Use of Others’ Trademarks on Internet Web Sites
May 13, 2003
Daniel K. "Dan" Hampton- Boston
Three recent cases from the U.S. Court of Appeals for the Sixth Circuit illustrate and clarify various facets of the use of trademarks on Internet Web sites. In PACCAR Inc. v. TeleScan Technologies, the court considered the use of trademarks in domain names and the fair-use defense. In The Taubman Company v. Webfeats, the Court looked at cybergriping and complaint names. Most recently, in Interactive Products Corporation v. a2z Mobile Office Solutions, Inc., the Court was confronted with the use of a competitor’s trademark in the post-domain path name of a Web site. Each of these cases has lessons for trademark holders evaluating Web sites that use their trademarks, and web site owners considering the use of someone else’s trademark.
Domain Names and Fair Use – The PACCAR Case
PACCAR owns the registrations for the “Peterbilt” and “Kenworth” trademarks for heavy trucks and truck parts, and administers a truck locator service on its Web site to allow consumers to find used Peterbilt and Kenworth trucks available for sale from authorized dealers. TeleScan owned several Web sites providing truck locator services, including peterbiltnewtrucks.com, peterbuiltusedtrucks.com, kenworthnewtrucks.com, and kenworthusedtrucks.com. In addition to its use of PACCAR’s trademarks in the domain names, TeleScan displayed the marks in the wallpaper underlying the Web sites in a graphic form similar to the fonts used by PACCAR. TeleScan also used PACCAR’s trademarks in metatags, keywords invisible to viewers of the site but used by Internet search engines to identify content on the sites. Each Web site contained a link to PACCAR’s own truck locator site and a disclaimer stating that it had no affiliation with the manufacturer whose branded products are listed. PACCAR asserted that TeleScan’s use of its trademarks was infringing. TeleScan claimed its use of the trademarks was a permissible, generic, fair use.
The trial court granted a preliminary injunction preventing TeleScan from using the marks based on its finding that PACCAR would likely win its trademark infringement claim. On appeal, the Sixth Circuit reaffirmed the general principal that domain names can identify the source of goods for consumers, and thus can be considered in determining whether consumers will be confused by an allegedly infringing use of a trademark. The Court then reviewed the trial court’s application of an eight-factor test for likelihood of consumer confusion, and found that TeleScan’s use of PACCAR’s trademarks in its domain names and on its Web sites, offering similar truck locator services on the Internet, made it likely that consumers would be confused by TeleScan’s use of the trademarks. TeleScan’s disclaimers were insufficient, among other reasons, because they did not prevent the problem of initial interest confusion, discussed in detail in Stephen Jeffries and Paul Kilmer’s article “Courts Chip Away At Doctrine Of ‘Initial Interest’ Confusion” from the last issue of the Holland & Knight Intellectual Property and Technology News, which can be found online at /id24660/publicationid2074/returnid31/.
The Court then went on to consider TeleScan’s defenses of “fair use,” “nominative fair use” and “first sale.” The Court found that the fair-use defense for trademarks essentially arises when someone is using the mark in a nontrademark sense to describe the goods of the trademark’s owner. TeleScan argued that its use of PACCAR’s marks was a fair use because TeleScan was using the marks to truthfully identify the trucks available through its Web site. The Court rejected TeleScan’s application of the fair-use defense, reasoning that TeleScan’s use of PACCAR’s marks, in total, was likely to confuse consumers about the relationship between TeleScan and PACCAR. Because consumers were likely to be confused, the court found that TeleScan was using PACCAR’s marks in their trademark sense, and the fair-use defense did not apply.
The court noted that the nominative fair-use defense applies when a defendant uses a trademark to describe, not its own product, but the trademark holder’s. Here, similarly to its fair use claim, TeleScan argued that it was using the marks to truthfully describe the Kenworth and Peterbilt trucks that its locator service listed. The court similarly found the nominative fair-use defense unavailable to Telescan because it was using PACCAR’s trademarks not only to describe the trucks, but also in its Web site domain names to describe the locator services it was providing. The Court also rejected TeleScan’s first-sale defense, which applies when a purchaser does no more than stock, display and resell a producer’s product under the producer’s trademark. Here, the Court found Telescan’s use went beyond mere reselling.
The court left one issue open, whether TeleScan’s use of PACCAR’s trademarks in metatags for its sites, alone constituted trademark infringement. Because the parties had not adequately presented this issue to the trial court, the Sixth Circuit removed the injunction as to metatags alone and sent the case back to the trial court for further consideration.
Cybergriping and Complaint Names – The Taubman Case
In The Taubman Company v. Webfeats, the Sixth Circuit faced issues of “complaint names” and “cybergriping” – Web sites criticizing or protesting the conduct of others – in addition to a traditional infringement claim. In this case, Henry Mishkoff, d/b/a Webfeats, learned that the Taubman Company would be opening a shopping mall called “The Shops at Willow Bend” near his home. Mishkoff registered the domain name shopsatwillowbend.com. He created a Web site at that address that he characterized as a “fan site,” featuring information about the mall and links to individual Web sites of the tenants’ stores. The site contained a disclaimer making it clear that it was unofficial, and contained links to the official site. It also contained a link to Mishkoff’s Web site design business, Webfeats, and a link to his girlfriend’s custom-made shirt business, shirtbiz.com.
