Advanced Copyright Issues on the Internet - Fenwick & West LLP

statute. 2327 Finally, the court ruled that the defendants had not recast or transformed theplaintiff’s website because its website remained intact on the computer screen. Although thedefendants’ pop-up ads might obscure or cover a portion of the website, they did not changeit. 2328Moreover, if obscuring a browser window containing a copyrighted website withanother computer window produced a “derivative work,” then any action by acomputer user that produced a computer window or visual graphic that altered thescreen appearance of Plaintiff’s website, however slight, would require Plaintiff’spermission. A definition of “derivative work” that sweeps within the scope of thecopyright law a multi-tasking Internet shopper whose word-processing programobscures the screen display of Plaintiff’s website is indeed “jarring,” and notsupported by the definition set forth at 17 U.S.C. § 101. 2329The district court, however, reached an opposite conclusion to the U-Haul and WellsFargo courts on the issue of trademark infringement, expressly noting that it disagreed with thosecourts. 2330 Unlike those courts, the 1-800 Contacts court found that the defendants were making“use” of the plaintiff’s trademarks in commerce for several reasons. First, SaveNow users thattyped in the plaintiff’s web site address or its 1-800 CONTACTS trademark in a search wereexhibiting a prior knowledge of the plaintiff’s website or goods and services, and the court foundthat pop-up ads that capitalized on that knowledge were “using” the plaintiff’s marks thatappeared on its website. 2331 Second, the court found that by including the plaintiff’s URL,www.1800contacts.com, in its software directory of terms that triggered pop-up ads, WhenU was“using” a version of the plaintiff’s 1-800 CONTACTS mark. 2332 Thus, the court concluded that,by delivering ads to a SaveNow user when the user directly accessed the plaintiff’s website, theSaveNow program allowed the defendant Vision Direct, to profit from the goodwill andreputation in the plaintiff’s website that led the user to access the plaintiff’s website in the firstplace. 2333 With respect to the issue of confusion, although the court found the survey of theplaintiff’s expert, which was the same expert as the Wells Fargo case, to be flawed for many ofthe same reasons the Wells Fargo court noted, the court nevertheless held that the plaintiff hadestablished a sufficient showing of likelihood of harm from both “initial interest confusion” and“source confusion” to support a Lanham Act claim. 2334 The court also ruled that, by registering2327 Id.2328 Id.2329 Id. at 487-88.2330 Id. at 490 n.43.2331 Id. at 489.2332 Id.2333 Id. at 490.2334 Id. at 490-505.- 508 -