L.L. Bean filed suits against companies who advertise on Claria, including Nordstrom, JC Penney, Atkins Nutritionals and Gevalia Kaffee, a division of Kraft Foods. ClickZ: L.L. Bean Sues Other Marketers for Claria Pop-Ups
In the complaints, L.L. Bean accuses the defendants of infringing on its trademark by confusing consumers, engaging in unfair competition, using false advertising, diluting its trademark, and enriching themselves unjustly. The company also claims its Web site was trespassed upon and effectively altered, because of the pop-up ads. L.L. Bean cites federal, state and common law.
L.L. Bean is also a party to a pending consolidated suit against Claria.
Like Claria, WhenU, another adware vendor, has been targeted in lawsuits by website publishers. Last year, three courts decided cases against WhenU. Two decided in favor of WhenU (U-Haul v. WhenU and Wells Fargo v. WhenU). One granted a preliminary injunction against WhenU and advertiser VisionDirect on trademark grounds.
The two rulings which favored WhenU were suits only against WhenU. Neither court found that the WhenU software did not constitute a use in commerce of trademarks, so WhenU could not be infringing. Unlike search engine keywords, WhenU does not sell ads individual websites or search terms. Instead, advertisers can only buy placement over a wide range of websites and search keywords within a particular category, with no guarantee that ads will pop-up on any particular website. The U-Haul court focuses on the fact that WhenU does not sell placement on particular URLs. Rather than selling placement or keying ads to particular URLs, WhenU includes a URL in its directory for a “pure machine-linking function.”
1-800 Contacts sued both WhenU and advertiser VisionDirect. 1-800 Contacts succeeded because the actions of VisionDirect (buying advertising on WhenU and registering the domain name www1800contacts.com) show that the company intended to Although WhenU's SaveNow program is neither engineered nor intended to be used as a way to sell ads keyed to a particular trademark, VisionDirect nonetheless bought ads from WhenU with at least the hope that it might be able to use such ads to capitalize on the 1-800 Contacts reputation. Beyond just buying ads on WhenU, VisionDirect, demonstrated clear bad faith intent to use the 1-800 Contracts mark to divert business to its own website by registering the domain name www1800contacts.com.
Will advertisers be subject to lawsuits merely for purchasing contextual advertising on services like Claria's GAIN or WhenU's SaveNow? Absent an obvious showing of bad faith, is contextual advertising an actual cause of consumer confusion, or merely consumer-serving comparative advertising? Should web site publishers use litigation to prevent competitors from advertising "over" their sites to adware users?
This week is adware week here at IPTAblog, where we'll be looking at the adware problem. In other words, I'll be repurposing parts of a paper for the blog.