United States: The Link To Liability

Earlier versions of this article appeared in the March 2001 issue of Internet Law & Business and the February 5, 2001 issue of the National Law Journal

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, what the link reveals, and most important, whether there's a likelihood of consumer confusion or dilution. Even if the act of linking itself is not sufficient to create liability for infringement or dilution, it may nonetheless play an important role in those claims by supplying the "commercial use" requirement for a federal dilution claim or the "use in commerce" requirement for a federal infringement or unfair-competition claim.

I. Defendant-to-Plaintiff Linking
Defendant-to-plaintiff linking comes in three varieties. Either the defendant "deep links" to a page inside plaintiff's website and bypasses the plaintiff's home page, the defendant links to the plaintiff's site to create a likelihood of confusion with the plaintiff, or the defendant "frames" part of plaintiff's content and obscures advertisements or information the plaintiff might want to display.

In the first type of case, 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 Tickemaster’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 lawsuit filed by Ticketmaster, this one 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: "These 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 plaintiff's claims. In short, consumers were unlikely to be misled because the links led to web pages clearly marked with Ticketmaster's logos.

In the second type of case, the defendant's link to the plaintiff's site shows defendant's intent to trade on the plaintiff's name. 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 third 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

II. Third-Party or Other Linking
Trademark owners have also alleged trademark violations against defendants who link to third-party websites or to other websites the defendant owns or controls. Likelihood of confusion generally arises only if the products or services of the trademark owner and the alleged infringer are the same or closely 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 becomes whether links to third-party sites containing pornographic or other unsavory content tarnish the plaintiff’s mark under the Federal Trademark Dilution Act (FTDA).

A. Relatedness of the Parties' Products or Services
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 several cases, however, links to third-party websites did make the alleged infringer’s business and website sufficiently related to the plaintiffs' 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 computer-related 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 non-automobile-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 part 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).

A similar result ensued in Interstellar Starship Servs., Ltd. v. EPIX, Inc.¹¹ Interstellar Starship ("ISS") brought a declaratory-judgment action against EPIX, Inc., a computer company. ISS claimed that its use of the domain name "epix.com" for a website promoting a theater group and its Rocky Horror Picture Show did not infringe Epix’s registered trademark EPIX for "printed circuit boards and computer programs for image acquisition, processing, display, and transmission." Epix argued that ISS was engaged in image acquisition, processing, display, and transmission because ISS’s "epix.com" website displayed scanned photographs of cast members that could be downloaded by Internet users. The court disagreed and granted ISS’s motion for summary judgment, finding that consumer confusion was unlikely in view of the substantial differences between using a domain name to publicize a theater group and the goods and services recited in Epix’s trademark registration. That ISS also provided consulting services in the field of "design for test" circuit boards did not factor into the court’s decision because there was no evidence that ISS promoted these services on the "epix.com" website.

Following reversal of the grant of summary judgment by the Ninth Circuit, the case was tried to the court and the district court made two separate findings on Epix’s claim for false designation of origin. It first ruled that ISS’s use of the "epix.com" domain name in connection with the Rocky Horror Picture Show did not, by itself, cause a likelihood of confusion with the mark EPIX due to the different goods and services, the minimal evidence of actual confusion, the separate markets and marketing channels, and the high sophistication of consumers. But the court did find, however, that there was a likelihood of confusion regarding ISS’s use of the website in connection with technical and digital-image processing services. Finding that ISS’s website at one time had a link from its home page to a page showing the owner’s expertise in computers and electronic imaging, the court found that these services were highly related to Epix’s computer programs for image acquisition, processing, display, and transmission. The district court thus enjoined ISS from using the "epix.com" website to promote ISS’s technical services and image processing. The Ninth Circuit affirmed the district court’s decision in all respects.

B. Linking to Defendant's Other Sites
A defendant's links to other sites it owns figured prominently in the court's fashioning of injunctive relief in Jeri-Jo Knitwear, Inc. v. Club Italia, Inc.¹² The 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. But the court did order defendant to delink its "energie.it" site from its "misssixty.com" and "sixty.net" sites.

C. Links to Competitors
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, dilution, or cybersquatting. For example, in Bargain Bid v. Ubid & Belcher,¹³ the court granted Bargain Bid’s motion for a preliminary injunction on its cybersquatting claim 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.¹⁴ 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 plaintiff's competitors. These links tended to cause confusion and divert business away from plaintiff.

D. Trademark Dilution by Linking
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 connected 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 dilution-by-tarnishment theory.¹⁵ But where dilution by tarnishment is alleged to occur only through linking, a finding of liability is not ensured.

In Bally Total Fitness Holding Corp. v. Faber,¹⁶ 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.¹⁷

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 have similarly found links to third-party pornographic websites too tenuous to create liability. In 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC,¹⁸ the plaintiff, a health-club chain with 300 locations across the country but none in the New York City area, operated its health clubs under the federally registered trademark 24 HOUR FITNESS and promoted its clubs at its "24hourfitness.com" website. Defendant owned three health clubs in New York City and operated a website at "247fitnessclub.com," which contained a number of links to pornographic websites. The court denied plaintiff’s motion for a preliminary injunction on its infringement and cybersquatting claims because plaintiff failed to demonstrate a sufficient likelihood of success on the merits of these claims. Plaintiff argued that Internet users using a search engine to look for plaintiff’s site could receive defendant’s site in the search results. Users then connecting to defendant’s site would encounter the pornography links on the site, which could damage plaintiff if users mistook defendant’s site for plaintiff’s. According to the court, however, "any confusion or misdirection of a person using a general internet search engine to find Plaintiff’s site would arise principally from the fact that Plaintiff has chosen to construct its mark out of common descriptive terms rather than inherently distinctive terms. The risk of confusion on this account is not as to Plaintiff’s identity as the particular source of anyone’s health club or fitness product."

