Trademark Infringement on the Internet?

 

The Internet is a space especially appropriate and every time more used to advertise and contract all kinds of services, it’s naturally a proper field for the trademark conflicts to take place.

In this sense, it’s possible that problems are unchained by unauthorized use of an identical or similar brand to another in order to make a difference between similar or identical products, either in websites or other Internet resources that tend to promote services, goods, activities, establishments, or even in the making of electronic transactions related to products or services available to the public.[1]

We can find an example in the 2000 case Goto.com versus The Walt Disney Company

The plaintiff “Goto.com” operates a website that contains a search engine. On December 1997, the plaintiff started to use a logo on this website that represents the words “go to” with a white font vertically stack inside a green circle. At the same time, this circle is shown over a yellow squared background.

On December 1998 the defendant “Disney” launched its websites “Go Network”. The homepage or portal of the “Go” net contained, among other stuff, a search engine and gave access to other several Disney websites, included “disney.com”, “abc.com”, “abcnews.com” and “espn.com”. Disney showed in a remarkable way in all the pages of these interconnected websites the “go” logo in question. This logo, which the court described as “significantly similar” to that of the plaintiff, has the word “go” in white letters inside a green circle. At the same time, the green circle is placed inside a yellow square with details that suggest a traffic light. Just to the right of this square, the word “Web” appears in black letters.

Immediately after finding out about this use, and while the Disney’s “Go” web was still being tested in beta version, the plaintiff opposed to the use of its “Go logo” by Disney. Disney refused to suspend the use of this logo, and instead, proceed to officially launch the Go web with the disputed “go logo”. Since then, the plaintiff started this suit, accusing Disney of trademark violation in infringement of the Lanham Law 43rd section, U.S.C. Section 1125 (a) (1) (A).

On the plaintiff’s motion, the district court issued a preliminary court order ordering Disney not to use its “Go logo”. The Ninth Circuit confirmed this determination.

The Ninth Circuit determined that is likely that the plaintiff succeeds in its claim that the use Disney gave to the “go logo” infringed the plaintiff’s trademark. Upon reaching this conclusion, the Ninth Circuit determined that the plaintiff might establish that the defendant’s use would cause confusion to the users. Usually, the Ninth Circuit uses eight elements, called “Sleekcraft elements”, to determine if the use of something can cause confusion. However, when talking about confusions on the Internet, the Ninth Circuit pointed out that generally, it will only focused on three of those factors: trademarks similarity, the relation between goods and services merchandised by the parties, and the trademark simultaneous use. If each one of these factors happens, the court will determine that there is the possibility of consumers’ confusion, without taking into account the five additional “Sleekcraft factors”

The court resolved that each one of these factors favors the conclusion that the usage in the matter could cause confusion between consumers. The logos used by the parties were “remarkably similar” – “are precisely the identical colors which create the confusion: the white hyphen in a green circle in a yellow square” – the parties offered services directly competitive, to know, the search engines, and both use widely the Internet to merchandise their products.

The Court observed:

Regarding the Internet services, even the services that aren’t identical, are capable to confuse the audience, Although even the Internet inexperienced can distinguish between a website that, for example, offers discount travel tickets and one that gives free e-mail based on the web, a user will surely assume a common partnership if the sites’ trademarks were the same.

Our increasingly bigger dependency to the Web can force us to evolve to increasingly sophisticated users of the media, but, for the moment, we can surely conclude that the use of remarkably similar trademarks in different websites creates the probability for confusion among Web users.[2]

At last, the solution of these kinds of controversies is not simple, since there could be oppositions between the territoriality of the trademarks system and the inherent Internet’s planetary dimension.

Bandala, Díaz, García, experts on Intellectual Property, and Internet Law.   

[1] Cabanellas, G. (2012) Derecho de Internet. Buenos Aires, Argentina: Heliastra

[2] Bloomberg News. (2000). Disney and Goto.com Settle Logo Suit. The New York Times.