An Internet Advertising Service Can Constitute "Use in Commerce"
Fryer, Patrick, Santa Clara Computer & High Technology Law Journal
At its simplest, trademark infringement is two things in combination: (1) confusing (2) mark use. The bulk of opinions on trademark infringement focus primarily on whether the mark use was sufficiently likely to confuse the public, not whether a party used a mark. And rightly so, since the parties in these cases typically agreed that one party used the mark the other party owned. However, when the alleged infringement is online behavior, the accused has occasion to challenge whether or not what it used was a mark. This article, via a case study of the litigation against the Gator Corporation, assesses the worth of a court dwelling on whether or not the online behavior is mark use and offers this revision of infringement: (1) Causing (2) confusion about a mark.
Businesses increasingly offer their goods and services online as consumers increasingly are willing to purchase those goods and services online. (1) Competition has followed these businesses online. Marketing schemes have learned to target consumers according to the websites that consumers browse. In turn, this targeting has alarmed the website owners, who fear they will lose business because the marketers either annoy the consumers into never returning to their websites or divert the consumers to the website owners' competitors. Acting on their alarm, website owners filed suit against these marketing schemes, alleging as many harms as they could imagine.
This article concerns one marketing scheme, the Gator Corporation's Internet advertising service. This article concerns only two claims for relief (the Lanham Act's infringement and unfair competition provisions), one element ("use in commerce" (2)) common to both claims, and the defenses related to that element. Ultimately, the Gator Corporation's Internet advertising service "uses marks in commerce" and the success of the Gator Corporation's defenses should entirely depend on whether a court will find a "likelihood of confusion" (another element common to both claims) stemming from the Gator Corporation's "use" of the marks. A court should analyze the "likelihood of confusion" element as soon as it is satisfied both that Congress could regulate the Gator Corporation's Internet advertising service as commerce and that the Gator Corporation's behavior affects public perception of the mark owner's mark. This article makes no argument as to the correct final disposition of the infringement and unfair competition claims against the Gator Corporation because it does not analyze the "likelihood of confusion" element.
Part I introduces the Gator Corporation and its Internet advertising service. Part II offers background information on marks, the law, and the Internet. Part III summarizes the pleadings against the Gator Corporation. Part IV analyzes whether the Gator Corporation's Internet advertising service constitutes "use in commerce" of marks under federal law and suggests that courts should consider whether the accused's behavior might cause confusion rather than whether the accused used a mark when considering the "use in commerce" element. Part V considers the potential fair use and nominative use defenses that the Gator Corporation could raise. Part VI concludes that the "likelihood of confusion" element--and not the "use in commerce" element or the use defenses--is an open question whose determination should resolve the case against Gator. Part VII considers but rejects the possibility that requiring mark use is useful because requiring mark use discourages nuisance suits that requiring causation would not deter.
I. THE GATOR CORPORATION AND ITS INTERNET ADVERTISING SERVICE (3)
The Gator Corporation ("Gator"), which is the defendant for all intents and purposes, (4) provides for downloads from the World Wide Web ("the Web") (5) of software programs called OfferCompanion and GAIN AdServer (together, "the Gator programs"). (6) The Gator programs automatically run when an Internet user with a Gator program installed on his computer ("Gator subscriber") opens a browser. …