Decisions from the USA and Canada

USA - Canada

USA Goddard v. Google, Inc., 2008 WL 5245490 (N.D. Cal. Dec. 17, 2008)

For more information see: Google Not Liable for Fraudulent Ads



Venture Tape Corp. v. McGills Glass Warehouse , 2008 WL 3959997 (1st Cir. Aug. 28, 2008). For more information see 426,487 Reasons Why Metatags Still Matter (In Court)--Venture Tape v. McGills , Technology & Marketing Law Blog



Synscort Inc. v. Innovative Routines Int'l Inc., D. N.J., No. 04-3623, April 30, 2008

A trademark placed in a single metatag designed to advertise a company's ability to service a rival's product is nominative fair use



North American Medical Corp. v. Axiom Worldwide, Inc., 2008 WL 918411 (11th Cir. April 7, 2008)

Using a competitor's trademark in web site metadata amounts to trademark infringement, but may not justify an injunction



Orion Bancorp Inc. v. Orion Residential Finance LLC, 2008 WL 816794 (M.D. Fla. March 25, 2008)

The court has ordered a company to use 'negative keywords' to avoid being associated with another firm's trade mark.



Boston Duck Tours, Decsision of December 5, 2007, LP v. Super Duck Tours, LLC, 2007 WL 4465464 (D. Mass. Dec. 5, 2007)

AdWords



BidZerk LLC v, Smith, D.S.C., Desicion of October 22, 2007, No. 6:06109 The creation of a hyperlink pointing to a photo on a publicly accessible web site is not a misappropriation of the photo

Jayne v. Google Internet Search Engine Founders, 2007 WL 2852383 (M.D. Pa. Sept. 27, 2007) , PDF



CLRB Hanson Industries LLC v. Google Inc., 5:05-cv-03649-JW (N.D. Cal. Aug. 21, 2007),

http://claranet.scu.edu/tempfiles/tmp33458/clrbhansongoogle.pdf.



Site Pro-1, Inc. v. Better Metal, LLC, Decision of May 9, 2007; 06-CV-6508 (ILG) (RER) (E.D.N.Y. May 9, 2007)

keyword triggering and metatag usage is not a trademark use in commerce



Hamzik v. Zale Corp./Delaware, Decision of April 19, 2007, 2007 WL 1174863 (NDNY April 19, 2007)

AdWords Update



Feldman v. Google, Inc., Decision of March 29, 2007, United States District Court, Eastern District of Pennsylvania

AdWords Contract Upheld



Zyprexa, Decision of February 13, United States District Court Eastern District of New York

Zyprexa - EFF



Merck & Co. Inc. v. Mediplan Health Consulting Inc., Decision of April 7, 2006, U.S. District Court Southern District of New York



AdWords - Trademark Law

More information on the case can be found here!

Governement Employees Ins. Co. v. Google Inc. , United States District Court for the Eastern District of Virginia - Alexandria Division, August 8, 2005



Hubbert v. Dell, Decision of August 12, 2005, Appelate Court of Illinois, Fifth District



Court enforces Online Agreements, Including Terms Accessibale Via Hyperlink

JetBlue Airways Corp. Privacy Litigation, July 29, 2005, United States District Court, Eastern District of New York



Court enforces Online Agreements, Including Privacy Policy Accessible Via Hyperlink

Batesville Serv. Inc. v. Funeral Depot Inc., Decision of November 10, 2004, United States District Court, Southern District of Indiana, Indianapolis Division



Copyright Law



L inking to another website can constitute copyright infringement where the defendant has "extensive involvement" in the content of the linked-to site.

Nissan Motor Co. v. Nissan Computer Corp., No. 02-57148 (9th Cir. August 6, 2004)



Injunctive relief may not restrain Nissan Computer from placing links on nissan.com and nissan.net to other sites that post negative commentary about Nissan Motor. Links to negative commentary about Nissan Motor, and about this litigation, reflect a point of view that is protected by the First Amendment. The critical speech was informational, not commercial. For more information on this case see Update 25!



