The Weak Link


Imagine, if you will, a fictional World Wide Web1 site: “Billy Bob’s Baseball Barracks.”2 The site is located in Billy Bob’s own domain3 and is made up of Billy Bob’s home page, which contains Major League Baseball team logos and links (either text or graphically based)4 to a page for each team (except the Yankees for which he devotes several pages of vitriol with numerous reasons for their removal from the Bronx–a curious exception to his love for all things starting with “B”). Each team page has links to other commercial sites that feature league standings, game and industry commentary, team statistics and player profiles, but the impression is that Billy Bob created the BBBB site and all linked WWW pages. In effect, Billy Bob’s site is only two pages deep. Navigating any further takes the viewer deep into other commercial sites. The commercial sites may be a little bit at fault. Once the viewer navigates deep into the site, the site credits and copyright notices get smaller and smaller. Upon very careful examination, it is clear that the linked pages were authored by another entity. Billy Bob has made a clever and professional-looking WWW site with plenty of links reflecting his love of baseball, barbecue hot links, and his many years at military school. Billy Bob will act as our example throughout this article, though, it’s not the first time; in school Billy Bob’s teachers always made an example of him.

Some History

During the majority of the life of the Internet, the Internet world was viewed as a cooperative community where documents and information were freely exchanged under an implied license as long as copyrights and copyright notices were respected by the user. Documents and programs were released to the public on a “shareware” or try-before-you-buy basis, or at least with the understanding that a document would be properly cited and credited. Copyrights were recognized by authors and users. The WWW was created in the same spirit. Links5–which merely point to Internet addresses, or, in the vernacular URLs (uniform resource locators)–provide a means to bring related and disparate information together with just the click of a mouse or arrow key. The graphical nature of the WWW, rather than its text-based companions in the E-mail, gopher and FTP world, has made it enormously popular with all types of individuals and businesses, making the use of the WWW more like a trip to a well-stocked magazine stand, and sometimes into the too-interesting world of Billy Bob. The cooperative and shareware notion of the Internet has now changed. One has only to look at the continuing proliferation of databases with subscriber-only areasto realize that the Internet no longer epitomizes an altruistic community.

Collateral issues now multiply at an alarming rate. Though I would like this article to cover each and every issue exhaustively, it will only examine WWW link issues. This article neither examines domain name disputes under trademark law,7 nor online service provider liability.8 This article also assumes that copyright law protects WWW databases, that they are more than “sweat of the brow” compilations.9 This article also assumes that when we examine links, we evaluate the link as it appears in the browser, not the underlying code. The underlying code which makes the text or graphic appear as a link in the browser (e.g., <A HREF="">Sample</A>) is non-protectible because of functional considerations, although the portion of text or the image source file used in the link code is the subject of this article but only dealt with, for simplicity’s sake, as it appears at the browser level. Finally, the copyright implications of caching–the temporary storage of WWW documents in a server, user, or Internet service provider computer–poses an interesting question but is not covered here.10

The analysis in this article uses current copyright and trademark law. Some commentators believe that there is a “law of cyberspace.” While etiquette (or “netiquette”) may govern the interpersonal conduct of persons using the Internet, we must still look to traditional, substantive areas of law that appear in the here and now. The notion of a “law of cyberspace” should be taken with a grain of salt. The Report of the Working Group on Intellectual Property Rights, authored by the Information Infrastructure Task Force, addressed this question with clarity, if not humor:

Finally, there are those who argue that intellectual property laws of any country are inapplicable to works on the NII or GII because all activity using these infrastructures takes place in “Cyberspace,” a sovereignty unto itself that should be self-governed by its inhabitants, individuals who, it is suggested, will rely on their own ethics–or “netiquette”–to determine what uses of works, if any, are improper. First, this argument relies on the fantasy that users of the Internet, for instance, are somehow transported to “chat rooms” and other locations, such as virtual libraries. While such conceptualization helps to put in material terms what is considered rather abstract, activity on the Internet takes place neither in outer space nor in parallel, virtual locations. Satellite, broadcast, fax and telephone transmissions have not been thought to be outside the jurisdiction of the nations from which or to which they are sent. Computer network transmissions have no distinguishing characteristics warranting such other-world treatment. Further, such a legal free-for-all would transform the GII into a veritable copyright Dodge City. As enticing as this concept may seem to some users, it would hardly encourage creators to enter its confines.11


