1-800 Contacts, Inc. v. WhenU.com
United States District Court
69 U.S.P.Q.2d 1337 (S.D.N.Y. 2003)
2003 WL 22999270 (S.D.N.Y. Dec. 22, 2003)

BATTS, J.

Before the Court is a Motion for a Preliminary Injunction by Plaintiff 1-800 Contacts to enjoin Defendants from delivering to computer users competitive “pop-up” Internet advertisements, in violation of federal and state copyright, trademark, and unfair competition laws. For the reasons set forth herein, Plaintiff’s motion is GRANTED in part.

BACKGROUND

The Parties

Plaintiff 1-800 Contacts, Inc. (“1-800 Contacts”) sells and markets replacement contact lenses and related products through its web site, located at http://www.1800Contacts.com, and also through telephone and mail orders. Plaintiff has registered the “WE DELIVER, YOU SAVE” mark with the USPTO, and has filed for registration of the mark “1-800 CONTACTS” and the 1-800 CONTACTS logo. Plaintiff has expended considerable sums on marketing these marks. Plaintiff’s sales have grown from $3.6 million in 1995 to $169 million in 2001.

Plaintiff is the sole owner of the 1-800Contacts.com web site. Plaintiff registered its copyright to the 1- 800Contacts.com web site with the Copyright Office of the United States Library of Congress in October 2000. Over 221,800 people visited Plaintiff’s web site in the month of September 2002.

Defendant Vision Direct, Inc. sells and markets replacement contact lenses and related products through its web site, located at http://www.visiondirect.com. Vision Direct and 1-800 Contacts are competitors.

Defendant WhenU.com is a software company that has developed and distributes, among other products, the “SaveNow” program, a proprietary software application.

The Internet and the Windows Operating Environment

Since Plaintiff’s claims arise from alleged anti-competitive and infringing action by Defendants through the Defendants’ use of proprietary software that is distributed to computer users, a brief explanation of the Internet, the computer operating environment and associated terms and definitions is helpful. These facts are not in dispute.

The Internet is a global network of millions of interconnected computers. With a computer that is connected to the Internet, a computer user can access computer code and information that is stored on the Internet in repositories called “servers.” Much of the information stored in servers on the Internet can be viewed by a computer user in the form of “web pages,” which are collections of pictures and information, retrieved from the Internet, and assembled on the user’s computer screen. “Web sites” are collection of web pages that are organized and linked together to allow a computer user to move from web page to web page easily. A single web site may contain information or pictures that are stored on many different servers.

To gain access to the Internet, a computer user generally connects to the Internet using an internet service provider (“ISP”). The ISP provides access to the Internet, which allows the user’s computer to communicate with the Internet. Once a connection to the Internet has been established through an ISP, a user may “browse” or “surf” the Internet by using a software program called an Internet browser (“browser”). Microsoft Internet Explorer is one example of a browser program. Through the browser, a user retrieves information located on Internet servers.¹²

12.     With appropriate software, any computer that is connected to the Internet can act as a server, by providing access, via the Internet, to other computer users who are connected to the Internet. Thus, there are many, many servers acting as “hosts” for information that is found on the Internet.

To retrieve information from the Internet, a user may type the address¹³ of a web site into the web browser – the user’s computer will then request information from the server or servers on which the web site resides, and then will access the pertinent information on those servers.

13.     The Second Circuit has explained that Web pages are designated by an address called a domain name. A domain name consists of two parts: a top level domain and a secondary level domain. The top level domain is the domain name’s suffix. Currently, the Internet is divided primarily into six top level domains: (1) .edu for educational institutions; (2) .org for non-governmental and non-commercial organizations; (3) .gov for governmental entities; (4) .net for networks; (5) .com for commercial users, and (6) a nation-specific domain, which is . us in the United States. The secondary level domain is the remainder of the address, and can consist of combinations of letters, numbers, and some typographical symbols. To take a simple example, in the domain name “cnn.com,” cnn (“Cable News Network”) represents the secondary level domain and .com represents the top level domain. Each domain name is unique. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 492-93 (2d Cir. 2000).

