United States: Is Liability Just a Click Away?

Originally published in Internet Law & Business, March 2001

The ubiquitous act of linking one website to another has spawned many lawsuits claiming trademark infringement and dilution. Liability in these cases depends on who's doing the linking, where the linking leads the public, the content the linked site provides, and most important, the likelihood of consumer confusion or dilution.

Defendant-to-plaintiff linking comes in two varieties. Either the defendant "deep links" to a page inside plaintiff’s website and bypasses the plaintiff’s home page, or the defendant "frames" part of plaintiff's content and obscures advertisements or information the plaintiff might want to display.

Deep linking prompted one of the most publicized suits to date. In Ticketmaster Corp. v. Microsoft Corp.¹ Microsoft linked its "seattlesidewalk.com" website to the page in Ticketmaster's website promoting Seattle events. According to Ticketmaster, the deep links took away Ticketmaster's control over its mark and proprietary content, diluting its trademark and falsely suggesting an association between "seattlesidewalk.com" and Ticketmaster. In January 1999, the parties' settlement permitted Microsoft to link only to Ticketmaster's home page.²

Deep linking cropped up once again in a more recent Ticketmaster lawsuit against the ticket broker Tickets.com. In Ticketmaster Corp. v. Tickets.com, Inc.,³ Tickets.com sold tickets to some events and told users how to purchase tickets it did not sell: "[t]hese tickets are sold by another ticketing company. Although we can't sell them to you, the link above will take you directly to the other company's web site where you can purchase them." Defendant's website deep linked to interior pages of Ticketmaster's site. That interior location did contain the Ticketmaster logo so that customers knew they were dealing with Ticketmaster, not defendant.

Tickets.com initially moved to dismiss Ticketmaster's claims. In declining to dismiss the Lanham Act claims, the court noted that "deep linking by itself (i.e. without confusion of source) does not necessarily involve unfair competition." The court later denied Ticketmaster's motion for preliminary injunction, ⁴ finding insufficient facts to support plaintiffs claims. In short, consumers were unlikely to be misled because the links led to web pages clearly marked with Ticketmaster’s logos.

But a defendant's intent to trade off the plaintiff’s name also plays a role in the analysis of potential liability. In Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc.,⁵ defendant operated an adult website at "adult-sex.com/playboy" and a subscription service called "Playboy's Private Collection." Defendant's site prominently featured Playboy's trademarks and linked to Playboy's website at "playboy.com." After a bench trial, the court enjoined defendant from using Playboy's marks and from linking to Playboy's website. In finding a likelihood of confusion, the court pointed to defendant's link to Playboy's website as evidence of defendant's intent to capitalize on Playboy's reputation.

In the second type of case, the framing case, the defendant's website displays material from the plaintiff’s site but obscures advertisements and logos that would normally appear on that site, thus creating a risk that a visitor to defendant's site might be confused about the source of the plaintiff's framed content. Such was a central allegation in Washington Post v. Total News Inc.⁶ There six publishers of news websites sued Total News for framing the content of their websites on "totalnews.com." The parties' settlement provided that Total News could directly link to the plaintiffs' websites but could no longer "frame" the content contained there.⁷

Lately, trademark owners have alleged trademark violations against defendants who link to third­party websites or to other websites the defendant owns or controls. Likelihood of confusion generally arises only if the goods or services of the trademark owner and the alleged infringer are the same or related. The trademark-infringement issue is thus whether links to third-party sites change the defendant's business into one related to plaintiff’s. The primary dilution issue is whether links to third­party sites containing pornographic or other unsavory content tarnish the plaintiff's mark under the Federal Trademark Dilution Act (FTDA).

An early case found that a third-party link did not change the business of the defendant. In Alta Vista Corp. v. Digital Equipment Corp.⁸ plaintiff used the "Alta Vista" mark for its literary-agency services. Digital later adopted the mark "AltaVista" for its Internet search engine, and had agreed with Amazon.com to promote Amazon.com's books on Digital's AltaVista site by linking to Amazon.com. According to plaintiff, the link converted Digital's search-engine business into a "full-fledged media company" competing with plaintiff. But the court disagreed, finding the parties' services were different and noncompetitive. The link from Digital's AltaVista site to Amazon.com did not transform Digital into a publishing business.

Similarly, in ImOn, Inc. v. ImaginOn, Inc.,⁹ linking did not convert defendant's business into one similar enough to plaintiff’s to cause a likelihood of confusion. This time, however, the link was imbedded in defendant's unrelated software product and did not link to a third-party website. Defendant used the mark IMON.COMTV for expensive Internet television software offered on defendant's "imon.com" website. Plaintiff used its mark IMON for Internet portal and dial‑up access service offered on its "imon.net" website. The court found the marks and services different and not likely to be confused. Although defendant's IMON.COMTV software contained links to other of its software products, including an Internet search product, that link did not convert the entire Internet television program into a portal that competed with plaintiff.