A State Legislative Initiative and a Legal Oddity

Nearly every state has initiated legislation covering issues raised by the use of the Internet–most of them cover censorship.12 One of them may affect the way authors insert links into documents.The Georgia Computer Systems Protection Act,13 introduced by Georgia House of Representatives member Don Parsons (R-Marietta), makes it a misdemeanor

to transmit any data through a computer network or over the transmission facilities or through the network facilities of a local telephone network for the purpose of setting up, maintaining, operating, or exchanging data with an electronic mailbox, home page, or any other electronic information storage bank or point of access to electronic information if such data uses any individual name, trade name, registered trademark, logo, legal or official seal, or copyrighted symbol to falsely identify the person, organization, or representative transmitting such data or which would falsely state or imply that such person, organization, or representative has permission or is legally authorized to use such trade name, registered trademark, logo, legal or official seal, or copyrighted symbol for such purpose when such permission or authorization has not been obtained; provided, however, that no telecommunications company or Internet access provider shall violate this Code section solely as a result of carrying or transmitting such data for its customers.

Parsons has stated that the “bill has nothing to do with links. The bill is about using a name or a trademark to represent your page as being someone else’s.”14 A plain reading of the text indicates that an unauthorized WWW link to another’s site constitutes a criminal offense.15 Such misdirected legislation indicates that the legislators are clueless when it comes to the purpose and utility of the WWW. The WWW is actually a modern-day form of communication and citation and will now require link clearances not unlike publishing clearances. Rather than restrict the flow of information by restricting links, WWW content providers should grant access to users through a subscription system, but they should allow linking to at least the top page of the WWW site. Contrast the use of music for which there is a long-standing right of compensation for use with the established traditions of the Internet.

For the most part, the use of a trademark link is not to deceive the viewer, unless it is an outright misrepresentation or a variation on the bait-and-switch tactic (e.g., clicking on a link that indicates the linked-to site is about saving money and personal finance, when actually takes the viewer to a site about saving souls).16

At first glance it would seem that section 301(a) of the Copyright Act of 1976 preempts the Georgia Computer Systems Protection Act. It states that,

[o]n and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.17

But misrepresentation or deception is not part of a cause of action for copyright infringement.18 Nor is there preemption for the state law of fraud19 or passing off.20 The Copyright Act is only exclusive with respect to rights equivalent to any of the exclusive rights within the general scope of copyright; state law claims that rely on the misappropriation branch of unfair competition are not preempted.21 The Georgia Computer Systems Protection Act may survive copyright scrutiny only to succumb to a challenge from the First Amendment.22

On September 24, 1996, the American Civil Liberties Union of Georgia and thirteen other plaintiffs filed a lawsuit against Georgia Governor Zell Miller and Georgia Attorney General Michael Bowers in the United States District Court for the Northern District of Georgia23 challenging the constitutionality of the Georgia Computer Systems Protection Act. The plaintiffs seek a preliminary injunction and declaratory relief that the Act violates the First, Fourth, Fifth, Ninth, and Fourteenth Amendments, and the Commerce Clause of the United States Constitution as well as Articles 1, 3, 5, and 9 of the Georgia Constitution.

Billy Bob’s fate now hangs in the balance. The outcome of ACLU of Georgia v. Miller will have a direct bearing on Billy Bob’s future well-being.24 His use of unauthorized copyrights and trademarks as links in his WWW site may or may not implicate him in serious criminal activity; what we do know is that his use of those copyrights and trademarks will bring upon him civil troubles for which he will need answers.

Express Reverse Passing Off

Can it be said that Billy Bob is engaging in something similar to express reverse passing off?25 Express reverse passing off occurs when the defendant removes or obliterates plaintiff’s trademark and rebrands the item with defendant’s own trademark. Express reverse passing off violates section 43(a) of the Lanham Act as a false designation of origin.26 Such conduct is “wrongful because it involves an attempt to misappropriate or profit from another’s talents and workmanship.”27

The overall effect on viewing Billy Bob’s site is to make the viewer believe Billy Bob has authored a complete and detailed site. The linked-to pages are not rebranded unless he happens to have downloaded the pages, changed the names and legal notices, and cached the pages at his own site, in which case Billy Bob would not only commit express reverse passing off, but also copyright infringement. Even if he does not rebrand the pages, the total effect his page has on the viewer is that of a fully researched site where the viewer believes Billy Bob authored the entire contents. His actions are likely to cause confusion as to source and sponsorship thereby violating section 43(a) of the Lanham Act.28