Many computer users (“users”) access the Internet with computers that use the Microsoft Windows operating system (“Windows”). Windows allows a user to work in numerous software applications simultaneously. In Windows, the background screen is called the “desktop.” When a software program is launched, a “window” appears on the desktop, within which the functions of that program are displayed and operate. A user may open multiple windows simultaneously, allowing the user to launch and use more than one software application at the same time. Individual windows may be moved around the desktop, and because the computer screen is two-dimensional, one window may obscure another window, thus appearing to be “in front of” another window.

A “search engine” is a web site (or in some cases, a software program) that a computer user can use to find information on the Internet.¹⁵ Typically, a computer user will type in a word or words describing what is sought, and the search engine will identify web sites and web pages that contain those words.¹⁶

15. Examples of search engines are www.Google.com, www.Yahoo.com and www.AskJeeves.com.   16.     The Second Circuit has defined the term “search engine” operationally: A search engine will find all web pages on the Internet with a particular word or phrase. Given the current state of search engine technology, that search will often produce a list of hundreds of web sites through which the user must sort in order to find what he or she is looking for. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000).

The SaveNow Program

The following description of the operation and function of the SaveNow software is not in dispute. The SaveNow program is computer software that only operates in the Microsoft Windows operating system. The SaveNow software, if installed, resides on individual computer users’ computer desktops. When a computer user who has installed the SaveNow software (a “SaveNow user”) browses the Internet, the SaveNow software scans activity conducted within the SaveNow user’s Internet browser, comparing URLs, web site addresses, search terms and web page content accessed by the SaveNow user with a proprietary directory,¹⁷ using algorithms contained in the software.

17.     The directory is stored on the SaveNow user's computer as a part of the SaveNow application.

Entering an URL into the browser can “trigger” the SaveNow software to deliver a “pop-up” advertisement. When a user types a search word or URL into the Internet browser, the SaveNow software looks to see what category of products or services the address belongs to. In general, if the SaveNow user’s Internet usage “matches” information contained in the SaveNow directory, the SaveNow software will determine that an ad should be shown, will retrieve a pop-up advertisement from a server over the Internet, and will display that pop-up ad in a new window appearing on the user’s computer screen. More pertinent to this case, when a user types in “1800contacts.com,” the URL for Plaintiff’s web site, the SaveNow software recognizes that the user is interested in the eye-care category, and retrieves from an Internet server a pop-up advertisement from that category. Mr. Naider described the functioning of the proprietary directory contained in the SaveNow program:

[E]ssentially, the program contains a directory of the Internet, and ... has over 40,000 elements in this directory. Elements such as URL’s, but many other elements, such as search terms, something we call key-word algorithms. So an example of a key-word algorithm would be, the software processes the content of the page and if I’m reading an article where the word “diabetes” appears four times and the word “type I” or “type II” in conjunction with that, that would be an example of a key-word algorithm. All of those elements, the URL’s, the search terms, the key-word algorithms, are processed and compared against this directory of 40,000, and growing, elements. And then a decision is made that says, OK, this user is engaged in activity in a particular category – again, it may be hotel travel or air travel, in this case contact lenses or eye care – and the ad units themselves are basically associated with categories, such that if the software detects, by looking at these elements, activity in a category, it may display an ad that’s relevant to that category.

If a SaveNow user who has accessed the 1-800 Contacts web site and has received a WhenU.com pop-up advertisement does not want to view the advertisement or the advertiser’s web site, the user can click on the visible portion of the window containing the 1-800 Contacts web site, and the 1-800 Contacts web site will move to the front of the screen display, with the pop-up ad moving behind the web site window. Or, if the user recognizes that a different web site has appeared on the screen, the user can close the pop-up web site by clicking on its “x,” or close, button. If the user clicks on the pop-up ad, the main browser window (containing the 1-800 Contacts web site) will be navigated to the web site of the advertiser that was featured inside the pop-up advertisement.

