Trademark Usage Trumps Domain Name Registration in Internet Battle
BY Mary Scott
In a recently issued decision, Brookfield Communications, Inc. v. West Coast Entertainment Corp., F.3d, 50 U.S.P.Q. 2d 1545 (9th Cir. 1999) the Ninth Circuit held that acquiring a domain name registration does not constitute trademark use of that name. This decision, the first by a circuit court on the issue of trademark infringement via domain name use, affirms the precedence of trademark law over Internet customs and practices.
Since 1987, Brookfield Communications, Inc. ("Brookfield") has gathered and sold information about the entertainment industry for the purpose of creating and marketing software and services for professionals in that industry. In 1993, Brookfield expanded into the consumer market offering computer software featuring a searchable database containing entertainment-industry-related information marketed under the MOVIEBUFF mark.
In 1996, Brookfield attempted to register the domain name moviebuff.com, but the name had already been registered to West Coast Entertainment Corp. ("West Coast"), one of the nation? s largest video rental store chains. West Coast claims that it chose the domain name because the phrase MOVIE BUFF is part of its service mark, THE MOVIE BUFF? S MOVIE STORE, for which a federal registration issued in 1991 covering "retail store services featuring video cassettes and video game cartridges" and "rental of video cassettes and video game cartridges."
Since moviebuff.com was taken, Brookfield began selling its software and access to its MOVIEBUFF database at "brookfieldcomm.com" and "moviebuffonline.com." Brookfield also applied for and received two federal registrations for the MOVIEBUFF mark for "computer software providing data and information in the field of the motion picture and television industries" and "providing multiple-user access to an on-line network database offering data and information in the field of the motion picture and television industries."
In October 1998, Brookfield learned that West Coast intended to launch a web site at moviebuff.com containing, among other things, a searchable entertainment database similar to its own MOVIEBUFF database. Brookfield sent a cease & desist letter to West Coast. The next day, West Coast issued a press release announcing the imminent launch of its web site. Brookfield filed a complaint alleging that West Coast? s proposed offering of online services at moviebuff.com would constitute trademark infringement and unfair competition and applied for a temporary restraining order. West Coast opposed stating that it had priority of use of the MOVIEBUFF mark. Construing Brookfield? s motion as a preliminary injunction, the District Court denied the motion. Brookfield then filed an emergency motion for injunction pending appeal, and the Ninth Circuit granted the motion. On April 22, 1999, the Ninth Circuit directed the District Court to enter a preliminary injunction in Brookfield? s favor.