Playboy Enterprises, Inc. v. Netscape Communications Corporation, Playboy Enterprises International, Inc. v. Excite, Inc.

354 F.3d 1020 PLAYBOY ENTERPRISES, INC., Plaintiff-Appellant, v. NETSCAPE COMMUNICATIONS CORPORATION, Defendant-Appellee. Playboy Enterprises International, Inc., Plaintiff-Appellant, v. Excite, Inc., Defendant-Appellee. No. 00-56648. No. 00-56662. United States Court of Appeals, Ninth Circuit. Argued and Submitted September 11, 2001. Filed January 14, 2004. COPYRIGHT MATERIAL OMITTED Barry G. Felder, Brown Raysman Millstein Felder & Steiner LLP, Los Angeles, CA, for the plaintiff-appellant. Jeffrey K. Riffer, Stanely M. Gibson and Jim D. Bauch, Jeffer, Mangels, Butler & Marmaro LLP, Los Angeles, CA, for the defendants-appellees. Appeal from the United States District Court for the Central District of California; Alicemarie H. Stotler, District Judge, Presiding. D.C. Nos. CV-99-00320-AHS, CV-99-00321-AHS-02. Before: B. FLETCHER, T.G. NELSON, and BERZON, Circuit Judges. T.G. NELSON, Circuit Judge. 1 Playboy Enterprises International, Inc. (PEI) appeals from the district court's grant of summary judgment in favor of Netscape Communications Corporation and Excite, Inc. PEI sued defendants for trademark infringement and dilution. We have jurisdiction pursuant to 28 U.S.C.…

Playboy Enterprises International, Inc. (PEI) appeals from the district court’s grant of summary judgment in favor of Netscape Communications Corporation and Excite, Inc. PEI sued defendants for trademark infringement and dilution. We have jurisdiction pursuant to 28 U.S.C. § 1291 . Because we conclude that genuine issues of material fact preclude summary judgment on both the trademark infringement and dilution claims, we reverse and remand.

I. FACTS

This case involves a practice called “keying” that defendants use on their Internet search engines. Keying allows advertisers to target individuals with certain interests by linking advertisements to pre-identified terms. To take an innocuous example, a person who searches for a term related to *1023 gardening may be a likely customer for a company selling seeds. Thus, a seed company might pay to have its advertisement displayed when searchers enter terms related to gardening. After paying a fee to defendants, that company could have its advertisements appear on the page listing the search results for gardening-related terms: the ad would be “keyed” to gardening-related terms. Advertisements appearing on search result pages are…

concurring.

I concur in Judge Nelson’s careful opinion in this case, as it is fully consistent with the applicable precedents. I write separately, however, to express concern that one of those precedents was wrongly decided and may one day, if not now, need to be reconsidered en banc.

I am struck by how analytically similar keyed advertisements are to the metatags found infringing in Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir.1999). In Brookfield, the court held that the defendant could not use the trademarked term “moviebuff’ as one of its metatags. Meta-tags are part of the HTML code of a web page, and therefore are invisible to internet users. Search engines use these meta-tags to pull out websites applicable to search terms. See also Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812-13 (7th Cir.2002) (adopting the Brookfield holding).

Specifically, Brookfield held that the use of the trademarked terms in metatags violated the Lanham Act because it caused “initial interest confusion.” Brookfield, 174 F.3d at 1062-66 . The court explained that even though “there is no source confusion in the sense that consumers know[who] they…