II. DOMAIN NAMES
A. The Domain Name System
The location of a Web site is designated by an Internet Protocol address which consists of a series of numbers (e.g., 244.23.42.350). To make it easier to remember an Internet address, the Domain Name System was devised, which links this numerical address to a domain name consisting of ordinary words and letters (or numbers) chosen by the owner. A domain name consists of two parts: (1) a top-level domain ("TLD"), which designates the type of use or a country designation and which is located at the end of the domain name, and (2) the second-level domain, which consists of a string words that precedes the TLD and that identifies the particular Web site owner. There are individual country TLDs, which use a two-character country code (e.g.. .ca for Canada), but in the United States (and increasingly outside the United States, as well), Web site owners typically select one of several general TLDs such as .com (commercial), .edu (educational), .org (non-profit and miscellaneous organizations), .gov (government), .net (networking provider), and .mil (military). Second-level domain names are assigned on a first-come-first-served basis, and only one person can have a particular second-level domain name under a particular TLD. The ".com" TLD is by far the most popular and the most desirable for businesses. 

1. Domain Name Registration
The most popular general TLDs (.com, .org and .net) are currently assigned by a single registrar - Network Solutions, Inc. ("NSI"), but this is on the verge of changing. NSI was awarded the right to be the sole registrar under a contract with the National Science Foundation, which expired in October 1998. Since then, NSI has continued acting as the sole registrar until a new system is devised and implemented. In September 1998, a new corporation, the Internet Corporation for Assigned Names and Numbers ("ICANN"), was formed to oversee the key administrative functions of the Internet. One of the goals of ICANN has been to open up the registration system to competition by establishing a shared registry system. On April 21, 1999, ICANN announced that five new registrars had been selected to register domain names under a pilot program for the shared registry of the .com, .org and .net domains. The test period was set to run from April 29, 1999, until June 24, 1999, although none of these five new registrars is up and running yet. At the end of the test period, at least 29 new registrars should be authorized to handle domain name registration. 

2. NSI Dispute Resolution Policies
As companies began to compete for the most coveted domain names (typically a company's name or another trademark with the .com TLD), conflicts began to arise and NSI was beginning to come under fire for assigning people domain names that contained someone else's trademarks. As a result, NSI developed a dispute resolution policy aimed at resolving these conflicts and trying to stay out of litigation. Its policies have been through numerous iterations, all of which have been subject to substantial criticism, and none of which have prevented NSI from getting sued both for assigning domain names and also for taking them away.1 NSI's dispute resolution policies strongly favor trademark registration holders and generally ignore the concept of common law rights and the likelihood-of-confusion requirement necessary for trademark infringement. Under trademark law, more than one company can often coexist using the same or a similar mark if the products and services are sufficiently dissimilar so that no likelihood of confusion results2. Thus, United Airlines and United Van Lines can coexist without any trademark infringement. It is also possible in many countries, including the United States, to have superior trademark rights even without having registered a trademark. 

However, under the NSI dispute resolution policy, if someone has a trademark registration that is identical to the second level domain of a domain name, the trademark registration owner can invoke the dispute resolution policy and may be able to have the domain name placed on hold, after following a detailed process, even if the registration is for products or services that bear no similarity to those of the domain name registrant. If the domain name registrant does not have its own trademark registration for a mark identical to the second level domain name, then unless the domain name registration occurred prior to the effective date of the other party's registration, the domain name registrant will need to file suit in order to prevent its domain name from being put on hold, even if it is the senior user. This policy does not track trademark law and has been criticized as both overbroad and underinclusive. 

The dispute resolution policy is overbroad because it can allow someone who holds a trademark registration to have a domain name put on hold, even if they could not prevail in a trademark infringement or dilution claim. The domain name registrant must then file suit to prevent its domain name from being placed on hold if it cannot produce its own registration, which may be prohibitively expensive for a small company, even if it clearly has superior rights. At the same time, the policy is underinclusive because in order to invoke the policy and have a mark put on hold, the mark needs to be identical to the second-level domain, whereas under trademark law, there only needs to be a likelihood of confusion. Therefore, Microsoft would not be able to have the domain name microsoftsoftware.com put on hold. In fact, the latest iteration of the policy states that the name has to be identical to the portion before the TLD and expressly states that it does not include the TLD. Therefore, a trademark registration for "EXAMPLE.COM" could not be used to place on hold the domain name "example.com." The registration would have to be for the word "EXAMPLE" alone. Given the recent proliferation of companies whose corporate names include the ".com" TLD, NSI's interpretation of its policy makes little sense and may well be revised the next time a new version of the policy comes out. But for now, care must be used in determining what names to register. 

Along with a new shared registration system will eventually come a new way of handling domain name disputes. The World Intellectual Property Organization (WIPO) has spent the last year formulating policy recommendations for handling intellectual property disputes as they pertain to domain names, and these recommendations were submitted to ICANN in early May. 

