Interactive Products Corp. v. A2z Mobile Office Solutions, Inc.: the Sixth Circuit Failed to Conduct a Thorough Analysis in Determining Whether Using a Trademark in the Post-domain Path of a Url Is Trademark Infringement

• Publication year: 2022

37 Creighton L. Rev. 967. INTERACTIVE PRODUCTS CORP. V. A2Z MOBILE OFFICE SOLUTIONS, INC.: THE SIXTH CIRCUIT FAILED TO CONDUCT A THOROUGH ANALYSIS IN DETERMINING WHETHER USING A TRADEMARK IN THE POST-DOMAIN PATH OF A URL IS TRADEMARK INFRINGEMENT

Creighton Law Review

Vol. 37

"The touchstone of liability for trademark infringement is whether the defendant's use of a disputed mark is likely to cause confusion among consumers regarding the origin of goods offered by the parties."(fn1)

INTRODUCTION

The United States Supreme Court has stated a basic objective of trademark law is to prevent competitors from copying source-identifying marks.(fn2) By doing so, it reduces customer costs and purchasing decisions by assuring customers an item the trademark identifies is made by the same manufacturer as other items with that trademark.(fn3) In addition, trademark law helps to assure a manufacturer that it will reap the benefits from the goodwill associated with a desirable product.(fn4) Generally, the design of these trademark policies is to protect consumers from being misled as to the manufacturer of a product, to prevent impairment to the value of the company that owns the trademark, and to achieve these goals in an approach consistent with the objectives of free competition.(fn5)

Trademark infringement on the Internet is a relatively new area of trademark law.(fn6) In the past, trademark infringement on the Internet was found when a competitor used the trademark owner's trademark in the domain name or metatags of its website to indicate the trademark owner was a source or sponsor of the website.(fn7) Prior to the recent decision by the United States Court of Appeals for the Sixth Circuit in Interactive Products Corp. v. a2z Mobile Office Solutions, Inc.,(fn8) only two district courts previously discussed whether the presence of a trademark in the post-domain path of a URL is trademark infringement.(fn9)

In Interactive, the United States Court of Appeals for the Sixth Circuit, in a case of first impression, evaluated whether the use of a trademark in the post-domain path of a URL is trademark infringement.(fn10) In Interactive, Interactive Products Corporation ("IPC") brought an action against a2z Mobile Office Solutions, Inc. ("a2z") and Mobile Office Solutions ("MOE") for trademark infringement when a2z used IPC's trademark LAP TRAVELER in the post-domain path of the URL in a2z's website.(fn11) The district court found IPC had not presented sufficient evidence of the likelihood of consumer confusion and granted the defendants' motions for summary judgment.(fn12) On appeal, the Sixth Circuit determined the presence of a trademark in the post-domain path of the URL does not indicate the source of a web-site and is not trademark infringement.(fn13) In addition, the Sixth Circuit reasoned that because the presence of a trademark in the post-domain path of a URL does not indicate the source of a website, the court did not need to examine the factors traditionally used to determine whether there is a likelihood of consumer confusion from the defendants' use of the trademark.(fn14)

This Note will first examine the facts and holding of the Sixth Circuit decision in Interactive.(fn15) This Note will then review prior case law in which courts have interpreted trademark infringement on the Internet.(fn16) This Note will then analyze the holding of Interactive.(fn17) Specifically, this Note will examine the objectives and policies of trademark law.(fn18) This Note will also illustrate that in Interactive, the Sixth Circuit correctly determined the post-domain path of a URL does not expressly signify source.(fn19) This Note will also show the Sixth Circuit incorrectly determined the presence of a trademark in the post-domain path of a URL can never signify sponsorship or endorsement of a website.(fn20) Next, this Note will illustrate, in analyzing the likelihood of confusion of factors, there was a likelihood of consumer confusion as to the sponsor of a2z's website.(fn21) Finally, this Note will show the Sixth Circuit failed to consider the possibility of initial interest consumer confusion that may result from the use of a trademark in the post-domain path of a URL.(fn22)

FACTS AND HOLDING

Interactive Products Corporation ("IPC") is the owner of the federally registered trademark LAP TRAVELER.(fn23) Mark Comeaux ("Comeaux") and Douglas Mayer ("Mayer") formed IPC in 1994, through which they created and sold the Lap Traveler, a portable computer stand.(fn24) The Lap Traveler secures a laptop computer inside a vehicle, yet affords convenience of use to the driver.(fn25)

