Initial Interest Confusion doctrine is an important concept and I had hopes when I saw that Posner, J. was sitting on a panel hearing such a case. Unfortunately, he didn’t write the decision and all we received was a somewhat simplistic endorsement of a controversial doctrine.
Equitrac competes with Promatek’s COPITRAK product. At the urging of its web designer, who wasn’t a careful speller, Equitrac put the term COPITRACK (sic) in its metatags. Saving us a few paragraphs of discussion, the parties stipulated that Equitrac had intended to spell its competitor’s product name correctly. After receving a demand letter, Equitrac removed the offending metatag. However, Promatek still pursued and received a preliminary injunction under which Equitrac had to disclaim any connection with Promatek.
Equitrac appealed the order, arguing, apparently with a straight face, that the ordered disclaimer, identifying the competitor’s website, would encourage people to go to that website
Apart from the chutzpah of that argument (chutzpah being an old Native American word for gall), the decision is noteworthy for the Seventh Circuit’s endorsement of Initial Interest Confusion doctrine in the metatag context. A definition of initial interest confusion is the unauthorized duplication of the mark allowing the defendant to encounter the consumer, but where confusion is dispeled prior to purchase. I call you up, say I’m from Reputable Company A, sweet talk you, and at some point, acknowledge that I am really from Company B. Kind of like a mis-named website which has a disclaimer. The dishonest “foot in the door” diverts traffic from the trademark owner and is thus actionable.
As the judge in Promatek puts it:
Cusotmers believing they are entering the first store rather than the second are still likely to mill around before they leave.
Now, initial interest confusion is an incredibly important concept in policing trademarks on the Internet. Many attempts to “game” Internet navigational systems (domain names, search engines and keyword systems) rely on diverting the searcher from his or her most likely intended destination. This is something I realized six years ago when I typed in amazom.com rather than amazon.com and got an ad for Barnes and Nobles.
In my view, people like the web designer who told Equitrac to put the name of its competitor in its metatags, and typosquatters, and pornographers who buy expired domain names, impliedly agree withthe Seventh Circuit – people are likely to mill around before they leave.
But how good is this analogy? The more difficult aspect of applying initial interest confusion doctrine to the Internet is analogizing “customers” and “entering the first store” to users who access a web site. A UK judge in case involving AVNET took the position that the public are not idiots, and were at least capable of reading abstracts on search engine results. Thus they could discern search engine hits for sites in which they had no interest.
On the other hand, the judges in the MOVIEBUFF case had a dimmer view of Internet users as befuddled motorists as the Court analogized deceptive metatags to highway signs that induce you to leave the Interstate at the wrong exit, with offers of another’s gas, food and lodging, and stay off to buy something.
Personally, I think that some motorists are idiots and some are like those savvy veterans of the Long Island Expressway, who have been taught them to Expect Delays and use Alternate Routes.
So I cannot agree that the use of another’s trademark in a metatag should be some sort of per se violation. I agree with the commentator on the INTA listserv who argues that any deception reproduction of another’s trademark is likely actionable (that’s almost tautological), but, as the Seventh Circuit acknowledges, Equitrac is allowed to advertise that it can service Promatek’s customers and can make comparison claims. Why is using the competitor’s name in a metatag different? I have my own theories, but I wanted Judge Posner to go first.