Taubman demanded that Mishkoff take down the site, and when Mishkoff refused, it brought a lawsuit claiming that Mishkoff’s use of the domain name shopsatwillowbend.com infringed on its registered trademark “The Shops at Willow Bend.” Mishkoff removed the link to shirtbiz.com from his site, but refused to take down the site itself, and the trial court granted a preliminary injunction against its use. Mishkoff promptly registered the domain names: taubmansucks.com, shopsatwillowbendsucks.com, theshopsatwillowbendsucks.com, willowbendmallsucks.com and willowbendsucks.com. The trial court extended its injunction to prevent Mishkoff from using those domain names as well.
On appeal, the court began its inquiry with the question of whether Mishkoff’s use of the domain names he registered constituted commercial speech at all. It found that, although Mishkoff’s advertising was minimal, his use of Taubman’s trademark as to the initial “fan” site was in fact commercial. When the court considered whether consumers were likely to be confused by Mishkoff’s use of Taubman’s trademark, however, the court found Mishkoff’s disclaimer to be of greater weight than TeleScan’s disclaimer in the PACCAR case. Because of the disclaimer and the link to the official site for the mall, the court found that Mishkoff’s site may actually have directed consumers, who otherwise would not have found it, to the official site.
When the court considered Mishkoff’s complaint sites, the court found that the inclusion of the qualifying moniker “sucks” to the domain names removed any possible consumer confusion as to the source or affiliation between Mishkoff and Taubman. The court rejected Taubman’s argument that Mishkoff’s use of its trademarks was commercial because Mishkoff intended to harm Taubman economically, and found that Mishkoff’s use of the complaint names was a pure exhibition of free speech. The court accordingly dissolved both injunctions against Mishkoff.
Use of Trademark in Post-Domain Path Name – The Interactive Products Case
In Interactive Products Corporation v. a2z Mobile Office Solutions, Inc., the U.S. Court of Appeals for the Sixth Circuit considered a trademark dispute between former business partners who had parted ways. Interactive Products sold a portable computer stand called the “Lap Traveler,” and held a registered trademark. a2z sold the Lap Traveler on its Web site a2zsolutions.com at the Internet uniform resource locator (URL) a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm. The principals of Interactive Products, Comeaux and Mayer had a falling out, and Comeaux bought out Mayer’s interest in Interactive Products. Mayer agreed not to use the Lap Traveler product name, but the parties agreed that they were free to compete in the future. Mayer started a new company where he developed a competing product to the Lap Traveler called The Mobile Desk. After a falling out between Comeaux and a2z, a2z stopped selling the Lap Traveler and began selling The Mobile Desk instead.
Despite the product switch, a2z did not change the post-domain path, and sold The Mobile Desk at the same URL on its Web site: a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm. a2z also posted a message on its site for a time stating that Mayer had been a co-developer of the Lap Traveler, but had split with Comeaux, and that a2z carries the “redesigned and improved product,” The Mobile Desk. When Comeaux ran Internet searches with the term “lap traveler” during the time when this announcement was posted, a2z’s site regularly showed up as a hit. Interactive Products sued, claiming that a2z’s use of its trademark in the post-domain path infringed the trademark, and that a2z’s announcement constituted false advertising. The trial court granted summary judgment dismissing these claims.
On appeal, the Sixth Circuit noted that it appeared to be the first circuit court to consider whether post-domain path use of a trademark constitutes infringement. It noted that the usual test for likelihood of confusion must be tailored to the facts of the particular case, and then the particular use closely analyzed. The Court reasoned that, while domain names usually indicate source to consumers, post-domain paths, which show how the Web site’s data is organized with the host computer’s files, do not. The Court noted that Web pages containing post-domain paths are usually not accessed directly, but are typically reached via a link from the Web site’s homepage. Here, a2z had not added the Lap Traveler trademark to its post-domain path, but had simply never changed the pre-existing path. Accordingly, the court found no evidence that a2z’s use of Interactive Products’ mark in its post-domain path was likely to confuse consumers.
The Court also rejected Interactive Products’ false advertising claim. After analyzing the announcement in detail, the Court concluded that the fact statements at issue were not false, and the statement that The Mobile Desk was a “redesigned and improved” Lap Traveler was mere puffery. In short, Interactive Products had no case against a2z for either the post-domain path use of its trademark or for the announcement.
What Do These Cases Mean to Trademark Owners?
These cases highlight several common issues that arise when trademarks are used on the Internet. Each of the Sixth Circuit’s rulings is representative of most courts’ consideration of Internet-related trademark issues, so the lessons that can be learned from them apply to trademark holders and trademark users throughout the United States.
For trademark holders, the cases illustrate the importance of careful evaluation of all aspects of a potentially objectionable Web site before contacting the site owner or proceeding to litigation. As PACCAR illustrates, use of a direct competitor’s trademark in your domain name will most likely support a finding of infringement. Use of a competitor’s trademark in a domain name alone is not a guarantee of success, however, as Taubman shows. Use of another’s trademark in other ways, such as where it is limited to the post-domain name path as in the Interactive Products case, may not constitute infringement.
When you find a potentially objectionable use of your trademark, you should carefully consider the appropriate response, which is likely to vary greatly depending on just how your mark is being used. As Taubman illustrates, aggressive pursuit of some trademark uses can result in far more unfavorable attention and harm – in the form of cybergriping or otherwise – than the initial use did.
If you are contemplating the use of another’s trademark in connection with a Web site, you should take similar care at each step of the way, from domain name selection to site design. Some use of trademarks may be considered fair use, and some non-commercial uses of trademarks are protected when they are not likely to confuse consumers. If you use a business competitor’s trademark, however, a court will closely scrutinize such use. Whether you are successful in defending against a claim of infringement or not, such charges can be distracting as well as expensive.
For more information, contact Daniel K. Hampton, toll free, at 1-888-688-8500.