In Playboy Enterprises, Inc. v. Netscape Communications, Corp., 354 F.3d 1020 (9th Cir. 2004), the Ninth Circuit Court of Appeals reversed the district court’s summary judgment in favor of Netscape Communications, Corp. The Ninth Circuit held that there existed issues of fact as to (1) whether Netscape’s practice of keying created a likelihood of initial interest confusion and (2) whether Netscape’s practice diluted the owner’s marks. Although the Ninth Circuit remanded Playboy Enterprises, conflicting decisions on similar issues reflect the importance of a final, concrete determination of whether pop-ups and related online advertising qualify as trademark infringement. The majority of other circuit courts, including the Second Circuit, which established the current rule for determining trademark infringement, have held that such advertising techniques are not infringement.
This piece begins by first exploring the legal principles underlying trademark law, as goals and registration of marks play heavily into determining the current and still developing trademark law. Second, it will examine the infringement claims that Playboy Enterprises, Inc. alleged in the case at hand, those of trademark infringement and dilution. Finally, it will examine a contrary holding to Playboy Enterprises, the Second Circuit case of 1-800 Contacts v. WhenU, 414 F.3d 400 (2d Cir. 2004). This article contends that the Second Circuit failed to appropriately apply current trademark infringement law to the relevant area of internet and pop-up technology. Instead, the Ninth Circuit’s analysis should be applied if and when the Supreme Court rules on the issue.