Designer Skin LLC v. S & L Vitamins, Inc., et al.
Linking and Framing - Internet Library of Law and Court Decisions - Updated June 6, 2007
This section of the Internet Law Library contains court decisions that address the legality of linking to the web site of another without permission, or causing a portion of another's site to appear within a frame on your site.
2004 WL 2750253, Case No. 1:02-cv-1011-DFH-TAB (S. D. Ind., November 10, 2004)
Court holds that defendant Funeral Depot Inc. ("Funeral Depot") may be infringing plaintiffs' copyright in advertising materials consisting, inter alia, of lithographs of caskets, by placing small thumbnail images of those copyrighted materials on defendant's website which are linked to allegedly infringing full size copies of those same materials that defendant arranged to have placed on the website of a third party. While this third party website is owned by one of plaintiffs' authorized dealers, visitors to the web pages containing the challenged images view defendant Funeral Depot's contact information, as well as prices for these caskets set by defendant. Because issues of fact existed as to whether the third party dealer had an implied license to use the advertising materials in this fashion, the Court could not determine if defendant was infringing plaintiff's copyright on the parties' respective summary judgment motions. The Court did reject a number of defenses advanced by Funeral Depot to plaintiff's copyright infringement claims, including its fair use, copyright misuse and antitrust defenses.
1998 U.S. Dist. Lexis 19048 (C.D. Cal., Sept. 29, 1998)
(Court dismissed for failure to state a claim a complaint charging a perfume manufacturer with copyright infringement because its product was promoted on the website of a co-defendant that was linked to another website which in turn was linked to a third website that contained infringing copies of photographs in which plaintiff held a copyright.)
177 F. Supp. 2d 661, 2001 U.S. Dist. Lexis 21302 (E.D. Michigan, December 20, 2001)
Court denies Ford Motor Company's motion for a preliminary injunction seeking to enjoin defendants from continuing to automatically redirect users from a web site defendants operate at www.fuckgeneralmotors.com to the web site operated by Ford at www.ford.com. Defendants achieve this redirection via a link embedded in the programming code of defendants' web site, which link utilizes Ford's mark. The court held that Ford could not succeed on the merits of its federal trademark dilution claim, because defendants were not using plaintiff's mark in commerce. The court further held that Ford could not succeed on its trademark infringement and unfair competition claims, because defendants were not using plaintiff's mark in connection with the sale, or advertising for sale, of any goods or services. Finding that plaintiff would not succeed on the merits of its claims, the court denied plaintiff's motion.
Case No. CV 97-6991 ABC (Manx), 1998 U.S. Dist. Lexis 2265 (C.D Cal. Jan. 30, 1998)
Defendant AAI, without authorization, created a hyperlink which caused copyrighted content from plaintiff Futuredontics web site to appear in one of several frames on AAIs site. Simultaneously, the other frames on AAIs site featured information concerning its business operations. Futuredontics contended that this activity constituted copyright infringement. The court denied AAIs motion to dismiss this claim, holding that the defendants conduct may create an unauthorized derivative work. This same court had previously denied Futuredontics application for an injunction enjoining AAIs linking activities on the grounds that Futuredontics had failed to establish the requisite probability of success on the merits of its copyright infringement claim.
No. 97-56711, 1998 U.S. App. Lexis 17012 (Ninth Cir., July 23, 1998)
(Ninth Circuit affirmed the District Court's denial of plaintiff's motion to enjoin defendant from continuing to operate a framed website on which site defendant caused to appear content from plaintiff's website.)
1999 U.S. Dist. Lexis 8340 (S.D.N.Y. June 1, 1999)
The court holds that defendants' unauthorized use of plaintiff's marks to market CDs via framing occurs globally in violation of a licensing agreement between the parties.
In June, 1996, defendant Morton sold his interests in the Hard Rock Café business to plaintiff's parent the Rank Group PLC. At that time, the parties entered into several agreements (the "Agreements"), which permitted Morton to retain ownership of the Hard Rock Hotel and Casino he had opened in Las Vegas Nevada, and to open additional hotel/casinos in other designated territories, defined in the agreements as the "Morton Territories."
Under the parties' agreements, Morton was obligated to and did convey to plaintiff his ownership interest in the trademark Hard Rock Hotel. However, the agreements granted defendant "an exclusive license to use and exploit" the Hard Rock Hotel mark "only in the Morton Territories ... and solely in connection with the development, operation, ownership, management, operation of and promotion of Hard Rock Hotel/Casinos. Licensee shall not use or exploit the Hard Rock Hotel Marks outside the Morton Territories, except, however, Licensee may engage in the promotion, advertising, or marketing (not including the sale of merchandise) and broadcasting of Hard Rock Hotel Casinos and Hard Rock Casinos anywhere in the world." The agreements also granted Morton the right to "develop, maintain and update a web page for the Hard Rock Hotel/Casinos or Casinos in the Morton Territories." The Agreements further granted defendants the right to sell "Licensed Products" through the Internet provided those products "bear the Internet address as the Licensed Products' location" as well as the Hard Rock Hotel or Casino marks.