Knight-Mc Connell v. Cummins , U.S. District Court for the Southern District of New York, S.D.N.Y., 03 Civ. 5035 (NRB), Decision of July 29, 2004,

Commercial Law - Likelihood of Confusion

The mere appearance on a website of a hyperlink to another site will not lead a webuser to conclude that the owner of the site he is

visiting is associated with the owner of the linked site. This is particularly true in this case because defendant’s website advertises

real estate and web design services, not investment services, and defendant is continuously disassociating herself from plaintiff by

criticising her and accusing her of misconduct.

Also see the News Update 24!

Comcast of Illinoi X LLC v. Hightech Elec. Inc., District Court for the Northern District of Illinoi , Decision of July 28, 2004, 03 C 3231

Liability

Links to websites that sell infringing devices can violate the DMCA

Also see the News Update 24!

NeoMedia Technologies Inc. v. AirClic Inc. , Decision of April 16, 2004 (N.D. Ill.)

Link to Business With Forum Contacts

If personal jurisidiction would simply be based on Scanbuy's hyperlink to a website that is active in a forum, it would establish as precedent that any website owner who hyperlinks to a website that conducts business online would be susceptible to personal jurisdiction in every state and district. “It is therefore inappropriate for the hyperlink factor to tip the scales in favor of general jurisdiction in Illinois, when it would otherwise be lacking based solely on Scanbuy’s website

Also see the News Update 21!

Novak v. Overture , Decision of March 25, 2004, Civ. 02-5164 (DRH) (WDW) (E.D.N.Y., Mar. 25, 2004)

A forum selection clause is enforceable unless it is shown that to enforce it would be 'unreasonable and unjust' or that some invalidity such as fraud or overreaching is attached to it." The Court held that the fact that the reader was required to scroll down to read all of the terms, did not render the clause unenforceable.

Also see the News Update 22!

Banner advertisement triggered by trademark protected term, Keying

Also see the News Update 14!

Copyright Law, Search Engine, Thumbnails, Inline-Links

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Net2Phone, Inc. v. The Superior Court of Los Angeles County , Decision of June 9, 2003

Hyperlink to contractual terms

California state appeals court held that a consumer contract containing a forum selection clause is not unenforceable merely

because of the fact that the forum selection clause is disclosed to consumers via an internet hyperlink. The court said: "We perceive

no unfairness in Net2Phone's requirement that certain contractual terms must be accessed via hyperlink, a common practice and

Internet business.

EF Cultural Travel BV, et al. v. Zefer Corporation , Decision of January 28, 2003 ,

Hyperlink to terms of use of a website

Instead, we think that the public website provider can easily spell out explicitly what is forbidden and, consonantly, that nothing justifies putting users at the mercy of a highly imprecise, litigation-spawning standard like "reasonable expectations." If EF wants to ban scrapers, let it say so on the webpage or a link clearly marked as containing restrictions.

Accuweather Inc. v. Total Weather Inc. , Decision of October 2, 2002 Out-of-State Jurisdiction The U.S. District Court for the Middle District of Pennsylvania ruled that the maintenance of a website accessible to forum state residents that included a link for sending e-mail without "something more" to establish minimum contacts was insufficient under the due process clause for a court in the forum states to exercise personal jurisdiction over the webmaster.

British Telecommunications Inc. v. Prodigy Communications Corp. , Decision of August 22, 2002

Hyperlink Patent

The Sargent Patent describes a system in which multiple users, located at remote terminals, can access data stored at a central computer. (Markman Op. at 2.) The data is received by the remote terminals via the telephone lines.

The Court expressly rejected BT’s interpretation by ruling that the Sargent patent claims a central computer that is a single computer with a centralized database. Because the Internet is not a computer network consisting of a centralized computer that stores all of the data accessible by remote terminals, Web servers on the Internet cannot literally infringe the ’662 patent.

