Courts must be flexible in applying the law in the Internet context, the U.S. Court of Appeals for the Ninth Circuit emphasized in a dispute involving the use of trademark terms in keyword advertising. The appeals court extensively examined its prior rulings concerning trademark infringement in the Internet context, and concluded that the district court had incorrectly applied those rulings in issuing a preliminary injunction barring the defendant's use of the plaintiff's trademark terms in keyword advertising. In particular, the appeals court found that the district court had incorrectly applied the ruling in Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999), in which the appeals court found that the use of a trademark term in a domain name resulted in actionable "initial interest confusion." The court remanded the case for reconsideration, finding that the most relevant factors for determining consumer confusion, given the nature of the alleged infringement in the case, are "(1) the strength of the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page."
Network Automation, Inc. v. Advanced System Concepts, Inc., 10-55840 (9th Cir. March 8, 2011) Opinion