recent advancements in telecommunications, the World Wide Web (the "Web")
has become one of the most commonly used mediums in the search for information,
and with newer technological advancements such as WebTV, its use will only increase.
Much of the appeal of the Web is based upon it being an interactive medium in
which a user may easily "jump" from site to site through the use of
hyperlinks. Hyperlinking is the essence of the Web as it allows a Web surfer to
branch out to Web pages and retrieve information within seconds and without having
to perform new title searches or complex information obtaining tasks. But with
any new technology, new rules and regulations are never far behind, and now the
power of hyperlinking is being threatened.
One recent dispute, Washington Post v. Total News1 (Total News), caught the attention of many Internet users and addressed the legal issues surrounding hyperlinking and framing, as illustrated on the Web page at http://www.totalnews.com. Frames provide a means for dividing a Web page into scrollable portions, or windows, that are viewed in separate parts of the screen simultaneously, while functioning independently. When used properly, frames can make a viewer's time on a Web page drastically more productive and convenient.
In Total News, the plaintiffs, Washington Post Co., Time Inc., Cable News Network Inc., and Reuters New Media Inc., among others, brought multiple causes of action against the defendants, Total News Inc. and other related parties. Included among the many claims were misappropriation, trademark dilution, trademark infringement, and willful copyright infringement. In a complaint filed in the U.S. District Court for the Southern District of New York, the plaintiffs alleged that the defendants designed a parasitic Web site which, instead of having its own material, simply republished the news and editorial content of Web sites that already existed so as to attract both advertisers and users.
On the Total News Web site, activation of a hyperlink to an external site opened the associated external page within one of the framed portions of the Total News homepage while leaving the Total News logo, commercial advertisements and URL on the screen surrounding the activated page. The plaintiffs claimed that this method of advertising was the "Internet equivalent of pirating copyrighted material from famous newspapers, magazines or television news programs", and that the defendants' page simply took parts of competitive publications and used them for their own financial benefit.
While many observers were anxious to hear a court speak on the various legal issues presented by this conflict, Total News and the other defendants settled this controversy2 by, inter alia, agreeing to stop the framing of plaintiffs' Web sites. While being far from conclusive, this settlement could suggest that hyperlinking in a framed arrangement could be actionable under at least one of the legal claims asserted in the Total News complaint. While the Total News controversy may be argued to be only relevant to the use of hyperlinks within frames, the pending case of Ticketmaster v. Microsoft3 addresses the broader implications of hyperlinking without permission. Ticketmaster filed suit against Microsoft in the U.S. District Court for the Central District of California for improperly using Ticketmaster's name and logo on their Web page, Seattle Sidewalk4. Specifically, Ticketmaster has alleged numerous counts against the software giant including dilution of Ticketmaster's trademarks, misrepresentation, unfair competition, unfair business practices, and misleading statements.
Because of the use of "deep" hyperlinks, a user of the Seattle Sidewalk Web site could bypass all policies and service information provided on the Ticketmaster homepage and go directly to Ticketmaster's event listing to purchase tickets. This would not have happened if the hyperlinks from Seattle Sidewalk had been "surface" links linked to the Ticketmaster homepage instead of to one of the subsidiary pages within the Web site. Ticketmaster alleges that due to this direct linking Microsoft has benefited from their trademarks and name.
One interesting note in the history of this case is that before the suit began, the companies were in negotiations for having hyperlinks from the Sidewalk Web site to the Ticketmaster site, suggesting Microsoft was concerned about the legal bases for their intentions. After the negotiations failed, Microsoft established the links anyway. However, after the initial complaint was filed, Ticketmaster filed an amended complaint to reference deep linking, creating an inference that Ticketmaster suspects that merely linking to a homepage may not be actionable in the abstract.
Since the Internet is, after all, a world-wide network, hyperlinking has not been an issue solely addressed in the United States. The United Kingdom is presently dealing with this matter in the Shetland Times Ltd. v. Dr. Jonathan Wills and Zetnews Ltd.5 (Shetland Times). In Shetland Times, Lord Hamilton granted an interim interdict, similar to a U.S. preliminary injunction, on October 24th 1996, to stop the Shetland News from making free links to the Shetland Times Web site. The plaintiffs own and publish The Shetland Times, a newspaper which carries local, national and international news, while the defendants provide a news reporting service called The Shetland News. Both parties accordingly created Web sites based on their news reports. The defendant's Web site, however, contained a number of headlines which served as hyperlinks, that previously appeared in issues of the Shetland Times. These hyperlinks provided direct access (i.e., "deep" links) to the corresponding text that was published on the plaintiffs' Web site without the user having to go through the plaintiffs' homepage. The plaintiffs also utilized advertising on their homepage as a source of revenue, but due to the defendants' deep hyperlinks, such advertisements were never seen, leading to a potential loss of revenue.
