Searching for a Trademarks Test: The Ninth Circuit's Query in Network Automation

I. INTRODUCTION In Network Automation, Inc. v. Advanced Systems Concepts, Inc.,1 the Ninth Circuit changed the direction of its internet trademark law when it declined to apply the "troika" factors2 to determine whether one's use of another's trademark as a search-engine keyword violates the Lanham Act.3 The court established the internet troika test in Brookfield Communications, Inc. v. West Coast Entertainment Corp.4 and consistently applied it to the internet context for more than a decade.5 But the Ninth Circuit in Network Automation instead favored a flexible application of an eight-factor test from its earlier decision in AMF Inc. v. Sleekcraft Boats.6 The court used this flexible application to produce a new test made up of three Sleekcraft factors distinct from the troika combined with a fourth new factor.7 The Ninth Circuit's holdings in Network Automation are flawed for two reasons. First, because the district court properly applied Ninth Circuit precedent, the Ninth Circuit erred in holding that the district court applied an erroneous legal standard. Second, the Ninth Circuit failed to limit clearly the troika test and to define the appropriate contexts for its future use. These flaws create confusion about which test applies in trademark infringement cases for emerging technologies. This Note examines the Ninth Circuit's method of crafting new tests for cases involving new internet technologies and offers a model that judges can follow in future emerging-technology cases. This Note proceeds as follows. Part II details trademark case law from the online keyword search context. Part III contains the relevant facts and procedural history of Network Automation. Part IV describes the Ninth Circuit's reasoning and holding. Finally, Part V analyzes Network Automation, explains the difficulties caused by the Ninth Circuit's opinion, and proposes a clear method for judges to determine which factors are relevant in future internet trademark cases. II. SIGNIFICANT LEGAL BACKGROUND To demonstrate infringement of a registered trademark under the Lanham Act,8 a party "must prove (1) that it has a protectable ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion."9 While trademark law prohibits multiple types of confusion, two types are relevant in the online keyword context: source confusion and initial interest confusion.10 Source confusion occurs when a consumer is confused about the source or origin of a product.11 Initial interest confusion occurs when a consumer initially becomes interested in a product based on confusion about the product's origin, even if the misunderstanding is resolved before the consumer's purchase.12 In AMF Inc. v. Sleekcraft Boats,13 the Ninth Circuit established a test that considers eight relevant factors for determining likelihood of confusion for purposes of trademark infringement. The relevant factors are: "(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines."14 Courts consider these factors in light of "all the relevant circumstances in assessing the likelihood of confusion."15 This test has become foundational in assessing the likelihood of confusion in all trademark cases in the Ninth Circuit. In Brookfield Communications v. West Coast Entertainment,16 the Ninth Circuit "first confronted issues of trademark infringement and consumer confusion in the Internet context."17 In Brookfield, a provider of entertainment-industry information sued a video-rental store for its internet-related use of the term "MovieBuff," including "moviebufF.com."18 The Ninth Circuit applied the Sleekcraft test, noting that it is "pliant," that "the relative importance of each individual factor will be case-specific," and that it may be possible to use "only a subset of the factors" or use "non-listed variables. …