The Ninth Circuit today released a cranky but important decision on the application of the trademark law's nominative fair use doctrine as it applies to the selection of an internet domain name that contains a trademarked term. The case involved Toyota's trademark infringement claims against a pair of auto brokers that operated at the buy-a-lexus.com and buyorleaselexus.com domain names. The lower court enjoined the auto brokers' use of the Lexus marks in the domains, but the Ninth Circuit said, in effect, not so fast.

In just a few pages, Chief Judge Alex Kozinski's opinion in Toyota Motor Sales U.S.A. Inc. v. Tabari, No. 07-55344 (9th Cir. July 8, 2010):

• described accurately how consumers use the internet (an uncommon feat in judicial opinions);
• colorfully criticized/distinguished several courts' application of the initial interest confusion doctrine in the context of consumer internet use (In Judge Kozinski's view, consumers don't form an impression of the sponsorship of a website until they view the site. "This is sensible agnosticism, not consumer confusion," the judge wrote).
• created a high barrier for trademark owners who challenge other businesses' use of their marks to describe the sales of related goods or services, by putting the burden on trademark owners to affirmatively prove source confusion.
• agreed with cyberlaw academics who argue that trademark law is stifling lawful, beneficial commercial speech by raising the specter of trademark liability for merely descriptive mentions of another company's mark.
• appeared to support the lawfulness of using trademarked terms in HTML meta tags ("One way or another, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that's nearly impossible to do without mentioning Lexus ... be it via domain name, metatag, radio jingle, telephone solicitation or blimp.")
• delivered an important trademark law victory to a party that was self-represented at trial and on appeal.

The Ninth Circuit sent the case back to the lower court with instructions to modify the injunction to permit at least some use of the Lexus mark in the auto brokers' domain names. "Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways," Kozinski wrote. He added that the lower court should consider finding attorneys to represent the Tabaris on a volunteer basis.