The contents of the SaveNow proprietary directory are automatically updated. When a SaveNow user connects to the Internet, the SaveNow software receives information and updates itself without any prompting or conscious choice by the user. The SaveNow software does not store any information about the individual computer user, or track the user’s usage of the computer. Once installed, the SaveNow software requires no action by the user to activate its operations; instead, the SaveNow software responds to a user’s “in-the-moment” activities by generating pop-up advertisement windows that are related to the content of the web sites a user has accessed.

Computer users typically install the SaveNow software as part of a “bundle”¹⁹ of other software applications that consumers download at no cost. A user who installs a typical software “bundle” clicks through four screens,²⁰ and to proceed with installing the software “bundle,” is required to approve a license agreement with WhenU, by clicking “I Agree” on the installation window.²¹ There have been approximately 100 million downloads of the SaveNow program. The SaveNow software can be uninstalled from a user’s computer, and Mr. Naider testified that approximately 75 million people have uninstalled the program.

19.     E.g. if a user wants a free cartoon character screensaver, in order to get it the user has to accept also the other programs it is bundled with. The screensaver is the lure that hooks the user into downloading the bundled software.   20.   As demonstrated at the hearing, the first screen encountered by a user installing a typical software bundle is a welcome screen, the second screen contains a license agreement for a screensaver software program (not related to WhenU.com’s software), the third screen contains an opportunity to join an email list for the screensaver program, and the fourth screen describes where on the computer the software will be installed.   21.     A “typical” SaveNow License Agreement states, in pertinent part: SaveNow shows users relevant contextual information and offers as they surf the Web. There are a vast number of offers and services available to Internet users that SaveNow may display. In addition, WhenU.com negotiates exclusive offers to maximize value for users. The software’s goal is to show users information about these offers and services – right at the moment when they need it. Offers and information are provided to users by showing a limited number of relevant ads in the form of interstitials (“pop-up ads”) and other ad formats. These offers and ads are shown when users visit various sites across the Internet, based on URLs visited by the user and/or search terms typed into search engines and/or the HTML content of the page viewed by the user. SaveNow ads/offers are delivered independently from the site the user happens to be visiting when they see a SaveNow ad/offer and are not endorsed or affiliated with anyone other than WhenU.com.

The SaveNow software generates at least three kinds of ads – an ad may be a small “pop-up” advertisement appearing in the bottom right-hand corner of a user’s screen; it may be a “pop-under” advertisement that appears behind the web page the user initially visited; or it may be a “panoramic” advertisement that stretches across the bottom of the user’s computer screen.

One of the elements contained in the SaveNow proprietary software directory is the URL, “1800Contacts.com,” which is the Internet web site address for Plaintiff 1-800 Contacts. Since at least the Summer of 2002, when computer users who had the SaveNow software installed on their computers (“SaveNow users”) accessed Plaintiff’s web site, pop-up or pop-under advertisements for Defendant Vision Direct would appear on the user’s screen.

WhenU.com’s clients “buy categories” of goods or services, paying for delivery of their advertisements or coupons to SaveNow users’ screens when the SaveNow users are working in relevant categories. Under some of WhenU.com’s contracts, advertisers pay WhenU.com to deliver pop-up advertisements to SaveNow users’ screens; under other contracts, advertisers pay WhenU.com based on the number of people who click on the pop-up advertisements; still other advertisers pay WhenU.com based on the number of actual purchases made by SaveNow users from pop-up ads that have been delivered to their computers. Thus, WhenU.com has a fee relationship with the advertisers who pay it to deliver pop-up advertisements, and a free relationship with consumers who install the SaveNow software on their computers, but no relationship with the companies on whose web sites the pop-up advertisements appear.