Copyright Law

The Copyright Act of 197629 provides the weakest protection to textual content holders where their content is used as a link. But a link that uses a copyright-protected work, such as a photograph, logo artwork, or other work of art, would most certainly infringe the protected work. Billy Bob will become well acquainted with MLB’s lawyers from his use of team logo art. Copyright law presents a related issue where an author collects links: Will it qualify as a compilation capable of copyright protection?

Titles as Links

Titles to books, novels, magazines, articles and other information that provide a link to the content represented by the title appear with regularity on the WWW. Title links provide perhaps the best, most descriptive way to identify content; that is the very function of a title and it works relatively well. The Copyright Act does not mention titles by name, and as a matter of statutory construction, copyright law does not protect titles.30 Trademark laws and passing off provide better protection for titles. Those theories are dealt with elsewhere in this article.31

Short Phrases and Slogans as Links

Copyright law will not protect short phrases and slogans. Section 102(b) of the Copyright Act of 1976 states that “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Whilesection 102(b) does not explicitly prohibit copyright from covering short phrases and slogans, the requirement of minimal creativity will deny copyright protection to them.32 A copyright holder who finds portions of his text or slogan in a short, pithy link, would have no recourse under copyright law.

A link also acts as a type of label. A clothing label, for example, may identify the source of goods or may indicate the nature of the goods.33 A WWW link, much like a label, implicitly acts to identify content to which the user may want to view, and by activating that link, leads the user to the appropriate URL containing the content. The House Report on the Copyright Act of 1976 suggests that labels are protected under the pictorial, graphic and sculptural works category,34 but textual matter on labels should be classified as literary works and subject to copyright limitations.35A link containing a short phrase that designates or describes the article that it links to would earn no copyright protection under the long-standing Trademark Cases,36 which hold that the constitutional term “writings” do not include labels that designate or describe articles to which they are attached and that have no value separate from the articles, and no possible influence upon “science and useful arts.”37 The modern trend in establishing copyright protection is to require greater originality in labels than in other works.38 A short textual link, then, may not be protectible and not the subject of a valid infringement claim.

The Compilation of Links

Two interesting issues present themselves. First, will a collection of links constitute copyrightable subject matter? Second, will an output of various links created by a directory search–such as in Alta Vista39 or Yahoo!,40 respectively a listing service and search engine–constitute copyrightable subject matter?

A compilation is a work “formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term `compilation’ includes collective works.”41 A compilation qualifies for copyright, even where the author adds no new matter, solely because of the original effort spent in the process of compilation.42

Billy Bob’s Baseball Barracks–containing a carefully chosen collection of links that show a thematic relation–would qualify for copyright. The site exceeds the requisite originality so long as Billy Bob makes an independent selection and arrangement of links that entails at least a minimal degree of creativity.43

But what of collections that are dictated by factors not of the author’s making? The Feist court notes that “the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever.”44 If a database user merely asks for data displayed in a particular way (e.g., alphabetically), the resultant database can hardly be said to be copyrightable. A collection of links generated by a search engine using some form of database search statement of the WWW generates a list mechanically with no creativity provided by an author. The search universe is the WWW itself which is just made up of facts, not a proprietary database belonging to any one person or entity. Such computer generated output of random facts, alone, is not capable of copyright.

Trademark Law

What of trademarks, whether word or graphical in nature, that make up WWW links? Does the use of such a mark constitute a prima facie infringement, or can the user rely on some excuse or defense? Billy Bob’s has numerous excuses and defenses, most notably the First Amendment.45 In fact, his teachers invariably asked him, “Billy Bob, what’s your excuse today?”

The use of a link, which may contain a trademark, is an absolute necessity for navigating the WWW. What company would not want its trademark used as part of a link when it would mean greater access to the trademark holder’s WWW site, and perhaps increased sales of its products? Does this mean that there arises some form of license, a parody or satire defense, or some free speech right to use a trademark? It often depends on the good graces of the trademark owner.