B. Disputes Over the Use of Trademarks in Domain Names
One of the first areas in which trademark issues began to arise in connection with the Internet was in the use of a trademark in a domain name. Because there is no official directory of domain names, users often have to guess at the domain name for a particular site. Therefore, it is important to Web site owners to have a domain name that will coincide with what users are likely to guess - typically the company name or a product name. So, when a company finds out that someone else has registered a domain name that incorporates or is similar to one of its trademarks, a dispute often arises. Trademark disputes involving domain names typically fall into one of the following categories: 1) cybersquatting; 2) typosquatting; 3) commentary or tarnishment; 4) registration of domain names of competitors; and 5) garden-variety trademark disputes. The following discussion examines emerging issues related to trademark use in domain names in these categories. 

1. "Cybersquatters"
One of the first types of cases to emerge with respect to domain names were cases involving "cybersquatting." Cybersquatting is the practice of registering trademarks as domain names in order to extort payment for sale of the domain name to the rightful mark holder. Until recently, it was not clear if cybersquatting was actionable, because the cybersquatters generally do not do anything other than register the domain names and try to sell them to the trademark owners. Therefore, it was hard to show a likelihood of confusion (necessary for a claim of trademark infringement) and it was unclear whether there was any "commercial use" of the mark (necessary for both a dilution claim and a trademark infringement claim). While courts have not generally found the mere registration of a domain name containing a trademark to be an infringement of the trademark (see e.g., Academy of Motion Picture Arts & Sciences v. Network Solutions, Inc., 989 F. Supp. 1276 (C.D. Cal. 1997)), the law is now fairly settled that cybersquatting is actionable and the courts have enjoined such use. 

The most well-known cases to date involve infamous cybersquatter Dennis Toeppen, who registered as domain names the trademarks of over 100 major corporations. Toeppen successfully sold these pirated domain names to some companies for as much as $15,000. One of these companies, Panavision International, brought suit claiming that Toeppen's use of its trademark as a domain name diluted the value of the trademark under the Dilution Act. In Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), Toeppen argued that his use of Panavision's trademark was not a "commercial use" and did not cause dilution, but the court held otherwise, stating that "Toeppen's commercial use was his attempt to sell the trademarks themselves." Id. at 1325. The court went on to find that Toeppen's actions diluted the value of Panavision's trademark because "potential customers of Panavision [would] be discouraged if they [could not] find its web site by typing in "Panavision.com," but instead are forced to wade through hundreds of web sites." Id. at 1327. A dilution claim requires that the trademark be "famous" (a concept that is not yet well-defined), and this requirement may greatly limit its application. However, in the Panavision case, this issue was not in dispute. In general, the courts seem more willing to find that a mark is "famous" in cybersquatter cases than they have been in some other areas. Nonetheless, it may still be difficult for a trademark owner to stop a cybersquatter if the mark is not a famous one. 

Even when there is a legitimate business purpose for registering names that may also be someone else's trademarks, the registrant may be characterized as a cybersquatter and be required to transfer the domain names if the names are deemed to be famous (so as to fall under the Dilution Act). In Avery Dennison Corp. v. Sumpton, 999 F. Supp. 1337 (C.D. Cal. 1998), the defendants were the owners of a small Canadian company that had registered over 12,000 domain names. They claimed to have started a legitimate business in which they registered common proper last names as domain names and then sold use rights to those domain names as email addresses. They maintained that this service was valuable because it "allow[ed] multiple uses of the same surnames as domain names, and spread the cost of maintaining the domain name registrations among all of the users." Id. at 1314. Two of the names registered by the defendants were "Avery" and "Dennison," instigating a trademark dilution claim by the Avery Dennison Corporation. 

The court's analysis in this case is noteworthy. The court characterized the defendants as cybersquatters and issued an injunction. However, because it did not have undisputed evidence that the defendants' true business purpose was to preempt domain names for the purpose of selling them to the highest bidder, it held that "equity requires that defendants be paid, if they are to be required to relinquish domain names registered for a legitimate business purpose." Id. at 1342. The court then ruled that Avery Dennison should be allowed to purchase the domain names for $300 apiece. 

2. "Typosquatters"
Cybersquatters are not the only Web operators to creatively use other entities' trademarks to their advantage. Typosquatters are staking claim in that trade as well. Typosquatters register domain names that are nearly identical to the actual domain names used by other organizations. The slight differences between the domain names are intended to catch Web users who make typographical or punctuation errors when entering a Web site's address. Paine Webber recently obtained a preliminary injunction restraining one typosquatter from using its trademark as a domain name. Paine Webber, Inc. v. wwwpainewebber.com, No. 99-0456-A, 1999 U.S. Dist. LEXIS 6552 (D. Va. Apr. 9, 1999). The defendant had registered the domain name "wwwpainewebber.com," which was only distinguishable from Paine Webber's own URL address by the exclusion of a period (.) after the "www." When the defendant's domain name was keyed in, the user was linked immediately to a site displaying pornography. Paine Webber then filed a suit which is now pending following a ruling enjoining the defendant from using the domain name. Id. at *2. 

