A recent new wheeze for attracting more eyeballs for website banner ads has given rise to litigation in the Virginia Courts.
Topic: Advertising On-Topic: Advertising On-Line
Who: The New York Times Company, The Washington Post, Chicago Tribune Interactive and Others and The Gator Corp.
Where: District Court of Alexandria, Virginia, USA
When: July 2002
On-line marketing specialist Gator promoted a service whereby it could arrange for "pop up" banner adverts for its clients to appear on websites of the client's competitors. This was done by means of Gator software which, when installed on a web user's pc, facilitated adverts popping up on screen when the user visited any one of the sites of 12 major on-line publishers. When users visit those websites, the software runs in the background and, as reported by New York law firm Hall Dickler Kent Goldstein & Wood, delivers pop-up advertisements on top of the site's existing content.
The owners of those 12 websites issued proceedings against Gator in the US District Court in Alexandria, Virginia. They claimed that the operation of Gator's software interfered with the display of the their web pages, principally by obscuring the banner advertising placed by others who had paid for the right to have that advertising appear on the website in question.
The action was for breach of copyright and trademarks, depriving the website owners of revenue. It was also argued that damage would be caused as a result of visitors to the claimants' website thinking, as a result of seeing pop-up banner ads over which the website has had no control, that the website owner in question was guilty of either journalistic bias or incompetence. In this way, further grounds for relief were asserted in the form of unfair competition and unjust enrichment. Judge Claude Hilton ruled against Gator and barred it on a temporary basis from advertising on the websites of the 16 claimants.
Why this matters:
With the continuing "Cinderella" status of banner advertising on-line, interactive marketers are devising ever more intricate and intrusive ways of getting in front of web site visitors. This creativity is giving rise to a further area of potential legal dispute by way of potential patent infringement claims.
Recently it was reported that Exit Exchange had filed with the US Patent & Trademark Office an application to patent a "pop-under" advertising technique. Unlike web pop-ups, which interrupt web surfing, pop-under advertising messages wait in the background until the site visitor has closed his original window. It is at that point that the "pop-under" advertising message is seen.
Back at the Gator proceedings, it is interesting to speculate as to whether a copyright infringement action by a web site owner in the UK against the provider of Gator-style software would succeed. Unless the Gator software in question actually stores and reproduces the content of material on the "host" website as part of the "pop-up" process, then there is unlikely to be a copyright infringement in the sense currently understood in the UK or the rest of Europe.
What about the EU Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society? The UK, like all other EU member states, is required by 22 December 2002 to implement that directive. Amongst other things, the new law will introduce a brand new right of "communication to the public". This right will be infringed by, for example, the making available of the work in question on a web site and thus communicating it to the public, without the prior approval of the copyright owner.
Even under this new regime, however, which is currently unlikely to be with us much before mid summer 2003, it is equally hard to see how there could be a clear infringement of the "communication to the public" right. This is after all a right to prevent others communicating one's work to the public on-line, rather than a right to prevent one's material on-line being obscured by third parties without due authorisation.
Looking at other possible causes of action, although recent cases in Europe have shown that unauthorised links between web sites can give rise to database right infringement by way of the unauthorised extraction or utilisation of parts of a third party web site, again this is not happening in a "pop-up" context.
Pausing to consider moral rights, these normally operate where there is some form of damage or distortion to the copyright work itself, rather than it simply being obscured by some other material.
One is left therefore, with the possibility of the likes of Gator being subjected to a "passing off" claim here in the UK in respect of the use of similar software. The argument here will be that there was a potentially damaging representation being made as to there being a connection between the pop-up advertisement and the products it was advertising and the "host" web site owner. Similar arguments have been run in a slightly different context in respect of unauthorised newspaper "inserts". However, the tort of passing off has historically been notoriously difficult to establish and it may be that by far the simplest way of dealing with such activity in the UK would be by way of the Computer Misuse Act.