Likelihood of Confusion

The test of trademark infringement in both common law46 and federal statutory trademark infringement47 is a “likelihood of confusion.” Minor variations of this test occur when examining an infringement of a federally registered48 or an unregistered trademark49 under the Lanham Act. The key question is: “Is the reasonably prudent purchaser likely to be confused not only as to source, but also as to sponsorship, affiliation or connection?”50 Competition between the parties is not necessary for a finding of likelihood of confusion.51

Traditional legal remedies are available for infringement of electronic use of trademarks. In the case of Playboy Enterprises Inc. v. Frena,52 the operator of a subscription bulletin board system transmitted photographs owned by Playboy. In some instances the pictures contained trademarks owned by Playboy, in other instances the trademarks were obliterated. The court found Frena guilty of infringement of Playboy’s trademarks and of committing unfair competition in violation of section 43(a) of the Lanham Act.

We must look to the aforementioned question of whether or not a prudent purchaser is likely to suffer confusion as to source, sponsorship, affiliation or connection.53 Billy Bob’s use of MLB trademark logos may well result in a judgment of trademark infringement pursuant to Playboy especially if the various teams have their own web sites. A much more difficult question arises over the use of names alone. Trademark infringement over the use of a team name in a link seems unlikely unless there is a crystal clear case of confusion. But that may not stop league lawyers or team counsel from pursuing an alleged infringer.54

Dilution of Trademarks

Will the use of a trademark link lead to the dilution of that trademark? Will Billy Bob’s irrational hatred of the Yankees tarnish the Steinbrenner-buffed Yankee image?

“Dilution” means the “lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of–(1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”55 Dilution includes blurring, which occurs when the unique link between that designation and a single source has been diluted or blurred, and tarnishment, where defendant’s unauthorized use dilutes by tarnishing or degrading positive associations of the mark which dilutes the distinctive qualities of the mark.

The Lanham Act was recently amended by the 1996 Federal Anti-Dilution Act to include a federal anti-dilution claim of a registered or unregistered famous mark. Section 43(c)(1) of the Lanham Act now states that the owner of a famous mark56 shall be entitled to “an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark….”57 The owner of the mark can also recover defendant’s profits, damages (including treble damages), and costs of the action,58 and a destruction order59 if the defendant “willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark.”60 The 1996 Federal Anti-Dilution Act also includes three defenses: fair use in comparative advertising, noncommercial uses, and all forms of news reporting and news commentary.61 The format of many WWW sites would seem to encompass these three defenses making the use of links incorporating trademarks a much less actionable activity.

The recent case of Hasbro, Inc. v. Internet Entertainment Group, Ltd.62 decided the issue of tarnishment under the 1996 Federal Anti-Dilution Act and briefly addressed the use of links. The defendant operated the adult-oriented Internet domain Hasbro, the publisher of the Candy Land board game and owner of the trademark registration since 1951, complained that defendant’s use of the name in its site diluted the value of Hasbro’s trademark. The court issued a preliminary injunction against Internet Entertainment Group, and, perhaps recognizing the value and problems inherent in a direct link from the old site to the newly named adult site, forbid the defendants from using such a direct link. The order requires the defendants to program the site such that users would not have the use of a link, but would have to type in the new site address.

Billy Bob’s greatest accomplishment will be in tarnishing the image of the Yankees after years of enlighted Steinbrenner ownership. Luckily for Billy Bob, the 1996 Federal Anti-Dilution Act will save him from his own actions. The noncommercial nature of Billy Bob’s Baseball Barracks will provide him with a defense under the Act.

Free Speech and Commercial Speech

Can the author of a link invoke a First Amendment defense claiming use of the trademark was for some social or commercial message? Here’s where Billy Bob might get a little testy. After all, no one can doubt his credentials as a patriot and he’s just itching to invoke the First Amendment.

The creator of WWW links that use trademarks can make a strong First Amendment defense to a claim of trademark infringement. The First Amendment covers commercial speech.63

If the use is commercial (e.g., the transformation of MUTUAL OF OMAHA into MUTANT OF OMAHA with printing on T-Shirts) the free speech defense is rejected;64 a link from a commercial WWW site may not qualify under this rationale, and plaintiff’s trademark property right will prevail over defendant’s free speech right.