3. Consumer Commentary; Tarnishment
One particular concern of corporations today is the use of the Internet to critique and disparage their business practices and products. Two recent cases have created a split in the federal courts, highlighting the complexity of analyzing trademark use in consumer commentary on the Internet. 

In Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D. N.J. 1998), the plaintiff organization registered the domain name "jews-for-jesus.org" to disseminate information about its teachings and related products. Finding the religious notions of Jews for Jesus offensive, the defendant registered "jewsforjesus.org" and "jews-for-jesus.com" as domain names and then created Web pages that ridiculed and maligned the philosophy of Jews for Jesus. The Web pages included a disclaimer stating that the Web site was not affiliated with the plaintiff organization. The court found that there was a great likelihood that the defendant's use of the trademark could cause confusion. They focused primarily on the intent of the defendant and used the defendant's own admissions to show that the site was created in bad faith.3 Id. at 304. The court also noted that the Web sites were both directed to the same audience - Jews interested in Christianity - which made the likelihood of confusion great. Id. at 305. Subsequently, the court ruled that the defendant's use of the Jews for Jesus trademark was an infringement. Id. The court also found in favor of Jews for Jesus on its dilution claim. The defendant's Web site was deemed to be a commercial use because it "provide[d] Internet users with competing and directly opposing information, [and] also prevent[ed] those users from reaching plaintiff and its services and message." Id. at 308. Due to this commercial nature and a finding that the use "blur[red]" and "tarnish[ed]" the value of the trademark, the court held that trademark dilution had taken place. 

Nine months after the Jews for Jesus ruling, a district court in California addressed the issue of consumer commentary. The case arose after Bally Total Fitness Holding Corporation ("Bally") learned of the existence of a Web site at the domain address "www.compupix.com/ballysucks" and brought suit against the site's operator for trademark infringement and dilution. Bally Total Fitness Holding Corp. v. FaberBally, 29 F. Supp. 2d 1161, 1162 (C.D. Cal. 1998). The "Bally sucks" site explicitly stated that it was unauthorized and showed a Bally's trademark with the word "sucks" written over it. Further, the site claimed to be "dedicated to complaints about Bally's health club business." 

As with the Jews for Jesus Web site, the sole purpose of the "Bally sucks" Web site was to critique the plaintiff organization. However, although factually similar, the analysis in Bally is significantly different from the analysis employed by the Jews for Jesus court. This is particularly clear when comparing how the two courts interpreted whether the site did or did not lend itself to potential confusion. While the Jews for Jesus court based the likelihood of confusion on the fact that both parties' Web sites were directed at the same audience and provided competing information on the plaintiff's services, Jews for Jesus, 993 F. Supp. at 305, the Bally court concluded that confusion was unlikely because the "Bally sucks" site and the Bally site had "fundamentally different purposes." Bally, 29 F. Supp. 2d at 1164. The court distinguished between the two sites by finding that the "Bally's site is a commercial advertisement... [while the "Bally's sucks"] site is a consumer commentary." Id. Based on this assumption, the court held that there was no trademark infringement. 

The distinctions between the two rulings did not end there. Whereas the Jews for Jesus court stated explicitly at the outset of its holding that the First Amendment was not at issue, Jews for Jesus, 993 F. Supp. at 287, the Bally court hinted that there may be free speech implications. Bally, 29 F. Supp. 2d at 1165-66. The Bally court stated that the defendant's intent was protected because he was merely "exercising his right to publish critical commentary about Bally." Id. at 1165. Additionally, in rejecting Bally's second claim of dilution, the court cited congressional hearings in which Senator Orrin Hatch stated that the federal dilution statute was not to be implemented so as to "prohibit or threaten noncommercial expression, such as parody, satire, editorial and other forms of expression that are not a part of a commercial transaction." Id. at 1166-67 (internal citation omitted). The court interpreted this statement to include consumer commentary. In doing so, it found the "Bally sucks" site to be non-commercial and therefore the dilution claim to be inappropriate. Id. at 1168. 

Another area of concern is the use of a trademark in a domain name that is connected to a site that the trademark owner finds objectionable - typically a pornography site. Courts have, in a number of instances, enjoined the use of a company's trademarks under a dilution theory where they have found the marks to be famous. In Hasbro, Inc. v Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d (BNA) 1479 (W.D. Wash. 1996), the court granted a preliminary injunction to the owner of the federally registered "CANDYLAND" mark against the use of the domain name "candyland.com" for a Web site containing sexually explicit material. Similarly, a court enjoined the use of "Adults"R"Us" in a domain name for a site that sold sexually explicit devices because it diluted plaintiff's famous Toys R Us mark. Toys R Us, Inc. v. Mohamed Akkaoui, d/b/a Adults "R" Us, et al, 1996 U.S. Dist. LEXIS 17090 (N.D. Cal. October 29, 1996). In both these cases, dilution was found as a result of the tarnishing of the marks due to their association with the defendant's sexually explicit sites. By contrast, the courts refused to enjoin the use of the domain name "gunsareus" for a site selling firearms, holding that the use of the phrase "are us" was sufficiently different from plaintiff's "R US" family of marks so as to avoid both trademark infringement and dilution claims, since consumers were unlikely to be confused or to associate the defendant's business with that of the plaintiffs. Toys "R" Us, Inc., v. Richard Feinberg, 26 F. Supp. 2d 639 (S.D.N.Y. October 28, 1998). 

