Advanced Copyright Issues on the Internet - Fenwick & West LLP

the domain name www.www1800Contacts.com, the defendant Vision Direct had violated theAnticybersquatting Consumer Protection Act. 2335Accordingly, based on the trademark and anticybersquatting claims, the court entered apreliminary injunction against the defendants, enjoining them from (1) including the 1-800CONTACTS mark, and confusingly similar terms, as elements in the SaveNow softwaredirectory, and (2) displaying the plaintiff’s mark in the advertising of Vision Direct’s services,by causing “Vision Direct’s pop-up advertisements to appear when a computer user has made aspecific choice to access or find Plaintiff’s website by typing Plaintiff’s mark into the URL barof a web browser or into an Internet search engine.” 2336On interlocutory appeal of the preliminary injunction, the Second Circuit reversed, rulingthat as a matter of law WhenU did not “use” the plaintiff’s marks within the meaning of theLanham Act when it included the plaintiff’s URL in its software directory or when it causedseparate, branded pop-up ads to appear either above, below, or along the bottom edge of theplaintiff’s website window. 2337 With respect to inclusion of the URL in WhenU’s directory, theSecond Circuit ruled that the URL transformed the plaintiff’s trademark into a word combinationthat functioned more or less like a public key to the plaintiff’s website. The only place WhenUreproduced the address was in its directory, which was not accessible to users and couldtherefore not create a possibility of visual confusion with the plaintiff’s mark. In addition, aWhenU pop-up ad could not be triggered by a computer user’s input of the 1-800 trademark orthe appearance of that trademark on a web page accessed by the user. Accordingly, the courtruled that WhenU’s inclusion of the 1-800 web address in its directory did not infringe on theplaintiff’s trademark. 2338With respect to the pop-up ads, the court noted that they appeared in a separate windowprominently branded with the WhenU mark and had no tangible effect on the appearance orfunctionality of the plaintiff’s website. Nor was the appearance of the ads contingent upon orrelated to the plaintiff’s trademark, the trademark’s appearance on the plaintiff’s website, or themark’s similarity to the plaintiff’s web address. Rather, the display of the ads was the result ofthe happenstance that the plaintiff chose to use a mark similar to its trademark as the address toits web page. Nor did WhenU’s activities divert or misdirect computer users away from theplaintiff’s website. Finally, the court noted that WhenU did not sell keyword trademarks to itscustomers or otherwise manipulate which category-related ad would pop up in response to anyparticular terms on the internal directory. Accordingly, the ads did not represent a “use” incommerce of the plaintiff’s trademarks. 23392335 Id. at 505-07.2336 Id. at 510.2337 1-800 Contacts, Inc. v. Whenu.com, Inc., 414 F.3d 400, 403 (2d Cir.), cert. denied, 126 S. Ct. 749 (2005).2338 Id. at 408-09.2339 Id. at 410-12.- 509 -