Plaintiff’s Theory of the Case

Plaintiff argues that it has been harmed by the creation of an “impermissible affiliation between Plaintiff and Defendant,” since because of Defendants’ pop- up advertising, users “are likely to have the impression that the pop-up advertisements operate in cooperation with, rather than in competition against, the Plaintiff.” Plaintiff argues the “pop-up advertisements also interfere with and disrupt the carefully designed display of content” on Plaintiff’s copyrighted web site. Plaintiff argues further that the pop-up advertising enables Defendants to “profit illegally from unauthorized pop-up advertisements delivered to Plaintiff’s web site, and that through the pop-up advertisements, “Defendants are free-riding on the name, reputation, and goodwill that Plaintiff has worked so hard to attain.” Plaintiff argues that, by causing pop-up advertisements to appear on the copyrighted 1-800 Contacts web site, Defendants have altered the copyrighted web site, and in so doing, have infringed Plaintiff’s exclusive rights to display its copyrighted works and to prepare derivative works. Plaintiff also argues that Defendants’ pop-up advertising has created a likelihood of confusion between Defendant Vision Direct and Plaintiff, and that since Plaintiff has a valid trademark, Defendants have infringed Plaintiff’s trademark.

Defendant WhenU’s Theory of the Case

According to Avi Naider, CEO of WhenU.com, the SaveNow software was conceived to “revolutionize marketing from implied interest, interests that are deducted [sic] based on who a consumer is and what their personal information is, to actual interests, when you shop, when you travel, when you invest. And that’s why we named the company WhenU.com.” Mr. Naider testified that the way the SaveNow software works is that

the software runs in the background, and it doesn’t require anything of the user. That’s the point. Meaning if the user actually has to go and start saying to the software, OK, fine, offers on travel, they can do that through a search engine. This is a piece of software that is designed to remind the user, to push information to the user. So the user is on the Internet, they’re looking at, let’s say, travel or any other type of activity. The software, in a separate window, will deliver, or it may deliver, an ad to them that’s relevant based on their in-the-moment activity.

Mr. Naider testified that the SaveNow program performs “contextual marketing,” which Mr. Naider defined as “delivering something to a consumer when they need it.” As an example of contextual marketing, Mr. Naider discussed a receipt he had received after completing a grocery-store purchase of, among other things, a lactose-free, non-dairy milk product. Printed at the bottom of the store receipt was a coupon for a lactose-free, non-milk product, which Mr. Naider testified he received because a marketing company had identified his potential preferences from his purchasing behavior.

Mr. Naider analogized the operation of the pop-up windows generated by the SaveNow software to the functioning of several other common software programs. Specifically, using images from computer screen captures, Mr. Naider demonstrated that, in Windows, it is possible to have multiple windows, containing unrelated program applications, running at the same time. Mr. Naider continued, by demonstrating that windows generated by a Windows “instant messaging” application would pop up without warning while he was working in an unrelated spreadsheet program, in order to deliver messages sent over the Internet by friends. Mr. Naider also testified that on his home computer he received messages and alerts from programs, that he had not triggered through any action of his own. Mr. Naider testified that, in general, computer users in the Windows operating environment expect to be working in multiple windows simultaneously, and that in “pushing” information to the user, the SaveNow software was acting much like other software applications that opened new “pop-up” windows. Mr. Naider also testified that the pop-up windows had “no physical relationship with the main browser window,” that the SaveNow software had “absolutely no knowledge” of where the main browser window was, and that the pop-up advertisements did not alter the main browser window in any way.

At the hearing, Professor John Deighton, an expert in interactive marketing, testified that as a result of the structure of the Internet, a new publishing and retailing model has developed. Professor Deighton said the economic investment required to publish on the Internet is much lower than in traditional publishing industries (Professor Deighton testified that “[c]reating a web site is within the reach of a child.”) and that, although 60 percent of the population of the United States is part of the Internet “audience,” “no significant group of that audience is in any one place at any one time.” As a result, Professor Deighton said that a new model has emerged, wherein publishing and retailing have “conjoined,” and that individual web sites are “a combination of publisher and marketplace,” since it is expected that the web sites will be read like a publication, but also an expectation that there will be competition, as in a marketplace. Professor Deighton said that the WhenU software is an example of a model for retailing and publishing that “will return to the Internet some of the cost that was made to build the Internet.”

