plaintiff in Promatek, Dr. Banks used Standard Process trademarks in the
metatags of his website. However, today “modern search engines make little if
any use of metatags.” ... As more and more webmasters “manipulated their keyword
metatags to provide suboptimal keyword associations, search engines
progressively realized that keyword metatags were a poor indicator of relevancy.”
Accordingly, search engines today primarily use algorithms that rank a website
by the number of other sites that link or point to it."
The U.S. District Court for the District of
Minnesota held that the use of a rival real estate broker's trademark as a
keyword term, as well as in the text of sponsored links, is not a fair use of
the mark where there are other opinions for describing the market the defendant
Without lengthy analysis, the court found that the
defendant's purchase of search terms like “Edina Realty,” “Edina Reality,” “EdinaReality.com,”
“EdinaRealty,” “EdinaRealty.com,” “www.EdinaReality.com” and “www.EdinaRealty.com”
on both Google and Yahoo did constitute use of the plaintiff's mark in commerce.
The court held that although defendant's use was not "conventional," the
purchase of terms comprising the marks, in order to generate sponsored link
advertisements, satisfied the definition of use in commerce as provided in 15
The court briefly evaluated the standard likelihood
of confusion factors and found enough dispute about several factors to require a
trial. Edina Realty proffered as evidence of actual confusion several e-mails
received by MLSonline from consumers inquiring about Edina Realty.
MLSonline also sought dismissal of the trademark infringement claims advanced
against it on the ground that its use was a permitted nominative fair use:
The Court holds that defendant's use of the Edina Realty mark does not
constitute nominative fair use as a matter of law. Defendant uses the mark
as an Internet search term, in its Sponsored Link advertisements, and in
hidden text and hidden links on its website. None of these uses requires
the Edina Realty mark. In its advertisements and hidden links and hidden
text, defendant could easily describe the contents of its website by stating
that it includes all real estate listings in the Twin Cities. Similarly,
defendant could rely on other search terms, such as Twin Cities real estate,
to generate its advertisement. In addition, defendant's use of the Edina
Realty mark in its advertisement does not reflect the true relationship
between plaintiff and defendant. Defendant's advertisement that has
appeared on Yahoo, for example, places the Edina Realty mark in the headline,
which is underlined and in bold font. The name of defendant's company is
listed in much smaller font at the bottom of the ad. Defendant could have
done more to prevent an improper inference regarding the relationship.
In May 2006, the case settled. Lawyers representing
Edina Realty and TheMLSonline.com confirmed that a deal has been reached but
said its terms were confidential.
The U.S. District Court for the Southern District
of New York held that the purchase of keyword advertising triggered by a
trademarked term is not an actionable "use in commerce" (Merck & Co. Inc. v.
Mediplan Health Consulting Inc. (SDNY Mar. 30, 2006). Federal law provides that
a mark is "used in commerce" (15 U.S.C. § 1127 (1)) in connection with services
"when it is used or displayed in the sale or advertising of services and the
services are rendered in commerce" (15 U.S.C. § 1127 (2)). According to the
court "the ZOCOR mark is used only in the sense that a computer user's search
of the keyword "ZOCOR" will trigger the display of sponsored links to
defendant's website. This internal use of the mark "ZOCOR" as a key word to
trigger the display of sponsored links is not use of the mark in a trademark
sense." The Court found further support for its decision in the fact
that "defendants actually sell Zocor (manufactured by Merck's Canadian
affiliates) on their websites. Under these circumstances, there is nothing
improper with defendants' purchase of sponsored links to their websites from
searches of the keyword "Zocor."
So, simply put the Merck case is directly contrary
to the Edina Realty case on the question of whether purchasing a
competitor's trademark as a keyword constitutes use in commerce. Upon a
motion to reconsider and review the Edina Realty opinion, the Merck
court reaffirmed its ruling dismissing the mark owner's trademark infringement
Merck., F.Supp.2d, 2006 WL 1418616 (S.D.N.Y. May 24, 2006).