In granting the interim interdict on copyright grounds, Lord Hamilton stated that it was crucial that all access to the substantive material on the plaintiffs' Web site should be obtained exclusively by accessing their Web site through the homepage (i.e., no "deep" linking), and that there was no materiality to the defendants' defense that the plaintiffs were benefiting from their newspaper items being made more available to the public by being disclosed on the defendants' Web site.
In general, while potential federal claims against hyperlinking and framing include trademark infringement, trademark dilution, and copyright infringement, these claims are often weak since many hyperlinks do not use actual trademarks, the uses are not "commercial", the trademarks are not "famous" (as required by the dilution statute), or an implied license arguably exists in light of URL advertisement. Thus, state claims, which often involve less defined areas of law, were estimated by many to be more problematic for Total News and Microsoft. While federal copyright preemption is certainly a defense to consider against state law claims6, the very recent New York Federal District Court case of American Library Association v. Pataki7 (Pataki) directly addressed state regulation of the Internet. In Pataki, the plaintiffs alleged that New York Penal Law 235.21(3) (the "NY Act"), a state Internet obscenity law, was unconstitutional because it unduly burdened interstate commerce in violation of the Commerce Clause of the U.S. Constitution. In Judge Preska's decision, she stated that the NY Act represented an unconstitutional intrusion by one state into interstate commerce (i.e., a "Dormant Commerce Clause" violation) and granted the plaintiffs a preliminary injunction enjoining enforcement of the Act. The decision specifically states that regulation of the Internet by separate states needs to be cohesive, or users of the Internet will be lost in an array of differing state imposed laws. With different state laws regulating the same Internet, a user would be forced to use the Internet according to the state with the most restrictive regulations, a "lowest common denominator" approach. Therefore, the need for uniformity in this "unique sphere of commerce" required that the New York law be stricken. Thus, the Federal Copyright Preemption doctrine and the Dormant Commerce Clause may offer fertile ground for defending against state law claims.
State regulation of the Internet was also challenged in American Civil Liberties Union of Georgia, et al. v. Zell Miller, et al.8, where plaintiffs brought an action for declaratory and injunctive relief challenging the constitutionality of Georgia's "Internet Police" Law 9 (the "GA Act"). Specifically, the GA Act made it a crime for anyone to transmit data through a computer network while falsely identifying a person or using "any trade name, registered trademark, logo, legal or official seal, or copyrighted symbol" that falsely states or "implies" permission to use it. The Federal District Court of Northern Georgia, noting that a fair reading of the GA Act would signify that the current use of hyperlinks on Web pages would be prohibited under the GA Act, granted the plaintiffs' motion for preliminary injunction and enjoined the state from enforcing the Act pending a final determination on the merits of the plaintiffs' complaint. The court stated that hyperlinks enable the linking system of the Web and that, on First Amendment grounds, no compelling state interest had been articulated to justify restricting the linking function in this way. Thus, a federal court has now specifically recognized the importance of hyperlinks and attached First Amendment protection.
More generally related to the importance of free speech on the Internet, the recent U.S. Supreme Court decision of Reno v. ACLU10 indicated that the federal Communications Decency Act (CDA) was an unconstitutional restriction of free speech. In a 7-2 decision written by Justice Stevens, a thorough analysis illustrated how free speech would have been adversely affected by the CDA. The Court stated that although the state had a compelling interest in the protection of minors from pornographic and indecent material, the CDA was overly vague. Particularly of interest was the Court's distinction between commercial and non-commercial speech, wherein non-commercial speech is deserving of a higher level of protection. This would seem to suggest that standard hyperlinking for non-commercial use will fall in the domain of this case while hyperlinking for commercial use may not.
Finally, after losing its attempt at the Supreme Court bid to defend the CDA, the Clinton Administration appeared to change its position by releasing a new electronic commerce policy11 opposing any new CDA-like laws and calling for industry self-regulation, filtering software, and other means for enabling parental control of what their children view. One particular part of Mr. Clinton's message to the public addressing his new policy stated, "Governments can have a profound effect on the growth of electronic commerce. By their actions, they can facilitate electronic trade or inhibit it."
Therefore, with little current direction supplied by the courts and many new issues becoming relevant in the use of hyperlinking, one preventative measure against a trademark or copyright claim is a common disclaimer. The disclaimer should state that the Web site and owner of the Web site are not sponsored or affiliated with any owners of the specific trademarks used on the Web site, including those constituting hyperlinks. In any case one can unquestionably see that concerns about hyperlinking are not just hype but real concerns that will shape the future of hyperlinking, and in essence, the Web.
Copyright 1998-2003 Peter A. Nieves | www.patentperfect.com