4. Registration by Competitors
In some cases, a company will register the domain name of a competitor to prevent that competitor from access to that domain name and will sometimes use the site found at that domain name to disparage the competitor. One of the first lawsuits in this area involved the Princeton Review, an educational test preparation company. Princeton registered the domain name "kaplan.com," which is the name of one of its competitors - Stanley H. Kaplan Educational Center. Princeton Review Management Corp. v. Stanley H. Kaplan Educational Center, Ltd., 94 Civ. 1604 (S.D.N.Y. 1994). The site contained messages disparaging Kaplan and praising the Princeton Review, and Kaplan brought suit. The case was settled, and the Princeton Review surrendered the domain name. 

5. Conflicting Marks or Uses
In many disputes, there is no evil cybersquatter trying to hold a trademark owner hostage, but rather a conflict between two people with legitimate interests in using a domain name who are competing for limited space. As discussed earlier, although under trademark law, United Airlines and United Van Lines can peacefully coexist in the brick and mortar world, there is only one "united.com" domain name, so someone may not get the domain name it wants. This often leads to disputes over who has the right to use the domain name. 

Perhaps encouraged by NSI's dispute resolution policy that heavily favors trademark holders, there have been a number of cases where owners of a trademark have brought suit against holders of a domain name that contains that trademark, even where there seems little chance of a likelihood of confusion because the goods are significantly different from one another. This is often done because the trademark holder wants to obtain for itself the desirable ".com" domain name containing its mark. In one case, Fry's Electronics brought suit for trademark infringement against a french fry machine manufacturer who had beaten it to the registration of the domain name "frys.com." Although there seems little likelihood that someone would confuse an electronics store with a french fry machine vendor, Fry's Electronics obtained a default judgment and thus secured the right to use the frys.com domain name without having to address the issue of a lack of confusion. This case is currently on appeal. 

In Interstellar Starship Services Ltd. v. Epix, Inc., 983 F.Supp. 1331 (D. Ore. Nov. 20, 1997), the court held that the use of the plaintiff's trademark "EPIX" in the defendant's domain name did not constitute trademark infringement or unfair competition, because the products that the defendant offered on its site (printed circuit boards and computer programs for imaging) were dramatically different from the product advertised on the plaintiff's site (a theater production of the Rocky Horror Picture Show) and because the defendant had selected the site without knowing of the plaintiff's mark or intending to benefit from the use of the plaintiff's mark. 

Sometimes, companies go a bit too far in trying to secure a domain name and are accused of harassing children and their families who have beaten them to a desirable domain name for a noncommercial use. For example, a 12-year old boy was given the domain name "pokey.org" as a present from his father. The boy went by the nickname "pokey" because he was always late. Although there was nothing on the site that in any way would lead someone to think there was any connection with the Pokey cartoon character, Prema Toy Co., the owner of the Gumby and Pokey characters, sent the boy a cease and desist letter asking him to turn over the name, but offering to give him a royalty-free license to continue to use the name. The boy refused. At the request of Prema, NSI sent out a letter indicating it would put "pokey.org" on hold in 90 days. But before that happened, Prema withdrew the claim at the request of Gumby and Pokey's creator, Art Clokey, after enduring a mountain of bad publicity. 

Similarly, the owners of the rights to the Archie comic books (which contain a character named Veronica) have sent a cease and desist letter to the parents of baby Veronica Sams who established a Web site with the domain name veronica.org containing pictures of baby Veronica (and a story about the mean lawyers who are trying to take her Web site away!). Companies should think twice before firing off aggressive cease and desist letters in these situations as they often get posted on the Web and may generate significant bad publicity. 

Courts sometimes have issued injunctions even when a domain name would appear to be sufficiently descriptive so that it would not seem to constitute trademark infringement (or dilution). In Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F. Supp. 2d 488 (D. Va. 1999), the defendant registered several domain names using variations on the phrase "washington speakers."4 That phrase consisted of a segment of the plaintiff's name, Washington Speakers Bureau ("WSB"). The WSB brought suit against the defendant, alleging both trademark infringement and dilution. 

The court looked at several factors in determining whether there was a likelihood that the domain name would confuse potential customers of WSB. The fact that only a segment of WSB's name was used in the domain name initially cut against WSB's case. First, the court determined that the mark was weak because it was only a segment, and second, the similarity of the marks was determined to be low because it was "not clear that any portion of the protected mark [was] dominant." Id. at 498, 499. However, the weakness of the mark was overcome by other factors involved in the case. The court noted that both WSB and Leading Authorities provided services related to speakers and speaking engagements; this striking similarity, combined with the use of the Internet to advertise those services, would no doubt heighten confusion between the two companies. Id. at 499-500. Most important, however, was the court's finding that Leading Authorities registered the domain name in bad faith, as it had done to several other speaker agencies. Id. at 500-501. Consequently, the court ruled that Leading Authorities' use of a mere segment of WSB's name was a sufficient basis for trademark infringement. Id. at 501-502. 