Thus, as a matter of law, a URL or even a subset of a URL is not a "complete address" as defined by the Sargent patent.

For more information on this lawsuit, click here!

X/Open Company Limited v. Marshall Sorenson , Decision of June 24, 2002 , WIPO Arbitration and Mediation Center - Administrative Panel Decision, Case No. D2002-0297

Bad Faith Registration, Trademark Law

According to a ruling of the World Intellectual Property Organization's Arbitration and Mediation Center, the plan to provide hyperlinks to commercial websites is an indication of bad faith registration and use of an as yet passively held domain name that otherwise was intended for non commercial purposes.

British Telecommunications Inc. v. Prodigy Communications Corp . , Decision of March 13, 2002, 189 F.Supp.2d 101 (S.D.N.Y. 2002)

Hyperlink Patent

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Copyright Law, Search Engine, Thumbnails, Inline-Links

Despite the fact that Arriba made exact replications of Kelly's images, the thumbnails were much smaller, lower-resolution images that served an entirely different function than Kelly's original images.

Like the defendants in Webbworld and Hardenburgh, Arriba is directly liable for infringement. Arriba actively participated in displaying Kelly's images by trolling the web, finding Kelly's images, and then having its program inline link and frame those images within its own web site. Without this program, users would not have been able to view Kelly's images within the context of Arriba's site. Arriba acted as more than a passive conduit of the images by establishing a direct link to the copyrighted images. Therefore, Arriba is liable for publicly displaying Kelly's copyrighted images without his permission.

Placing the images in a "frame" or locating them near text that specifies the size and originating web site is not enough to create new expression or meaning for the images.

By giving users access to Kelly's full-sized images on its own web site, Arriba harms all of Kelly's markets. Users will no longer have to go to Kelly's web site to see the full-sized images, thereby deterring people from visiting his web site.

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Ford Motor Company v. 2600 Enterprises , Decision of December 20, 2001, 177 F.Supp.2d 661 (E.D. Mich. 2001)

Trademark Law

This court does not believe that Congress intended the FTDA to be used by trademark holders as a tool for eliminating Internet links that, in the trademark holder’s subjective view, somehow disparage its trademark. Trademark law does not permit Plaintiff to enjoin persons from linking to its homepage simply because it does not like the domain name or other content of the linking webpage.

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Copyright Law, Liability, DeCSS

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Copyright Law, Liability, DeCSS

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People for the Ethical Treatment of Animals, Inc. v. Doughney , Decision of August 23, 2001, 60 U.S.P.Q.2d 1109

Trademark Law

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Bihari v. Gross, Decision of September 28, 2000, 119 F. Supp. 2d 309

Trademark Law

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Universal City Studios, Inc. v. Reimerdes , Decision of August 17, 2000, 55 U.S.P.Q. 2d 1873 (S.D.N.Y. 2000) Copyright Law, Liability, DeCSS To the extent that defendants have linked to sites that automatically commence the process of downloading DeCSS upon a user being transferred by defendants’ hyperlinks, there can be no serious question. Defendants are engaged in the functional equivalent of transferring the DeCSS code to the user themselves. Substantially the same is true of defendants’ hyperlinks to web pages that display nothing more than the DeCSS code or present the user only with the choice of commencing a download of DeCSS and no other content. The only distinction is that the entity extending to the user the option of downloading the program is the transferee site rather than defendants, a distinction without a difference. Defendants urged others to post DeCSS in an effort to disseminate DeCSS and to inform defendants that they were doing so. Defendants then linked their site to those “mirror” sites, after first checking to ensure that the mirror sites in fact were posting DeCSS or something that looked like it, and proclaimed on their own site that DeCSS could be had by clicking on the hyperlinks on defendants’ site. By doing so, they offered, provided or otherwise trafficked in DeCSS, and they continue to do so to this day. Links bear a relationship to the information superhighway comparable to the relationship that roadway signs bear to roads but they are more functional. Like roadway signs, they point out the direction. Unlike roadway signs, they take one almost instantaneously to the desired destination with the mere click of an electronic mouse. Links are “what unify the [World Wide] Web into a single body of knowledge, and what makes the Web unique.” They “are the mainstay of the Internet and indispensable to its convenient access to the vast world of information.” They often are used in ways that do a great deal to promote the free exchange of ideas and information that is a central value of our nation. Anything that would impose strict liability on a web site operator for the entire contents of any website to which the operator linked therefore would raise grave constitutional concerns, as web site operators would be inhibited from linking for fear of exposure to liability. And it is equally clear that exposing those who use links to liability under the DMCA might chill their use, as some web site operators confronted with claims that they have posted circumvention technology falling within the statute may be more inclined to remove the allegedly offending link rather than test the issue in court. Moreover, web sites often contain a great variety of things, and a ban on linking to a site that contains DeCSS amidst other content threatens to restrict communication of this information to an excessive degree. For more information on this lawsuit, click here! Ticketmaster v. Tickets.com , Decision of August 10, 2000