Defendants entered into an agreement with Tunes Network Inc. ("Tunes") to sell CDs to the public. Defendants installed a link on their website which contained the words "record store." Clicking on this link took the user to the Tunes web page which appeared in "frames" on defendants' website. In the frames above and to the left of the Tunes' content appeared the Hard Rock Hotel logo. The Tunes' frame permitted the user to listen to and order CDs from Tunes, who would be responsible for shipping the same. No Hard Rock logo appeared on the CDs. Defendant was to receive 5% on each CD sale. Only two CDs were sold in this fashion.
The court found that the use of the Hard Rock Hotel mark in frames around the Tunes web pages was a use that occurred outside the "Morton Territories" and therefore violated the parties' Agreements. As set forth above, the Agreements prohibited defendants from using the marks outside the Morton Territories except in connection with the sale of "Licensed Products", which did not include the materials marketed by Tunes on its web site. The court held that by using frames in this fashion, defendants were using the Hard Rock Hotel marks to advertise and sell CDs, even though the actual sales were being conducted by Tunes.
The court also concluded that this activity was occurring both inside and outside the Morton Territories. In reaching this conclusion, the court relied on principles of trademark law that "the wrong takes place ... where the passing off occurs." The court also pointed to those cases that hold that "advertisements alone can constitute actionable use of a trademark and in such cases the trademark is used wherever the advertisement has its effect on consumers." Because the "defendants have advertised and offered CDs for sale to a global audience" their activities occurred both within and without the Morton Territories, and thus violated the Agreements. Of note, the court said:
The court also found that defendants' sale of merchandise and use of logos that did not conform with the parties' license agreement constituted a breach of those agreements and a violation of the Lanham Act.
The court further held that the Agreements did not prohibit defendants from registering with NSI as the owner of domain name "hardrockhotel.com," or require them to transfer ownership of that domain name to plaintiff. This was true despite the fact that the agreements provided that plaintiff shall have "sole right for the registration or renewal of trademarks and service marks or other proprietary rights for the Hard Rock Hotel Marks ..." and that defendant "shall not at any time apply for any registration of any copyright, trademark or other designation which would affect the ownership of or encumber, damage, dilute or modify the Hard Rock Hotel marks..." and "shall not file any document requesting any governmental authority to take any action, nor take any action itself which would affect the ownership of or damage, dilute or modify the hard Rock Hotel Marks or the Hard Rock Casino marks." As stated above, the agreements permitted defendants to operate a web site promoting its Hard Rock Hotel and to use the Hard Rock Hotel mark in promotion efforts for its hotel anywhere in the world. As such, concluded the court, defendants were permitted to maintain registration of the hardrockhotel.com domain name. Said the court "[defendants'] reservation and use of the "hardrockhotel.com" domain name ... has not affected [plaintiff's] ownership of the Hard Rock Hotel Mark, or encumbered, damaged, diluted or modified the Hard Rock Hotel Mark ..." within the meaning of the Agreements.
Notwithstanding its finding that defendants had breached the Agreements, and committed trademark infringement, the court was unwilling to award plaintiff damages. Said the court:
75 F.Supp. 2d 1290 (D. Utah, Dec. 6, 1999)
The court issued a preliminary injunction, directing defendants to remove from their website statements that informed site visitors of the domain names of websites on which were posted materials that infringed plaintiff's copyright. The posting of such messages was held by the court to constitute contributory copyright infringement. The court reached this result despite the fact that the defendants' website did not contain links to the sites containing the infringing materials.
Defendants claimed that their actions did not constitute contributory infringement because the users defendants referred to the websites on which infringing content was posted did not themselves infringe plaintiff's copyright. As framed by the Court the issue "is whether those who browse any of the three infringing websites are infringing plaintiff's copyright. Central to this inquiry is whether the persons browsing are merely viewing the Handbook (which is not a copyright infringement), or whether they are making a copy of the Handbook (which is a copyright infringement)." The court held that by viewing a web page containing infringing material thru a browser, the user is himself infringing the copyright in the underlying work because in so doing he creates a copy of the infringing materials in his computer's random access memory.