III. LINKING, FRAMING, META-TAGGING AND KEYWORDS
More recently, trademark disputes on the Internet have begun to explore the way in which the Internet uses trademarks to access and manipulate information. Even linking, which is viewed by many as one of the most important features of the Internet, has been challenged as a trademark infringement. The following section will explore these various practices and their implications on trademark law. 

A. Linking
Linking permits a user to be automatically transported to a different page or a different Web site by clicking on an icon or on underlined text that appears on a Web page. These icons or text lines are referred to as "hyperlinks" or simply "links." Linking is part of what makes the Internet such a valuable tool for locating information. However, some cases have challenged linking to another site without permission as both copyright and trademark infringement. 

Although many sites encourage linking to drive traffic to the site, some Web site operators are concerned about links because they often allows Web users to bypass the home page5 and go directly to an internal Web page. This is known as a "deep link." Deep-linking may be of concern to some Web site operators because home pages often include essential information about the contents of the site as a whole and the terms and conditions for using the site. In addition, the user may end up navigating the site in a different manner than the site operator intended, which may affect the company's ability to maximize its profits. Perhaps more importantly, Web operators are often paid by other organizations to place advertisements on their Web sites; and frequently these advertisements are placed on a Web site's home page. Since these advertising contracts are usually based on the number of "hits" received by the page where the advertisement is located, links that bypass the home page may deprive a Web operator of advertising revenue. 

Many commentators have argued that linking is an important and prevalent part of the Internet and that linking should be considered a fair use. Others have argued that there is implied consent to link to a site simply by virtue of its being on the Internet. It seems unlikely that a pure text link, without more, would be considered a trademark infringement or give rise to a dilution claim, at least if it is a link to a home page, rather than a deep link.6 However, to date there has been little guidance from the courts on this issue. Most of the cases that have been brought in this area have settled, and therefore a definitive court ruling on the legality of linking has yet to be reached. However, the following cases do give some insight into the legal debate that courts will certainly have to rule on in the future. 

1. American Civil Liberties Union v. Miller
Some states have instituted laws that may afford some protection in this area. For example, the Georgia legislature passed a bill making it a crime for any person . . . knowingly to transmit any data through a computer network . . . if such data uses any trade name, registered trademark, logo, legal or official seal, or copyrighted symbol . . . which would falsely state or imply that such person... has permission or is legally authorized to use [it] for such purpose when such permission or authorization has not been obtained. 

Ga. Code Ann. ?16-9-93.1 (1996). This law has been challenged by the American Civil Liberties Union ("ACLU"), which claims that the law "impos[es] unconstitutional content-based restrictions." American Civil Liberties Union v. Miller, 977 F. Supp. 1228, 1230 (D. Ga. 1997). The court acknowledged that linking could lead to trademarks being co-opted for use as links on thousands of Web sites, and that such use "would definitely 'imply' to many users that permission for use had been obtained." Id. at 1233 n.5. Regardless of this, the court went on to reason that it had not been presented with any "compelling state interest that would be furthered by restricting the linking function." Id. The court then held that the ACLU would likely be able to successfully argue that the statute was both overbroad and vague, and therefore granted a preliminary injunction on implementation of the law. Id. 

2. Shetland Times Ltd. v. Wills
The first case to address the practice of linking was from the United Kingdom. In Shetland Times, Ltd. v. Dr. Jonathan Wills and Zetnews, Ltd., Court of Session, Edinburgh (Oct. 24, 1996), a Scottish newspaper, the Shetland Times, brought suit against a competing news organization, The Shetland News, based on the latter's linking to news stories contained on the Shetland Times site. The Shetland News site had no content of its own, but merely reproduced several of the headlines directly from the Shetland Times stories. These headlines were set up as links from which users would be linked directly to the story on the Shetland Times site. The Shetland News linked to the stories in such a manner that it was not clear that the stories were from the Shetland Times. Although no loss of monetary gain had been shown, the "clear prospect of loss of potential advertising revenue in the foreseeable future" was sufficient reason for the court to grant a temporary injunction. Id. However, this preliminary ruling was based on a theory of copyright infringement since the entire headline was copied,7 and did not address the issue of trademark infringement. The case was settled before a final ruling could be issued. The agreement provided that The Shetland News could continue providing links to Shetland Times' stories, but only if the link was accompanied by a designation, "A Shetland Times Story," and a Shetland Times masthead logo, both of which must be hyperlinks to the Shetland Times home page. Id. 