Two lower courts have ruled that use of a
trademarked term to trigger ads is "use in commerce." See Government Employee
Ins. Co. v. Google Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) and Google Inc. v.
American Blind and Wallpaper Factory Inc. (N.D. Cal. March 30, 2005).
German courts are still split on the question
whether the use of trademarks as keywords that trigger the display of ads are
permissible. So are courts in the USA. According to the latest decision
for the Home, LLC v. Humble Abode, LLC, 03-CV-2783 (JAP) (D.N.J. Oct. 20,
2006) buying keywords constitutes trademark use.
Are advertisers making a trademark use in commerce
when they buy keyword advertising.?The court summarized the latest court
decisions in the USA as follows:
"Plaintiff alleges Defendants purchased advertising
linked to the search term TOTAL BEDROOM from the search engine company Google.
Google, as well as other search engines, “sell[s] advertising linked to search
terms, so that when a consumer enters a particular search term, the results page
displays not only a list of Websites generated by the search engine program
using neutral and objective criteria, but also links to Websites of paid advertisers (listed as ‘Sponsored Links’).” Gov't Employees Ins. Co. v. Google,
Inc., 330 F. Supp. 2d 700, 702 (E.D. Va. 2004). The advertisement and link to
Humble Abode’s website appeared on the far right of the screen, separate and
apart from the search results list, under the heading “Sponsored Links.”
Humble’s advertisement does not display the mark TOTAL BEDROOM.
To be actionable under § 43(a) of the Lanham Act, a defendant’s “use” of a
plaintiff’s mark must be “in commerce” and “on or in connection with any goods
or services, or any container for goods.” 15 U.S.C. 1125(a). In this regard,
courts presented with claims similar to those in the present case
involving the purchase or sale of trademarks as search engine keywords generally
have examined whether the defendant’s alleged “use” of the mark constituted a
“trademark use” generally, i.e., commercial use of the mark as a trademark, e.g.,
800-JR Cigar, Inc., v. Goto.com, Inc., Civil Action No. 00-3179, 2006 WL
1971659, *6-8 (D.N.J. July 13, 2006), or have examined “use” by looking more
specifically at the definition of “use in commerce” under the Lanham Act, e.g.,
Merck & Co. v. MSD Technology, L.P., 425 F. Supp. 2d 402, 415-16 (S.D.N.Y.
2006). The Third Circuit has not spoken on the issue of whether the purchase
and/or sale of keywords that trigger advertising constitutes the type of “use”
contemplated by the Lanham Act, and decisions from other courts that have
addressed the issue are conflicting. In a recent decision in the Southern
District of New York, Merck & Co. v. MSD Technology, plaintiff drug company
brought an action against various Canadian entities that operated online
pharmacies alleging, inter alia, unfair competition and trademark infringement
under federal and state law. The Canadian entities had purchased from the
Internet search engine companies Google and Yahoo! the right to have links to
their website displayed as “Sponsored Links” when a computed user conducted a
search using plaintiff’s mark ZOCOR. The court, in granting defendant’s motion
to dismiss, found that
in the search engine context, defendants to do not
‘place’ the ZOCOR marks on any goods or containers or displays or associated
documents, nor do they use them in any way to indicate source or sponsorship.
Rather, the ZOCOR mark is “used” only in the sense that the computer user’s
search of the keyword “Zocor” will trigger the display of the sponsored links to
defendants’ websites. This internal use of the mark “Zocor” as a key word to
trigger the display of sponsored links is not use of the mark in a trademark
Merck & Co., 425 F. Supp. 2d at 415.
Another district court addressing similar claims on similar facts found
differently. In Edina Realty, Inc. v. The MLSonline.com, Civ. 04-4371JRTFLN,
2006 WL 737064 (D. Minn. March 20, 2006), the defendant, a direct competitor of
plaintiff, had purchased from Google and Yahoo! search terms that were identical
or similar to plaintiff’s EDINA REALTY trademark. In denying the defendant’s
motion for summary judgment, the Court found defendants use of the mark
constituted a “use in commerce” under the Lanham Act, holding:
While not a conventional “use in commerce,”
defendant nevertheless uses the Edina Realty mark commercially. Defendant
purchases search terms that include the Edina Realty mark to generate its
sponsored link advertisement. See Brookfield Communs., Inc. v. W. Coast Entm't
Corp., 174 F.3d 1036, 1064 (9th Cir.1999) (finding Internet metatags to be a use
in commerce). Based on the plain
meaning of the Lanham Act, the purchase of search terms is a use in commerce.