2000 U.S. Dist. Lexis 4891, 94 F.Supp.2d 457 (S.D.N.Y., April 18, 2000)
Court refuses to hold defendants in contempt for violating an order and judgment which "enjoined defendants, in the United States, from 'advertising or promoting' apparel bearing Jeri-Jo's registered trademark ENERGIE ...". While plaintiffs held a valid US trademark in the ENERGIE mark, defendants held trademarks in the ENERGIE mark in Italy, France and Germany, as well as the right to market products bearing the mark in a number of other foreign countries as well. As a result, the court refused to hold defendants in contempt as a result of their operation of a web site at the domain "www.energie.it" at which United States users could view but apparently not buy clothing bearing the "ENERGIE" mark, nor did the court require defendants to delist the "energie.it" url from search engines. The court did, however, require defendants to remove hyperlinks to the "energie.it" site containing the word "ENERGIE" from two other web sites defendants operated at www.missixty.com and www.sixty.net, at which sites defendants apparently sold non-infringing apparel. The court also awarded plaintiffs the attorneys' fees expended in bringing on the instant application.
No. 00-55521, 280 F.3d 934 (9th Cir., February 6, 2002) withdrawn, -- F.3d --- (9th Cir., July 3, 2003)
The Ninth Circuit Court of Appeals holds that defendant's display on a visual search engine of lower resolution "thumbnails" of copyrighted images appearing elsewhere on the Internet, without the copyright owners' permission, is a protected fair use of those images under the Copyright Act. The court further holds that defendant's display of the full copyrighted image as part of its search engine results, either via inline linking or framing, infringes the copyright owner's right to publicly display the work. Such use of the full images as they appear on the copyright owner's site is not a protected fair use because it is done for the same purpose, to attract viewers, as the copyright owner's own use, and causes injury to the copyright owner by diverting users from his site.
In the decision that replaced its original decision of February 6, 2002, the 9th Circuit affirmed so much of the lower court's determination that held that Arriba Soft's production of thumb nails of plaintiff's copyrighted works to facilitate its display of image search results was a permitted fair use for the reasons stated in its original decision of February 6. However, in the revised July 3, 2003, the 9th Circuit did not determine, as it had previously, that Arriba Soft's in-line linking to the full images of plaintiff's works constituted copyright infringement. Instead, it reversed the lower court's determination on this score on procedural grounds, and remanded the issue to that court for further consideration.
378 F.3d 1002 (9th Cir., 2004), cert. denied (2005)
Applying the "initial interest confusion" doctrine, the Ninth Circuit holds that defendant Nissan Computer's display of advertisements promoting the sale of automobiles on its Nissan.com website infringes the trademark held by plaintiff Nissan Motors in its federally registered "Nissan" trademark, and accordingly affirms the District Court's decision enjoining defendants from continuing such activity.
The Court further holds, however, that Nissan Computer's display of links on its site to a web site operated by a company owned by Uzi Nissan, the owner of Nissan Computer, which web site purports to describe the instant litigation and contains disparaging remarks about Nissan Motors, is non-commercial speech that neither infringes plaintiffs' mark nor runs afoul of the Federal Trademark Dilution Act despite its potentially negative impact on plaintiffs' commercial activities. The Ninth Circuit holds such speech protected by operation of the First Amendment, and accordingly reverses so much of the District Court's decision that enjoined defendant Nissan Computer from placing such links on its Nissan.com site.
Finally the Court held that issues of fact prevented a determination at this time as to whether defendants' use of plaintiffs' Nissan mark violated the FTDA. To establish such a dilution claim, held the Court, the plaintiff must establish that its mark was famous when defendant first commenced a potentially diluting use thereof. Disagreeing with the court below, the Ninth Circuit held that such use commenced when defendant began to call its business 'Nissan Computer,' and not when it subsequently registered the Nissan.com domain name for use in that business. As there was an issue of fact as to whether the Nissan mark was famous as of 1991, when Nissan Computer commenced its operations, the court denied plaintiffs' motion for summary judgment, and remanded the question of defendants' violation of the Federal Trademark Dilution Act to the District Court.
Case No. CV 04-9484 AHM (SHx) (C.D. Cal., February 2006) aff'd. in part, reversed in part, remanded, 487 F.3d 701 (9th Cir., May 16, 2007).
On a motion for a preliminary injunction, the Court holds plaintiff likely to succeed on copyright infringement claims arising out of defendant Google's display of "thumbnail" images of plaintiff's copyrighted photographs in response to users' searches for images matching their description. The Court held that it is likely to find that such a display is not a fair use of plaintiff's works, given, inter alia, its commercial nature, and the fact that such use likely interferes with a market for plaintiff's photographs.
