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October 2003 J O U R N A L O F I N T E R N E T L AW
Initial Interest
sion, “Ginger and Fred.” Nonetheless, the court ruled that
the First Amendment protected expression that the Lanham
Act might limit and found for the defendant, writing:
Since consumers expect an ordinary product to be
what the name says it is, we apply the Lanham Act
By Ronald D. Coleman with some rigor to prohibit names that misdescribe
such goods. But most consumers are well aware that they
t an earlier stage in the development of trademark law, cannot judge a book solely by its title any more than by its
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J O U R N A L O F I N T E R N E T L AW October 2003
disagreed with them. The fact that this change, which ends that could never have been intended by Congress.
would ultimately affect all of the law of trademark, took Absent the congressional grant of power to address cyber-
place in the Web site context is significant. The concept of squatting directly, the Planned Parenthood court bulldozed a
initial interest confusion, discussed below, had until this key element of the statutory dilution tort—that the speech
point been largely ignored by courts outside of the Second be commercial—in order to achieve a political end.
Circuit. But courts were apparently flummoxed in the early Not surprisingly, then, the issue of likelihood of confu-
years of the Internet. They simply could not fathom that sion was treated with similar, if somewhat less heavy-hand-
the use of a trademark in a domain name of a competitor, ed, contempt. The Planned Parenthood fact pattern did
even an ideological competitor, could not have some cure. present an interesting legal question: At what stage of the
Ultimately, Congress recognized that existing law did Internet browsing experience is confusion manifest? The
not provide an adequate cure and so passed the Web site used by the anti-abortion activist in that case was
Anticybersquatting Consumer Protection Act.9 Before that in fact deceptive. There was clear and purposeful Web site
became law, the courts in two important and influential confusion based on content. In Planned Parenthood, defen-
domain name cases fulfilled the worst legal realist night- dant’s page began, “WELCOME TO THE PLANNED
mare, seeking to right a perceived wrong “by any means PARENTHOOD HOME PAGE!” After scrolling down
necessary.” In the process, they did substantial damage to and continuing to view the site, the fact that the defendant
the integrity of the law of trademark and at the same time was not Planned Parenthood became apparent. In the
demonstrated the worst aspects of the still nascent law of Southern District’s view, the fact that “consumers” were
trademark dilution. deceived, however briefly, was sufficient to find a likelihood
Two of the most important cases in this area involved of confusion. In order to so find, and to punish a politically
political and controversial speech, and for that reason they unpopular “bad actor,” however, the Planned Parenthood
are the very emblems of the misuse of trademark law. The court reached for the then relatively obscure and unsettled
first, which was not officially published, was Planned doctrine of initial interest confusion.
Parenthood Fed’n of Am. v. Bucci.10 This decision, by one- Historically, even de minimis actual confusion was enti-
time Clinton Attorney General nominee Judge Kimba tled to little weight in an analysis of likelihood of confu-
Woods, was significant for several reasons. One was the sion.14 Initial interest confusion appears to endorse the idea
finding, unsupported by citation or even analogy, that “an that de minimis confusion is actionable not only at the actu-
intent to harm” a “competitor” is a basis for finding com- al confusion level but also at the level of likelihood of con-
mercial speech under the dilution provisions of Lanham fusion. Born in the Second Circuit, it had previously been
Act. Noncommercial speech is explicitly exempt from the applied, according to the Federal Circuit, when a potential
federal antidilution statute.11 The finding of commercial purchaser is initially confused such that the senior seller may
speech also implicated the consideration of not only the be precluded from further consideration by the buyer.15 The
dilution claim but also the infringement claim because concept, as enunciated before the more recent trend broad-
commercial speech is entitled to less protection under the ening initial interest confusion, would almost axiomatically
First Amendment.12 not be applicable in an Internet context, and certainly not
The Planned Parenthood court’s reasoning in this regard when no commercial interest is at stake. As seen, however,
was based on no legal authority whatsoever. It was contrary the Planned Parenthood court cobbled together just such an
to the Supreme Court authority that defines commercial interest, and, in terms of the limitation of the doctrine to sit-
speech in the narrowest of terms in a Lanham Act context. uations implicating an actual consumer choice, this limita-
Moreover, it distorted the word “commercial” beyond any tion was simply sub silentio jettisoned.
recognition, making a religious or ideological opponent—in Ultimately, Planned Parenthood did considerable dam-
this case, to abortion, a hot-button topic—a commercial age to the law of trademark to right a wrong that a judge
“competitor,” contrary to common sense, the statute, the considered intolerable. The harm, however, was local and
Constitution, and supported only by political expediency. limited to an unpublished decision involving an unpopular
The Planned Parenthood approach to commercial speech is defendant engaged in a very dubious ruse. Regrettably, how-
not the topic of this article, and indeed the intellectual dis- ever, the opinion in Planned Parenthood was relied on by a
honesty that it and its most prominent progeny, discussed judge from the other end of the ideological spectrum in a
below, represents has finally been acknowledged in a recent case that has become part of all too many string citations,
published opinion.13 Rather, it is relevant to this discussion Jews for Jesus v. Brodsky.16 This case was the first published
because it is emblematic of the extent to which courts were opinion explicitly to rely on initial interest confusion when
prepared, in the second stage of domain name litigation, to the facts objectively suggested no possible confusion at all
use the law of trademark as an activist bludgeon to achieve in a trademark infringement context.