Professor Deighton also testified that a preliminary injunction in this case would have “some short-term immediate impacts and some chilling long-term impacts.” Specifically, Professor Deighton testified that consumers who had elected to use the WhenU.com software would be frustrated in their attempts to continue to use it, and that competition in the advertising sector might be chilled. Dr. Deighton testified further:

The Internet is not a decade old and we have seen enormous fortunes made and lost. That process must be allowed to continue if the right model to support this wonderful institution is going to be discovered. I think that unnecessarily harsh restrictions on this initiative would discourage others from similar initiatives or improved initiatives.

Avi Naider, the president of WhenU.com, testified that a preliminary injunction would result in damage to his company in excess of $10,000,000 over twelve months. His estimate of this amount was based on current or future advertisers who would cancel their advertising orders in order to avoid negative publicity or possible litigation.

DISCUSSION

Copyright Claims

Plaintiff has filed as an exhibit to its Complaint a certificate of registration with the United States Copyright Office of the “1800 Contacts Web site”; this serves as prima facie evidence of valid ownership of a copyright. This protection extends to both the computer code for the web site and the screen displays of the web site. Harbor Software, Inc. v. Applied Systems, Inc., 925 F. Supp. 1042, 1045 (S.D.N.Y.1996) (finding sufficient expressive choices in the selection and arrangement of information compiled in screen reports and displays to satisfy the minimal requirement of originality to warrant protection).

Plaintiff alleges that Defendants have “copied” constituent elements of Plaintiff’s web site in the “broad sense of invasion of one of the exclusive rights secured to copyright owners under the Copyright Act.” Plaintiff argues that the 1-800 Contacts web site, as perceived by a SaveNow user, appears differently than the copyrighted web site, and that the web site’s appearance has therefore been “modified and that Defendants’ pop-up scheme caused this modification.” Specifically, Plaintiff alleges that Defendants have invaded Plaintiff’s exclusive right to display the 1-800 Contacts web site, in violation of 17 U.S.C. § 106, and its exclusive right to prepare derivative works based on the 1-800 Contacts web site, secured to Plaintiff under 17 U.S.C. § 106(2).

1. Display Right

Plaintiff alleges that Defendants have invaded Plaintiff’s exclusive right to display the 1-800 Contacts web site. Plaintiff argues it gives computer users a license to “use and display” its web site, but does not give them a license to alter the web site or change its appearance in any way. Plaintiff argues that, by delivering pop-up advertisements to a SaveNow user’s computer while the user views Plaintiff’s web site, Defendants create a new screen display that incorporates Plaintiff’s copyrighted work, thereby infringing Plaintiff’s exclusive right to display its copyrighted work.

For this Court to hold that computer users are limited in their use of Plaintiff’s web site to viewing the web site without any obstructing windows or programs would be to subject countless computer users and software developers to liability for copyright infringement and contributory copyright infringement, since the modern computer environment in which Plaintiff’s web site exists allows users to obscure, cover, and change the appearance of browser windows containing Plaintiff’s web site.

Without authority or evidence for the claim that users exceed their license to view the copyrighted 1-800 Contacts web site when they obscure the web site with other browser windows (including pop-up ads generated by the SaveNow program), Plaintiff has little basis for its claim that Defendants have infringed its display right.

2. Derivative Works Right, 17 U.S.C. § 106(2)

Plaintiff also alleges that Defendants have invaded Plaintiff’s exclusive right to prepare derivative works based on the 1-800 Contacts web site, secured to Plaintiff under 17 U.S.C. § 106(2).

Section 106 of the Copyright Act provides that “the owner of copyright under this title has the exclusive right to ... prepare derivative works based upon the copyrighted work.” However, Plaintiff has failed to show that Defendants have created a “derivative work” that infringes Plaintiff’s exclusive rights under § 106(2).