Many WWW sites contain content classified as purely communicative. L.L. Bean found its catalog and trademarks used in a prurient parody published in High Society magazine. The court found that Maine’s anti-dilution statute violated the First Amendment as the magazine did not use the plaintiff’s trademarks to identify or market goods or services, despite the fact that it was used in an obscene parody, but solely to identify the owner of the trademark as the object of its parody.65 A First Amendment defense will fail when trademarks are used in most other pornographic uses where the use tarnishes the trademark.66

Trademark law should not silence free speech sites. Some trademarks would seem to be tarnished by their use in such sites, but the tarnishment is the result of ideas conveyed and the remedy is not to silence but to rebut the ideas.

In contrast, the use of a trademark in a message disseminated in traditional communications media–newspaper, magazine, radio, television–will find free speech protection when weighed against possible consumer confusion and deception. The same should be true for the Internet.

The distinction then would seem to be the content of the medium. A commercial WWW site incorporating a WWW link containing a trademark, absent some comparative advertising purpose, would not receive protection through the First Amendment as in the MUTANT OF OMAHA case, however, a site that is purely communicative, which may use the mark in the communication of ideas, will enjoy protection as in L.L. Bean. Billy Bob may cloak himself in the First Amendment and win, but he would be wise to maintain his site on a totally noncommercial basis.

Parody and Satire

Links containing trademarks, whether they link to the trademark owner’s site or to a site that criticizes or parodies the mark or the company, occur frequently on the WWW.67 Many of the critical and parody sites also contain cease and desist letters from attorneys for trademark owners; most of them, by their complete and utter lack of humor, are humorous in and of themselves (certainly the content owners should hire these web page creators68).

A trademark infringement suit founded on likelihood of confusion which raises a parody defense is not so much a defense as saying that customers are not likely to be confused as to source, sponsorship or approval. A “parody” defense is successful because there is no confusion. Conversely, confusion will negate the shield of parody. One recent example of a WWW site that has spawned a parody is the much-ballyhooed Slate and the anagram parody Stale.69

Remember Billy Bob’s aversion to the Yankees? Billy Bob’s hate-filled pages mark a new low point in fan paranoia ascribing to the Yankees the death of baseball and the rise of free agency. As trademarks go, the YANKEE name and logo count among the most famous in baseball, if not in all commerce. Can the Yankees assert a claim against Billy Bob? There is no doubt that Billy Bob’s use of the marks degrade Yankee and MLB trademarks. But Billy Bob is running a noncommercial WWW site. As of this writing, no court has ruled on a defense of noncommercial use under the new 1996 Federal Anti-Dilution Act.70 State anti-dilution statutes have also fared poorly because of the First Amendment. The L.L. Bean case comes to mind:

If the anti-dilution statute were construed as permitting a trademark owner to enjoin the use of his mark in a noncommercial context found to be negative or offensive, then a corporation could shield itself from criticism by forbidding the use of its name in commentaries critical of its conduct.


The freedom to link and the ability to use short descriptive word and graphic links benefits all users of the World Wide Web. The very purpose of the WWW is undercut by the Georgia legislation. At the very least, all linking to top (home) pages should be encouraged. Links to underlying pages should be allowed if not protected by a system asking for a user name and password.

Links containing text should be allowed because of the constitutional limits of copyright law. Use of links containing copyright images and trademarks not owned by the link creator should be discouraged; normal copyright and trademark laws should control. If the link creator can prove noninfringement or successfully assert a defense, the courts should allow the use of the links.

And what became of Billy Bob? After his tangle with MLB and Yankee attorneys he closed down Billy Bob’s Baseball Barracks, but still operates under the same modus operandi; his new site, Billy Bob’s Barrel o’ Bathing Beauties, has already attracted the attention of Playboy’s attorneys.


1. Hereinafter abbreviated as “WWW.”

2. BILLY BOB, BILLY BOB’S BASEBALL BARRACKS and the Billy Bob character are trademarks of Richard J. Greenstone. Stay tuned for “Billy Bob’s Barbecue Barracks,” a sauce-stained epic on trade dress issues in the restaurant business.

