others, that the appearance of WhenU’s ads on a user’s computer screen at the same time as the
U-Haul web page was a result of how applications operate in the Windows environment and
therefore did not constitute a “use” of U-Haul’s trademarks under the Lanham Act. Neither did
inclusion of the U-Haul URL or the word “U-Haul” in the SaveNow program constitute “use”
under the Lanham Act, particularly since WhenU did not sell the U-Haul URL to its customers
or cause the U-Haul URL or name to be displayed to the computer user when the ads popped
up.^3338 Finally, the court found no unfair competition because the user had consented, by
accepting the clickwrap license and downloading the software, to the display of the ads on his or
her screen.^3339
(b) Wells Fargo v. WhenU.comSimilar claims of copyright and trademark infringement were brought against WhenU in
the case of Wells Fargo & Co. v. WhenU.com, Inc.^3340 The court denied a motion for a
preliminary injunction, finding that the plaintiffs had not shown a likelihood of success on the
merits of either the copyright or the trademark claims. With respect to the copyright claims, the
plaintiffs argued that the SaveNow program caused infringing derivative works of their websites
to be created. The court ruled that, to support a claim of direct derivative works infringement
against WhenU, the plaintiffs would need to prove that WhenU incorporated the plaintiffs’
websites into a new work. The court ruled that the plaintiffs could not establish such proof,
because WhenU merely supplied a software product that did not access the plaintiffs’ websites
and therefore did not incorporate them into a new work. Accordingly, the plaintiffs’ claim for
copyright infringement could, at best, be a claim for contributory infringement based on an
allegedly infringing derivative work created by users of the WhenU software.^3341
The court concluded that SaveNow users did not create infringing derivative works
either. Use of the SaveNow program to display ads did not alter the plaintiffs’ websites, nor did
the WhenU ad window have any physical relationship to the plaintiffs’ websites or alter the
content displayed in any other open window.^3342 Even if the presence of an overlapping window
could be said to change the appearance of the underlying window on a computer screen, the
court held that such alteration was not an infringement by analogy to the case of Lewis Galoob
Toys v. Nintendo of Am.^3343 That case held that the “Game Genie” device, which attached to the
Nintendo game console and allowed players to temporarily alter certain attributes of video
games, did not create a fixed derivative work because once the Game Genie was detached or the
power turned off, the changes disappeared and the video game revered to its original form.^3344
(^3338) Id. at 4.
(^3339) Id. at *1.
(^3340) 293 F. Supp. 2d 734 (E.D. Mich. 2003).
(^3341) Id. at 769.
(^3342) Id.
(^3343) 780 F. Supp. 1283 (N.D. Cal. 1991), aff’d, 964 F.2d 965 (9th Cir. 1992).
(^3344) Id. at 1288, 1291.