road to nowhere; (2) go to Hollywood Video; or (3) go home and watch something really insipid, like the 11 O’Clock News. You chose the least scary option you go into Hollywood Video.
Using this analogy, the court reasoned that, despite the fact that you know Hollywood Video is not Blockbuster’s – the intentional misdirection which resulted in you going there (rather than continuing your search for Blockbuster) caused a trademark injury to. What injury, you ask? Hollywood Video captured a customer it would never have found but for the initial interest caused by its use of Blockbuster’s mark. The court concluded that the misappropriation of Blockbuster=s good will injured Blockbuster even though you had no confusion about which video store you were entering when you walked through the door. Brookfield, 174 F.3d at 1064.
The Brookfield example has been repeated time and again by courts adopting the Initial Interest Confusion Doctrine, often without sufficient criticism, critique or analysis. But Playboy, Inc. v. Netscape Enterprises Communications Corp. (9th Cir. 2004) 354 F.3d 1020 (returning to an analysis under the multi-factor test and, in a thoughtful and well-reasoned concurrence by Justice Marcla Bezon, calling for a holding, fresh look at the analogue set forth in Brookfield). But, hello, there is a problem with the Brookfield example, and the reasoning that flows from it. For one thing, there is a huge difference between driving around aimlessly looking for a video store, and simply hitting the ‘go-back’ button on your computer. See Chatam Int’l v. Bodum, Inc. (ED PA 2001) 157 F.Supp.2d 549, 559 (web surfers are accustomed to false starts and are unlikely to be dissuaded when they end up at the wrong site.) Let’s try this again: driving around for another 15 minutes on the Highway to Hell because you are jonesing for some Heather Graham flick that’s available at any video store, or spending two seconds and hitting the ‘go back’ button. Had any judge on that panel ever surfed the web? Any run a search engine inquiry? The billboard analogy is just plain wrong, and has made for bad law, for several reasons.
First, it ignores the real-life difference between distraction and outright hijacking. See Playboy, supra, 354 F.3d at 1036. To expand on the example given by Judge Benson in Playboy, consider a customer searching for a Playboy magazine who is distracted by the Hustler magazine next to Playboy on the shelf. Now granted, this is a little different from Brookfield because Hustler hasn’t placed a sign at the newsstand with an arrow proclaiming “Playboy this way.” But what if Hustler has an agreement with the newsstand that provides Hustler will always be shelved just to the left of Playboy, and any customer who asks for Playboy will be told “Look for the Hustler and you’ll find it.” If, based on this, the consumer picks up the Hustler instead (ok, assume that the consumer isn’t interested in the articles in Playboy after all), does this really amount to trademark infringement? Is there any confusion as to the source or sponsorship? Is this hijacking or merely distraction? When divorced from the multi-factor test for determining a likelihood of confusion, it becomes easy to find infringement because the Initial Interest Confusion Doctrine lacks any vigorous evaluative standard for assessing whether the conduct amounts to trademark infringement. See Government Employees Insurance Co. v. Google, Inc. (2004) 330 F.Supp.2d 700 (finding that Google’s AdWords program, which sells a service that allows a company’s sit to appear as a “sponsored link” when a search is run using a competitor’s mark, was not likely to cause confusion, and thus did not amount to infringement.)
Secondly, the Initial Interest Confusion approach is a departure from the core principal of trademark law because it finds infringement where there is only a fleeting confusion, which is dispelled before any purchase. What is the policy justification for finding infringement where the consumer is not confused at the time of purchase? Isn’t more information, and competition between vendors, in the consumer’s best interest? Until clear policy and evaluative standard are articulated, the Doctrine can only lead to problems. For example, the Initial Interest Confusion Doctrine has been used to curtail parodies, (See Dr. Seuss, supra.) criticism about the trademark owners, (OBH, Inc. v. Spotlight Magazine, Inc. (W.D.N. 4 2000) 86 F.Supp.2d 176; J.K. Harris & Co. v. Kassell (N.D. Cal. 2002) 2002 WL 1303124, rev’d (N.D. Cal.2003) 253 F.Supp.2d 1120)), directory information about used equipment dealers, (Caterpillar Inc. v. Telescan Techs, LLC ((C.D. Ill2002) 2000 U.S. Dist Lexis 3477; PACCAR Inc. v. Telescan Techs, LLC (6th Cir. 2003) 319 F.3d 246), and promotions by third party vendors of after-market servicing. See Promatek Indus. Ltd. v. Equitrac Corp. (7th Cir. 2002) 300 F.3d 808. What’s next? Or better, what’s left?