In another recent case, however, links to third­party websites did make a computer-services website sufficiently related to an automobile business to render confusion likely. In Nissan Motor Co., Ltd. v. Nissan Computer Corp.,¹⁰ Uzi Nissan since 1980 had used his surname "Nissan" as a trade name for various businesses. In 1991, he incorporated defendant Nissan Computer Corporation and later registered and used the domain names "nissan.com" and "nissan.net" for websites offering computer­related services. Nissan Motor later objected to defendant's use of the word "Nissan" in its domain name but apparently took no further action at that time. When defendant modified its website to include banner advertisements that linked to various automobile-related websites, Nissan Motor sued.

The court held that defendant's domain names infringed Nissan Motor's NISSAN mark. It found the parties' goods and services similar to the extent defendant posted automobile-related links and advertising on its sites, and inferred an intent to confuse in part from defendant's inclusion of automobile-related links. The court's injunction permitted defendant to continue conducting its computer business under the NISSAN mark, using "Nissan" as a metatag, and displaying nonautomobile-related third-party ads and links on its "nissan.com" and "nissan.net" websites, but prohibited defendant from displaying on its sites any automobile-related information, advertising, or links. The court required defendant to prominently display in the upper portion of the first page of its websites (1) a statement identifying the websites as affiliated with "Nissan Computer Corporation" and (2) a statement disclaiming affiliation with Nissan Motor and identifying the location of its website (although a direct link to Nissan Motor's site was not required).

In a very recent case, a defendant's links to its own sites figured prominently in the court's fashioning of injunctive relief. In Jeri-Jo Knitwear, Inc. v. Club Italia, Inc.,¹¹ plaintiff owned U.S. trademark rights to the mark ENERGIE. Defendant owned non-U.S. rights to the same mark. A consent judgment had enjoined defendants from "advertising or promoting" in the United States apparel bearing the ENERGIE trademark. Plaintiffs moved for contempt, arguing that defendants advertised and promoted ENERGIE apparel in the U.S. through its "energie.it," "misssixty.com," and "sixty.net" websites. The "energie.it" site displayed defendants' ENERGIE apparel. Although the "misssixty.com" and "sixty.net" sites did not feature ENERGIE apparel, both contained a link labeled "ENERGIE" to the "energie.it" site.

Although defendant could be viewed as "advertising" in the U.S. through its websites, this conduct did not amount to contempt, particularly given defendants’ trademark rights outside the U.S. Accordingly, the court did not require defendant to delist its "energie.it" site from search engines or to password protect the "energie.it" site. The court did order defendant to delink its "energie.it" site from its "misssixty.com" and "sixty.net" sites.

In some linking cases, the defendant's act of linking its website to the websites of the plaintiff’s competitors has contributed to findings of infringement or dilution. For example, in Bargain Bid v. Ubid & Belcher,¹² the court granted Bargain Bid's motion for preliminary injunction barring defendant from using his "barginbid.com" website to link to a competitive online auction site.

Links to competitors of the plaintiff along with links to the defendant's own website prompted a court to find trademark infringement and dilution in OBH, Inc. v. Spotlight Magazine, Inc.¹³ The plaintiff, owner of The Buffalo News, sued defendant for its use of the domain name "thebuffalonews.com" for a website purportedly designed to parody and criticize The Buffalo News. But the site also linked to defendant's own apartment rental business and to plaintiff’s competitors. In granting a preliminary injunction, the court emphasized defendant's links to its own commercial website, which competed with plaintiff for real estate ads, and the links to plaintiffs competitors. These links tended to cause confusion and divert business away from plaintiff.

Many linking cases include claims based not only on trademark infringement but also on dilution. In particular, dilution by tarnishment is routinely asserted by trademark owners whose marks have become associated in some way with pornography or other unsavory subject matter. In the typical case, a defendant uses another's trademark or similar mark as a domain name and/or title of an adult-content website, and the courts enjoin the defendant's activity under the dilution­by-tarnishment theory.¹⁴ But where dilution by tarnishment is alleged to occur through linking, a finding of liability is not ensured.

In Bally Total Fitness Holding Corp. v. Faber,¹⁵ defendant, a website developer, operated a "BALLY SUCKS" website, which featured criticisms and commentary on plaintiff Bally's business practices and contained a statement that the site was "Unauthorized." 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. The "Bally Sucks" site and the pornographic site did not contain direct links to each other.¹⁶

In granting defendant's motion for summary judgment on Bally's dilution claim, the court rejected Bally's linking argument, cautioning against including linked sites as a basis for finding dilution: "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.

