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A Rare Case of a Judge Relying on the Initial Interest Confusion Doctrine (Boo)-Nike v. Warren Lotas – Technology & Marketing Law Blog

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This case includes Warren Lotas sneakers that claimed to reinterpret one in all Nike’s allegedly iconic sneaker stylings. The Fashion Law summarized the case, together with this depiction:

The sneaker similarities are apparent, which isn’t stunning as a result of Warren Lotas styled its product as a “reinterpretation” of the unique. The face-like design added to the swoosh is the first and most visible distinction, however there are quite a few different minor variations all through every design that I’m certain true aficionados acknowledge and care deeply about. For a non-aficionado like me, the similarities overwhelm the variations.

Nike sought a preliminary injunction. In response to Nike’s go well with, Warren Lotas stopped taking orders and supplied prospects a refund or a credit score in direction of a unique sneaker, the Reaper. (It’s slightly odd that Warren Lotas folded so rapidly; did they not anticipate Nike’s enforcement motion?).

In discussing the chance of Nike’s success on the deserves, the courtroom relied on the preliminary interest confusion doctrine (as traditional, citations and parentheticals omitted):

Warren Lotas is prone to have interaction in preliminary interest confusion.

Initial interest confusion happens when the defendant makes use of the plaintiff’s trademark “in a manner calculated ‘to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion’” and is actionable infringement. The Ninth Circuit in Brookfield Commc’ns, Inc. supplied a useful analogy for a way preliminary interest confusion operates. There, the Court analyzed whether or not using a trademark in a metatag triggered preliminary interest confusion. There, the Court analogized using one other’s trademark in metatags to placing up a billboard with a competitor’s trademark directing potential prospects to a retailer. The trademark on the billboard leads the potential buyer to consider they’re heading to a retailer generally related to that trademark. However, upon arrival, potential prospects discover the competitor’s retailer, not the shop generally related to the trademark on the billboard. Even although the potential buyer is now conscious that the shop they’re at is just not associated with the trademark that initially inspired them to hunt out the shop, the client should still spend cash on the retailer. The Ninth Circuit discovered that the metatags have been akin to the billboard and created preliminary interest confusion.

The analogy applies right here, too. Warren Lotas took preorders for the WL Pigeon and Broccolini, each of which comprise of an identical design to the Nike Swoosh design mark, after which supplied a refund or a unique shoe. The “billboard” on this occasion is the Warren WL Pigeon and WL Broccolini, each of which probably infringe on the Nike Swoosh design mark. Warren Lotas plans on benefitting from this preliminary interest within the WL Pigeon and WL Broccolini by now providing the Reaper to prospects who preordered the WL Pigeon or WL Broccolini. It is irrelevant that Warren Lotas has knowledgeable these prospects that the Reaper is just not affiliated with Nike, as a result of the preliminary interest confusion hooked up previous to that disclaimer. The proven fact that preorders have been taken, however no sneakers have been distributed, can also be irrelevant. Warren Lotas is benefitting from the Nike Swoosh design mark by now intending to satisfy preorders which will have been obtained by means of preliminary interest confusion.

Ugh, this made me need to cry. First, Brookfield’s billboard analogy was all the time horrible, and I spent several pages explaining why…15 years ago. Second, the courtroom tries to analogize how search engines like google and yahoo course of metatags (they don’t, however Brookfield assumed they did) are like knockoff physical items, and that stretches a horrible analogy to the breaking level. Shoes are like billboards? Really?

Third, and most significantly, the courtroom doesn’t want to explain this phenomenon as “initial interest confusion.” Instead, the courtroom appears to be describing normal “bait-and-switch” practices. Perhaps the courtroom determined to depend on preliminary interest confusion as an alternative as a result of, on the time Warren Lotas made its providing, there was no supposed “switch.” The alleged switch got here solely after Nike’s authorized demand. However, the truth that the switch got here later shouldn’t matter. Instead, I feel the courtroom’s option to characterize the activity as “initial interest confusion” was a much bigger doctrinal stretch than simply counting on venerable bait-and-switch rules. Alternatively, you possibly can have a look at this ruling as extra proof that there isn’t a such factor as “initial interest confusion;” it’s only a euphemism for bait-and-switch.

i’ve Westlaw alerts arrange on the time period “initial interest confusion.” Nowadays, I see a handful of circumstances yearly referencing the doctrine. Most of these circumstances merely acknowledge that the plaintiff invoked it. It’s uncommon to see a courtroom have interaction the doctrine substantively, and it’s extraordinarily unusual for a courtroom to really depend on the doctrine. There have solely been a handful of such circumstances up to now half-decade. That makes this case a noticeable, and unwelcome, outlier. I tried to declare the initial interest confusion doctrine dead in 2012, and I used to be largely proper. Unfortunately, these sporadic anomalies spark continued however unwarranted hope amongst plaintiffs.

Case quotation: Nike, Inc. v. Warren Lotas, 2020 WL 7264552 (C.D. Cal. Nov. 18, 2020). The complaint.

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