3. Ticketmaster Corp. v. Microsoft Corp.
A disagreement between two corporate powerhouses led to a battle that provided two very distinct interpretations of the nature of linking on the Internet. Ticketmaster, a company that sells tickets to a variety of entertainment events across the country, created a Web site to promote and offer its services. Microsoft provided hyperlinks from its Seattle Sidewalk Web site to an internal page of the Ticketmaster Web site which would enable users to buy tickets through the Ticketmaster site to certain events described in the Sidewalk Site. Ticketmaster brought suit claiming that Microsoft's use of hyperlinks without Ticketmaster's permission diluted the value of Ticketmaster's trademarks and was unfair competition in violation of both state and common law. Ticketmaster Corp. v. Microsoft Corp., No. 97-3055 DDP (D. Cal. filed Apr. 28, 1997).8 

Ticketmaster based its argument on the premise that because its Web site received "over 1 million visits and 12.9 million page views per month...[,] a link to Ticketmaster's web site [was] extremely valuable," Ticketmaster, No. 97-3055 DDP (D. Cal. First Amended Complaint filed May 8, 1997). Ticketmaster argued further that [b]y creating advertiser supported pages on its web site consisting solely of Ticketmaster's live event information and services without Ticketmaster's approval, and by prominently offering it as a service to their users, Microsoft is feathering its own nest at Ticketmaster's expense. It is, in effect, committing electronic piracy. In this narrow corridor of cyberspace, Ticketmaster must maintain control of the manner in which others utilize and profit from its proprietary name, marks and services, or face the prospect of a feeding frenzy diluting its content. 

Id. Ticketmaster went on to allege that the advertising revenue that Microsoft gained by providing a link to Ticketmaster's page "depriv[ed] Ticketmaster of favorable advertising business and opportunities." Id. 

In its response, Microsoft presented a significantly different viewpoint of the nature of linking on the Internet. They replied to what they deemed to be "illusory" complaints by arguing that 

Microsoft does not use Ticketmaster's Web Site. Microsoft does not access, incorporate or redistribute Ticketmaster Web Page documents. All Microsoft does is provide viewers of its own Web Pages with URLs for other Web Pages on the Internet, including some operated by Ticketmaster, that the viewer may find of interest. Whether or not the viewer accesses a Ticketmaster Web Page document is up to the viewer. Whether or not Ticketmaster displays the Web Page document to the viewer is up to Ticketmaster. Microsoft is not a party to the communication between the viewer and Ticketmaster. 

Ticketmaster, No. 97-3055 DDP, Microsoft's Answer ?45-46. Microsoft continued by contending that by creating a Web site, Ticketmaster had "assumed the risk" that other organizations would establish links to its page. Id. Further, because Ticketmaster promoted use of their Web site by Internet users, Microsoft claimed that Ticketmaster was estopped from bringing suit against parties who accessed its site. Id. Microsoft then went on to submit a counterclaim seeking declaratory judgment that it had not diluted Ticketmaster's trademarks or acted wrongfully. Id. 

As a result of this dispute, two very distinct theories regarding linking have emerged. One theory is territorial; the party establishing the link is cast as invading the territory of the linked Web page. The alternative provides a laissez-faire view of linking; the party creating the link does nothing more than allow the market of consumers (Web users) and suppliers (operators of the linked Web page) to determine whether access to the linked page will be utilized. It is unclear, however, which theory would have survived judicial examination. The parties reached a settlement whereby Sidewalk will only link to the Ticketmaster home page. 

B. Framing
Framing is a form of linking by which one Web site contains a hyperlink to another Web site that causes the linked site to be viewed inside a "frame." Portions of the original site, often including advertisements for the original site, generally remain present on the outside of the frame. This process generally has the effect of reducing and compacting the display of the linked page, which alters the way the page is viewed and may lead people to believe that the framed content originates from the original site. Framing cases are relatively rare, particularly in relation to trademark disputes. However, some recent cases bring to light potential legal issues related to framing. 

1. Washington Post Co., v. Total News, Inc.
One such case, Washington Post Co., v. Total News, Inc., 97 Civ. 1190 (PKL) (S.D.N.Y. complaint filed Feb. 20, 1997), recently ended in settlement. The defendant, Total News, Inc. ("Total News"), developed a Web site from which Web users could link to news stories located on the Web sites of several major news organizations. The link created a frame around the news articles that identified the defendant and included trademarked names of various news organizations as well as third-party advertisements. 

A group of television and print news organizations joined together to bring a suit against Total News. The plaintiffs alleged that Total News had "designed a parasitic Web site that republishes the news and editorial content of others' Web sites in order to attract both advertisers and users." Id. The fact that Total News used framing to display the plaintiff's news articles was of particular concern because an advertisement on one of Plaintiffs' sites, when seen through the totalnews.com window, is reduced in size, may even be totally obscured by the totalnews frame, and is forced to compete for the user's attention with the visual clutter of the totalnews.com frame, including other advertising - possibly including advertising for directly competitive products. 

Id. As a result, the plaintiffs brought claims of unfair competition, trademark dilution, and trademark infringement. However, prior to trial a settlement between the parties was reached. The terms of the agreement permitted Total News to continue linking to the plaintiffs' Web sites, but it was required to refrain from using framing technology. 