Several recent cases, however, make it clear that links to sites with unsavory content can trigger liability. In Archdiocese of St. Louis v. Internet Entertainment Group, Inc.,¹⁷ defendant's websites at "papalvisit.com" and "papalvisitl999.com" contained information on the 1999 visit of Pope John Paul II to St. Louis, but also featured off­color stories and jokes about the Pope and the Roman Catholic Church and contained banner advertisements linking to defendant's adult­entertainment sites. In granting plaintiff's motion for preliminary injunction, the court held that plaintiff’s "famous" marks and the spiritual image associated with them had been tarnished by their use in connection with websites advertising sexually-explicit materials and services. And in Morrison & Foerster LLP v. Wick,¹⁸ defendant's links to sites featuring racist and sexual material were found to be harmful to the plaintiff law firms' good will if users thought they were visiting legitimate websites of plaintiffs.

In addition to forming the basis for a dilution claim, linking has also been used to establish the threshold "commercial use in commerce" requirement of the FTDA. In Archdiocese of St. Louis, the court characterized defendant's activities as a cyberspace "bait and switch" scheme and held that defendant was making commercial use of the plaintiff's marks in commerce by purposefully promoting its Internet services to users who expected to access a website sponsored by plaintiff. In The Buffalo News case, discussed above, the court rejected defendant's First Amendment arguments and found commercial use based, among other things, on the links defendant provided on his "thebuffalonews.com" website to his own website and the websites of plaintiff's competitors. Similarly, in Jews For Jesus v. Brodsky,¹⁹ defendant's link on his "jewsforjesus.org" website to Outreach Judaism, an organization antithetical to plaintiff's Jews For Jesus organization, rendered his site sufficiently commercial to be actionable under the FTDA because the link acted as a conduit to the Outreach Judaism site, which sold merchandise and was thus commercial in nature. More recently, in People for the Ethical Treatment of Animals, Inc. v. Doughney,²⁰ commercial use was established in part by defendant’s links on his "peta.org" website to commercial sites promoting the sale of leather goods and meats. And most recently, in Bihari v. Gross,²¹ defendant registered the domain names "bihari.com" and "bihariinteriors.com," which consisted of the plaintiff interior designer's name, and placed links on those sites to the websites of other interior designers. These links established commercial use because they acted as a conduit to direct potential customers of the plaintiff to the plaintiff's competitors.

In the Bally case discussed above, however, linking did not support a finding of commercial use. The court found that Faber's site amounted to a consumer-product review of Bally's services and thus fell outside the scope of the FTDA as noncommercial expression protected by the First Amendment. The court rejected Bally's argument that Faber's site was commercial because he used the BALLY mark to sell his website design services by listing the "Bally Sucks" site alongside other websites he had designed. Rather, the listing of those sites simply showed Faber's website design skills in a manner "akin to an on-line resume."

As these cases show, trademark liability indeed can be just a click away. But they also show that liability is not automatic. Rather, the linking activity, with or without other relevant evidence, must be examined to determine whether it is likely to cause confusion or dilution.

1 No. 2:97-CV-03055 (C.D. Cal., filed Apr. 12, 1997), settlement reached January 22, 1999.
2 "Ticketmaster and Microsoft Settle Suit on Internet Linking," N.Y. Times, Feb. 15, 1999, at C6.
3 CV 99-7654 (C.D. Cal. Mar. 27, 2000).
4 Ticketmaster Corp. v. Tickets.com, Inc., CV 99­7654 (C.D. Cal. Aug. 10, 2000).
5 1998 U.S. Dist. LEXIS 17282 (E.D. Pa. Nov. 2, 1998)
6 No. 97-1190 (S.D.N.Y., complaint filed Feb. 20, 1997), settlement reached June 5, 1997.
7 "An Accord with Total News Is Reached," N.Y. Times, June 6, 1997, at D4.
8 Civ. No. 98-11468-NG, 1998 U.S. Dist. LEXIS 18843 (D. Mass. Oct. 21, 1998).
9 90 F. Supp. 2d 345 (S.D.N.Y. 2000).
10 2000 U.S. Dist. LEXIS 3718 (C.D. Cal. Mar. 23, 2000).
11 2000 U.S. Dist. LEXIS 4891 (S.D.N.Y. Apr. 18, 2000).
12 CV-99 7598 (E.D.N.Y. Jan. 3, 2000).
13 2000 WL 246117 (W.D.N.Y. Feb. 28, 2000).
14 See, e.g.,Mattel, Inc. v. McBride, 48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998).
15 29 F. Supp. 2d 1161 (C.D. Cal. 1998).
16 The "Bally Sucks" site at one time contained a direct link to the "Images of Men" site, but it was removed shortly after Bally filed suit.
17 1999 WL 66022 (E.D. Mo. 1999) (opinion withdrawn at request of the court).
18 2000 U.S. Dist. LEXIS 5161 (D. Col. Apr. 19, 2000).
19 993 F. Supp. 282 (D.N.J.), aff’d, No. 98‑6031 (3d Cir. 1998).
20 2000 U.S. Dis. LEXIS 9474 (E.D. Va. June 12, 2000).
21 2000 U.S. Dis. LEXIS 14180 (S.D.N.Y. September 25, 2000)