Copyright Law, Deep Links

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First Amendment

Davidian has no entitlement to a link to the city's Web site, however, he may not be denied one solely based on the controversial views he espouses, without regard for the forum's purpose and structure.

The city's establishment of a policy to limit the pool of persons who might be linked to the city's Web page is reasonable.

Nevertheless, the requirement that Web sites eligible to be linked to the city's site promote the city's tourism, industry, and economic welfare gives broad discretion to city officials, raising the possibility of discriminatory application of the policy based on viewpoint.

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People for the Ethical Treatment of Animals, Inc. v. Doughney , Decision of June 12, 2000, 113 F. Supp.2d 915 (ED Va. 2000)

Trademark Law

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Trespass to Chattels, Deep Links, Spiders

BE argues that it cannot trespass eBay's web site because the site is publicly accessible. BE's argument is unconvincing. eBay's servers are private property, conditional access to which eBay grants the public. eBay does not generally permit the type of automated access made by BE. In fact, eBay explicitly notifies automated visitors that their access is not permitted….Even if BE's web crawlers were authorized to make individual queries of eBay's system, BE's web crawlers exceeded the scope of any such consent when they began acting like robots by making repeated queries.

eBay is likely to be able to demonstrate that BE's activities have diminished the quality or value of eBay's computer systems…. Although eBay does not claim that this consumption has led to any physical damage to eBay's computer system, nor does eBay provide any evidence to support the claim that it may have lost revenues or customers based on this use, eBay's claim is that BE's use is appropriating eBay's personal property by using valuable bandwidth and capacity, and necessarily compromising eBay's ability to use that capacity for its own purposes.

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Morrison & Foerster LLP v. Wick , Decision of April 19, 2000, 94 F.Supp. 2d 1125 (D.Colo. 2000)

Trademark Law

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Jeri-Jo Knitwear, Inc. v. Club Italia, Inc. , Decision of April 17, 2000, 94 F. Supp. 2d 457 (S.D.N.Y. 2000), Trademark Law For more information on this lawsuit, click here! Ticketmaster v. Tickets.com , Decision of March 27, 2000 , 54 U.S.P.Q.2d 1344 (C.D.Cal. 2000)

Copyright Law, Deep Links

Further, hyperlinking does not itself involve a violation of the Copyright Act (whatever it may do for other claims) since no copying is involved. The customer is automatically transferred to the particular genuine web page of the original author. There is no deception in what is happening. This is analogous to using a library's card index to get reference to particular items, albeit faster and more efficiently.