The Court further holds that plaintiff is not likely to prevail on copyright infringement claims arising out of Google's use of "in-line links" that incorporate into Google's own web pages the web pages of third parties that themselves contain infringing copies of plaintiff's copyrighted photographs. These "in-line links" allow users who are interested in a thumbnail image presented in Google's search results to view the actual image on the web page on which Google found it. The Court held that it is not likely to find that Google directly infringed plaintiff's copyrights by such conduct, because, adopting the "server test," it is the third parties who created the websites that contain the infringing images, and not Google, that are displaying and/or distributing them in violation of plaintiff's copyright.
The Court further held that it was not likely to find Google guilty of contributory or vicarious copyright infringement as a result of such third party displays, notwithstanding any advertising Google may deliver to the web pages that contain such images, or revenue Google may derive therefrom. Google is not guilty of vicarious infringement because it does not possess the requisite ability to control the content of such third party sites, or compel the third parties that operate them to remove infringing content found thereon. Google's ability to remove such websites from search engine results does not constitute such control. Nor, the Court stated, was it likely to hold that Google encourages or assists such infringement sufficiently to be guilty of contributory infringement. The Court held that the record before it was insufficient to establish that the third parties displaying plaintiff's content were motivated by the revenue they might derive from the display of Google ads or that such revenue contributed to their posting of the infringing images in question.
487 F.3d 701, No. 06-55405 (9th Cir., May 16, 2007).
The Ninth Circuit holds that Google’s creation and display in search results of lower resolution ‘thumbnail’ copies of infringing images found on third party websites for the purpose of aiding the public in locating such images is a fair use that does not infringe the rights of the holder of the copyright therein. In reaching this result, the court relied largely on the transformative nature of the thumbnails Google created, which, by facilitating the public’s ability to search the web for images, serve a different purpose than the original images, which are designed to entertain. The Ninth Circuit accordingly reversed so much of the decision of the District Court which had enjoined Google from displaying such thumbnails in its search results.
The Ninth Circuit further held that framing infringing images found on third party web sites via “in-line linking” to such sites does not directly infringe the display or distribution rights of the holder of the copyrights in such images. As part of the process by which it provides results to those who search for images, Google presents a ‘framed page,’ the bottom half of which comes directly from the third party web site on which the image is found, and contains that image. For the purpose of direct infringement, the Ninth Circuit endorsed the “server test” applied by the District Court. Under this test, a party infringes the display rights of a copyright holder in an image when it stores a copy of that image on its own server, and delivers it to a third party. When a party merely provides a link to a third party website on which such infringing material can be found, it is that third party web site, and not the party providing the link, that directly infringes the display rights of the copyright holder by causing that infringing image to be displayed on a user’s computer screen. Applying this test, Google did not directly infringe by providing “in-line links” to third party websites that themselves contained infringing images.
Reversing the District Court, the Ninth Circuit held, however, that Google is potentially liable on a theory of contributory infringement for infringing plaintiff’s copyrights as a result of its provision of such in-line links. According to the Court, “Google could be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10’s copyrighted works, and failed to take such steps.” Issues of fact as to the adequacy of notices sent by Perfect 10 alerting Google that it was in fact providing links to third party web sites that contained infringing images, of Google’s response thereto, and of Google’s ability to remove such infringing sites from its search results, mandated denial of plaintiff’s motion for summary judgment. Also left for the District Court to resolve on remand was whether the Digital Millennium Copyright Act (“DMCA”) immunized Google from liability for such contributory infringement, an issue the District Court had not addressed because it had determined that Google was not likely to be found liable for contributory infringement.
Finally, the Ninth Circuit held that Perfect 10 was unlikely to prevail on vicarious infringement claims arising out of Google’s provision of in-line links to third party web sites that contained infringing images. The Court held that Perfect 10 had not demonstrated that Google had the ability to control such third party websites, and compel them to remove infringing images found on their sites, a prerequisite to a finding of vicarious infringement.
The Ninth Circuit resolved the copyright infringement claims Perfect 10 asserted against Amazon.com in a similar fashion. These claims arose out of the provision by Amazon.com to users of its site of Google search results, “framed” via in-line links. By this arrangement, the Amazon user received the same search result as the Google user. Accordingly, the Court reached the same conclusions concerning Amazon’s conduct as it did concerning Google’s. All claims save that which sought to hold Amazon.com liable on a theory of contributory infringement were held likely to fail. The contributory infringement claim, arising out of Amazon’s provision of in-line links to third party sites that contained infringing images, was remanded for further consideration by the District Court.
