Is it possible to infringe a trademark when you never display it to the public but use it only as a hidden trigger for pop-up ads?

Three federal courts have struggled with this question in the last seven months but have been unable to reach unanimity on the answer. These cases represent the newest issue to confront the courts in the battle over trademark protection on the Internet, and they illustrate how technological developments on the Internet continue to outstrip the ability of the law to keep pace.

The World Wide Web is a network based on links, and since the Internet first went mainstream in the mid-1990s there has been no shortage of cases brought by content owners attempting to impose “linking liability” on those who profit at their expense. Legal theories behind these cases have included trademark infringement, dilution, “cybersquatting,” copyright infringement and violations of the Digital Millennium Copyright Act. Factual scenarios have varied from claims of trademark infringement based on “deep linking” to allegations of copyright infringement for linking to an unauthorized copy of a secret religious text.

The fact is, as the Web grows and the software technologies supporting it become more sophisticated, so do the linking technologies and the legal theories devised in attempts to counter them.

The most recent example has arisen in the context of interactive pop-up ads distributed by WhenU distributes a downloadable software program called “SaveNow,” which is bundled with free software, including screensaver programs.

However, nothing comes without a cost; to install the “free” software, users must agree to install SaveNow as well. As explained in WhenU's clickwrap license agreement, the SaveNow software will (invisibly to the user) continuously monitor the user's Internet browser to determine whether content accessed by the user matches key words stored in WhenU's client directory. When the software finds a match for an associated key word—often a trademark or service mark—it triggers the SaveNow program to transmit a WhenU-branded pop-up ad to the user's computer.

The pop-up ad is selected from a list supplied by WhenU's advertising client, who may be a competitor of the owner of the mark that triggered the pop-up. The pop-up ad provides a hyperlink to the Web site of WhenU's client; if the user clicks on the ad, the competitor's Web site opens on the user's computer.

To date, WhenU has been sued by U-Haul, 1-800 CONTACTS and Wells Fargo for trademark infringement and other claims. Each has brought suit separately, in a different federal court.

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Lee Gesmer Mr. Gesmer is a partner and founder of Lucash, Gesmer & Updegrove LLC, a Boston law firm that concentrates in all aspects of the representation of high technology companies. He can be reached at