The Link To Liability

Earlier versions of this article appeared in the March 2001 issue of Internet Law & Business and the February 5, 2001 issue of the National Law Journal

The ubiquitous act of linking one website to another has spawned many lawsuits claiming trademark infringement and dilution. Liability in these cases depends on who's doing the linking, where the linking leads, what the link reveals, and most important, whether there's a likelihood of consumer confusion or dilution. Even if the act of linking itself is not sufficient to create liability for infringement or dilution, it may nonetheless play an important role in those claims by supplying the "commercial use" requirement for a federal dilution claim or the "use in commerce" requirement for a federal infringement or unfair-competition claim.

I. Defendant-to-Plaintiff Linking

Defendant-to-plaintiff linking comes in three varieties. Either the defendant "deep links" to a page inside plaintiff's website and bypasses the plaintiff's home page, the defendant links to the plaintiff's site to create a likelihood of confusion with the plaintiff, or the defendant "frames" part of plaintiff's content and obscures advertisements or information the plaintiff might want to display.

In the first type of case, deep linking prompted one of the most publicized suits to date. In Ticketmaster Corp. v. Microsoft Corp.1 Microsoft linked its "seattlesidewalk.com" website to the page in Tickemaster's website promoting Seattle events. According to Ticketmaster, the deep links took away Ticketmaster's control over its mark and proprietary content, diluting its trademark and falsely suggesting an association between "seattlesidewalk.com" and Ticketmaster. In January 1999, the parties' settlement permitted Microsoft to link only to Ticketmaster's home page.2

Deep linking cropped up once again in a lawsuit filed by Ticketmaster, this one against the ticket broker Tickets.com. In Ticketmaster Corp. v. Tickets.com, Inc.,3 Tickets.com sold tickets to some events and told users how to purchase tickets it did not sell: "These tickets are sold by another ticketing company. Although we can't sell them to you, the link above will take you directly to the other company's web site where you can purchase them." Defendant's website deep linked to interior pages of Ticketmaster's site. That interior location did contain the Ticketmaster logo so that customers knew they were dealing with Ticketmaster, not defendant.

Tickets.com initially moved to dismiss Ticketmaster's claims. In declining to dismiss the Lanham Act claims, the court noted that "deep linking by itself (i.e. without confusion of source) does not necessarily involve unfair competition." The court later denied Ticketmaster's motion for preliminary injunction,4 finding insufficient facts to support plaintiff's claims. In short, consumers were unlikely to be misled because the links led to web pages clearly marked with Ticketmaster's logos.

In the second type of case, the defendant's link to the plaintiff's site shows defendant's intent to trade on the plaintiff's name. In Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc.,5 defendant operated an adult website at "adult-sex.com/playboy" and a subscription service called "Playboy's Private Collection." Defendant's site prominently featured Playboy's trademarks and linked to Playboy's website at "playboy.com." After a bench trial, the court enjoined defendant from using Playboy's marks and from linking to Playboy's website. In finding a likelihood of confusion, the court pointed to defendant's link to Playboy's website as evidence of defendant's intent to capitalize on Playboy's reputation.

In the third type of casethe framing casethe defendant's website displays material from the plaintiff's site but obscures advertisements and logos that would normally appear on that site, thus creating a risk that a visitor to defendant's site might be confused about the source of the plaintiff's framed content. Such was a central allegation in Washington Post v. Total News Inc.6 There six publishers of news websites sued Total News for framing the content of their websites on "totalnews.com." The parties' settlement provided that Total News could directly link to the plaintiffs' websites but could no longer "frame" the content contained there.7

II. Third-Party or Other Linking

Trademark owners have also alleged trademark violations against defendants who link to third-party websites or to other websites the defendant owns or controls. Likelihood of confusion generally arises only if the products or services of the trademark owner and the alleged infringer are the same or closely related. The trademark-infringement issue is thus whether links to third-party sites change the defendant's business into one related to plaintiff's. The primary dilution issue becomes whether links to third-party sites containing pornographic or other unsavory content tarnish the plaintiff's mark under the Federal Trademark Dilution Act (FTDA).

A. Relatedness of the Parties' Products or Services

An early case found that a third-party link did not change the business of the defendant. In Alta Vista Corp. v. Digital Equipment Corp.,8 plaintiff used the "Alta Vista" mark for its literary-agency services. Digital later adopted the mark "AltaVista" for its Internet search engine and had agreed with Amazon.com to promote Amazon.com's books on Digital's AltaVista site by linking to Amazon.com. According to plaintiff, the link converted Digital's search-engine business into a "full-fledged media company" competing with plaintiff. But the court disagreed, finding the parties' services were different and noncompetitive. The link from Digital's AltaVista site to Amazon.com did not transform Digital into a publishing business.

Similarly, in ImOn, Inc. v. ImaginOn, Inc.,9 linking did not convert defendant's business into one similar enough to plaintiff's to cause a likelihood of confusion. This time, however, the link was imbedded in defendant's unrelated software product and did not link to a third-party website. Defendant used the mark IMON.COMTV for expensive Internet television software offered on defendant's "imon.com" website. Plaintiff used its mark IMON for Internet portal and dial-up access service offered on its "imon.net" website. The court found the marks and services different and...