Popping Fresh

In Findlaw’s Modern Practice, Jason Allen Cody discusses Pop-Up Ad Litigation Strategy: Forums, Claims and Defenses

Summary of Pop-Up Advertising Cases

Washington Post v. Gator U-Haul v. WhenU.com Wells Fargo v. WhenU.com 1-800 Contacts v. WhenU.com
Date 7/02 9/03 11/03 12/03
Court E.D. Va. E.D. Va. E.D. Mich. S.D.N.Y.
Disposition granted π’s motion for a preliminary injunction granted Δ’s motion for summary judgment denied π’s motion for a preliminary injunction granted π’s motion for a preliminary injunction
Copyright Infringement yes no no no
Trademark Infringement yes no no yes
Trademark Dilution yes no no n/a
Initial Interest Confusion Doctrine no no no. refused to apply yes. pop ups diverted & distracted website consumers
Use in Commerce yes (implied) no no yes
Fair Use no n/a yes. comparative advertising no
Survey Used

yes. indicated 66% consumer confusion, but no analysis as to weight given n/a yes, but unreliable yes. suggested initial interest confusion, but ultimately unreliable

The key difference between the 2003 case where the website owner obtained a preliminary injunction (1-800 Contacts) and the other 2003 cases may not be the result of the choice of forum as the legal theories relied upon and the facts presented to the court in each case.
Note that Wells Fargo relied on the survey evidence prepared for 1-800 Contacts. Even though that survey evidence was not reliable, at least it was prepared for the 1-800 Contacts litigation.
Additionally, 1-800 Contacts sued not only WhenU, but also VisionDirect, who advertised on WhenU. VisionDirect’s cybersquatting on the www1800contacts.com domain name provided an indication that VisionDirect hoped to profit off of consumer confusion with 1-800 Contacts and likely purchased advertising on WhenU in order to place ads over the 1-800 Contacts web site.
Website owners who seek to stop pop-ups should look for examples of behavior by advertisers seeking to profit off of the website and trademark owner’s goodwill.
(via The Trademark Blog)