3. The Billy Bob computer server, Bubba, is located in his home state, somewhere in the Rockies, where to his regret, he never gets to fish for marlin. Billy Bob loves baseball; just about his entire life revolves around it and the BBBB–Billy Bob’s Baseball Barracks. His wife, Babe, whom he met at a militia movement meeting and an angel of a woman and brewer of fine beers, has asked him to seek professional help. He consulted a padre but the advice and penance drove him deeper into baseball: Billy Bob wears only red or white socks. He has two children, twins, one of which is a giant (Baby), the other a brave athletic(Bridget). He has several pets and birds: a tiger cub, which constantly dodges the orioles, blue jays and cardinals Billy Bob keeps in the house, and a dog named Astro. Legend has it that Billy Bob is descended from royalty but he knows better: His maternal grandmother was an Indian who married a mariner, his paternal grandfather started out as a ranger and then lost his way and became apirate. Billy Bob’s favorite sandwich: Philly cheese steaks.

4. WWW links appear as either text or graphics. The link text is usually set off from surrounding text by an underline and color, usually blue. A link graphic may or may not contain some indication that it is a link; sometimes a narrow line circumscribes the graphic in the same color that is used for links throughout that particular WWW page.

5. I use the word “link” instead of the commonly used word “hyperlink”; I found that too much coffee and too much “hype” while writing make a terrible combination. “Hot links” suffer from the same comparison but for reasons having more to do with barbecue, Billy Bob’s favorite!


7. See also Carl Oppedahl, Internet Domain Names that Infringe Trademarks, NEW YORK L.J., Feb. 14, 1995, at 6; Stephen J. Davidson and Nicole A. Engisch, `Trademark Misuse’ in Domain Name Disputes, THE COMPUTER LAWYER, Vol. 13, No. 8, August 1996, at 13.

8. See also REPORT OF THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS, INTELLECTUAL PROPERTY AND THE NATIONAL INFORMATION INFRASTRUCTURE 114 (1995) [hereinafter NII]; Religious Technology Center v. Netcom On-Line Communication Services, No. 95-20091 (N.D. Cal.) (verified first amended complaint filed March 3, 1995). Netcom ultimately settled with the Church of Scientology and Netcom agreed to issue a set of intellectual property guidelines.

9. Feist Publications, Inc. v. Rural Tele. Serv. Co., 499 U.S. 340 (1991) [hereinafter Feist].

10. See also Eric Schlachter, Cache-22, INTELLECTUAL PROPERTY, Summer 1996, at 14, supplement to THE RECORDER.

11. NII, supra note 8, at 15.

12. The Electronic Frontier Foundation maintains a comprehensive list with links to current legislation initiatives.

13. H.B. No. 1630 (1996) (enacted July 1, 1996) Act 1029, GA. CODE ANN. § 16-9-93.1.

14. Rose Aguilar, Georgia OKs “Net Police” Law, CNET, Apr. 19, 1996.

15. The act also makes it a an offense to use a “handle” in place of a real name in an electronic mail address. Nearly every person using electronic mail in the United States, including the President of the United States, violates the Georgia Act. Any interested reader can write the President at

16. One must ask, “What are the damages?” outside of the outrage felt during a session of browsing the WWW.

17. 17 U.S.C.S. § 301(a) (Law. Co-op. 1994 & Supp. 1996).

18. Nash v. CBS, Inc., 704 F. Supp. 823, 832 (N.D. Ill. 1989), aff’d, 899 F.2d 1537 (7th Cir. 1990).

19. Allied Artists Pictures Corp. v. Rhodes, 496 F. Supp. 408 (S.D. Ohio 1980), aff’d, 679 F.2d 656 (6th Cir. 1982).

20. Warner Bros. v. American Broadcasting Cos., 720 F.2d 231, 247 (2d Cir. 1983) (fictional character Ralph Hinkley of The Greatest American Hero dissimilar to Superman).

21. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 918-19 (2d Cir. 1980).

22. See infra notes 63 to 66 and accompanying text.

23. ACLU of Georgia v. Miller, No. __________ (N.D. Ga. filed Sept. 24, 1996).

24. See Supplement to this article to be distributed at the Eighth Annual Southern Regional Entertainment & Sports Law Seminar, Nov. 12-16, 1996, San Juan, Puerto Rico.

25. See Borchard, Reverse Passing Off: Commercial Robbery or Permissible Competition?, 67 TRADEMARK REP. 1 (1977), for an explanation of the different types of passing off: Express passing off is X’s goods sold with Y’s trademark; express reverse passing off is Y’s goods resold with X’s trademark; implied passing off is X’s goods sold using photograph or sample of Y’s goods; implied reverse passing off is Y’s goods resold with trademark removed.

