Jenzabar, Inc. v. Long Bow Group, Inc.

Berry, J.

(dissenting). I respectfully dissent. The Lanham Act, 15 U.S.C. §§ 1114 (l)(a) and 1125(a)(1)(A) (2006), prohibits Long Bow Group, Inc. (Long Bow), from using the trademark of Jenzabar, Inc. (Jenzabar), in a way that is likely to confuse Internet users to believe that the Long Bow Web site is somehow connected to, or affiliated with, Jenzabar — which it is not. This confusion, suggesting a nonexisting affiliation with Jenza-bar, is crafted through a “negative” omission of an identifying Long Bow title and a “positive” singular reference to the trade name Jenzabar. The trade name Jenzabar is thus embedded within an Internet link, which actually belongs to Long Bow, not Jenzabar. The confusing and misleading link diverts the Internet user to the secondary Long Bow site by trading on the Jenzabar name.

*668 Further, the record demonstrates that Long Bow deliberately used Jenzabar’s trademark in its search listing and Web site hypertext markup language (HTML) code in order to create “initial interest confusion” that trades wrongly on Jenzabar’s mark. Perhaps the “best evidence” of initial interest confusion, which is violative of the Lanham Act, is seen in the page produced by a search of the Web site Google.com (Google) using the trademark Jenzabar. That best evidence of the Google search page is attached as an Appendix.

I read the majority to acknowledge that initial interest confusion may support liability under the Lanham Act. “Most courts now recognize the initial interest confusion theory as a form of likelihood of confusion which can trigger a finding of infringement.” 4 McCarthy, Trademarks and Unfair Competition § 23:6 (4th ed. 2011) (McCarthy on Trademarks), which cites the following supporting case law: Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987); Checkpoint Sys., Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270 (3d Cir. 2001); Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513 (S.D. Tex. 1996), judgment aff’d as modified, 155 F.3d 526 (5th Cir. 1998); McNeil-PPC, Inc. v. Guardian Drug Co., Inc., 984 F. Supp. 1066 (E.D. Mich. 1997); Sensient Technologies Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010), cert. denied, 131 S. Ct. 1603 (2011); Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633 (7th Cir. 1999); Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir.), cert. dismissed, 521 U.S. 1146 (1997); Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006); HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 U.S.P.Q.2d 1819 (Trademark Trial & App. Bd. 1989), aff’d on other grounds, 902 F.2d 1546 (Fed. Cir. 1990). 1

The Federal courts usually consider several factors in cases of initial interest confusion. These include (1) the relatedness *669 of the parties’ goods or services; (2) the level of care exercised by the relevant customers; (3) the strength of the plaintiff’s mark; (4) the defendant’s intent in using the plaintiff’s mark; (5) the evidence of actual consumer confusion, Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011); and (6) the visual appearance of the link or advertisement in context of the screen, Hearts on Fire Co. v. Blue Nile, Inc., 603 F. Supp. 2d 274, 289 (D. Mass. 2009).

In my opinion, three of the afore-described factors are present in this Jenzabar case such that the grant of summary judgment was error of law. These three present factors relate to (1) the strength of Jenzabar’s trademark; (2) the confusing appearance of the Internet listing line for Long Bow, which omits the Long Bow name and references only the Jenzabar trademark; and (3) Long Bow’s intent to confuse. I address each in turn.

1. The strength and reputation of the Jenzabar trademark. The majority acknowledges that the Jenzabar company has developed a strong reputation in the higher education community over several years, and that the company has always been uniquely tied to its trademark. The “Jenzabar” trademark does not refer to anything other than the Jenzabar company. The mark is likely to be associated only with the Jenzabar company, and is therefore accorded greater protection by trademark law. See Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d at 1154 .

2. The confusingly similar appearance of the Internet search listing line crafted by Long Bow. The likelihood of confusion in search engine cases “will ultimately turn on what the consumer saw on the screen and reasonably believed, given the context.” Hearts on Fire Co. v. Blue Nile, Inc., 603 F. Supp. 2d at 289 . Google search result listings generally comprise three elements: a title, a short page description, and a Web address. (See the Appendix, which, as previously noted, sets forth a Google search for Jenzabar that leads the searcher to the Long Bow site, notwithstanding that the name Long Bow is hidden.) Again to be emphasized is that the search listing devised by Long Bow, and at issue here, bears only the trademark “Jenzabar” — that is, the listing bears only the unique and unadorned trade name of the Jenzabar company. The predominant term in this search *670 listing is not Long Bow — indeed the title Long Bow does not appear anywhere in the search listing that takes the viewer to the Long Bow site address. Instead, the dominant term in the search listing devised by Long Bow is “Jenzabar. ” The design of this search listing yields precisely the likelihood of initial interest confusion prohibited by the Lanham Act. The challenged description and Web address, which appear below the trademark Jenzabar, fail to mention Long Bow or clarify ownership of the page in any way. The challenged Internet listing of Long Bow trades on the name Jenzabar and, thereby, achieves immediate placement behind the trademark for Jenzabar and the Jenzabar primary Internet pages.

