Internet Trademark Infringement Cases
New technologies always seem to require that old laws be interpreted in new ways. And that’s certainly the case with the Internet and trademark law. These are just a few of the trademark infringement cases and legal interpretations arising from the intersection of old and new.
Using Trademarks as Search Terms
Playboy Enterprises sued Netscape Communications in 1999 for infringement because Netscape users were shown banner ads for adult websites other than Playboy’s when its trademark terms “Playboy” and “Playmate” were used as search terms.
In 2000, a lower court ruled in favor of Netscape causing quite a bit of consternation for trademark owners. Playboy appealed, however, and the case was sent back to the lower court in 2003. The appeals court ruled that Netscape was obligated to alleviate confusion over the sites actually associated with the trademark. Netscape and Playboy settled the suit out of court two weeks later with the terms undisclosed.
In a similar suit filed in 2004, insurance giant Geico sued Google for infringement because the search engine company regularly sold advertising rights to the search terms “Geico” and “Geico direct” to competing insurance companies.
In an odd twist illustrating the subtleties still being defined in trademark law and the Internet, a judge denied Geico’s request to block Google from selling the rights to display ads when Geico’s trademarks are used as search terms. On the other hand, the judge ruled Geico could sue Google for damages when the ads from competing companies included Geico’s trademarks in the ad heading or text. On that issue, Google and Geico settled before the case went to trial. The terms were not disclosed
Subsequent and ongoing cases seem to maintain the right of Internet users and search engines to use trademarked terms in web searches, and the right to offer advertising placement based on users’ search expressions, so long as the trademarked term does not appear in the ads of competitors.
Cybersquatting
The Anticybersquatting Consumer Protection Act of 1999 (”ACPA”) acknowledges the potential for trademark infringement inherent in domain names that are misspellings or variations of well-known trademarks. When the offending domains are obtained and operated in bad faith, the ACPA gives the trademark owner rights to claim ownership of the domain names and recover damages from the operator. The bad faith requirement creates a small window for the legitimate use of a trademark variant when the offender innocently acquires the domain name and operates it for a legitimate, noncompeting purpose.
The textbook application of the ACPA is the near-legendary case of John Zuccarini who operated over 3,000 advertising websites that were all misspellings of well-known domains. In one example of the several cases filed against Zuccarini, he was ordered to pay nearly $90,000 to the owner of joecartoon.com for operating five websites named joescartoon.com, joecarton.com, joescartons.com, joescartoons.com and cartoonjoe.com.
A counter-example illustrating legitimate use of a trademarked domain name is Hatfield, Inc. vs. William Hatfield. Mr. Hatfield registered hatfield.com for email purposes, and Hatfield, Inc. sued to acquire the domain for itself arguing that “Hatfield” was its registered trademark for meat products. The court ruled against Hatfield, Inc. noting that Mr. Hatfield had a legitimate claim to the domain name and was not using it as a trademark.
The court’s comments in a related case summed it up nicely:
“Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.”
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