26. John Wright, Inc. v. Casper Corp., 419 F. Supp. 292, 191 U.S.P.Q. 369 (E.D. Pa. 1976), aff’d in part and rev’d in part, 587 F.2d 602, 199 U.S.P.Q. 705 (3d Cir. 1978) (Uncle Sam penny banks).

27. Smith v. Montoro, 648 F.2d 602, 607, 211 U.S.P.Q. 775 (9th Cir. 1981) (removal of actor’s name from credits and substitution of another actor’s name).

28. See infra notes 45 to 54 and accompanying text.

29. Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 (codified at 17 U.S.C.S. §§ 101-1010 (Law. Co-op. 1994 & Supp. 1996)).

30. Duff v. The Kansas City Star Co., 299 F.2d 320 (8th Cir. 1962); Becker v. Loew’s, Inc., 133 F.2d 889 (7th Cir. 1943); Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 70 F.2d 310 (2d Cir. 1934); Wilson V. Hecht, 44 D.C. App. Rep. 33 (D.C. Cir. 1915); Arthur Retlaw & Assocs., Inc. v. Travenol Labs., Inc., 582 F. Supp. 1010 (N.D. Ill. 1984); Affiliated Enters., Inc. v. Rock-Ola Mfg. Corp., 23 F. Supp. 3 (N.D. Ill. 1937); Clamage Indus., Ltd. v. Glendinning Cos., Inc., 175 U.S.P.Q. 362 (TTAB. 1972).

31. See infra notes 25 to 28 and 45 to 71 and accompanying text.

32. Arica Inst., Inc. v. Palmer, 770 F. Supp. 188, 191-92 (S.D.N.Y. 1991), aff’d, 1992 U.S. APP. LEXIS 16,694 (2d Cir. 1992); Kanover v. Marks, 91 U.S.P.Q. 370 (S.D.N.Y. 1951); Smith v. Muehlebach Brewing Co., 140 F. Supp. 729 (S.D. Mo. 1956). See also 37 C.F.R. § 202.1(a) (1959), Copyright Office Regulations under the 1909 Act, which provided that short phrases such as names, titles and slogans are not subject to copyright protection. The current regulations can be found at

33. Copyright Office Circular No. 46 (Mar. 18, 1941). Subsequent circulars do not provide a definition.

34. H.R. Rep. No. 1476, 94th Cong., 2d Sess. 65, reprinted in 1976 U.S.C.C.A.N. 5679.

35. See 1 M. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT § 2.08[G][2] (1994).

36. 100 U.S. 82, 25 L. Ed. 556 (1879); see also Higgins v. Keuffel, 140 U.S. 428 (1891).

37. Dow Jones & Co. v. Board of Trade, 546 F. Supp. 113 (S.D.N.Y. 1982).

38. See Rochelle Asparagus Co. v. Princeville Canning Co., 170 F. Supp. 809 (S.D. Ill. 1959); Barton Candy Corp. v. Tell Chocolate Novelties Corp., 178 F. Supp. 577 (E.D.N.Y. 1959); Forstmann Woolen Co. v. J.W. Mays, Inc., 89 F. Supp. 964 (E.D.N.Y. 1950). But cf. Drop Dead Co. v. S.C. Johnson & Son, Inc., 326 F.2d 87 (9th Cir. 1963); Abli, Inc. v. Standard Brands Paint Co., 323 F. Supp. 1400 (C.D. Cal. 1970) (minimal originality standard applied).



41. 17 U.S.C.S. § 101 (Law. Co-op. 1994 & Supp. 1996).

42. E.F. Johnson Co. v. Uniden Corp. of Am., 623 F. Supp. 1485, 1500 (D. Minn. 1985).

43. Feist, supra note 9, at 347.

44. Id. at 362.

45. See infra notes 63 to 66 and accompanying text.

46. McLean v. Flemming, 96 U.S. 245 (1878); American Steel Foundries v. Robertson, 269 U.S. 372 (1926).

47. Safeway Stores, Inc. v. Safeway Properties, 307 F.2d 495 (2d Cir. 1962).

48. Lanham Act § 32, 15 U.S.C.S. § 1114(1)(a) (Law. Co-op. 1991 & Supp. 1996), states “which such use is likely to cause confusion, or to cause mistake, or to deceive;…”

49. Id. § 43(a), 15 U.S.C.S. § 1125(a) (Law. Co-op. 1991 & Supp. 1996), states which “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association….”