It may be that a sophisticated Internet user — even though the name Long Bow is hidden — may be able to differentiate the challenged search listing from the Jenzabar search listings appearing above and below. And it may be that the Long Bow page is not quite so confusing once an Internet user arrives there. But that second step-away does not dispel the first step-in, which yields initial interest confusion under the Lanham Act. Put another way, neither the savvy of some Internet users, nor the actual content of Long Bow’s actual page, if one goes to that page, permits Long Bow to design a listing that will initially confuse Internet users. Given that Jenzabar’s established trade name served as the highlighted title path to the Internet listing, where the name Long Bow is hidden, the visual appearance of the Internet listing is obviously likely to confuse as a matter of law under the Lanham Act.

3. Long Bow’s intent to confuse potential Jenzabar customers. From all that appears, Long Bow deliberately designed its listing to exploit the Jenzabar trademark and confuse Internet users. “A defendant’s intent to confuse constitutes probative evidence of likely confusion: Courts assume that the defendant’s intentions were carried out successfully” (footnote omitted). Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1028 (9th Cir. 2004). The majority recognizes that intent to confuse creates a presumption of successful confusion. Accord Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56, 61 (1st Cir. 2008), cert. denied, 556 U.S. 1128 (2009) (presuming likelihood of confusion because defendant admitted intent to confuse).

*671 As noted, Long Bow chose the unadorned, trademarked name of the Jenzabar company as the complete title of its page. Long Bow also included the Jenzabar trademark in the HTML code of its Web site, so that search engines would suggest the Long Bow site to users searching for “Jenzabar.” See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1044 (9th Cir. 1999). These undisputed facts are sufficient to establish for summary judgment analysis that Long Bow designed its listing to create initial interest confusion in Jenzabar’s potential customers and, thus, that Long Bow’s listing was likely to confuse.

As the Boston Patent Law Association (BPLA) notes in its amicus brief, an Internet diverter (Long Bow) may violate the Lanham Act even though it may have a public, political, or nonprofit motive and does not commercially compete for business with the trademark holder (Jenzabar). Phrased differently, using a trademark to trigger confusing Internet links constitutes trademark infringement, even absent direct competition or a commercial motive because competition is not a prerequisite for relief under the Lanham Act. See Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d at 257-258 ; Niton Corp. v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d 102, 103 (D. Mass. 1998). “Confusion, or the likelihood of confusion, not competition, is the real test of trademark infringement.” Mobil Oil Corp. v. Pegasus Petroleum Corp., supra. Accord Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d at 1404 . 2 Nor is it necessary that the defendant have a profit motive. See SMJ Group, Inc. v. 417 Lafayette Restaurant LLC, 439 F. Supp. 2d 281, 289 (S.D.N.Y. 2006).

Further, as the BPLA points out, this case implicates the usability of the Internet. In the BPLA analysis, to dismiss the *672 Jenzabar claim would, in effect, allow Long Bow, as a third party, to trade on any Internet good will earned by Jenzabar to divert Internet users, either directly or indirectly, to the Long Bow Internet site. By including Jenzabar’s trademark in keyword “metatags” and in the title of the link to its page, Long Bow practiced a form of “Internet search engine optimization.” The prominent display of a link to Long Bow’s Web site following a point of origin search for “Jenzabar” optimized the functioning of the search engine tool — to the benefit of Long Bow — by the good will of Jenzabar’s established trademark. Search engine optimization — the use of specific keywords and metatags to increase the visibility of a Web page in a list of search results — is implicated when ambiguous title tags or poorly labeled text describe the search result link or the displayed advertisement, as is the case here with the ambiguous Long Bow link, which uses only the name Jenzabar, and not Long Bow. This is wrong.

I believe this case presents a matter of import because of the growing significance of Internet search engines in trademark law. I dissent from the majority’s holding that the Lanham Act is not violated by Long Bow’s confusing use of Jenzabar’s trademark. Therefore, I dissent from the affirmance of summary judgment.

*673 Appendix.

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While the above cited series of Federal cases support the concept of initial interest confusion as a Lanham Act violation, the United States Court of Appeals for the First Circuit has not addressed initial interest confusion. See EMC Corp. v. Hewlett-Packard Co., 59 F. Supp. 2d 147, 150 (D. Mass. 1999); Hearts on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 , 280 n.4 (D. Mass. 2009) (both cases concluding that the First Circuit had not taken a position on initial interest confusion).

This whimsical, but solid Lanham Act case is described by BPLA as follows:

“In Dr. Seuss, the Ninth Circuit considered a book about the OJ. Simpson trial that made significant use of plaintiff’s trademarks to mimic the style of the plaintiff’s Cat in the Hat book. See 109 F.3d 1394 . The court found that ‘the use of the Cat’s stove-pipe hat or the confusingly similar title to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may still be an infringement.’ Id. at 1405 .”