In 1998, after a falling out with Mayer, Comeaux filed a petition in Ohio state court seeking to dissolve IPC and, in late 1998, Comeaux and Mayer entered into a settlement agreement resolving the petition.(fn26) Pursuant to the terms of the settlement agreement, Comeaux purchased Mayer's stock in the corporation for $33,000.(fn27) The agreement also provided the right to use the name and model designations for the Lap Traveler would remain the exclusive property of IPC.(fn28) Both Mayer and Comeaux could claim joint inventorship of the Lap Traveler and shared the right to market, sell, or manufacture identical or similar products to the Lap Traveler, so long as Mayer did not use the name or model designations associated with the trademark LAP TRAVELER.(fn29) Finally, Mayer and Comeaux could compete with one another in soliciting, marketing, and sales of products without restriction.(fn30) Nothing in the settlement agreement required the settlement terms remain confidential.(fn31)

After leaving IPC, Mayer formed Mobile Office Enterprise, Inc. ("MOE").(fn32) MOE manufactured and sold a portable computer stand modified from the Lap Traveler, called the Mobile Desk.(fn33) MOE owned the federally registered trademark for the MOBILE DESK.(fn34)

a2z Mobile Office Solutions, Inc. ("a2z") marketed mobile computer accessories via an Internet website, "a2zsolutions.com."(fn35) From 1996 to 1998, a2z sold the Lap Traveler on its website located at the Internet URL "a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm."(fn36) Comeaux ended IPC's relationship with a2z in 1998, after the relationship between Comeaux and a2z president Brian Lee ("Lee") became strained.(fn37) In January 1999, Comeaux ordered a2z and Lee to remove the LAP TRAVELER and any references thereto from a2z's website.(fn38) Subsequent to Comeaux's demand that a2z cease selling the Lap Traveler on its website, a2z replaced the Lap Traveler with the Mobile Desk.(fn39) a2z advertised and sold the Mobile Desk on the same web page that formerly sold the Lap Traveler, which was accessible from a2z's website.(fn40) Throughout 1999, a2z posted an announcement on its website indicating the Mobile Desk had replaced the Lap Traveler and the Lap Traveler was no longer available on a2z's website.(fn41) Mayer provided Lee with a copy of the IPC settlement agreement, which Lee used to draft the announcement.(fn42) a2z removed the announcement from its website in December 1999.(fn43)

In August 1999, Comeaux searched the Internet using "LAPTRAVELER" as the search term or keyword on multiple search engines.(fn44) The results of the searches consistently showed the URL for a2z's portable-computer-stand web page as a listed hit.(fn45) The URL for the portable-computer-stand page is where the announcement was located.(fn46) In addition, when Comeaux typed the URL http://www.a2z solutions.com/desks/floor/laptraveler into the browser's location bar, a web page entitled "Index of desks/floors/laptraveler" appeared.(fn47) The index listed the individual files within the directory, including the LAP TRAVELER file, which allowed users to link to the web page containing the announcement.(fn48)

IPC sued Mayer, MOE, Lee, and a2z (the "Defendants") for trademark infringement and false designation of origin in the United States District Court for the Southern District of Ohio.(fn49) IPC sought a permanent injunction to enjoin the Defendants' use of the LAP TRAVELER trademark, compensatory damages, and punitive damages.(fn50) On December 15, 2000, Lee and a2z filed a motion for summary judgment, requesting the court dismiss IPC's claims.(fn51) Lee and a2z argued the presence of the term "laptraveler" in the post-domain path of a2z's website was non-infringing use of the LAP TRAVELER trademark as a matter of law.(fn52) The court noted the post-domain path of a URL is the text that follows the domain name in the URL.(fn53) Lee and a2z argued summary judgment was proper on the false desig-nation of origin claim, because IPC did not proffer any evidence of actual consumer confusion in the market.(fn54)

Mayer and MOE filed a separate motion for summary judgment on December 15, 2000.(fn55) Mayer and MOE argued a2z's use of the term LAP TRAVELER was non-infringing.(fn56) Mayer and MOE also argued even if a2z's use of the term LAP TRAVELER was trademark infringement, there was no evidence Mayer and MOE were agents of a2z, and they were not liable for a2z's alleged trademark infringement.(fn57)

The district court granted summary judgment for the Defendants, holding there was no genuine issue of material fact that consumer confusion was likely regarding the origin of the MOBILE DESK by a2z's use of LAP TRAVELER in the post-domain path of its URL.(fn58) District Judge Sandra Beckwith...