Edina Realty, 2006 WL 737064 at *3.
Similar actions brought against defendants who
engage in the sale of the search terms, as opposed to the purchasers of those
terms, have likewise reached differing conclusions concerning “use.” Compare
Rescuecom Corp. v. Google, Inc., No. 5:04-cv-1055, 2006 WL 2811711 (Sept. 28,
2006) (granting Google’s motion to dismiss finding that “in the absence of
allegations that defendant placed plaintiff's trademark on any goods, displays,
containers, or advertisements, or used plaintiff's trademark in any way that
indicates source or origin, plaintiff can prove no facts in support of its claim
which would demonstrate trademark use”) with 800-JR Cigar, Inc., v. Goto.com,
Inc., Civil Action No. 00-3179, 2006 WL 1971659, *8 (D.N.J. July 13, 2006) (denying
summary judgment and finding sufficient evidence to support claim that defendant
made “trademark use” of plaintiff’s mark where defendant (1) accepted bids on
the plaintiff's trademark from the plaintiff's competitors, thereby trading on
the value of the marks; (2) ranked paid advertisers before “natural” listings
among the search results, thereby acting as a conduit to steer competitors away
from plaintiff; and (3) suggested search terms including the plaintiff's
trademarks to the plaintiff's competitors); Google v. American Blind & Wallpaper
Factory, Inc., No. 03-05340, 2005 WL 832398 (N.D. Cal. Mar. 30, 2005) (denying
motion to dismiss in light
of the unsettled state of the law with respect to actionable “use” of a
trademark in the search engine context); GEICO v. Google, Inc., 330 F. Supp. 2d
700 (E.D. Va. 2004) (denying motion to dismiss finding allegations that
defendant allowed advertisers to bid on trademarks as search terms and to pay
for advertising linked to trademarks were sufficient to establish trademark use).
The Court is mindful of the challenges that sometime arise in applying existing
legal principles in the context of newer technologies. As expressed by the Edina
Realty court, supra, Defendants’ alleged use of Plaintiff’s mark is certainly
not a traditional “use in commerce.” 2006 WL 737064 at *3. Nonetheless, the
Court finds Plaintiff has satisfied the “use” requirement of the Lanham Act in
that Defendants’ alleged use was “in commerce” and was “in connection with any
goods or services.” 15 U.S.C. 1125(a)(1). First, the alleged purchase of the
keyword was a commercial transaction that occurred “in commerce,” trading on the
value of Plaintiff’s mark. Second, Defendants’ alleged use was both “in commerce”
and “in connection with any goods or services” in that Plaintiff’s mark was
allegedly used to trigger commercial advertising which included a link to
Defendants’ furniture retailing website. Therefore, not only was the alleged use
of Plaintiff’s mark tied to the promotion of Defendants’ goods and retail
services, but the mark was used to provide a computer user with direct access (i.e.,
a link) to Defendants’ website through which the user could make furniture
purchases. The Court finds that these allegations clearly satisfy the Lanham
Act’s “use” requirement.
On May 15, 2006, Judge Pechman of the U.S. District Court
for the Western District of Washington entered an order enjoining a former
employee from using his former employer's trademarks as metatags in a web
site promoting competing services, Shainin II, LLC v. Allen, (Slip
Op.) 2006 WL 1319405 (May 15, 2006).
The complainent owned a
registered trademark for "Champion Mortgage". The respondent used the disputed
domain name "championsmortgageclassaction.com" to redirect users to a commercial
website for respondants gain. This was not a bona fide offering of goods or
services, the panalist said. Although the respondant also provided consumers
with information and services regarding a lawsuit against the Complainant, the
National Arbitration Forum held that the use of a domain to link to a lawsuit
site against the mark holder showes bad faith: "... However, the Panel is not
aware that one suing another who holds a protected trademark acquires some right
to use the targeted litigant’s protected mark in ways that benefit the user and
not the holder of the mark."
