Trademarks In Cyberspace: Ordinary Principles Of Trademark Law Apply To Domain Names And Metatags.

In Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the Ninth Circuit stated that domain names and meta-tags "do not trump long-established principles of trademark law." The trademark dispute was between West Coast Entertainment Corp. ("West Coast"), one of the nation's largest video rental store chains with over 500 stores, and Brookfield Communications, Inc. ("Brookfield"), a company offering software applications containing information about the entertainment industry. The mark at issue was "MOVIEBUFF".

Both parties asserted some rights in expressions combining "movie" and "buff." Since 1986, West Coast had used various phrases including some form of the words "Movie" and "Buff" to promote goods and services. Among these were: "The Movie Buff's Gift Guide"; "The Movie Buff's Movie Store"; "Movie Buff Picks"; "Movie Buff Series"; and others.

In 1991, West Coast obtained federal registration of the mark: "THE MOVIE BUFF'S MOVIE STORE" for video sales and rentals.

In February of 1996, West Coast registered "moviebuff.com" as a domain name, but did not launch a site at that address until 1998. Beginning perhaps as early as April of 1996, West Coast began using "moviebuff.com" in e-mail communications. In November of 1998, West Coast announced in a press release that it was about to launch the site. When West Coast rolled out the site later in 1998, it included a movie information data base. West Coast also used "moviebuff" as embedded meta-tags. These meta-tags were hypertext mark up language (HTML) code which did not appear to a user, but which would be found by web search engines. West Coast's "moviebuff" meta-tags apparently led to other sites maintained by West Coast, including "westcoastvideo.com".

Meanwhile, in 1997 and 1998, Brookfield was perfecting rights in the expression "MOVIEBUFF." Brookfield filed an application for federal registration of MOVIEBUFF in August 1997, and obtained registration in 1998, for computer software providing "information in the field of motion picture and television industries," and providing "an on-line network database offering information" in the field of motion picture and television industries.

After West Coast launched its site, Brookfield sued to enjoin West Coast from using "moviebuff.com" as the address, and from using "moviebuff" in meta-tags within that or any other site of West Coast. Though West Coast prevailed at the trial court level, the...