Use of Trademark in Domain Names Found to Be Nominative Fair Use
By Harry Zhou – Edited by Anthony Kammer
Toyota Motor Sales v. Tabari, No. 07-55344 (9th Cir. Jul. 8, 2010)
On July 8, 2010, the Ninth Circuit Court of Appeals vacated and remanded an injunction against Farzad and Lisa Tabari by the United States District Court for the Central District of California in a trademark infringement claim brought by Toyota Motor Sales U.S.A. (“Toyota”). The Ninth Circuit stated that on remand the injuction must be modified to permit some use of Toyota’s “Lexus” trademark in Internet domain names.
Led by Chief Judge Alex Kozinski, the majority concluded that Tabari’s use of the string “lexus” in domain names “buy-a-lexus.com” and “buyorleaselexus.com,” under which Tabari operated an automobile brokerage, was nominative fair use, a defense that shielded Tabari from Toyota’s claim of trademark infringement. The nominative fair use doctrine is a defense that gives individuals to right to use another’s trademark to refer to the trademarked good itself. The majority reasoned that Tabari’s truthful communications regarding the nature of the Lexus product fell into the protective scope of the nominative fair use doctrine.
Seattle Trademark Lawyer features excerpts from the opinion. The E-Commerce and Tech Law Blog summarizes potential impacts of the decision. An in-depth analysis of the opinion is available at Eric Goldman’s Technology and Marketing Law Blog. Rebecca Tushnet’s 43(B)log offers comments on the opinion. (more…)