Advanced Copyright Law on the Internet

to dispatch a contextually relevant ad to that user. The ad did not display the plaintiffs’
trademarks, and WhenU did not use the plaintiffs’ trademarks to indicate anything about the
source of the products and services it advertised.^3352

(c) 1-800 Contacts v. WhenU.com

A third opinion in the various litigations against WhenU was issued just one month after
the Wells Fargo opinion. In the case of 1-800 Contacts, Inc. v. WhenU.com,^3353 the district court
reached the same conclusion as the U-Haul and Wells Fargo courts on the copyright claims, but
reached an opposite conclusion on the trademark claims, although its trademark ruling was later
reversed on appeal to the Second Circuit. In this case, claims were brought against both WhenU
and one of its advertising customers, Direct Vision, a competitor of the plaintiff 1-800 Contacts.
In addition to the copyright and trademark claims, the plaintiff asserted a violation of the
Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).

With respect to its claim of copyright infringement, the plaintiff argued that, by
delivering pop-up ads to a SaveNow user’s computer while the user was viewing the plaintiff’s
website, the defendants created a new screen display that incorporated the plaintiff’s copyrighted
work, thereby infringing the plaintiff’s exclusive right of display.^3354 The court rejected this
argument, finding that it would prove way too much were it accepted:

For this court to hold that computer users are limited in their use of Plaintiff’s

website to viewing the website 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 website exists allows users to

obscure, cover, and change the appearance of browser windows containing

Plaintiff’s website. Without authority or evidence for the claim that users exceed

their license to view the copyrighted 1-800 Contacts website when they obscure

the website 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.^3355

The court also rejected the plaintiff’s argument that the defendants were creating
unauthorized derivative works by adding to or deleting from its copyrighted website, thereby

(^3352) Id. at 762. The court also ruled that the plaintiffs had not demonstrated a likelihood of success on the issue of
confusion. The court found a number of flaws in the survey conducted by the plaintiffs’ expert, in that it did not
approximate actual market conditions, did not survey the appropriate population, contained questions that were
unclear and leading, and contained no control questions. Id. at 765-69. In March of 2003, plaintiffs Wells
Fargo and Quicken Loans settled their lawsuit against WhenU.com and filed a stipulated order of dismissal.
See “Wells Fargo Settles WhenU.com Pop-Up Ads Case,” BNA’s Electronic Commerce & Law Report (Mar.
30, 2005) at 329.
(^3353) 309 F.Supp.2d 467 (S.D.N.Y. 2003).
(^3354) Id. at 485.
(^3355) Id.