covering a portion of the content of the web page on which the ads appeared, the ads caused the
site visitors to generate an infringing altered display of the web sites, and Gator was secondarily
liable for contributing to such infringing displays.^3326 The plaintiffs further argued that the
altered displays constituted the creation of unauthorized derivative works for which Gator was
directly liable.^3327
On July 16, 2002, the district court entered a preliminary injunction, without written
opinion, enjoining Gator from causing its pop-up advertisements to be displayed on any web site
owned by or affiliated with the plaintiffs without their express consent, and from altering or
modifying, or causing any other entity to alter or modify, any part of such websites or the display
thereof.^3328 In February of 2003, Gator reached a settlement with 16 publishers, the terms of
which were confidential.^3329
A number of other lawsuits against Gator were filed. During 2002, Six Continents Hotels
Inc. and Inter-Continental Hotels Corp. sued Gator in Atlanta for copyright and trademark
infringement, unfair competition, and computer trespass, and Extended Stay America Inc. (ESA)
sued Gator in South Carolina on similar grounds. Gator, in turn, sued ESA for declaratory relief
in federal court in San Jose, California.^3330 In May 2003, LendingTree Inc. sued Gator for
copyright and trademark infringement, asking for statutory damages of $150,000 for each
infringement.^3331 As of the writing of this paper, these suits were pending.
- The WhenU Litigations
Several lawsuits have been brought against WhenU.com, distributor of a pop-up ad
program called “SaveNow,” alleging copyright and trademark infringement. Although the cases
reached similar results on the copyright claims, they reached different results on the trademark
claims.
(^3326) Id. at 23-25.
(^3327) Id. at 25-26. The plaintiffs also argued that Gator’s activities constituted trademark infringement because the
plaintiffs’ trademarks were clearly visible beside Gator pop-up advertisements, creating an unauthorized
association between the two, and because of a likelihood of confusion as to sponsorship of the ads. The
plaintiffs submitted a consumer survey in which 66% of respondents stated they believed that pop-up
advertisements are sponsored by or authorized by the web site in which they appear, and 45% believed that pop-
up advertisements have been pre-screened and approved by the web site on which they appear. Id. at 19-21.
(^3328) Order granting preliminary injunction, Washingtonpost.Newsweek Interactive Co. v. The Gator Corporation,
Civil Action 02-909-A (E.D. Va. July 16, 2002) (copy on file with the author). The court also enjoined Gator
from infringing the plaintiffs’ trademark or service mark rights, and from making any designations of origin,
descriptions, representations or suggestions that the plaintiffs were the source, sponsor or in any way affiliated
with Gator’s advertisers or their web sites, services and products.
(^3329) “Settlement Reportedly Reached in Dispute Over Pop-Up Advertisements,” Mealey’s Litigation Report:
Intellectual Property (Feb. 17, 2003), at 22.
(^3330) Lisa Shuchman, “Search and Destroy” (Jan. 16, 2003), available as of Jan. 18, 2003 at
http://www.law.com/jsp/article.jsp?id=1039054570236.
(^3331) Jen Zoghby, “LendingTree Suit Pops Pop-Ups” (May 19, 2003), available as of Oct. 26, 2003 at
http://famulus.msnbc.com/famuluscom/bizjournal05-19-010109.asp.