A franchisor unsuccessfully tried to terminate a franchise agreement because of a pornographic link in Voice-Tel Enters., Inc. v. JOBA, Inc..¹⁹ The plaintiff sued defendant, one of its franchisees, for breach of contract and trademark dilution by tarnishment stemming from a link on defendant’s website to a pornographic site. The link in question originally linked to a legitimate site offering website-promotion services but that company went out of business and a different entity gained control of the linked site and used it to distribute pornography. The court granted defendant’s motion for summary judgment on plaintiff’s breach-of-contract claim that defendant intentionally misused plaintiff’s trademarks or materially impaired the goodwill associated with them because (a) plaintiff did not provide any evidence showing that defendant was involved in or knew that its website was linked to a pornographic site, (b) defendant promptly removed the link upon notice from plaintiff, and (c) plaintiff did not provide any evidence of actual impairment, let alone material impairment, of its mark. The court also granted defendant’s motion for summary judgment on plaintiff’s dilution claim. Citing Bally, defendant argued that, as a matter of law, tarnishment does not occur simply because a website is linked to another site, regardless of how offensive the content of the linked site might be. The court agreed, stating that "to extend a claim for dilution to a hyperlink situation would extend the statute far beyond its intended purpose." Finally, the court granted defendant’s motion for summary judgment on plaintiff’s request for injunctive relief to prevent defendant from using plaintiff’s mark in any manner. Plaintiff’s claim for relief was overly broad because defendant had promptly removed the pornographic link from its site. Moreover, plaintiff’s argument that injunctive relief was necessary because Internet archive sites still permitted users to link to the pornographic site from archived versions of defendant’s site had no merit because the archived sites were maintained by third parties and presumably were not subject to the court’s injunctive powers.

Several other 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.,²⁰ defendant's websites at "papalvisit.com" and "papalvisit1999.com" contained information on the 1999 visit of Pope John Paul II to St. Louis, but also featured off-color stories and jokes about the Pope and the Roman Catholic Church, and contained banner advertisements linking to defendant’s adult-entertainment sites. In granting plaintiff’s motion for a 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,²¹ defendant’s links to sites featuring racist and sexual material were found to be harmful to the plaintiff law firms’ goodwill 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 FTDA²² or the "use in commerce" requirement for infringement²³ or false designation of origin.²⁴ 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,²⁵ 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,²⁶ 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,²⁷ 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."

Linking constituted use in commerce for purposes of an infringement claim in Am. Online, Inc. v. AOL.ORG.²⁸ AOL brought an in rem suit under the ACPA against the domain name "aol.org," asserting claims for federal trademark infringement and unfair competition. The "aol.org" name linked to a Korean-language site with further links to other sites that promoted various Internet and computer-related services. The court held in AOL’s favor on both claims, finding that the registrant’s intent was to use the domain name to divert traffic intended for AOL to its own site. The registrant used the "aol.org" name in commerce through the links to the third-party sites noted above.

A link failed to establish both commercial use for dilution and use in commerce for trademark infringement in Ford Motor Co. v. 2600 Enters.²⁹ Defendants registered the domain name "fuckgeneralmotors.com," which they linked to Ford’s official website at "ford.com." Defendant Corey, a self-proclaimed artist and social critic, considered these actions to be a piece of humorous cyber art. Ford sued, alleging dilution, infringement, and unfair competition, and moved for a preliminary injunction on those claims. The court denied plaintiff’s motion because it failed to allege facts sufficient to support its contentions that defendants’ use satisfied the commercial-use requirement of the FTDA and the "in connection with goods and services" requirement for federal trademark infringement and unfair competition. The cases relied on by plaintiff, Planned Parenthood Federation of America, Inc. v. Bucci and Jews for Jesus,³⁰ did not support Ford’s argument that defendant’s use of the FORD mark was "commercial" because it disparaged Ford and prevented it from fully exploiting the value of its mark. First, the defendants in both Planned Parenthood and Jews for Jesus registered domain names containing the plaintiff’s trademarks, whereas defendant’s domain name "fuckgeneralmotors.com" domain name did not contain plaintiff’s FORD mark. Defendant merely used the FORD mark in its programming code to create a hyperlink to the "ford.com" website. The court said that "[t]rademark law does not permit Plaintiff to enjoin persons from linking to its homepage simply because it does not like the domain name or other content of the linking webpage." Second, "[i]f the FTDA’s "commercial use" requirement is to have any meaning, it cannot be interpreted so broadly as to include any use that might disparage or otherwise commercially harm the mark owner." The court pointed out that both the FTDA and the courts extend protection for unauthorized noncommercial and commercial uses, including comparative advertising, news reporting, parody, and comedy.

Regarding Ford’s infringement and unfair-competition claims, Ford argued that defendant’s use of the FORD mark was used in commerce "in connection with the distribution of services" because it was likely to prevent some Internet users from reaching Ford's website. Defendants’ use of the FORD mark in their programming code, however, did not in any way inhibit Internet users from reaching Ford’s website. Moreover, when the unauthorized use does not compete with the trademark owner’s business, as in this case, the "in connection with goods or services" requirement is not satisfied simply because Internet users may face some difficulty in finding plaintiff’s website. Any such inconvenience would be "trivial" according to the court, especially since searches for Ford’s website on popular search engines listed Ford’s site as the first or second search result.

III. Conclusion
As these cases show, trademark liability indeed can be just a click or link 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 or whether it is sufficient to establish or help establish a required element of those claims.