1-800-Contacts, Inc. v. WhenU.Com, Inc.
a. Facts: WhenU sold a program that tracked which websites people went to and would generate pop-up ads according to what the user was searching for. The pop-ups were usually for the competitors of whatever the user typed in. Contacts gets mad and decides to sue b/c they're affecting their ability to do business.
b. Issue: whether the district court erred in finding that Contacts had demonstrated a likelihood of success on its trademark claims.
c. Procedural History: the district court found that Contacts had demonstrated a likelihood of success on its trademark claims and issued a preliminary injunction against the D.
d. Reason: WhenU does not use Contact's trademark in the manner ordinarily at issue in an infringement claim: it does not place Contacts trademarks on any goods or services in order to pass them off as emanating from or authorized by Contacts
i. WhenU is using Contact's web address precisely because it is a website address, rather than b/c it bears any resemblance to Contact's trademark, b/c the only place WhenU reproduces the address is in the directory
ii. WhenU does not disclose the contents of its directory to its advertising clients nor does it permit these clients to request or purchase specified keywords to add to the directory
iii. The pop-ups have no tangible effect on the appearance of Contact's website b/c it's in a different window
iv. WhenU doesn't need Contact's authorization to display a separate window containing an ad of its competitor
e. Held: WhenU does not use 1-800s trademarks w/in the meaning of the Act when it includes its web address in an unpublished directory of terms that trigger delivery of WhenU's contextually relevant advertising to C-users; or causes separate, branded pop-up ads to appear on a C-user's computer screen.
a. Facts: WhenU sold a program that tracked which websites people went to and would generate pop-up ads according to what the user was searching for. The pop-ups were usually for the competitors of whatever the user typed in. Contacts gets mad and decides to sue b/c they're affecting their ability to do business.
b. Issue: whether the district court erred in finding that Contacts had demonstrated a likelihood of success on its trademark claims.
c. Procedural History: the district court found that Contacts had demonstrated a likelihood of success on its trademark claims and issued a preliminary injunction against the D.
d. Reason: WhenU does not use Contact's trademark in the manner ordinarily at issue in an infringement claim: it does not place Contacts trademarks on any goods or services in order to pass them off as emanating from or authorized by Contacts
i. WhenU is using Contact's web address precisely because it is a website address, rather than b/c it bears any resemblance to Contact's trademark, b/c the only place WhenU reproduces the address is in the directory
ii. WhenU does not disclose the contents of its directory to its advertising clients nor does it permit these clients to request or purchase specified keywords to add to the directory
iii. The pop-ups have no tangible effect on the appearance of Contact's website b/c it's in a different window
iv. WhenU doesn't need Contact's authorization to display a separate window containing an ad of its competitor
e. Held: WhenU does not use 1-800s trademarks w/in the meaning of the Act when it includes its web address in an unpublished directory of terms that trigger delivery of WhenU's contextually relevant advertising to C-users; or causes separate, branded pop-up ads to appear on a C-user's computer screen.