Complainant Yahoo! Inc.
commenced an action against Respondent, Bill Skipton, asserting that
Respondent’s "yprog.com" domain name was confusingly similar to Complainant’s Y!
mark. Respondent was using the disputed domain name to sell software designed to
hack into Complainant’s Yahoo! Messenger software. The Panel noted that the only
similarity between Complainant’s Y! mark and the "yprog.com" domain name was the
letter “y,” which was insufficient to satisfy the first element of the Policy.
"...Thus reduced, this proceeding presents what appears to be a novel
proposition, which is that a single letter of the English alphabet, in this
instance the letter Y, may ground a claim of confusing similarity within the
meaning of Policy... Complainant argues, in essence, that Y can only stand for
Y!. But Y is not Y!. It is no more than a literal truth that the expressive
punctuation for which Complainant is well known is fully half its mark. And, as
was noted in Entrepreneur Media, supra, small differences matter. Indeed,
without the exclamation mark, Y is just Y. It could as easily stand for the
chemical element yttrium, or instead for YMCA, or, particularly aptly here, an
And finally to a trademark related decision from
Great Britain from 2004, which I apparently missed at the time: In 1986 Reed
Employment registered the trade mark "Reed" for employment services. Reed
Business Information had paid the search-engine company Yahoo for a banner
advertisement for its website totaljobs.com to appear when a search was
conducted under the term "reed". Overturning the High Court, the Court of Appeal
ruled that the public would not be confused by the banner advert into thinking
that totaljobs was connected to Reed Employment: "The web-using member of
the public knows that all sorts of banners appear when he or she does a search
and they are or may be triggered by something in the search. He or she also
knows that searches produce fuzzy results – results with much rubbish thrown in.
The idea that a search under the name Reed would make anyone think there was a
trade connection between a totaljobs banner making no reference to the word
'Reed' and Reed Employment is fanciful. No likelihood of confusion was
Symicron, the owner of the trademark "Explorer" in Germany, started sending out
bundles of cease-and-desist-letters to webmasters who linked the American FTPX
Corp. website, the maker of "FTP-Explorer", in 1997. The use of their
trademark in a link would allegedly violate German trademark law. Adressees of
the letters were many holders of private homepages, universities and Stefan Münz,
who is well known for his Self HTML book.
lawsuits followed. They resulted in quite disparate decisions.
June 15, 2005: Roth,
Symicron: Konkurs eines Abmahners, Telepolis: "Unrecht lohnt sich doch nicht: Mit der Marke "Explorer" wurde einst eine
der größten und bekanntesten Abmahnwellen des Internet gestartet. Doch es
gab kein Produkt. Und nun gibt es auch kein Unternehmen mehr"
19, 2001, "FTP
Explorer" - Weiterer Etappensieg für Stefan Münz, Golem.de: "Laut dem Onlinemagazin Advograf hat der SELFHTML-Autor Stefan Münz im Rechtsstreit mit der Firma Symicron einen weiteren Etappensieg errungen, indem die Berufung Symicrons gegen ein früheres und zu Gunsten von Münz gefälltes Urteil zurückgewiesen wurde."
Urheberrechtsklage abgewiesen, Heise: "Der
Dauerrechtsstreit um die Marke "Explorer" der Ratinger Firma
Symicron ist um einen weiteren Fall reicher. Am vergangenen Mittwoch hat die
12. Zivilkammer des Landgerichts Düsseldorf die Klage des früheren
CHIP-Redakteurs Claus Vester abgewiesen, wie das satirische "Magazin
gegen den Abmahnwahn" AdvoGraf berichtet."
München: „FTP-Explorer“-Link verletzt Markenrecht, Heise: "Das Oberlandesgericht (OLG) München hat heute in einem Berufungsverfahren festgestellt, dass Webpage-Betreiber nach Ansicht des Gerichts für Links zu fremden Inhalten haftbar gemacht werden können."