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In mid-December 1997, Steven Brodsky posted an finding of infringement. The Seventh Circuit claimed to
Internet Web site that he used to express his opposition to have relied on its own earlier decision in Dorr-Oliver, Inc. v.
Jews for Jesus, Inc., a non-profit Christian missionary group Fluid-Quip, Inc.,19 but in fact that case made only passing ref-
that targets Jews for conversion to Christianity. Mr. erence to the Second Circuit’s jurisprudence on confusion. In
Brodsky, a Jew, named his Web site www.jewsforjesus.org. fact, Promatek did not rely on initial interest confusion (it
The content of his Web site was unequivocal in its opposi- instead focuses on post-sale confusion, a different analysis)
tion to the Christian missionary group and to the concept but ultimately found that there was no likelihood of confu-
that Jews can be “for Jesus.” It offered users the opportunity sion in the case before it, making any statement about initial
to hyperlink, or transfer, to a Web site operated by an anti- interest confusion in Dorr-Oliver dictum at most.20
missionary organization called Outreach Judaism. In late Why then did the Seventh Circuit so readily rely on a
December 1997, a truthful disclaimer of affiliation with doctrine that has never satisfactorily been fleshed out at the
either plaintiff or Outreach Judaism was added to the dis- Court of Appeals level? I submit that the adoption, follow-
play. No solicitation of funds, no advertisement, or other ing Brodsky, of initial interest confusion in the Internet
message bearing in any way on commerce appeared on the context (mostly in the domain name context but now,
site. The Web sites of both plaintiff and Outreach Judaism because of Promatek, in a rash of metatag cases) has caused
also were non-commercial. Neither charged a fee for access a distortion of the law of trademark, one accelerated by the
nor carried commercial advertisements. Both Web sites, effect of the promulgation of trademark dilution claims.
operated by non-profit religious organizations, offered liter- The effect has been a weakening of the link between trade-
ature promoting their respective causes and points of view, mark infringement and consumer infringement and overall
in some cases for payment of a fee. In the cases of both the a reduction in free expression and even the capacity for
Outreach Judaism and Jews for Jesus Web sites, the sale of commercial innovation.
religious materials was incidental at best to the expressive Professor McCarthy, whose views on the topic were
religious messages of the respective sites. relied on in early initial interest infringement cases, is (not
The use of the “Jews for Jesus” trademark in Brodsky by surprisingly) aware of this issue. He acknowledges that his
the defendant could not have caused any but the most pass- original metaphor—a misleading sign on the highway that
ing confusion because a rational consumer would encounter, beckons a driver to an Exxon station, only to deliver the dri-
either immediately or following some scrolling, rhetoric ver, after turning off the main road, to a “Brand X” pump—
antagonistic to the trademark holder on the Web site and a has been criticized as inapplicable to the Internet context.
conspicuous disclaimer of affiliation on the screen. Consider the metatag case Bihari v. Gross21 as follows:
Nonetheless, the court in Brodsky placed great weight on a Use of the highway billboard metaphor is not the
number of affidavits from individuals sympathetic to the best analogy to a metatag on the Internet. The harm
plaintiff claiming confusion. More likely, they were not con- caused by a misleading sign on the highway is diffi-
fused at all, merely angry. On reading Brodsky’s offerings, cult to correct. In contrast, on the information
these supposedly “confused witnesses” quickly found their superhighway, resuming one’s search for the correct
way to plaintiff’s Web site, undeterred by Brodsky and more website is relatively simple. With one click of the
zealous than ever in their devotion to plaintiff. mouse and a few seconds delay, a viewer can return
Absent any other authority on which base a finding of to the search engine’s results and resume searching
likelihood of confusion, the Brodsky court seized on Planned for the original website.22
Parenthood. The Brodsky court relied on the Planned McCarthy’s response is that “this is a difference of degree,
Parenthood court’s novel, not to say overreaching, rationale for not of kind,” because of the “unearned advantage” being
deeming a largely, or completely, editorial Web site as “com- gained by the one misusing the trademark to get unearned
mercial speech.” It endorsed the Planned Parenthood court’s attention in the first place.23
adoption of initial interest confusion as the activist solution to McCarthy’s point may be a nice one standing alone in
the lack of congressional dispatch in approving the cyber- a trademark infringement context. But in a broadband
squatting law. Subsequently, on the appeal of Brodsky, the trademark dilution world, it proves too much and has given
Third Circuit paid no heed to the insistence of the court trademark owners too powerful of a weapon to silence dis-
across the Hudson that “indignation is not confusion”17 and sent or unwished attention. By and large, the main engine
upheld the District Court in that case without comment. of trademark enforcement on the Internet is via what
After years of bubbling through the district courts, ini- Siegrun Kane calls “the Dilution Solution.” It enables own-
tial interest confusion was eventually endorsed by higher ers of “famous” marks to score damages and attorneys’ fees
courts. In Promatek Indus. Ltd. v. Equitrac Corp.,18 the regardless of whether any harm is done to the trademark
Seventh Circuit used initial interest confusion to uphold a owner or even the mark itself. Like most modern intellec-
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