by Lee Gesmer and Susan Mulholland
“Is it possible to infringe a trademark when you never display it to the public but use it only as a hidden trigger for pop-up ads?
Three federal courts have struggled with this question in the last seven months but have been unable to reach unanimity on the answer. These cases represent the newest issue to confront the courts in the battle over trademark protection on the Internet, and they illustrate how technological developments on the Internet continue to outstrip the ability of the law to keep pace.”
– Talk about confusion, I feel for the judges. I think about it this way…I am surfing to a U-Haul website and expect to get to U-Haul but instead get U-Hauls website and (for example) Budget Rentals ad. Is it confusing? It could be. Is it trademark infringement? No. The user still accesses the U-Haul site, but now it gets to learn about U-Haul’s competitors. What if the Budget Rental ad comes up instead of the U-Haul site? Trademark infringement? You bet. I think the judges are having problems with the ethics of the SaveNow software but as such this is not really illegal. I don’t think you could successfully argue, in the end, that they are conducting trademark infringement. You could possibly argue that they are introducing spyware of ad-ware, but that is a totally different case. If WhenU loses then it will possibly become illegal for you to have your competitors name in a database you own or in comments comparing yourself to your competitor in your marketing material. This is not what trademark law was meant to do. -ed.