Urteil im Prozess Münz gegen Symicron, Heise: "Vor dem 27. Senat des Oberlandesgerichts Düsseldorf wurde gestern der Rechtsstreit zwischen dem Autor Stefan Münz und der Firma Symicron um die Benutzung des Markennamens "Explorer" verhandelt."
21, 2001: Rieger, Susanne,
und Symicron unterliegen vor Gericht, ZDNet: "Bei der gestrigen mündlichen Berufungsverhandlung zwischen Ulrike Strieder und der Symicron, die vor dem Oberlandesgericht Düsseldorf verhandelt wurde, musste die Inhaberin des "Explorer"-Markennamens, vertreten durch ihren Anwalt Günter Freiherr von Gravenreuth eine Niederlage hinnehmen."
um "FTP-Explorer"-Link geht in die nächste Instanz, Heise: "Ende Oktober entschied das Landgericht Düsseldorf im Rechtsstreit um den "FTP-Explorer"-Link auf den SelfHTML-Seiten, dass die Nennung des FTP-Explorer wie auch der Link zur amerikanischen Firma FTPx Corporation keine Rechte der Ratinger Firma Symicron verletze."
Landgericht entscheidet zu Gunsten Gravenreuths, Heise: "Im Rahmen der Streitigkeiten, ob ein Link auf die Downloadmöglichkeit des Programms "FTP-Explorer" Markenrechte der Ratinger Firma Symicron verletzt, war Streit um die Begleichung der Abmahnkosten in Höhe von 1633 Mark entbrannt."
September 26, 2000:
im Explorer-Prozess für Münz, PC-Welt: "Stefan Münz hat die erste Instanz der negativen Feststellungsklage gegen die Abmahnung des Rechtsanwalts von Gravenreuth gewonnen."
21, 2000: Baumgärtel, Tilman,
wird wohl abgewiesen, BerlinOnline: "Stefan Münz, der Autor der beliebten Webdesign-Führers "SELFHTML" dürfte in dem Verfahren, welches Software-Unternehmen Symicron gegen ihn angestrengt hat, Recht bekommen."
Schritte gegen Explorer-Abmahnungen, Heise: "Nach der Strafanzeige wegen der FTP-Explorer-Abmahnwelle kommt jetzt auch eine so genannte negative Feststellungsklage auf den Münchener Anwalt von Gravenreuth und seinen Mandanten Symicron zu."
May 10, 1999:
Akademie.de: "Der Berliner Tagesspiegel berichtet in der heutigen Ausgabe über eine aktuelle Entscheidung des Oberlandesgerichts (OLG) München, wonach die Verlinkung einer Site im Internet den Linkenden teuer zu stehen kommen kann."
12, 1999: Rötzer, Florian,
ein Link-Prozeß, Telepolis: "Wieder einmal geht es in einem Gerichtsprozeß, diesmal ab heute vor der Handelskammer des Münchner Landesgerichts, um die Verantwortung für Links zu fremden Inhalten."
Nissan registered the domain nissan.com and initially used it to offer
computer-related services. When he started displaying banner advertisments and
web links to various Internet search engines and automobile merchandisers and including a logo, that was similar to the one used by Nissan Motor
Co., he was sued.
The court enjoined Uzifrom displaying on its website any
automobile-related information, advertising, or links, including links to
automobile-related portions of Internet search engines.
filed a complaint in U.S. District Court
(CDCal) against Uzi Nissan, who owns a computer store in the state of North
Carolina, alleging that the domain name "nissan.com" diluted the "NISSAN"
trademark in violation of the Federal Trademark Dilution Act (FTDA). The
District Court enjoined Nissan Computer from publishing any commercial content
in its web site located at nissan.com and from placing links to other web sites
that contain disparaging remarks or negative commentary about Nissan Motor (see
the previous report by Links & Law here). This summer, the Court of Appeals
affirmed in part, reversed in part, and remanded. As for the relevant
question, whether linking to sites that contain disparaging comments about
Nissan Motor on the nissan.com website is commercial the appeal court held, that
Links to negative commentary about Nissan Motor, and about this litigation,
reflect a point of view that is protected by the First Amendment. So Injunctive
relief may not restrain Nissan Computer from placing links on nissan.com and
nissan.net to other sites that post negative commentary about Nissan Motor.
