Breaking new ground for trademark protection on the internet, the Ninth Circuit's recent decision in Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 1999 U.S. App. LEXIS 7779 (9th Cir. 1999), clarified rules for establishing trademark rights in domain names, and for evaluating trademark and web site meta tag conflicts. The decision underscores the importance of adopting trademarks that are fanciful or arbitrary in nature in today's e-commerce driven world.
The dispute in the Brookfield case arose out of the defendant's use of the domain name "moviebuff.com" and the term "moviebuff" in the meta tags for its web site, although the plaintiff owned a federal registration for the MOVIEBUFF. trademark. As the court explained, domain names are akin to public addresses for the internet, while meta tags describe the contents of the web site in hidden computer code for the site. When internet users conduct keyword searches on the internet, search engines typically search for keywords in domain names, web site text and in the meta tags for websites.
Brookfield and West Coast Obtain Conflicting Names and Marks
While the legal rulings in Brookfield break new ground, the facts are not all that unusual, particularly as more and more "brick-and-mortar" businesses expand their business to the internet. Plaintiff Brookfield Communications, Inc., which was founded in 1987, offers MOVIEBUFF. software that features information on films, industry credits, professional film projects, box office receipts, entertainment news and the like. Although Brookfield initially sold its software products only to industry professionals, it expanded its business in late 1993 or early 1994 and now offers less expensive products for individual consumers as well. Like so many other businesses, Brookfield expanded its business to the Internet in 1996.
When Brookfield attempted to acquire the "moviebuff.com" domain name from Network Solutions, Inc., the domain name was unavailable because it already had been registered by defendant West Coast Entertainment Corporation. Since its first choice was unavailable, Brookfield instead acquired the domain names "moviebuffonline.com" and "brookfieldcomm.com" for its web site. Among other things, Brookfield sold its MOVIEBUFF. software through it web site. In 1997, Brookfield applied for a federal registration for its MOVIEBUFF mark and a registration issued about a year later on September 29, 1998.
Defendant West Coast Entertainment Corporation is one of the nation's largest video rental store chains. It had acquired the "moviebuff.com" domain name in February 1996 and in October 1998 planned to launch a web site with an entertainment database similar to Brookfield's MOVIEBUFF. database. West Coast had obtained a federal registration in 1991 for the mark THE MOVIE BUFF'S MOVIE STORE. for retail store services featuring videos and video games. West Coast also claimed to have used a variety of slogans since 1988 that included the term "movie buff," such as "The Movie Buff's Book Guide," "A Movie Buff's Top Ten" and "Movie Buff Film Series.
West Coast is Rebuffed: Court Prevents Infringing Uses of MOVIEBUFF
Fearful that West Coast's site would cause irreparable injury to its registered mark, Brookfield sought to prevent West Coast's launch of its "moviebuff.com" site by filing a complaint and immediately seeking a temporary restraining order to prohibit West Coast's use of "moviebuff" in promotions or advertisements, as a domain name, or in meta tags for its web site.
Although the district court denied Brookfield's request for immediate relief, the Ninth Circuit issued an interim order prohibiting West Coast from using "moviebuff" in promotions or advertisements, as a domain name, or in meta tags. After full briefing and a hearing, the court on April 22, 1999, issued an order requiring the district court to enter an injunction maintaining these restrictions. As described further below, however, the court did not prohibit West Coast from using the two-word term "movie buff" in its meta tags, since that term "is a descriptive term, which is routinely used in the English language to describe a movie devotee." Likewise, the court said that West Coast would be free to use the term MOVIEBUFF to refer legitimately to Brookfield's product.
Domain Name Likely to Cause Confusion
In evaluating Brookfield's claims, the Ninth Circuit determined that the MOVIEBUFF. mark was suggestive and, thus, inherently distinctive and capable of protection as a trademark. The Ninth Circuit also held that Brookfield's rights to the MOVIEBUFF designation predated West Coast's claimed rights because (i) West Coast did not establish trademark rights in the "moviebuff.com" domain name until the fall of 1998, and (ii) its use of the term "Movie Buff" in various slogans and in its registered mark THE MOVIE BUFF'S MOVIE STORE. did not establish rights in the term "moviebuff," alone.
Significantly, the Ninth Circuit held that registration of the "moviebuff.com" domain name "does not in itself constitute 'use' for purposes of acquiring trademark priority." As for West Coast's use of the "moviebuff.com" domain name in e-mail correspondence with lawyers and customers, the court said that this use did not establish trademark rights because it was not "'sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.'"
After establishing that the MOVIEBUFF. mark was protectible and that Brookfield had senior rights to that designation, the Ninth Circuit evaluated whether West Coast's use of "moviebuff" as part of its domain name caused any likelihood of consumer confusion. The court held that, given the internet context of the case, the key factors to consider were (1) similarity of the marks, (2) relatedness of the plaintiff's and the defendant's products, and (3) the simultaneous use of the internet as an advertising channel. Based primarily on these factors, the Ninth Circuit found that confusion was likely because ".com" did little to distinguish "moviebuff.com" from the MOVIEBUFF. mark, the parties were in related fields, and both parties marketed their services on the internet.
Meta Tags Likely to Cause Improper "Initial Interest Confusion"
After finding that Brookfield was likely to succeed in establishing infringement caused by the "moviebuff.com" domain name, the Ninth Circuit separately evaluated whether West Coast's use of the term "moviebuff" in meta tags for its site also was likely to constitute infringement. The court determined that consumers were not likely to be confused by the meta tags, in the traditional sense, because meta tags are not openly visible to consumers searching the internet, and because the initial page of West Coast's web site displays West Coast's own name.
Nonetheless, the Ninth Circuit held that use of "moviebuff" or "moviebuff.com" in meta tags will "result in what is known as initial interest confusion." The court reasoned that, because people looking for the MOVIEBUFF. may be diverted from Brookfield's web site, West Coast would improperly benefit from the goodwill that Brookfield developed in its MOVIEBUFF. mark. As a result, West Coast's use of the "moviebuff" designation in the meta tags for its site was barred by the Lanham Act.
Of critical importance, however, is the fact that the Ninth Circuit expressly preserved West Coast's First Amendment "fair use" right to use the two-word phrase "movie buff" in its meta tags, since this phrase is common in the English language and not a protected trademark.
Brookfield's Two Key Lessons
The Ninth Circuit's recent decision in Brookfield provides at least two important lessons for protecting trademarks. First, the decision underscores the substantial value of adopting trademarks that are not composed of mere generic or descriptive terms. By adopting trademarks that are arbitrary or made-up terms, competitors will not be able to defend their use of the mark or its component parts in the meta tags for their sites. Second, the decision highlights the importance of filing federal trademark applications, particularly for terms used as domain names, as early as possible, to support a claim of trademark rights and rights to those domain names. Mere acquisition of a domain name does not establish rights, but it must be understood that generic or descriptive terms to which ".com" is added are rarely registrable as marks.
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