Plaintiff argues that, by delivering pop-up advertisements to a SaveNow user’s computer while the user views Plaintiff’s web site, Defendants are adding a Vision Direct advertisement to Plaintiff’s copyrighted screen display, thus creating a derivative of the Plaintiff’s copyrighted screen display, and in the process violating “two fundamental tenets of copyright law – exceeding the license granted and destroying the author’s control over the manner in which its work is presented.”

For the reason set forth above, to the extent Plaintiff’s derivative work argument relies on a theory that Defendants cause or contribute to copyright infringement by a SaveNow user when viewing Plaintiff’s copyrighted screen display, in excess of the license granted by Plaintiff, this argument fails.

Plaintiff’s second theory is that Defendants have created a derivative work by adding to or deleting from Plaintiff’s copyrighted web site, and therefore have transformed or recast the web site, in derogation of Plaintiff’s exclusive derivative work right. Plaintiff argues that to infringe their derivative work right, Defendants need not have made a copy of the original work in order to create a derivative work, and that to violate its protected right to prepare derivative works, Defendants “need only transform or recast the copyrighted work in some way,” as by “adding to or deleting from” Plaintiff’s copyrighted web site. Plaintiff analogizes the pop-up ads in this case to advertisements added to and interspersed throughout the text of a copyrighted book in National Bank of Commerce v. Shaklee Corp., 503 F.Supp. 533 (W.D. Tex. 1980), which were found to be “unauthorized additions” to the book text, in violation of the book author’s copyright. Plaintiff’s argument fails because Defendants have not created a “derivative work.”

In order for Plaintiff’s derivative work right to have been infringed, the Court must find that the screen display of the 1-800 Contacts web site, with Defendant’s pop-up ads, is in fact a “derivative work,” as defined at 17 U.S.C. § 101.

A “derivative work” is:

. . . a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ‘‘derivative work’’.

In general, copyright protection is limited to protection of

. . . original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. § 102(a).

A work is “fixed” in a tangible medium of expression:

. . . when its embodiment in a copy . . . by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration. 17 U.S.C. § 101.

Applying the “fixation” requirement here, Plaintiff has failed to show that its web site, and Defendants’ pop-up advertisements are “sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration.” Indeed, Defendants’ pop-up ad windows may be moved, obscured, or “closed” entirely – thus completely disappearing from perception, with a single click of a mouse. ⁴⁰

40.     The lack of any “fixation” here explains why Plaintiff errs in its assertion that this case is analogous to National Bank of Commerce v. Shaklee Corp., 503 F. Supp. 533 (W.D. Tex. 1980). While in this case any “derivative” work created when a computer user views Plaintiff’s copyrighted web site as modified by Defendants’ pop-up advertisements is not fixed in any tangible medium of expression, the books published with unauthorized interspersed advertisements in Shaklee were clearly “fixed” in print.

Given that the screen display of the 1-800 Contacts web site with Defendant’s pop-up ads is not “fixed in any medium,” it is not sufficiently “original” to qualify as a derivative work under the second sentence of 17 U.S.C. § 101.

The first sentence of 17 U.S.C. § 101 also allows “non-original” works to qualify for “derivative” work status. Since the screen display of the 1-800 Contacts web site with Defendant’s pop-up ads is not a “translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation,” for Plaintiff’s to prevail, it must show that Defendants have “recast, transformed, or adapted” the 1-800 Contacts web site. None of these three actions seems to describe what is done to Plaintiff’s web site by Defendants’ pop-up ads, since Plaintiff’s web site remains “intact” on the computer screen. Defendants’ pop-up ads may “obscure” or “cover” a portion of Plaintiff’s web site – but they do not “change” the web site, and accordingly do not “recast, transform or adapt” the web site. Lee v. A.R.T. Co., 125 F.3d 580, 582 (7th Cir.1997) (mounting plaintiff’s art works on ceramic tiles did not create “derivative work,” and therefore did not infringe plaintiff’s copyright). Moreover, if obscuring a browser window containing a copyrighted web site with another computer window produces a “derivative work,” then any action by a computer user that produced a computer window or visual graphic that altered the screen appearance of Plaintiff’s web site, however slight, would require Plaintiff’s permission. A definition of “derivative work” that sweeps within the scope of the copyright law a multi-tasking Internet shopper whose word-processing program obscures the screen display of Plaintiff’s web site is indeed “jarring,” and not supported by the definition set forth at 17 U.S .C. § 101. See id.

