Brookfield Communications, Inc. v West Coast Entertainment Corp.
174 F.3d 1036
Facts: P gathers and sells information about the entertainment industry. P first marketed and created software and services for professional in the entertainment industry. P expanded into the broader consumer market with computer software featuring a searchable database containing entertainment-industry related information marketed under the “MovieBuff†mark around December 1993. In 1996, P attempted to request moviebuff.com as a domain name but it was already registered by West Coast. In August of 1997, P applied to the PTO for federal registration of “MovieBuff†as a mark to designate both goods and services for entertainment industry information. D thereafter attempted to launch moviebuff.com . It has used the term “MovieBuff†in connection with its goods and services since 1988.
Procedure: P filed an action in the U.S. District Court for the Central District of California. P applied ex parte for a temporary restraining order enjoining West Coast from using in any manner the mark MOVIEBUFF, or any other term or terms likely to cause confusion therewith, including moviebuff.com. Brookfield communications appeals the district court’s denial of its motion for a preliminary injunction prohibiting West Coast Entertainment Corporation from using in commerce terms confusingly similar to Brookfield’s trademark, “MovieBuff.â€
Issue: Whether federal trademark laws prohibit a video rental store chain from using an entertainment-industry information provider’s trademark in its domain name or web site’s Meta tags?
Held: Yes.
Rule: Where a sizeable number of consumers who were originally looking for P’s product will simply decide to utilize D’s offerings instead, then D is improperly benefitted from P’s goodwill and has infringed upon P’s trademark. The Lanham act bars any individual or company from taking an affirmative action to include in its meta tags any term that is the same or confusingly similar to the trademark owner’s mark.
Rationale: D’s use of the trademark in the meta tags will result in initial interest confusion. A sizeable number of consumers who were originally looking for P’s product will simply decide to utilize D’s offerings instead. D improperly benefits from the goodwill that P developed over its mark.
174 F.3d 1036
Facts: P gathers and sells information about the entertainment industry. P first marketed and created software and services for professional in the entertainment industry. P expanded into the broader consumer market with computer software featuring a searchable database containing entertainment-industry related information marketed under the “MovieBuff†mark around December 1993. In 1996, P attempted to request moviebuff.com as a domain name but it was already registered by West Coast. In August of 1997, P applied to the PTO for federal registration of “MovieBuff†as a mark to designate both goods and services for entertainment industry information. D thereafter attempted to launch moviebuff.com . It has used the term “MovieBuff†in connection with its goods and services since 1988.
Procedure: P filed an action in the U.S. District Court for the Central District of California. P applied ex parte for a temporary restraining order enjoining West Coast from using in any manner the mark MOVIEBUFF, or any other term or terms likely to cause confusion therewith, including moviebuff.com. Brookfield communications appeals the district court’s denial of its motion for a preliminary injunction prohibiting West Coast Entertainment Corporation from using in commerce terms confusingly similar to Brookfield’s trademark, “MovieBuff.â€
Issue: Whether federal trademark laws prohibit a video rental store chain from using an entertainment-industry information provider’s trademark in its domain name or web site’s Meta tags?
Held: Yes.
Rule: Where a sizeable number of consumers who were originally looking for P’s product will simply decide to utilize D’s offerings instead, then D is improperly benefitted from P’s goodwill and has infringed upon P’s trademark. The Lanham act bars any individual or company from taking an affirmative action to include in its meta tags any term that is the same or confusingly similar to the trademark owner’s mark.
Rationale: D’s use of the trademark in the meta tags will result in initial interest confusion. A sizeable number of consumers who were originally looking for P’s product will simply decide to utilize D’s offerings instead. D improperly benefits from the goodwill that P developed over its mark.