Brookfield Communications v. West Coast Entertainment

Citation: Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).

Factual Background
Brookfield began using the term “moviebuff” for computer software containing a database of information on the entertainment industry. It filed for registration of the “moviebuff” trademark on August 19, 1997.

West Coast is one of the nation's largest video rental stores. It had used the term “movie buff” as part of its service mark “The Movie Buff's Movie Store,” for which it obtained a federal trademark registration in 1991. It also used the “movie buff” phrase extensively in its advertising since 1988. It registered the URL “moviebuff.com” with Network Solutions, Inc. in 1996.

When Brookfield tried to register “moviebuff.com” it could not do so because West Coast already had the URL. However, when it learned that West Coast intended to use the URL to provide a searchable database on entertainment similar to Brookfield's software product, it filed suit in the Central District of California, requesting an injunction.

Trial Court Decision
The district court refused to grant the injunction, holding that West Coast was the senior user of the “moviebuff” mark because of its registration of the phrase “The Movie Buff's Movie Store,” which it had used since 1986, and that it had senior common law rights as well.

Appellate Court Proceedings
Brookfield filed a notice of appeal and an emergency motion for injunction pending appeal. The motion was granted, and West Coast was enjoined from using, or facilitating the use of, in any manner, including advertising and promotion, the mark MOVIEBUFF, or any other term or terms likely to cause confusion therewith, including @moviebuff.com or moviebuff.com, as the name of West Coast's website service, in buried code or metatags on its home page or web pages, or in connection with the retrieval of data or information on other goods or services.

Domain Name
West Coast's first argument was that its long use of “The Movie Buff's Movie Store” should be “tacked” onto its admittedly more recent use of “moviebuff.com,” thereby making West Coast the senior user of the mark. The court held that the two uses were too dissimilar for the doctrine of “tacking” to apply. As such, the court considered Brookfield as the senior user of “moviebuff,” since it began using the term on its software prior to West Coast's use of “moviebuff.com.”

West Coast's belated claim that Moviebuff” is confusingly similar to “The Movie Buff's Movies Store” was easily rejected by the court due to the long, concurrent use of the marks without any confusion.

As to first use of the term “moviebuff” for an online database of entertainment-related data, the court held that Brookfield had priority, because it had provided its database online under the “moviebuffonline.com” URL prior to West Coast providing its database online. The court gave no weight to the date of registration of West Coast's URL, since “[r]egistration with Network Solutions, however, does not in itself constitute ‘use’ for purposes of acquiring trademark priority.”

The court also rejected West Coast's argument that use of the term “moviebuff.com” in e-mails to lawyers and customers constituted trademark use, stating that while widespread publicity of a mark in advance of actual use may be sufficient to “create an association among the public between the mark” and its owner, “mere use in limited e-mail correspondence with lawyers and a few customers is not.”

Turning to the question of “likelihood of confusion,” the court applied the traditional trademark eight-factor test. The court found that because (i) the marks look and sound essentially identical; (ii) the service provided by both is identical (searchable database on the entertainment industry); (iii) both parties have used the Internet as an advertising vehicle, “many forms of consumer confusion are likely to result.”

Looking at the remaining factors, the court decided that (i) the mark “moviebuff” is a weak, suggestive mark; (ii) there is no showing of intent on West Coast's part, and (iii) actual confusion, likelihood of expansion in product lines or the level of care likely to be exercised by purchasers are not relevant to the ultimate conclusion. As such, the appellate court upheld the injunction previously granted.

Metatags
In part 2 of the opinion, the court addressed the proprietary of enjoining West Coast's use of the term “moviebuff” in the “metatags and buried code.” The court first noted that metatags and HTML coding do not raise the same issues as domain names. Since metatags are used primarily by search engines, the issue relates to the results of a Internet search, not the typing in of a URL. The court noted that someone typing in “moviebuff” would get a list of web sites, including those of both parties. The user could then scan the list to find the particular Web site he is seeking. Moreover, even if he mistakenly chooses the West Coast entry, he will see the “westcoastvideo.com” URL, and will not be confused as to which site he has reached.

However, the court held that West Coast's use of the “moviebuff.com” term in its metatags would result in “initial interest confusion.” The court held that such confusion was sufficient to justify the injunction, even if a user would quickly realize his mistake, particularly where West Coast also intends to offer a similar database, since users who accidentally arrive at West Coast's site may decide to use the West Coast database instead. “Using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store.”

However, the court had to deal with the fact that West Coast had used “The Movie Buff's Movie Store” for many years and had a federal registration on it. The court solved that problem by holding that West Coast could use “movie buff” (with a space) as a metatag, but not “moviebuff” (without a space):


 * “We agree that West Coast can legitimately use an appropriate descriptive term in its metatags. But ‘MovieBuff’ is not such a description term. Even though it differs from ‘Movie Buff’ by only a single space, that difference is pivotal. The term ‘Movie Buff’ is a descriptive term, which is routinely used in the English language to describe a movie devotee. ‘MovieBuff’ is not.”

Also, West Coast can use “MovieBuff” in a “fair use” context. “For example, its web page might well include an advertisement banner such as ‘Why pay for MovieBuff when you can get the same thing here for FREE?”’