By analogy, the court ruled that WhenU’s program only temporarily changed the way the
plaintiffs’ websites were viewed by users, and as soon as the ad windows were closed or
minimized, the plaintiffs’ websites reverted to their original form.^3345 The court also rejected the
plaintiffs’ argument that an unauthorized derivative work was formed because the WhenU ads
modified the pixels on the user’s screen display. The court concluded that the pixels “are owned
and controlled by the computer user who chooses what to display on the screen” and the
plaintiffs’ did not have any property or copyright interest in those pixels.^3346 The court also
noted that because the pixels on a computer screen are updated every 1/70th of a second, the
“alteration of pixels is therefore far too transitory an occurrence to form a basis for a copyright
violation.”^3347 The court therefore ruled that the WhenU advertisements did not create a work
sufficiently permanent to be independently copyrightable, and therefore did not create a
derivative work.^3348
With respect to the plaintiffs’ trademark claims, the court rejected three arguments made
by the plaintiffs as to why WhenU should be found to “use” the plaintiffs’ trademarks in
commerce, as required to establish a violation of the Lanham Act. First, the plaintiffs argued
that WhenU hindered Internet users from accessing their websites by potentially diverting them
to other sites when the user entered the URL of their websites, and such diversion constituted a
“use” of their trademarks. The court rejected this argument, noting that WhenU used the
plaintiffs’ trademarks only in its software directory, to which the typical consumer did not have
access, and entry of the plaintiffs’ URLs in fact directed them to the plaintiffs’ web sites.^3349
Second, the plaintiffs argued that WhenU positioned its pop-up ads in such a way that
consumers would see one display containing WhenU’s ads and the plaintiffs’ websites and
trademarks. This positioning, the plaintiffs argued, created the impression that the pop-up was
affiliated with or approved by the plaintiffs. The court rejected this argument, finding that it was
apparent to the user that what was appearing on his or her screen was two distinct sources of
material. The court noted that the plaintiffs’ marks were neither displayed nor appeared to be
displayed on WhenU’s windows, and the fact that WhenU’s ads appeared on a computer screen
at the same time the plaintiffs’ web pages were visible in a separate window was not a “use” in
commerce of the plaintiffs’ marks.^3350 Instead, the court concluded it was a form of legitimate
comparative advertising.^3351
Finally, the plaintiffs argued that the inclusion of their trademarks in WhenU’s software
directory was a use in commerce. The court rejected this argument as well, finding that the
directory entries were used only to identify the category of material a user was interested in, and
(^3345) Wells Fargo, 293 F. Supp. 2d at 770.
(^3346) Id. at 770-71.
(^3347) Id. at 771.
(^3348) Id.
(^3349) Id. at 758-59.
(^3350) Id. at 759-61.
(^3351) Id. at 761.