NYLJ “‘Polaroid’ Developments in the Digital World: Court Examines Trademark Infringement in Social Media”

By Steve Kramarsky

The central purpose of American trademark law (specifically, the Lanham Act) is to guard against potential consumer confusion. Of course, trademark law provides benefits to mark owners as well: it can protect famous marks against dilution, encourage investment in brand identity, and prevent competitors from unfairly trading on the brand's goodwill. But unlike other intellectual property regimes (such as patent and copyright) the primary focus of trademark law is protecting consumers and the marketplace rather than the creators and inventors who supply it. The touchstone of a Lanham Act claim for trademark infringement is likelihood of customer confusion, and without assessing that risk a court cannot determine the viability of such claims.

In assessing the potential for customer confusion, courts in this Circuit rely on an eight-factor balancing test described more than 60 years ago in Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492 (2d Cir. 1961). The Polaroid factors include examination of the similarity of the products and the sophistication of the consumers in the market at issue, but otherwise do not take much account of the market context. This has sometimes created a challenge for courts faced with claims arising in non-traditional contexts such as social media tagging and keyword advertising.

Some courts have dealt with these novel issues by examining whether the conduct at issue constitutes a "use in commerce" of the protected mark—a prerequisite to an infringement claim. But "use" is generally read very broadly, and where it is established, a more nuanced question arises: can conduct that is within the norms of an online community nonetheless create the potential for customer confusion and support a claim for trademark infringement under the Lanham Act?

A recent decision from Judge J. Paul Oetken of the Southern District of New York, Portkey Techs. Pte Ltd. v. Venkateswaran, No. 23-CV-5074 (JPO), 2024 WL 3487735 (S.D.N.Y. July 19, 2024), undertakes a detailed analysis of the Polaroid factors in this context and provides some interesting insight.

Case Background

In Portkey Technologies v. Venkateswaran, plaintiffs Portkey Technologies and its founder Vignesh Sundaresan sued a former independent contractor, Anand Venkateswaran, for unfair competition/reverse passing off, false advertising, and trademark infringement under the Lanham Act, as well as related state-law claims. Defendants moved to dismiss, and the court granted in part and denied in part, notably permitting the trademark infringement claim to survive after a detailed Polaroid analysis that is the focus of this article.

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This article first appeared in the New York Law Journal on September 16, 2024. Stephen M. Kramarsky, a member of Dewey Pegno & Kramarsky, focuses on complex commercial and intellectual property litigation.