Since Plaintiff has failed to demonstrate that Defendants have invaded the exclusive rights secured to Plaintiff under the Copyright Act, there is little likelihood that Plaintiff will succeed on the merits of its copyright claims. In view of this finding, there is no need to address the question of irreparable injury on these grounds.

Accordingly, Plaintiff’s motion for a preliminary injunction based on the Defendants’ alleged infringement of Plaintiff’s copyrights is DENIED.

Trademark Infringement

. . . In sum, as discussed above, the factors weigh heavily in favor of the Plaintiff’s showing a likelihood of both source confusion and initial interest confusion. Having established a likelihood of confusion, Plaintiff has established both a likelihood of success on the merits and irreparable harm on its trademark infringement claim.

. . . Remedies

Defendant uses Plaintiff’s mark within the meaning of the Lanham Act by causing pop-up advertisements to appear when SaveNow users have specifically attempted to find or access Plaintiff’s web site, by either typing Plaintiff’s web address into the browser bar or by typing the Plaintiff’s mark into a search engine. Defendant also uses Plaintiff’s mark by including Plaintiff’s mark and confusingly similar terms as elements in the proprietary SaveNow directory. These uses are likely to cause source confusion and initial interest confusion.

Enjoining the Defendants from triggering pop-up advertisements when SaveNow users type in Plaintiff’s web site address and/or type Plaintiff’s mark into a search engine will prevent Defendants from capitalizing on the goodwill and reputation that Plaintiff has earned through its own investment. Such an injunction will eliminate the likelihood that a SaveNow user will be confused as to the source of the pop-up advertisements that appear when the 1-800 Contacts web site is accessed; it will also eliminate the likelihood that a SaveNow user would be lured from Plaintiff’s web site to Defendant Vision Direct’s web site in the initial phases of the user’s attempts to shop for contact lens products on Plaintiff’s web site.

Of course, an injunction should not impede traffic in the more general free- for-all of the Internet superhighway, where general information is often sought. For example, a SaveNow user who enters a generic term such as “contact lenses” into a search engine is clearly looking for general information, and has not exhibited any preference for 1-800 Contacts. Plaintiff’s web site, as well as Defendant Vision Direct’s web site, may appear on the results page of the search engine along with other contact lens retailers and manufacturers. In this environment, all contact lens retailers including Plaintiff and Defendant Vision Direct, are “on the same page,” and the unique interplay of publishing and marketing provided by the technology of the Internet should be given free reign.

Accordingly, it is appropriate that Defendants be preliminarily enjoined from using Plaintiff’s mark or confusingly similar terms as an element in the SaveNow proprietary directory. It is also appropriate that Defendants be preliminarily enjoined from causing pop-up advertisements to appear when a computer user has made a specific choice to access or find Plaintiff’s web site by typing Plaintiff’s mark into the URL bar of a web browser or into an Internet search engine.

CONCLUSION

For the foregoing reasons, 1-800 Contacts’ Motion for a preliminary injunction is GRANTED in part and in DENIED in part.

Defendants are preliminarily enjoined from: 1) including the 1-800 Contacts mark, and confusingly similar terms, as elements in the SaveNow software directory, and 2) displaying Plaintiff’s mark “in the . . . advertising of” Defendant Vision Direct’s services, by causing Defendant Vision Direct’s pop-up advertisements to appear when a computer user has made a specific choice to access or find Plaintiff’s web site by typing Plaintiff’s mark into the URL bar of a web browser or into an Internet search engine.

Plaintiff’s Motion for preliminary injunctive relief on its copyright claims is DENIED.