The case Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 174 F.3d 1036 (9th Cir. 1999), heard by the United States Court of Appeals for the Ninth Circuit, established that trademark infringement could occur through the use of trademarked terms in the HTML metatags of web pages when initial interest confusion was likely to result.
Background
In 1993 Brookfield Communications started selling software that provided customers with a searchable database of entertainment-related information such as listings of actors, directors, upcoming movies, and other related news. The software was sold under the mark "MovieBuff". In 1996 Brookfield began selling their MovieBuff product and providing online access to their searchable database from their website. The domain moviebuff.com had already been registered to West Coast Entertainment so Brookfield registered and used other domains. In 1997 Brookfield applied for federal registration of "MovieBuff" as both a good and a service trademark. It received the registrations in 1998.
In 1998 Brookfield learned that West Coast intended to launch a website at moviebuff.com which would contain, among other things, a searchable database of entertainment-related news. Brookfield issued a cease-and-desist letter to West Coast stating the website would infringe on Brookfield's trademark, MovieBuff. West Coast went ahead with their website plans; Brookfield subsequently filed a complaint alleging trademark infringement and unfair competition in violation of the Lanham Act.
Procedural history
In November 1998 Brookfield filed a complaint against West Coast with the United States District Court for the Central District of California alleging trademark infringement and unfair competition under sections 32 and 43(a) of the Lanham Act, ,. Brookfield then applied for a temporary restraining order that would prevent West Coast from using "MovieBuff" or "moviebuff.com" as its domain name, the name of its online service or in any "buried code or metatags" on their web site. The district court denied the motion for a temporary restraining order whereupon Brookfield filed for an appeal as well as an injunction against West Coast pending the appeal; the district court again denied the injunction. Finally, Brookfield filed an emergency motion for injunction pending appeal with the Ninth Circuit Court of Appeals which was granted. The Ninth Circuit then heard the appeal from the original denial of a temporary restraining order.
Complaint
In their complaint, Brookfield alleged that West Coast's plan to offer an online searchable database of entertainment-related news at the site moviebuff.com would constitute trademark infringement and unfair competition under sections 32 and 43(a) of the Lanham Act, , , infringing on Brookfield's trademark "MovieBuff".
Opposition brief
Soon after Brookfield filed their complaint, West Coast filed an opposition brief in which they argued for their right to use moviebuff.com as planned. West Coast gave two reasons: 1) West Coast was the senior user of the mark; and 2) their intended use of moviebuff.com would not cause a likelihood of confusion so there could be no violation under the Lanham Act. West Coast put forth two arguments to support its claim as the senior user of the mark: 1) West Coast had used "The Movie Buff's Movie Store" in promotions and advertising since 1986 and it had a federally registered trademark on that logo; or 2) West Coast had established its right to the mark by using "moviebuff.com" before Brookfield began offering its online searchable database service.
Court's finding
In considering whether to grant the preliminary injunction against West Coast, the Court of Appeals considered separately West Coast's use of the domain name moviebuff.com, and West Coast's use of any "buried code or metatags" containing "MovieBuff" or any terms likely to cause confusion with Brookfield's trademark.