Brookfield Communications v. West Coast Entertainment Corp. case brief summary
a. Brookfield creates a searchable database, marketed under its MovieBuff mark. It sells 3 forms of the database software (pre-internet database software). In 1994, they obtain a CA trademark registration for MovieBuff mark, but had not received/applied for federal TM. In 1996, they start to think about websites… but find, when they attempt to register, that moviebuff.com is already taken. WestCoast is somewhat of a similar business and intends to use MovieBuff.com for similar purposes.
b. Court finds TM infringement in domain name and initial interest confusion in meta tags (see above?).
1. TM Infringement – court finds infringement b/c Brookfield owns “MovieBuff” mark, the domain name is moviebuff.com, it is clearly used in commerce, and there is likelihood of confusion…
i. TM by analogy: Brookfield argues that if I own a TM in real space, I should have the right to use the domain name. And the court buys it.
ii. This gives TM owners the power to seemingly kick others off of domain names based on TM’s…
· Problems with this – tricky b/c TM’s are local in nature (think Apple UK v. Steve’s Apple) and domain names are space-less (MovieBuff is different than movie buff the noun).
2. Meta tags – the Court finds initial interest confusion with respect to meta tags. Uses a brick and mortar analogy – using a competitor’s meta tag is akin to putting up a sign that says “Blockbuster at exit 7,” when the Blockbuster is really at exit 8 and a smaller competitor is at exit 7. There is initial interest confusion, b/c even when you get there and you see that it is not Blockbuster, you will probably still go in.
i. But does this work for the internet? Is it that hard to push the back button to get to what you want?
ii. Policy – one the one hand, the court is encouraging investment in trademarks, b/c if they allowed west coast to use the TM it would drastically reduce the value of the mark by allowing others to capitalize on the investment and confuse people. BUT… on the other hand, if language is made proprietary, competitors cannot name the other product (for comparison) and therefore cannot effectively compete in the relevant market.
c. Under fair use, West Coast can use the MovieBuff mark to describe its competing product.