“transforming” or “recasting” the website.^3356 Similar to the holdings in the U-Haul and Wells
Fargo cases, the court found that no derivative work satisfying the fixation requirement was
created by the SaveNow program, in view of the fact that the pop-up ads could be moved,
obscured, or closed entirely, thus disappearing from perception, with the single click of a
mouse.^3357 In addition, to the extent the pop-up ads constituted “transmitted images,” they were
not fixed works since there was no evidence that a fixation was made “simultaneously with” the
pop-up ads’ “transmission,” as required by the definitions in section 101 of the copyright
statute.^3358 Finally, the court ruled that the defendants had not recast or transformed the
plaintiff’s website because its website remained intact on the computer screen. Although the
defendants’ pop-up ads might obscure or cover a portion of the website, they did not change
it.^3359
Moreover, if obscuring a browser window containing a copyrighted website with
another computer window produced 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 website, 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 website is indeed “jarring,” and not
supported by the definition set forth at 17 U.S.C. § 101.^3360The district court, however, reached an opposite conclusion to the U-Haul and Wells
Fargo courts on the issue of trademark infringement, expressly noting that it disagreed with those
courts.^3361 Unlike those courts, the 1-800 Contacts court found that the defendants were making
“use” of the plaintiff’s trademarks in commerce for several reasons. First, SaveNow users that
typed in the plaintiff’s web site address or its 1-800 CONTACTS trademark in a search were
exhibiting a prior knowledge of the plaintiff’s website or goods and services, and the court found
that pop-up ads that capitalized on that knowledge were “using” the plaintiff’s marks that
appeared on its website.^3362 Second, the court found that by including the plaintiff’s URL,
http://www.1800contacts.com, in its software directory of terms that triggered pop-up ads, WhenU was
“using” a version of the plaintiff’s 1-800 CONTACTS mark.^3363 Thus, the court concluded that,
by delivering ads to a SaveNow user when the user directly accessed the plaintiff’s website, the
SaveNow program allowed the defendant Vision Direct, to profit from the goodwill and
(^3356) Id. at 486.
(^3357) Id. at 487.
(^3358) Id.
(^3359) Id.
(^3360) Id. at 487-88.
(^3361) Id. at 490 n.43.
(^3362) Id. at 489.
(^3363) Id.