e-commerce LAW & STRATEGY - Heymann & Partner, Rechtsanwälte

Trademark
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domain names using the word
Nissan. The court found that the
computer firm’s registration resulted
in consumer confusion for several
reasons, including initial interest confusion
and actual confusion.
The court found initial interest
confusion because the Nissan name
might have led a consumer to believe
that it was a Web site for Nissan cars,
and that alone is enough to find consumer
confusion. The court also
found actual confusion because nearly
all the computer company’s revenue
stemmed from visitors to the
Web site clicking on automobile
advertisements displayed on it.
Despite this, the court was careful to
point out that there is a “judicial
reluctance to enjoin use of a personal
name” even when it apparently
infringes on a trademark, but that it
was still possible to limit the use with
a “carefully tailored injunction.”
This case and others resulted in the
enactment of the Anti-Cybersquatting
Consumer Protection Act.
Additionally, the Internet Corporation
for Assigned Names and Numbers
(“ICANN”) adopted its Uniform
Domain Name Dispute Resolution
Policy to provide an alternative to litigation
in dealing with abusive
domain-name registrations.
Meta Tags
The second trademark infringement
issue unique to the Internet
entails meta tags, which provide
Internet page-setting information that
is normally invisible to a user. Meta
tags are commonly used by search
engines, such as Google, to index site
content. The content of meta tags,
when properly used, gives content
some context. Four types of content
are often used as a part of meta tags:
• Resource type;
• Key word;
• Description; and
• Distribution.
The unauthorized use of another’s
mark as an element of meta-tag content
could result in infringement.
The use of registered marks as part
of a meta tag might result in consumer
confusion and, as such, could
8
be a basis for infringement litigation;
for example, the use of various
“Playboy” trademarks in meta-tag
lines. (See, Playboy Enter., Inc. v.
Calvin Designer Label, 985 F. Supp.
1220 (N.D. Cal. 1997) and Playboy
Enter., Inc. v. Torri Welles, 7 F. Supp.
2d 1098 (S.D. Cal. 1998)).
The Seventh and Ninth District
courts have ruled that meta-tag use
might infringe on famous marks.
(See, Promatek Indus. v. Equitrak
Corp., 300 F.3d 808 (7th Cir. 2002);
and Brookfield Communications v.
West Coast Entertainment, 174 F.3d
1036 (9th Cir. 1999)). Both courts
have followed the same line of reasoning,
holding that the “initial interest
confusion” that consumers experience,
regardless of whether it
results in actual confusion once they
are viewing the Web site, is adequate
for the imposition of trademarkinfringement
liability. It should be
noted that the Promatek decision
was amended to state that meta-tag
usage by a defendant come into play
only when the infringing company is
actually using the trademark to
deceive consumers.
Hyperlinks
Hyperlinks are the third trademarkinfringement
issue unique to the
Internet. A hyperlink is an element of
an electronic document that links to
another place in the same document
or to an entirely different document.
Users typically click on the hyperlink
to follow the link to the document to
which it is connected. Hyperlinks are
an indispensable constituent of all
hypertext systems, such as the World
Wide Web. Hyperlink use, however,
has the potential for trademark
infringement, and allegations have
been made that hyperlinks can cause
trademark-infringement problems in
the form of passing off, reverse passing
off, and false advertising.
Framing
Framing is the fourth way that a
trademark can be violated on the
Internet. Framing occurs when one
Internet site displaces another site’s
content by surrounding or framing it
with a portion of its own site. In the
case of TotalNews (The Washington
Post v. TotalNews, Southern District
of New York, Civil Action Number
e-Commerce Law & Strategy ❖ www.ljnonline.com/alm?ecomm
97-1190), the Washington Post and
other newspaper publishers brought
suit against an Internet news site for
using framing technology to display
the news organizations’ information
on the TotalNews site and surrounding
the other content with its own
advertising. This practice was found
to be tantamount to trademark dilution
because the framing practice
was likely to confuse users in that
they would be led to believe that the
source of these advertisements was
the plaintiffs’ newspapers.
DOUBLE JEOPARDY
The special trademark-infringement
problems that the Internet presents
(domain names, hyperlinks,
meta tags and framing) are in addition
to the amplification of traditional
trademark infringement that results
from the worldwide use of the
Internet. Consider the international
trademark-infringement difficulties
faced by Playboy Enterprises. In
Playboy Enter., Inc. v. Chuckleberry
Publ’g, Inc., 687 F.2d 563 (2d Cir.
1982), the Second Circuit Court of
Appeals had granted an injunction,
enjoining Chuckleberry from using
the confusingly similar mark
Playmen for the distribution of
Chuckleberry’s Italy-based magazine.
Despite this judicial result in a parallel
suit brought to enjoin
Chuckleberry’s use in Italy, the
Italian court upheld the use of the
Playmen mark.
Subsequently, in Playboy Enter.,
Inc. v. Chuckleberry Publ’g Inc., 939
F. Supp 1032 (S.D.N.Y. 1996), when
Chuckleberry published an Internet
Web site for its magazine, again
using the mark Playmen, based in
Italy, Playboy brought suit for a violation
of the injunctive order granted
in the prior Playboy v. Chuckleberry
case, citing that the worldwide
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June 2007