August 9, 2004,
intern.de "Der Fall "nissan.com" ist fast schon wie ein alter Bekannter. Immer wieder
landet der Domain-Streit vor Gericht. Ein US-Berufungsgericht hat sich nun
erneut mit dem Fall beschäftigt. Dieses Mal fiel die Entscheidung für den
Computer-Händler Uzi Nissan aus."
Nissan Motor is suing Nissan
Computer for Trademark Infringement, Trademark Dilution and CyberSquatting,
seeking 10 Million Dollars in damages. Links & Law has reported about the
Nissan.com case in the past (see
Update 25 for more details). The latest
development is as follows: The Nissan Motor Co appealed the summer 2004 decision
by the 9th Circuit Court of Appeals, firstly to
the Court of Appeals and then to the US Supreme Court. Both appeals have now
April 20, 2005:
Supreme Court rejects Nissan.com appeal, Out-Law.com: "The US Supreme Court has refused to hear an appeal by car giant
Nissan Motor Co over the domain names Nissan.com and Nissan.net, following a
decision by a California Appeals Court not to order the transfer of the
domains, according to the Los Angeles Times."
was, inter alia, enjoined from using on its Web page at http://www.altavista.com or elsewhere, a link (without
any search boxes), direct or indirect, to Digital's AltaVista Internet Search
Service that creates the false impression that ATI's Web site is Digital's
AltaVista Search Service.
registered the domain "wwwpainewebber.com", a misspelling of
plaintiff’s domain name in that it omitted a period after "www." and
linked visitors to pornographic websites. The court granted a temporary
restraining order on April 2 and a preliminary injunction on April 9, 1999,
holding that plaintiff’s trademark would be diluted by being linked with
Defendant had been injuncted from advertising or promoting apparel bearing
plaintiff's "Energie" trademark in the US. He is the holder of the trademark
“Energie” in several european countries and operates three websites, one of
them www.energie.it. His other two websites www.misssixty.com and www.sixty.net
both contained a hyperlink to www.energie.it. The US Court ordered the Defendant
to remove the links, but did not find that the action was in contempt of the
2001 Ford requested an injunction against 2600 Enterprises to prevent it from
hyperlinking from the website “fuckgeneralmotors.com” to its own Website.
In December 2001, the lawsuit was dismissed in its entirety for "failure to
state a claim upon which relief may be granted.” "Trademark law does not
permit (Ford) to enjoin persons from linking to its homepage simply because it
does not like the domain name or other content of the linking Web page."
Besides ACLU v. Miller this is another decision that suggests that there might be
a “right to link”.
initially decided to appeal to the Sixth Circuit U.S. Court of Appeals, but
finally withdraw its appeal in June 2002.
2002 : Ford
Takes 2600 to Court, 2600 news: "Ford Motor Company has officially and unconditionally conceded its
complete, utter, and perpetual loss on the merits of the FORD v. 2600 "FuckGeneralMotors.com"
: "A suit brought by Ford Motor Company against 2600.com founder Eric Corley aka Emmanuel Goldstein for setting up the Web site fuckgeneralmotors.com to re-direct surfers to the Ford home page has been
: "Eric Corley is in the legal soup again. The man at the center of the landmark DeCSS case - a federal court battle over Corley's posting of and linking to software code designed to decrypt DVD movies - is now being sued by the Ford Motor Company in a separate cyberspace matter."
October 21, 2000: Kahney, Leander, Hacker
Site Raises GM's Hackles, Wired: "Bloodied but not bowed from recent courtroom skirmishes, 2600 Magazine is courting fresh legal battles by registering unflattering domain names referring to large
Defendants operate several websites that
are critical of plaintiff's interior design services. They contain links to
other interior designers. They use plaintiffs' common-law service mark in meta
tags to attract visitors. The Court denied plaintiff's motion for a preliminary
injunction, holding that defendant's use of the mark in metatags is protected as a
fair use, because the mark was only used in its descriptive sense to fairly
identify the content of the websites. As for the hyperlinks, the court said:
"Nor do the Gross websites offer any "commercial transaction."