And worst of all, (ok, I’m venting) the Initial Interest Confusion Doctrine is totally unnecessary. The Lanham Act clearly spells out what constitutes trademark infringement, and what the plaintiff must prove in order to prevail on an infringement claim. See 15 U.S.C. §§ 1114(1)(a), 1125(a)(1). Certainly, an application of the traditional multi-factor test would provide a good starting point to determine whether there is a likelihood of confusion in the context of initial interest confusion, just like in a traditional infringement analysis.
If courts are truly intent on permitting claims for infringement for momentary confusion or diversion (especially where no sale results), then emphasis should be placed on the defendant’s intent. This is already one of the factors considered in the multi-factor test, and it appears at the crux of the Brookfield analogy itself (i.e., an intent to, in effect “bait and switch”). Moreover, intent is what the courts look to when addressing other internet-related infringement issues, as set forth in the cyber piracy provision of the Lanham Act. 15 U.S.C. §§ 1125(d)(1)(B)(i). Borrowing from that statute, courts should consider the defendant’s prior use of the plaintiff’s mark in connection with bona fide offerings, the defendant’s fair use and non-commercial use of plaintiff’s mark, and the defendant’s intent to divert consumers in a way that could cause the plaintiff quantifiable harm (e.g. highjacking, not merely distraction). Finally, it wouldn’t hurt if courts considered the subjective intent of the searchers when looking for the goods and services at issue, but that’s asking for a lot.
Now, as you’re heading towards the end of this article, and wondering why you started it in the first place, let me tell you that compounding the confusion over the Initial Interest Confusion Doctrine is a recent case out of a federal district court in Virginia, Government Employees Insurance Co. (“Geico”) v. Google, Inc., 330 F.Supp.2d 700 (E.D. Pa 2004). That case arose out of the Google “AdWords Sandbox” tool, which allows advertisers to purchase “key words.” When a purchased keyword is typed into the Google search engine, the search result includes a “sponsored link.” For example, in the Geico case, a competing insurance company purchased the word “Geico” as a keyword. As a result, anyone who searched for Geico using the popular search engine also found a sponsored link to the competitor’s site. (Does this ring any bells with you? Doesn’t this sound a lot like driving down the freeway, looking for a Blockbuster video store when up ahead you see… oh, never mind.) No surprise, Geico sued for trademark infringement.
Without ever addressing the Initial Interest Confusion Doctrine, the Geico court found insufficient evidence that Google’s use of plaintiff’s trademark as a keyword to trigger defendant’s sponsored link was likely to cause confusion, which you will remember is the hallmark of trademark infringement. This is a striking ruling, both because it cuts directly against the Brookfield analysis, and because – are you ready for this? – the court also held that sponsored links which display the plaintiffs mark do violate the trademark law. Under that ruling, which applied a traditional trademark analysis, there simply is no such thing as the Initial Interest Confusion Doctrine. If there were, it would have existed under those facts.
But wait, Google lost a very similar case in France within weeks of the Geico ruling. But, hey, that’s France. They eat frogs and snails and kiss on both cheeks, so let’s set that aside for now.
The bottom line is that this whole convoluted doctrine needs straightening out, and I have just the people to do it. The Ninth Circuit got things rolling with its wacky ruling in Brookfield, and it’s time they got together and set the record straight. A collective “just kidding” would be nice, but a little clear analysis and direction for the future would be better. (Help us out here, folks, would you?) Although “confusion” is at the core of trademark infringement, it shouldn’t be at the heart of this doctrine.
Okay, diatribe’s over. Back to work!