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Nissan Motor Co., Ltd. v. Nissan Computer Corp , Decision of March 23, 2000, 89 F. Supp. 2d 1154

Trademark Law

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OBH, Inc. v. Spotlight Magazine, Inc. , Decision of February 28, 2000, 86 F. Supp. 2d 176 (WDNY 2000)

Trademark Law

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Copyright Law, Liability, DeCSS

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Copyright Law, Liability, DeCSS

However, the Court refuses to issue an injunction against linking to other websites which contain the protected materials as such an order is overbroad and extremely burdensome. Links to other websites are the mainstay of the Internet and indispensable to its convenient access to the vast world of information. A website owner cannot be held responsible for all of the content of the sites to which it provides links. Further, an order prohibiting linking to websites with prohibited information is not necessary since the Court has enjoined the posting of the information in the first instance.

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Copyright Law, Search Engine, Thumbnails, Inline-Links

The most significant factor favoring Defendant is the transformative nature of its use of Plaintiff's images. Defendant's use is very different from the use for which the images were originally created. Plaintiff's photographs are artistic works used for illustrative purposes. Defendant's visual search engine is designed to catalog and improve access to images on the Internet…The character of the thumbnail index is not esthetic, but functional; its purpose is not to be artistic, but to be comprehensive.

Defendant never held Plaintiff's work out as its own, or even engaged in conduct specifically directed at Plaintiff's work. Plaintiff's images were swept up along with two million others available on the Internet, as part of Defendant's efforts to provide its users with a better way to find images on the Internet.

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Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc. , Decision of December 6, 1999, 75 F. Supp. 2d 1290 (D. Utah 1999)

Copyright Law, Liability

Defendants, their agents and those under their control, shall remove from and not post on defendants' website, addresses to websites that defendants know, or have reason to know, contain the material alleged to infringe plaintiff's copyright;

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PaineWebber Inc. v. Fortuny, Decision of April 9, 1999, Civ. A. No. 99-0456-A (E.D. Va. Apr. 9, 1999).

Trademark Law

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Trademark Law

The essence of the Internet is that sites are connected to facilitate access to information. Including linked sites as grounds for finding commercial use or dilution would extend the statute far beyond its intended purpose of protecting trademark owners from use that have the effect of “lessening . . . the capacity of a famous mark to identify and distinguish goods or services.”

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Trademark Law

Bernstein v. JC Penny Inc. , Decision of September 29, 1998, 50 USPQ2d 1063-1064

Link to Illegal Material

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The Putnam Pit, Inc. v. City of Cookesville , Decision of September 21, 1998, 23 F. Supp. 2d 822 (M.D.Tenn. 1998)

First Amendment

The decision of the City of Cookeville to limit the subject matter of its web site to the promotion of commerce is reasonable in light of the disruptions to the City's ability to communicate its own messages if it were required to allow any and every other operator of a web site to be linked to the City's web site.

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Jews for Jesus v. Brodsky, Decision of July 2, 1998, 159 F.3d 1351 (3d Cir. 1998), Docket Number; 98-6031 - Affirmed: Jews for Jesus v. Brodsky, March 6 - Decision without published opinion

Trademark Law

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Jews for Jesus v. Brodsky , Decision of March 6, 1998, 993 F. Supp. 282 (D.N.J.)

Trademark Law

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Copyright Law, Framing

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Copyright Law, Framing

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First Amendment

A fair reading of the clause, as written, is that it prohibits the current use of web page links. The linking function requires publishers of web pages to include symbols designating other web pages which may be of interest to a user. This means that an entity or person's seal may appear on hundreds or thousands of other web pages, just for the purpose of enabling the linking system. The appearance of the seal, although completely innocuous, would definitely "imply" to many users that permission for use had been obtained. Defendants have articulated no compelling state interest that would be furthered by restricting the linking function in this way.

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§ Digital Equipment Corp. v. Alta Vista Corp., Decision of March 12, 1997, 960 F. Supp. 456 (D. Mass. 1997)

Trademark Law

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Canada

Imax Corporation v. Showmax, Inc. , Decision of January 18, 2000

Trademark Law

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Toronto.com v. Sinclair. , Decision of June 1, 2000, F.C.J. No. 795 (F.C.T.D.)

Trademark Law