Defendants are not interior designers and do not sell visitors any products or
services. However, the Gross websites contain hyperlinks to other websites which
promote the services of other interior designers. The Gross websites effectively
act as a conduit, steering potential customers away from Bihari Interiors and
toward its competitors, thereby transforming his otherwise protected speech into
a commercial use."
operates an Internet city guide,
that can be found at www.toronto.com.
The Defendants began operation of
their website under the domain name
"toronto2.com" in late April 1999.
The plaintiff claimed that the
defendants had infringed his
copyright by linking and framing
content of the toronto.com website
and passed off wares and services as
those of the plaintiff by adopting a
confusingly similar mark. Toronto2 displayed
a disclaimer that states that the
Toronto2 website is not affiliated
with the toronto.com website.
Court refused to grant an injunction because the Plaintiffs
had no evidence demonstrating likelihood of confusion or loss of goodwill or
IMAX claimed, inter alia, that its imaxtrademark was infringed by links from a website operated by the defendant
Showmax. Showmax has used its website http://www.showmax.com to advertise the
opening of the Showmax large-format theatre at the Forum Entertainment Centre in
Montréal. The website also featured further links, including one which lead the
viewer to the Old Port of Montréal website, which appeared framed within the
framing page of the Showmax website. The Old Port of Montréal website, as
framed, contained information and advertising regarding the Imax theatre at the
Old Port of Montreal and displayed the Imax trademark.
Court granted the request for an interlocutory injunctio
the defendant's use of the showmax
trademark and other misleading conduct, including the unauthorized framing.
webmasters designed websites to parody or criticise other companies and used the trademark of the company in their
domain-name. They got sued by the
respective owner of the trademark. To succeed in their
claim plaintiffs had to show that the use of their mark as the domain name
constitutes commercial use. Several courts had to decide whether hyperlinks to
commercial sites in competition with the critized company or to other web pages
containing negative opinions and stories, were sufficient to hold
defendant’s “use in commerce”.
registered the domain name peta.org and created a website called "People
Eating Tasty Animals", a “resource for those who enjoy eating meat, wearing
fur and leather, hunting, and the fruits of scientific research." PETA (People for the Ethical Treatment of Animals) alleged, inter alia,
service mark infringement. The website contained links to various meat, fur,
leather, hunting, animal research, and other organizations, all of which held
views generally antithetical to PETA's views. Another statement on the website
asked the viewer whether he/she was "Feeling lost? Offended? Perhaps you
should, like, exit immediately." The phrase "exit immediately"
contained a hyperlink to PETA's official website.
motion for summary judgement was grantedand
later affirmed by the Fourth Circuit: “Moreover, Doughney's web site provides
links to more than 30 commercial operations offering goods and services. By
providing links to these commercial operations, Doughney's use of PETA's Mark is
"in connection with" the sale of goods or services.“
early 1999 defendant decided to set up his own website to parody and provide a
public forum for criticism of The Buffalo News' website. Therefore he
registered the domain thebuffalonews.com. The website contains disparaging
comments about The Buffalo News and hyperlinks to other websites containing
negative opinions and stories about The Buffalo News. It also features
hyperlinks to other news-related websites, e.g. other local news sources such as
local magazines, newspapers, radio stations and television stations. At one
point it also contained a hyperlink to the website ''www.buffalonyapartments.com",
an online version of defendants' Apartment Spotlight Magazine.
granted a preliminary injunction, ordering the defendant to cease and desisit
from using the domain name thebuffalonews.com: “First,
defendants' use of plaintiffs' trademark as the domain name for the Tortora web
site constitutes ''use in commerce'' because that web site contains a hyperlink
that connects users to defendants' other web site, the online version of Apartment
Spotlight Magazine, which they operate for commercial purposes, i.e.,advertising
apartments for rent….
