## Facts

- Brookfield Communications, Inc. developed and sold entertainment-industry information products and, beginning in 1993, marketed consumer software and related services under the mark “MovieBuff.”
- Brookfield distributed MovieBuff products through retail outlets and later marketed online and offered online database access (1996–1997); it obtained federal registration for “MovieBuff” in 1998.
- West Coast Entertainment Corp., a large video rental chain, had used “Movie Buff” in advertising slogans and owned a federal service-mark registration for “The Movie Buff’s Movie Store.”
- In 1996, West Coast registered the domain name moviebuff.com but did not promptly operate a website at that address.
- In 1998, West Coast announced plans to launch a movie-information website at moviebuff.com featuring an extensive searchable movie database.
- Brookfield asserted the planned site would compete directly with its MovieBuff database and sued under the Lanham Act, seeking to enjoin (1) operation of a site at moviebuff.com and (2) use of “MovieBuff” in West Coast’s website HTML metatags.
- The district court denied preliminary injunctive relief; Brookfield appealed.

## Issues

1. Whether “MovieBuff” was a valid, protectable mark for Brookfield’s products and services and whether Brookfield had priority over West Coast in the relevant market.
2. Whether West Coast’s planned use of moviebuff.com for a movie-information database was likely to cause consumer confusion under the Lanham Act.
3. Whether use of “MovieBuff” in HTML metatags could constitute infringement based on initial interest confusion even if consumers recognized the true source after arriving at the site.
4. Whether Brookfield satisfied the requirements for a preliminary injunction.

## Decision

- The Ninth Circuit reversed the denial of preliminary injunctive relief and directed entry of an injunction.
- Brookfield was the senior user with a protectable interest in “MovieBuff” in connection with entertainment-information databases; West Coast’s domain-name registration, without more, did not establish trademark priority.
- Use of moviebuff.com for West Coast’s planned site was likely to cause confusion because the domain name and mark were effectively identical and the parties’ offerings and customers overlapped.
- Use of “MovieBuff” in West Coast’s metatags was likely to create actionable initial interest confusion by diverting consumers searching for Brookfield to West Coast’s site.
- The court ordered West Coast enjoined from using moviebuff.com for the movie-information site and from using “MovieBuff” in website metatags.

## Legal Principles

- Trademark priority generally belongs to the first user in commerce; registering a domain name, without operating a site or otherwise using the mark in commerce, does not by itself create trademark rights.
- Likelihood of confusion may be found where marks are identical or nearly identical and the goods or services and consumer base overlap, including in the context of Internet domain names that consumers may treat as source identifiers.
- The Lanham Act reaches initial interest confusion: conduct that diverts consumers by capitalizing on another’s mark can be infringing even if confusion is dispelled before purchase.
- Use of another’s trademark in HTML metatags can support infringement where it is likely to affect search results and draw consumers to a competitor by exploiting the trademark owner’s goodwill.
- For preliminary injunctions in trademark cases, a strong showing on likelihood of success and likely confusion supports injunctive relief; preventing confusion serves the public interest, and hardship may favor the mark owner where the alleged infringer can adopt alternative identifiers.

## Conclusion

The Ninth Circuit held that Brookfield had priority in the “MovieBuff” mark, that West Coast’s planned use of moviebuff.com was likely to confuse consumers, and that “MovieBuff” metatags could infringe by creating initial interest confusion; it therefore required an injunction barring use of the domain and the metatags.


Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036 (9th Cir. 1999)