Important U-Haul pop-up decision should help clarify legal landscape

The US District Court for the Eastern District of Virginia has published its full analysis of U-Haul International Inc v Inc (see Pop-up advertiser cleared of infringement claims). It is hoped that publication of the decision will help to establish a legal framework for the pop-up ad industry.

WhenU produces and distributes a pop-up advertising program called SaveNow. This program displays advertisements for U-Haul's competitors if a WhenU user accesses the U-Haul website. U-Haul brought suit against WhenU alleging, among other things, Lanham Act violations, copyright infringement, misappropriation, interference with prospective business advantage and unjust enrichment.

The court granted WhenU's motion for summary judgment and subsequently dismissed the claims against it. The court found that WhenU did not:

  • violate the Lanham Act as it does not 'use' the U-Haul trademark in commerce within the meaning of the act - the court compared SaveNow to an email program that simply pops up a window when a new email is received;

  • infringe U-Haul's trademark by using its URL (uniform resource locator) in SaveNow's algorithm because such use does not display the trademark in a commercial context;

  • create a substantial risk of consumer confusion because its advertisements are separate and distinct from U-Haul's website;

  • modify U-Haul's website or create infringing derivative works with its advertisements because pop-up windows are distinct from the U-Haul site and are transitory in nature; or

  • infringe U-Haul's copyrighted work.

Significantly for future cases in this area, the court noted that a user retains not only the right to decide what software to download to his/her computer, but also the right to control how items are displayed on his/her computer.

Jerrold B Spiegel, Frankfurt Kurnit Klein & Selz PC, New York

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