Regulating Relevancy: Initial Interest Confusion and the Internet
Eric Goldman
Marquette University Law School
eric.goldman@marquette.edu
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