Brookfield v. West Coast

How the Ninth Circuit imported initial interest confusion into web search, holding that a rival's domain name and hidden metatags could infringe a trademark even without point-of-sale confusion.

When two companies both wanted to build the internet’s go-to entertainment database under the same name, the Ninth Circuit had to decide what trademark law means in a world of search engines and hidden code. In Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the court — in a long, foundational opinion by Judge Diarmuid O’Scannlain — held that a competitor’s use of a rival’s mark, both as a domain name and buried invisibly in a web page’s metatags, could constitute trademark infringement even where no consumer was ultimately deceived at the moment of purchase. The vehicle was a doctrine called initial interest confusion, and Brookfield became the case that planted it firmly in the law of the internet.

At a glance

Case: Brookfield Communications, Inc. v. West Coast Entertainment Corp., No. 98-56918, 174 F.3d 1036 (9th Cir. Apr. 22, 1999).
Court: U.S. Court of Appeals for the Ninth Circuit; opinion by Judge Diarmuid F. O’Scannlain.
Posture: Appeal from the Central District of California’s denial of a preliminary injunction; reversed and remanded with instructions to enter an injunction.
Holding: Brookfield had priority in the MovieBuff mark; West Coast’s use of moviebuff.com as a domain and of MovieBuff in its metatags was likely to infringe, the latter through initial interest confusion, even absent confusion at the point of sale.
Significance: First major appellate decision to apply initial interest confusion to internet search and metatags, shaping a decade of online trademark litigation.

The race to “MovieBuff”

Brookfield had developed software databases of entertainment-industry information, marketing them to professionals beginning in 1993 and later to consumers under the mark “MovieBuff.” West Coast Entertainment, a large video-rental chain, owned a federally registered service mark for “The Movie Buff’s Movie Store” and had registered the domain name moviebuff.com in 1996, planning to launch a searchable entertainment database of its own. When Brookfield tried to register moviebuff.com and found it taken, the collision was set. Brookfield sued for trademark infringement and sought a preliminary injunction; the district court denied it.

The Ninth Circuit first resolved priority. West Coast’s earlier registration of “The Movie Buff’s Movie Store” did not give it rights in the distinct one-word term “MovieBuff,” and its mere registration of the domain name was not “use in commerce” of that term as a trademark. Brookfield, by contrast, had used “MovieBuff” in commerce earlier. Brookfield therefore had the senior rights in the mark that mattered, and the case turned to whether West Coast’s online conduct was likely to confuse.

Domain names and the likelihood of confusion

For the domain name itself, the court applied its familiar Sleekcraft likelihood-of-confusion factors. The marks were effectively identical, the goods and services directly competitive — both were searchable entertainment databases aimed at overlapping audiences — and the parties used the same marketing channel, the web. Those overlaps made consumer confusion likely when a user typed moviebuff.com expecting Brookfield’s product and instead landed on West Coast’s competing service. The court emphasized that on the internet, where users often guess domain names or rely on them as shorthand for a brand, the use of a competitor’s mark in a domain carries a heightened potential to mislead.

That portion of the analysis was relatively conventional. What made Brookfield a landmark was its treatment of a less visible practice — the embedding of a rival’s mark in metatags — and the doctrine the court used to reach it.

Metatags and initial interest confusion

Metatags are snippets of HTML, invisible to ordinary users, that search engines once read to index and rank pages. West Coast proposed to place “MovieBuff” in its metatags so that searches for Brookfield’s product would surface West Coast’s site. The court held this likely unlawful under the theory of initial interest confusion: even if a user quickly realized, on arrival, that the site was West Coast’s and not Brookfield’s, West Coast would have improperly used Brookfield’s mark to capture the user’s initial attention and divert it to a competitor.

To explain why that diversion matters even without point-of-sale deception, Judge O’Scannlain offered what became the opinion’s most quoted image — the freeway billboard. Imagine a video store, “Blockbuster,” posting a highway sign reading “West Coast Video: 2 miles ahead at Exit 7” when in fact West Coast is at that exit and Blockbuster is not. A driver who exits looking for Blockbuster, finds West Coast, and shrugs that it is “good enough” has been captured by a misappropriation of Blockbuster’s goodwill. The metatag, the court reasoned, works the same way: it trades on the senior user’s mark to siphon off interest the mark generated.

Crucially, the court did not forbid every use of the words “movie buff.” It distinguished trademark use from descriptive fair use, holding West Coast could still use the ordinary English phrase “Movie Buff” accurately to describe its offerings — just not the one-word mark “MovieBuff” as a hidden hook to harvest Brookfield’s traffic.

Open questions

How far does initial interest confusion reach? Brookfield applied it to direct competitors; courts have since wrestled with whether it fits comparative advertising, keyword ads, and non-competing goods, where diversion may cause no real harm.
What about sophisticated, label-reading users? The opinion assumed a meaningful risk that diverted users would settle for the competitor; later cases questioned whether modern, discerning searchers are so easily captured.
Does the billboard analogy hold as search evolved? Metatags lost relevance as search algorithms changed, leaving open how the doctrine should map onto keyword bidding, autocomplete, and AI-mediated search.

Implications

Domain names are trademark use. Registering or operating a domain that mirrors a competitor’s mark to reach overlapping customers invites infringement liability, especially for directly competing services.
Hidden code can infringe. Conduct invisible to users — metatags, and by analogy other behind-the-scenes signals — can violate the Lanham Act if it exploits a mark to divert consumers.
Confusion need not survive to the sale. Initial interest confusion makes the improper capture of attention actionable, decoupling liability from point-of-sale deception.
Descriptive use still has room. Accurate, non-source-identifying use of ordinary words remains available; the violation lies in using a distinctive mark as a hook.
Later law narrowed the edges. Practitioners should read Brookfield alongside Network Automation v. Advanced Systems Concepts, which refocused online confusion on the full multi-factor test and consumer sophistication.

Frequently asked questions

What is initial interest confusion? It is confusion that lures a consumer to a competitor using another’s trademark, even though the confusion is dispelled before any sale. The Ninth Circuit held this kind of bait-and-divert can be actionable trademark infringement under the Lanham Act, because the rival improperly capitalizes on the goodwill of the mark to capture initial attention.

Did Brookfield ban all use of a competitor’s trademark in metatags? No. The court enjoined West Coast from using moviebuff.com and the one-word mark MovieBuff in its metatags, but it left room for fair, descriptive use of the ordinary English phrase movie buff. The line is between using a term as a source identifier and using it to describe goods or services accurately.

Is Brookfield still good law? Its core holding survives, but the Ninth Circuit narrowed initial interest confusion in later cases such as Network Automation v. Advanced Systems Concepts (2011), stressing the multi-factor likelihood-of-confusion analysis and sophisticated, label-reading internet users. Metatags themselves have also become largely obsolete in modern search ranking.