Popping Fresh

In Findlaw's Modern Practice, Jason Allen Cody discusses Pop-Up Ad Litigation Strategy: Forums, Claims and Defenses

Summary of Pop-Up Advertising Cases

	Washington Post v. Gator	U-Haul v. WhenU.com	Wells Fargo v. WhenU.com	1-800 Contacts v. WhenU.com
Date	7/02	9/03	11/03	12/03
Court	E.D. Va.	E.D. Va.	E.D. Mich.	S.D.N.Y.
Disposition	granted π's motion for a preliminary injunction	granted Δ's motion for summary judgment	denied π's motion for a preliminary injunction	granted π's motion for a preliminary injunction
Copyright Infringement	yes	no	no	no
Trademark Infringement	yes	no	no	yes
Trademark Dilution	yes	no	no	n/a
Initial Interest Confusion Doctrine	no	no	no. refused to apply	yes. pop ups diverted & distracted website consumers
Use in Commerce	yes (implied)	no	no	yes
Fair Use	no	n/a	yes. comparative advertising	no
Survey Used	yes. indicated 66% consumer confusion, but no analysis as to weight given	n/a	yes, but unreliable	yes. suggested initial interest confusion, but ultimately unreliable

The key difference between the 2003 case where the website owner obtained a preliminary injunction (1-800 Contacts) and the other 2003 cases may not be the result of the choice of forum as the legal theories relied upon and the facts presented to the court in each case.

Note that Wells Fargo relied on the survey evidence prepared for 1-800 Contacts. Even though that survey evidence was not reliable, at least it was prepared for the 1-800 Contacts litigation.

Additionally, 1-800 Contacts sued not only WhenU, but also VisionDirect, who advertised on WhenU. VisionDirect's cybersquatting on the www1800contacts.com domain name provided an indication that VisionDirect hoped to profit off of consumer confusion with 1-800 Contacts and likely purchased advertising on WhenU in order to place ads over the 1-800 Contacts web site.

Website owners who seek to stop pop-ups should look for examples of behavior by advertisers seeking to profit off of the website and trademark owner's goodwill.

(via The Trademark Blog)