Courts Chip Away at Doctrine of “Initial Interest” Confusion
 
March 4, 2003
 
Stephen J. Jeffries- Washington
Paul F. Kilmer- Washington

As the Internet emerged as a commercial medium and the use of trademarks in cyberspace flourished, several courts held that creating “initial interest” in your product or service by using someone else’s trademark is a factor that may be considered in finding infringement, even if the consumer quickly discovers her error. The typical scenario involved the use of a competitor’s trademark as a metatag in order to secure favorable placement on a search engine hit list.

The U.S. Court of Appeals for the Ninth Circuit has perhaps best illustrated the concept of “initial interest “ confusion.

[Initial interest confusion] is much like posting a sign with another’s trademark in front of one’s store. Suppose [Blockbuster Video] puts up a billboard on a highway reading – “West Coast Video: 2 Miles ahead at Exit 7” – where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast’s store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they will simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast’s acquired good will.

Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 U.S.P.Q.2d 1545 (9th Cir. 1999).

After the decision in Brookfield, many seized upon the concept of initial interest confusion to protect even the least distinctive or commercially successful marks from unauthorized use in connection with any variety of competing or non-competing products.

Recently, however, the prospect of unfair results has led the courts to begin refining the scope of its application.

The chipping away at the initial interest concept might be dated back to the year 2000, when the U.S. Court of Appeals for the First Circuit found that Hasbro could not rely upon “initial interest” in protecting the “CLUE” mark for games against Clue Computing’s use of that designation for wholly unrelated computer consulting and Internet access services. Hasbro Inc. v. Clue Computing, Inc., 232 F.3d 1, 2 (1st Cir. 2000). Now a second decision, Interstellar Starship Services Ltd. v. Epix Inc., 64 U.S.P.Q.2d 1514 (9th Cir. 2002), has further limited the application of the concept by clearly introducing the strength of the plaintiff’s mark – in addition to the relationship between the products of the parties - as a factor to be considered in determining whether “initial interest” confusion is relevant to the infringement analysis.

In Interstellar, the defendant Interstellar’s “product” was, in the main, the Clinton Street Cabaret and its performances of “The Rocky Horror Picture Show.”  By contrast, the plaintiff Epix produced “electronic imaging equipment.” The only “space” in which the parties came into contact was cyberspace; otherwise they were entirely non-competitive.  Under the facts of Interstellar, the court discarded “initial interest” confusion as having any relevance due to the fact that the products and services of the parties were “disparate,” “there was no evidence of actual confusion,” no evidence existed that the defendant adopted its domain name in bad faith to trade upon the plaintiff, and the plaintiff’s mark was not entitled to a broad scope of protection (in this regard, the court found that Epix’s mark was “weak, even in the field of digital imaging equipment”).

Despite the limitations enunciated by the Hasbro and Interstellar courts, “initial interest” confusion remains a potent weapon for the owners of well-known marks or in situations where the defendant has the real potential to trade upon the goodwill of a prior trademark.  Refinement of the “initial interest” concept may in fact encourage courts previously apprehensive of the potential for abuse presented by its unrefined scope to make its use available to deserving plaintiffs.

For more information, contact Steve Jeffries or Paul Kilmer, toll free at 1-888-688-8500.