EFF Seeks Reversal of WhenU Ruling

The Electronic Frontier Foundation (EFF) has filed a “friend of the court” brief urging a trademark decision with implications for online advertising be overturned.

The case in which the libertarian-oriented digital media organization has taken an interest involves 1-800 Contacts and adware firm WhenU.com.

In October 2002, the contact lens retailer filed a trademark violation suit against WhenU.com, arguing the latter firm’s SaveNow software generated ads in a manner confusing to users. WhenU’s software monitors users’ keyed entries to search engines and browsers and delivers ads based upon their behavior. The court ruled against WhenU in December 2003, and the company has since appealed the decision, saying its software does not confuse users.

In its brief filed to the appeals court, EFF argues that WhenU’s aproach to advertising reflects no substantive difference from advertising in the real world.

“If I’m walking to my neighborhood drugstore to purchase contact lenses and on the way I see a pharmacy with lenses at half the price, I should be able to stop by and take a look at the competition before making my purchase,” said EFF Senior Intellectual Property Attorney Fred von Lohmann.

Lohmann continued, “The lower court failed to consider common sense in making its decision to prevent WhenU from placing ads near other company’s Web sites, and we believe the appeals court will recognize that competitive non-deceptive advertising online is not a violation of trademark law.”

The amicus brief details several examples of offline advertising that divert consumers’ attention by presenting them with competing products during their shopping process. It describes the District Court’s injunction as dangerous because it appears to target a whole medium without addressing the content of the advertisements themselves. According to EFF, the plaintiff should have been required to demonstrate that consumers are confused about a specific ad’s point of origin.

“This requires an evalutation of the particular advertisement in question, rather than evidence simply regarding consumer impressions of an advertising medium (such as pop-up ads) in general,” it said.

The brief also argued the District Court’s ruling wrongly assumed the only reason a consumer might search for or visit “1-800 Contacts” would be to purchase the company’s products.

As with other cases involving ad-serving software on the desktop, the brief ultimately confronts the specter of “user intent.” While the opponents of companies like WhenU contend consumers are misled by these products, EFF argues individuals should be solely responsible for their own computers. Did a given user deliberately install the software? It’s a question whose answer involves a good deal of guesswork, the brief said, and is not the proper domain of trademark owners.

The issue of how trademarks, and words associated with brand names, can be used in competitive advertising have also come up in the search engine arena. Last month, Google was slapped with an infringement suit by American Blind and Wallpaper Factory for selling “American blind” and “American blinds” as search terms. Google offered to block bidding on the company’s registered trademarks, but refused to do so for more descriptive terms.

Despite the judgment against it in the case currently under review, WhenU has emerged unscathed from its various other legal battles. The company was found blameless in November 2003 of obscuring Wells Fargo’s site and advertisements, and earlier in the year a judge dismissed copyright infringement, trademark dilution and other charges filed against WhenU by U-Haul.

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