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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Washingtonpost.newsweek Interactive Company, LLC, et al. v. The Gator Corporation

C.A. No. 02-909-A (E.D. Va., July 12, 2002)

Court issues a preliminary injunction, enjoining defendant Gator Corporation ("Gator") from causing pop-up ads to appear on a user's computer screen at the same time the user is viewing any of the 16 web sites operated by the plaintiff news organizations.  Such ads appear as a result of the operation of Gator's software, which a user has installed on his computer.  Gator's software apparently tracks the user's Internet usage, and delivers ads to his computer that defendant believes will interest the user based on his prior Internet usage  When these ads appear on a user's screen, they partially cover up the web site that also appears there.  Gator did not have plaintiffs' permission to cause ads to appear in this fashion.  The court held that plaintiffs were likely to prevail on their claim that causing pop-up ads to appear in this manner is an infringement of plaintiffs' trademarks, which are found on the web pages the pop-up ads partially cover up.   The court accordingly issued a preliminary injunction enjoining defendant from continuing this activity "on" plaintiffs' sites.

It should be noted that this summary is based on a transcript of the oral argument of plaintiffs' motion for a preliminary injunction, held on July 12, 2002, and on a two page order issued by the Court resolving that motion.  The court has not issued a detailed opinion setting forth the rationale for its ruling.

Plaintiffs are a group of news organizations that use web sites to disseminate news.  Defendant Gator is a behavioral marketing company which distributes free software to those willing to accept it.  This software apparently tracks the user's Internet activities and delivers to the user "pop-up" advertisements Gator believes the user will find interesting based on his past Internet usage.  Apparently these advertisements are delivered in a pop-up box that appears on, but does not completely fill the user's computer screen.  These ads cover up so much of whatever else appears on that screen that is the size of the ad's pop-up box.  The rest of the user's screen remains unchanged.  The pop-up "box" in which these advertisements appear apparently contain defendant's trademark, as well as a series of tools which permit the user to minimize, hide or close the advertisement altogether.

Apparently, these advertisements have appeared when users requested and were simultaneously viewing web sites operated by the plaintiffs.  Thus, it appears that these pop-up advertisements "covered up" a portion of plaintiffs' site, on which can be found plaintiffs' trademarks, plaintiffs' copyrighted materials, and advertisements from entities which paid for the privilege of appearing on plaintiffs' sites.

Plaintiffs commenced this suit, charging Gator with trademark and copyright infringement.  Plaintiffs argued that defendant's conduct constituted an unauthorized use of plaintiffs' marks, which caused users to believe that plaintiffs were responsible for, and affiliated with, the pop-up advertisements.  Plaintiffs also argued that such activity constituted copyright infringement, creating what viewers would believe is a modified work.  Such activity violated plaintiffs' right to both display and make derivatives of their works.

Gator disagreed, arguing that they neither used plaintiffs' trademarks nor created derivatives of their copyrighted works.  Rather, the critical issue, according to Gator, was the user's right to control what appeared on his own computer screen.  Gator argued that what their software did was no different that what MSN Messenger Software or any other chat program did - each of these programs caused a pop-up box to appear over whatever else was then found on the user's computer screen, be it plaintiffs' sites, or those of other entities.  The "boxes" in which the respective parties' content were found were independent, and reflected the equivalent of a multitasking use of his computer by the user, and not an improper use of trademarks or copyrighted material.

At this stage in the proceedings, the court disagreed, holding that plaintiffs were likely to prevail on their trademark infringement claim.  Said the court:

I find that there is a sufficient showing here that there is a violation of the mark in this advertising coming up.  Irreparable harm is presumed in the violation of that mark.  And I find that the plaintiffs are entitled to the entry of a preliminary injunction that pending this suit there will be no violation of the mark.

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