No. Civ. 96-CV-6961, 1998 U.S. Dist. Lexis 8231 (E.D. Penn. June 1, 1998)
Court holds that defendants' use of the federally registered trademark "Playboy" in a hypertext link that took users from defendants' website to a site operated by plaintiff does not constitute trademark counterfeiting in violation of the Lanham Act. To constitute counterfeiting, defendant must use the mark on the same goods or services covered by plaintiff's registration of the mark. The court found that such was not the case here, where plaintiff Playboy had registered the mark "Playboy" for use in connection with a magazine, but had not alleged that its magazine was available on its website.
Court of Session, Edinburgh (Lord Hamilton, J.)(October 24, 1996)
(Court issued an interim interdict (a Scottish term for a temporary restraint) barring defenders, without the pursuer's consent, from copying headlines from pursuer's newspaper onto their web site, and creating hyperlinks from those headlines to the location on the pursuer's site on which the article described in the headline appears. Such links permitted the user to bypass the pursuer's home page, and took the user directly to the article in question. Note - this case is decided under Scottish law)
2000 U.S. Dist. Lexis 4553 (C.D. Ca., March 27, 2000)
The court, in granting defendant's motion to dismiss plaintiffs' breach of contract claim, held that a contract is not created simply by use of a web site on which is posted at the bottom of the site's home page terms and conditions that provide that such use constitutes the user's assent to be bound by the site's Terms and Conditions. The court left open the possibility, however, that use of a web site, coupled with knowledge of Terms and Conditions which declare such use evidence of assent to be bound thereby, could create a binding contract, and granted plaintiffs leave to replead their claim.
The court further held that "hyperlinking [without framing] does not itself involve a violation of the Copyright Act ... since no copying is involved." In addition, the court held that "deep linking by itself (i.e. without confusion of source) does not necessarily involve unfair competition."
The court refused at the outset of a litigation, however, to dismiss plaintiffs' claim that defendant, by deep linking, was tortuously interfering with plaintiffs' prospective business advantage, by depriving them of advertising revenue that might otherwise be achieved if the user were forced first to go to the site's home page (with the necessary increase in traffic that would generate) before he could proceed to an event page.
Lastly, the court held that defendant did not infringe plaintiffs' copyright in their site by extracting data concerning concert and other entertainment events from plaintiffs' web site (such as location, date and time of the event) and presenting it on defendant's web site in its own format. The court further held that plaintiffs could not attempt to recast such a claim into either state law misappropriation, trespass, unfair business practice or unjust enrichment claims, as those claims, to the extent they prohibited conduct permitted under the copyright act, were preempted thereby.
2003 U.S. Dist. Lexis 6483 (C.D. CA., March 7, 2003)
Court holds that a binding agreement can be formed by the use of a web site, without more, if the user has actual knowledge that the site's Terms and Conditions so provide. As a result, the Court denied defendant Tickets.com's summary judgment motion, which sought dismissal of breach of contract claims arising out of Tickets.com's use of a search robot to obtain information about concerts from plaintiff Ticketmaster's web site. The Court held that issues of fact as to defendant's knowledge of the site's Terms and Conditions at the time it used plaintiff's site precluded a determination as to the binding nature of such Terms.
The Court did grant so much of Tickets.com's summary judgment motion which sought dismissal of trespass to chattels claims Ticketmaster asserted as a result of such activity. These claims failed because of the absence of evidence that "the use or utility" of Ticketmaster's computers were being adversely affected by Tickets.com's use of a search robot to gather information from plaintiff's site.
Finally, the Court dismissed several copyright infringement claims brought by Ticketmaster. These included infringement claims arising out of the temporary copying into the RAM of defendant's computers of data from plaintiff's site, including materials in which plaintiff held a copyright. These materials were copied as an intermediate step to obtaining, and displaying on Tickets.com's own site, factual information contained therein. The Court held such copying was a protectable fair use given the only materials retained at the end of the process were the facts -- as to concert locations, dates and times -- contained therein, which facts were not protected by copyright. Infringement claims arising out of deep linking to interior pages of plaintiff's website were dismissed because, by deep linking into plaintiff's site, Tickets.com was not showing or displaying plaintiff's copyrighted materials (which instead were being displayed by plaintiff itself). Finally, infringement claims arising out of copying the URLs from such interior pages were dismissed because such URLs did not have sufficient originality to be copyrightable.
Live Nation Motor Sports Inc. f/k/a SFX Motor Sports Inc. v. Robert Davis, d/b/a/ TripleClamps and www.supercrosslive.com
2006 WL 3616983, Civ. Act. No. 3:06-CV-276-L (N.D.Texas, December 12, 2006).