The facts present here are even more compelling than those in
Planned Parenthood. Prospective users of plaintiffs' news services who mistakenly
access defendants' web site may, instead of continuing to look of plaintiffs'
web site, opt to select one of the several news-related hyperlinks contained in
defendants' web site. These news-related hyperlinks will directly link the user
to other news-related web sites that are in direct competition with plaintiffs
in providing news-related services over the Internet. Thus, defendants' action
in appropriating plaintiffs' mark is likely to have a negative affect on
plaintiffs' commercial activities.”
Plaintiff Organization, a non-profit, international outreach
ministry owns the right to the service marks "Jews f<<
StarOfDavid>>r Jesus" and "Jews for Jesus." The
Defendant registered the domain jewsforjesus.org to criticize the Plaintiff
Organization. His website also contained a "hyperlink" to the Outreach
Judaism (the "Outreach Judaism Organization") website, which also
contains information critical of and contrary to the teachings of the Plaintiff
court granted a preliminary injunction: “Although
the Defendant Internet site does not solicit funds directly like the defendant's
site did in Planned Parenthood, the Outreach Judaism Organization Internet site
(available through the hyperlink) does do so through the sale of certain
merchandise. The Defendant does not argue that the Outreach Judaism
Organization site is not commercial in nature. Considering the limited
nature of the Defendant Internet site and its hyperlink to the Outreach Judaism
Organization Internet site, it is apparent the Defendant Internet site is a
conduit to the Outreach Judaism Organization Internet site, notwithstanding the
statement in the Disclaimer that "[t]his website ... is in no way
affiliated with the Jewish organization Outreach Judaism...."
The activities of the Defendant are "in connection" with goods and
services for several reasons. First, the hyperlink in the Defendant
Internet site to the Outreach Judaism Organization Internet site is designed to
promote the viewpoint of the Outreach Judaism Organization and to encourage the
purchase of the products and services offered by that organization.”
developer Faber operated a "Bally Sucks" website dedicated to
complaints and commentaries about Bally’s health club business practices. The
site contained a statement that the site was “Unauthorized”, but used
several Bally trademarks. Bally's claims included dilution-by-tarnishment based on defendant's
"Drew Faber Web Site Services" site, which contained links to both a
pornographic website and the "Bally Sucks" website. No direct link
between the pornographic website and the “Bally Sucks” site existed.
The Court found that criticism of the Bally fitness company
on a ‘Bally Sucks’ website did not infringe the company’s trademark
because it amounted to non-commercial expression protected by the First
Amendment of the U.S. Constitution. The court also rejected the linking argument:
"Looking beyond the 'Bally sucks' site to other sites within the domain or
to other linked sites would, to an extent, include the Internet in its entirety,
thus making it an impossible task to determine dilution on the Internet.
The law firm
Morrison and Foerster successfully sued Brian Wick, the owner of Internet
website domain names similar to the firm's trademarked names. Mr. Wick's
websites contained, inter alia, hyperlinks which allowed a user to link on to
offensively named websites, such as www.letsdosomeillegalsteroids.com,
www.gestapotactics.com, www.holocaustmemorial.com and
concluded "that if the public believed these (the websites) to be Morrison
& Foerster's sites, Mr. Wick's web sites would harm the goodwill represented
by Morrison & Foerster's mark. As noted above, Mr. Wick's sites contain many
hyperlinks to Anti-Semitic, racist, and offensive domain names. Mr. Wick's sites
refer to attorneys as parasites and are derogatory of the legal profession.
Although some might profess to agree with Mr. Wick, the likelihood of confusion
is great. Because Mr. Wick has placed his web sites at domain names identical or
confusingly similiar to Morrsion & Foerster's mark, a user may wonder about
Morrison & Foerster's affiliation with the sites or endorsement with the
sites or endorsement of the sites."
There have been a
lot of lawsuits concerning
linking, framing and search
engine issues in the last years.
In this section you'll find
short introductions into the
different cases and links to
news articles about it.