“Pop-Ups” Annoy but
Don’t Infringe
An
Internet marketing company provided a free software application
that
keeps track of computer users’ activity on the web in order to deliver
targeted
advertising for its clients. The software uses an unpublished internal
directory with thousands of website addresses and keywords for
particular
interests of consumers. When the computer user types in particular
terms in a
browser or search engine, a relevant “pop-up” ad is delivered to
the computer.
A company in the contact lens business learned that its website
was in
the internal directory and that the software caused pop-up ads for
competing
contact lens retailers to appear on the screens of individuals who
visited the
company’s website. The contact lens company sued the marketing firm on
the
theory that the marketing firm had infringed upon a trademark in
violation of
federal law. From the plaintiff’s standpoint, the actions of the
marketing
firm were allowing competitors take a free ride on the
plaintiff’s website.
A federal court ruled against the plaintiff contact lens company. A
successful
trademark infringement lawsuit requires a showing of a protected
trademark and
a use of that trademark in commerce in connection with the sale or
advertising
of goods or services, without the plaintiffs consent. The use of
the mark by
the defendant also must be such as to likely cause confusion between
the
plaintiff and the defendant. The action brought by the plaintiff failed
primarily due to the court’s ruling that the defendant had never “used”
the
plaintiff’s trademark in a manner like that in a typical
infringement case.
First, the defendant reproduced the plaintiff’s website address,
which was
similar, but not identical, to its trademark. In addition, the
pop-up ads,
which appeared in a separate window prominently branded with the
marketing
company’s mark, had no discernible effect on the functioning of
the plaintiff’s
website.
It was not enough for
a successful claim that the defendant and its clients were trying to
take
advantage of the plaintiff’s goodwill and reputation, which had led
people to
the plaintiff’s website in the first place. What the defendant was
doing was no
more legally objectionable than the low-tech counterpart of chain
drug stores
placing their own store-brand products on shelves next to the
higher-priced
and trademarked versions of the same products, so as to capitalize on
their
competitors’ name recognition.
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