2. Journal Gazette Co. v. Midwest Internet Exchange
Two Midwestern newspapers are currently embroiled in a dispute similar to that in Total News. In Journal Gazette Co. v. Midwest Internet Exchange, 98-CV0130 (D. Ind. filed May 4, 1998), the defendants are operators of a Web site that allows users to link to news articles from a variety of sources, including the plaintiff's newspapers. As in Total News, the display on the defendant's page includes a frame around each article that includes advertisements and a banner logo for the Web site. The claims involved in this case include trademark infringement and unfair competition. According to the plaintiff's attorney, the plaintiff's only dispute the process of framing, not linking generally. In response to the suit, the defendant discontinued the use of frames on its site. 

3. Using Frames Technology for Criticism
A new framing technique has surfaced that may prove to be a source of future litigation: the use of framing to critique other Web sites. One Web site that has incorporated this framing style is McSpotlight, http://www.mcspotlight.org/, a Web site dedicated to criticizing the McDonald's restaurant chain. According to the site, "McSpotlight provides a frames based tour that allows web users to access McDonald's Web site live on one side of your screen while simultaneously displaying McSpotlight's detailed criticisms and comments on the other... The aim of this Guided Tour is to deconstruct McDonald's glossy and expensive image. By showing the image and the reality together, visitors can see exactly where, how and why McDonald's are deliberately misleading the public for their own gain." Corporations like McDonald's are not the only targets of this framing technique. For example, after seeing a Web site commending Tunisia's human rights' record at http://www.amnesty-tunisia.org/, Amnesty International set up a site of its own, called "Rhetoric vs. Reality," in which framing was employed, http://www.amnesty.org/tunisia. This site displays the pro-Tunisia site "bordered by frames with running rebuttal to the assertions made inside." 

C. Metatagging
Metatags are part of the HTML code of a Web site and are used to describe the contents of the Web site. Metatags are generally invisible to the user, but are visible to search engines, which are used to help users locate Web sites or information on the Web. "The more often a term appears in the metatags and in the text of the web page, the more likely it is that the web page will be 'hit' in a search for that keyword and the higher on the list of 'hits' the web page will appear." Brookfield, 1999 U.S. App. LEXIS 7779 at *16. The importance of this use cannot be overestimated as search engines are a primary means of browsing the Web, and therefore are an essential method of reaching potential customers. Sometimes a Web site will use someone else's trademark in its metatags for legitimate business reasons, but in a number of cases, people have used a competitor's trademarks in their metatags as a means of diverting traffic from the competitor's sites to their own site, and courts have granted preliminary injunctions in a number of these situations. 

1. Oppedahl & Larson v. Advanced Concepts
The first case raising the issue of using someone else's trademarks in metatags was filed by the law firm of Oppedahl & Larson regarding its own trademarks. The names "Oppedahl" and "Larson" were only used in the metatags, and not in the defendant's domain name or in the site itself. In this case, the court ordered the defendants to remove the plaintiff's mark from the site's metatags. Oppedahl & Larson v. Advanced Concepts, No. 97-CV-1592 (D. Colo. Dec. 19, 1997). 

2. The Playboy Cases
Not surprisingly, Playboy Enterprises, Inc. ("Playboy") has established a lucrative presence on the Web and its trademarks have often been used in a variety of ways on the Web by competitors who wish to capitalize on the "Playboy" name and logos. Playboy has, therefore, been at the forefront of a number of trademark cases involving the Internet. In Playboy Enterprises, Inc. v. Calvin Designer Label, 985 F. Supp. 1220 (N.D. Cal. 1997), the defendant used the marks "PLAYBOY" and "PLAYMATE" in its metatags as well as in part of its domain names and in the site itself. The court enjoined the defendant from using the trademarks in its metatags. See also Playboy Enter., Inc. v. AsiaFocus Int'l, Inc., No. 97-734-A, 1998 U.S. Dist. LEXIS 10359 (D. Va. Feb. 2, 1998). 

In its analysis, the court emphasized the blatant attempt by the defendant to profit from the good will that Playboy had developed in relation to those trademarks. Playboy, 985 F. Supp. at 17-21. Noting the similarity between the services offered through the defendant's Web site and those offered by Playboy, the court held that customer confusion was likely. Id. at 17-19. Further, the court found that defendant had willfully "blurr[ed] the distinctiveness" of Playboy's trademarks. Id. at 21. In particular, the court referred to the use of Playboy's trademarks as metatags as a "strategy epitomiz[ing]... `blurring;'" Id., and therefore the marks were in fact diluted. As a result of these violations, the court awarded Playboy $3,000,000 plus costs and attorneys' fees. Id. at 1. 

