Regulating Relevancy: Initial Interest Confusion and the Internet byEric Goldman

Regulating Relevancy: Initial Interest Confusion and the Internet
Eric Goldman
Marquette University Law School

What is Initial Interest Confusion?

  • Defined: “The use of another’s trademark in a manner reasonably calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion” (Brookfield)
  • Historically, IIC influenced the “actual confusion” or “purchaser care” analysis in a multi-factor likelihood of confusion test
  • Now, some courts allow IIC to bypass a multi-factor likelihood of confusion test

Pro-Plaintiff Holdings

  • Any search engine indexing provides evidence of IIC (Brookfield)
  • Any search engine optimization provides evidence of IIC (JK Harris)
  • Any possibility of temporary confusion on a user’s part provides evidence of IIC (NYSSCPA, OBH)
  • IIC occurs when there’s potential goodwill association (Mobil Oil, Elvis, Nissan)

Defenses to IIC

  • Word is not being used as a source identifier (Playboy v. Netscape)
  • Nominative fair use (Welles 9th Circuit)
    • Product not readily identifiable without the mark
    • Mark used only as reasonably necessary to identify the product
    • No suggestion of sponsorship or endorsement
  • Insufficient confusion (Chatam, Strick)
  • No passing off bait ‘n’ switch (Dorr-Oliver, Northland)
  • Parties aren’t competitors (TNN, BigStar, Checkpoint)
  • Disclaimers? (Brookfield, Bihari)

Criticisms of the Doctrine

  • Weak policy justifications
    • Bypasses multi-factor likelihood of confusion test
    • Ignores low “switching costs” by searchers
  • Relic of past search engine practices?
    • Makes questionable assumptions about search engine indexing practices
    • Assumes inefficiencies in marketplace for search tools
    • Assumes searchers expect perfect relevancy
  • Confers trademark rights in gross
    • Doesn’t limit itself to product classes
    • Protects non-famous marks
    • Can be used to stifle criticism and parody
    • Can be used to prevent comparative product and pricing information