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Challenging Pop-Ups with Trademark Law
U-Haul Int’l, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723 (E.D. Va 2003)
The first significant decision on the legality of pop-up advertisements occurred in September 2003, when the United States District
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WhenU's SaveNow Program
WhenU.com, Inc. (“WhenU”) distributes a downloadable software program called “SaveNow” that is generally bundled for distribution with other software programs. When a computer user who has installed the SaveNow software browses the Internet, the SaveNow software scans activity conducted within the computer user’s Internet service provider, comparing uniform resource locators (“URL”), website addresses, search terms, and webpage content accessed by the user with a proprietary directory, using algorithms contained in the software. If the program finds a match, it identifies an associated product or service category and delivers a pop-up advertisement of the product or service on the computer user’s screen. This pop-up will generally appear in front of any windows open on the user’s screen at the time. Once the pop-up is displayed, the user must either move the mouse and click the ad closed or use the keystrokes ‘Alt-F4’ to close the ad.
WhenU maintains its business by selling advertisement space and opportunities to merchants that want to take advantage of the SaveNow software. These pop-up advertisements often display a merchant’s advertisement over a competitors website. Because of such occurrences, U-Haul claimed various violations under the Lanham Act, including trademark infringement and dilution, as well as copyright infringement. U-Haul argued that WhenU infringed and diluted its trademark when WhenU incorporated U-Haul’s URL and its registered trademark “U-Haul” in the SaveNow program. U-Haul further argued that WhenU’s pop-up scheme interfered with the use of U-Haul’s website by its customers and dealers.
The Court's Decision
In the first decision of its kind, the District Court for the Eastern District of Virginia granted summary judgment for WhenU and held that its pop-up advertisements did not infringe or dilute U-Haul’s trademark. In reaching its decision, the court focused on whether WhenU “used” U-Haul’s trademark in commerce, thus violating the Lanham Act. The court concluded that when a WhenU ad appears on a computer user’s screen, “it opens in a WhenU-branded window that is separate and distinct from the window in which the U-Haul website appears.” “Use” in commerce was not established merely because the trademarks were simultaneously visible to the consumer. Additionally, the court concluded that WhenU’s inclusion of the U-Haul URL and “U-Haul” in its directory incorporated into the SaveNow program did not constitute “use” under the Lanham Act. The court reasoned that WhenU’s integration of U-Haul’s URL and trademark into the program was not a trademark use because WhenU merely uses the marks for the “pure machine-linking function” and in no way advertises or promotes U-Haul’s web address or any other U-Haul trademark.
Finally, WhenU did not use U-Haul’s trademark in commerce because the court concluded WhenU’s pop-up scheme did not interfere with the use of U-Haul’s website by its customers or dealers because the SaveNow program did not interact or communicate with U-Haul’s computer servers or systems. Further, the court reasoned that the SaveNow program was installed voluntarily by the computer user. Thus, the user controls the computer display when the WhenU add pops-up. The SaveNow program is, therefore, no different than an email system that pops a window up when the registered user receives a new email message. Consequently, because WhenU did not “use” U-Haul’s trademark in commerce, When U did not commit trademark infringement or dilution.
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