However, not every use of a trademark in a metatag is actionable. Playboy did not prevail in a recent suit against a former Playmate model, Terri Welles, who was Playmate of the Year in 1981. Playboy Enter., Inc. v. Welles, 7 F. Supp. 2d 1098 (D. Cal. 1998). In this case, Ms. Wells created a Web site under the URL http://www.terriwelles.com to promote her career on which she repeatedly referred to her status as a former Playboy model and used the terms "Playboy" and "Playmate," along with other words, within the keywords section of the metatags for her site. Id. at 1100-1101. According to the defendant, 11 of the 15 pages of the site included a disclaimer at the bottom of the page indicating that the site was not endorsed or sponsored by Playboy. 

In response to a motion by Playboy for a preliminary injunction, the court determined that Welles could employ the "fair use" defense. Id. at 1103. The court explained that the fair use defense "forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods." Id. at 1103 (citation omitted). Finding that Welles was merely describing her identity, and not "attempt[ing] to confuse the websurfer into believing that her site is a Playboy-related website," Id. at 1104, the Court found that the requirements of the fair use defense were met. Id. at 1104-1105. Therefore, Playboy Enterprises, Inc.'s motion for a preliminary injunction was denied, and that ruling was upheld on appeal. See Playboy Enter., Inc. v. Welles, 162 F.3d 1169 (9th Cir. filed Oct. 27, 1998). 

3. Brookfield Communications, Inc. v. West Coast Entertainment Corp.
The Ninth Circuit's very recent opinion in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 1999 U.S. App. LEXIS 7779 (9th Cir. filed April 22, 1999), provides the most authoritative discussion to date of whether the use of another's trademark in a Web site domain name or metatags constitutes infringement or dilution. In Brookfield, the plaintiff, Brookfield Communications, Inc. ("Brookfield"), developed and sold computer software with searchable databases related to the entertainment industry which were marketed under the trademark "MovieBuff." Id. at *2. The defendant, West Coast Entertainment, Corp. ("West Coast"), a video rental business, registered the domain name "moviebuff.com" for the purpose of providing its own searchable database of information about movies and other areas of entertainment. Id. at *5. Brookfield brought suit seeking an injunction against West Coast; the suit claimed that West Coast was infringing Brookfield's trademark rights through both its domain name and its use of metatags. Id. at *7. 

After determining that there was infringement based on the use of Brookfield's trademark in the domain name, the court turned to the metatag issue. Although the court did not think it likely that a consumer would be confused about whose site it had reached or think that Brookfield somehow sponsored the West Coast site, it instead based its finding of infringement on a form of confusion know as "initial interest confusion." Id. at *71, 72. The court stated that "by using "moviebuff.com or "MovieBuff" to divert people looking for "MovieBuff" to its Web site, West Coast improperly benefit[ed] from the goodwill that Brookfield developed in its mark." Id. The court explained this theory by analogizing the problem to the posting of misleading road markers: 

Using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store. Suppose West Coast's competitor (let's call it "Blockbuster") puts up a billboard on a highway reading - "West Coast Video: 2 miles ahead at Exit 7" - where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. 

Id. at 77-78. In the case at hand, the court feared that "a sizeable number of consumers who were originally looking for Brookfield's product w[ould] simply decide to utilize West Coast's offerings instead." Id. at 71-72. Due to the likelihood of initial interest confusion of this type occurring, the court allowed a preliminary injunction against West Coast. 

D. Keywords
A related area that is just beginning to receive some attention is the increasingly common practice whereby a search engine operator sells a company certain keywords or phrases that will trigger display of that company's banner ad when someone uses the keyword on that search engine. Sometimes the keywords that are sold are the trademarks of competing companies, which has recently given rise to some law suits. Once again, Playboy is at the forefront of these suits. It has filed suit against the Excite.com search engine for selling its "Playboy" mark as a keyword. Playboy Enter., Inc. v. Excite, (C.D. Cal. Filed 2/*/99). Another similar suit involved Excite.com selling the keywords "Estee Lauder" to a competing cosmetics retailer so that their ads would appear whenever someone searched using the name Estee Lauder. In response, Estee Lauder and three other cosmetics companies have filed suit against both Excite.com and the company that purchased the trademarked keyword. Estee Lauder, Inc. v. The Fragrance Counter, Inc., No. 99 Civ. 0382 RWS (S.D.N.Y. amended complaint filed March 5, 1999). In this suit Estee Lauder claims that the sale of its trademark as a keyword constitutes a trademark infringement and alleges that "its name and goodwill were used to 'pirate' browsers to a competitor's site." These cases are still pending. 

IV. CONCLUSION
The cases discussed in this article demonstrate that trademark law is likely to be significantly affected by developing technologies in coming years. While the basic principles of trademark law may be relied upon in analyzing cases and assisting clients, trademark lawyers will need to become more aware of the complexities of the Internet and the capabilities of those who use it. In addition, Web site operators will need to become more cognizant of how the technologies they employ affect the intellectual property rights of others. At this point, there is not much guidance for Web site operators as to whether activities such as linking and framing are permissible without the express consent of the trademark owner. If obtaining consent is not practical, Web site operators can minimize their risk by avoiding deep links and frames and using text links instead of trademarked logos to represent the link. 

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With special thanks to Martin Goldberg and Beth Colgan for their assistance with this article.