Brookfield Communications, Inc., v. West Coast Entertainment Corporation
Case Analysis
Concordia University
By Robert Benson
Brookfield Communications, Inc., v. West Coast Entertainment Corporation is an intellectual property case involving West Coast Entertainment Corporation [West Coast], a video rental store chain, and Brookfield Communications [Brookfield], an entertainment-industry information provider, over the rights to use the trademark “movie buff”. This case was appealed from a lower court once after the court ruled that Brookfield failed to establish priority of use, therefore making them a junior user of the trademark “MovieBuff”. The lower court also denied a preliminary injunction, forcing Brookfield to apply for an emergency injunction at the cost of posting a $25,000 bond. Lastly, the lower court ruled that Brookfield had not established a likelihood of confusion.
Brookfield appealed this case to a higher court, waiving its claims of trademark dilution and state law infringement, but retained the claims of trademark infringement and unfair competition. This analysis will explain the relevant questions, rules of law, application of the rules, and the general course of discourse throughout the case.
This case sought to answer the following four questions: 1. could West Coast "tack" its use of term "moviebuff.com" onto its earlier use of trademark "The Movie Buff's Movie Store”?; 2. was Brookfield or West Coast the senior user of "MovieBuff" mark?; 3. did West Coast’s use of "MovieBuff" in its domain name create likelihood of confusion? , and; 4. was use of similar marks such as “MovieBuff” and “moviebuff.com” a violation of either party’s intellectual property rights? The first two questions were attempting to establish if Brookfield had a valid, protectable trademark interest in the "MovieBuff" mark. The last two questions discuss the extent to which Brookfield’s trademark interests could be protected by the court. As a whole, these questions present the single question, does the Lanham act allow Brookfield to prevent West Coast from using its trademark in the domain name and metatags of its website?
In order to answer the question of if Brookfield had a valid, protectable trademark interest in “MovieBuff”, Brookfield presented to the court registration of the mark on the Principal Register in the Patent and Trademark Office, which gives Brookfield exclusive rights to use the mark on goods and services. West Coast rebutted that ownership of an inherently distinctive mark such as "MovieBuff" is governed by priority of use, which grants the status of senior user. West Coast only needed to prove that it was the first to use the term “MovieBuff” in commerce, and under the ruling of Sengoku Works Ltd. v. RMC Int'l, Ltd., they would be able to prevent Brookfield from using “MovieBuff”. Brookfield began selling "MovieBuff" software in 1993, so West Coast must prove that it used “MovieBuff before this date.
First West Coast contended that it used the trademark "The Movie Buff's Movie Store" since 1986, which preceded Brookfield’s use in 1993. West Coast was unable to supply a case which explicitly states that this use of a similar trademark to also be considered the first use of “MovieBuff”, but a case specifically rejecting this use also does not exist. The court however posited that such a use has precedent in Data Concepts, Inc. v. Digital Consulting, Inc. Under this court case, if West Coast could prove that “MovieBuff” and “The Movie Buff’s Movie Store” were so similar that consumers generally would regard them as essentially the same, then West Coast would be allowed to consider their use of “The Movie Buff’s Movie Store” as their first use of “MovieBuff”. If this were the case, West Coast would be considered the senior user of “MovieBuff”. However, the court ruled that this is not the case, as “The Movie Buff’s Movie Store” was not the equivalent of “MovieBuff”; therefore, West Coast could not treat its use of “The Movie Buff’s Movie Store” as its first use of “MovieBuff”.
Because West Coast’s use of “The Movie Buff’s Movie Store” proved irrelevant to the case, West Coast must now prove that it used “moviebuff.com” before Brookfield used “MovieBuff” if it wishes to contend it is the senior user. West Coast challenges that Brookfield’s “MovieBuff” is both a software package and an online database. Because West Coast’s product is clearly not a software package, they contend that Brookfield must limit his first use of “MovieBuff”, for sake of priority of use against moviebuff.com, to the first time he offered “MovieBuff” as an online database, August 1997. West Coast first acquired moviebuff.com when they registered the domain with Network Solutions in February 1996; however, simply owning the domain does not fulfill the “use in commerce” requirement to establish trademark priority. The Lanham Act specifically states that for a service to meet this condition it must be, “used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” Although West Coast indeed implemented the term movie buff in various ways, they failed to pass the talismanic test, the test used to determine if the level of use qualifies as “use in commerce”, until well after Brookfield’s first use date. Therefore, it is concluded the Brookfield is the senior user, and has a valid, protectable trademark interest in “MovieBuff”.
With Brookfield’s trademark interests secured, the next question before the court was if West Coast was infringing on those interests, and if so, what remedies could be provided. The first step in tackling this question was determining if West Coast’s use of “moviebuff.com” could potentially confuse customers as to the source or sponsorship of the service. To guide the discussion of if “moviebuff.com” can create such a confusion, the court utilizes the Sleekcraft factors: similarity of the conflicting designations; relatedness or proximity of the two companies' products or services; strength of Brookfield's mark; marketing channels used; West Coast's intent in selecting its mark; evidence of actual confusion; likelihood of expansion in product lines; and degree of care likely to be exercised by purchasers in selecting goods.