50. 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24.01[1] (1993) [hereinafter J. THOMAS MCCARTHY]; see Wendy’s International, Inc. v. Big Bite, Inc., 576 F. Supp. 816, (S.D. Ohio 1983).

51. Standard Oil Co. v. Standard Oil Co., 56 F.2d 973 (10th Cir. 1932).

52. 839 F. Supp. 1552 (M.D. Fla. 1993); see also Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass’n, 693 F. Supp. 1080 (S.D. Fla. 1988), modified, 881 F.2d 983 (11th Cir. 1989),remanded, 895 F.2d 711 (1990) (interception of cable television programming broadcast via satellite which appropriates trademarks and trade names in a manner likely to cause confusion is unfair competition in violation of 43(a) of the Lanham Act); Pacific & Southern Co. Inc. v. Satellite Broadcast Networks Inc., 694 F. Supp. 1575 (N.D. Ga. 1988); Sega Enterprises Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994) (preliminary injunction entered preventing bulletin board operator from uploading and downloading of unauthorized copies of Sega’s video games; the transferred games would cause confusion on the part of third parties who may see the copied games after they enter the stream of commerce).

53. The quality of the BBBB site is irrelevant to the determination of confusion.

54. See Misha Glouberman, Trademark Wars on the Web, where he cites the example, now removed from the WWW, of the NFL sending a cease and desist letter asking that the web site “cease all further mention if [sic] `NFL’ in any context” [hereinafter Glouberman].

55. Lanham Act § 45, 15 U.S.C.S. § 1127 (Law. Co-op. 1991 & Supp. 1996).

56. Id. § 43(c)(1), 15 U.S.C.S. § 1125(c)(1) (Law. Co-op. 1991 & Supp. 1996), states that,

[i]n determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to–(A) the degree of inherent or acquired distinctiveness of the mark;

(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

(C) the duration and extent of advertising and publicity of the mark;

(D) the geographical extent of the trading area in which the mark is used;

(E) the channels of trade for the goods or services with which the mark is used;

(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;

(G) the nature and extent of use of the same or similar marks by third parties; and

(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

57. Id. § 43(c)(1), 15 U.S.C.S. § 1125(c)(1) (Law. Co-op. 1991 & Supp. 1996).

58. Id. § 35(a), 15 U.S.C.S. § 1117(a) (Law. Co-op. 1991 & Supp. 1996).

59. Id. § 36, 15 U.S.C.S. § 1118 (Law. Co-op. 1991 & Supp. 1996).

60. Id. § 43(c)(2), 15 U.S.C.S. § 1125(c)(2) (Law. Co-op. 1991 & Supp. 1996).

61. Id. § 43(c)(4), 15 U.S.C.S. § 1125(c)(4) (Law. Co-op. 1991 & Supp. 1996).

62. No. C96-130WD (W.D. Wash. Feb. 9, 1996) (order granting preliminary injunction).

63. Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 48 L. Ed. 2d 346, 96 S. Ct. 1817 (1976). Perhaps with some bias, J. Thomas McCarthy, author of MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, writes that “a firm’s trademark is the most important element of commercial speech which is communicated to customers. All other elements of advertising revolve around, relate to and are symbolized by the trademark.” 3 J. THOMAS MCCARTHY, supra note 50, § 31.37[1] (citation omitted).

64. Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 231 U.S.P.Q. 963 (D.C. Neb. 1986), aff’d, 836 F.2d 397, 5 U.S.P.Q.2d 1314 (8th Cir. 1987) (use of MUTUAL OF OMAHA parody MUTANT OF OMAHA on coffee mugs and T-shirts protesting nuclear weapons); Reddy Communications, Inc. v. Environmental Action Found., Inc., 199 U.S.P.Q. 630 (D.D.C. 1977) (preliminary injunction denied), final decision denying relief, 477 F. Supp. 936, 203 U.S.P.Q. 144 (D.D.C. 1979) (use of REDDY KILOWATT trademark in booklet criticizing electric utility policies).

65. See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 1 U.S.P.Q.2d 1753 (1st Cir.), cert. denied and appeal dismissed, 483 U.S. 1013, 97 L. Ed. 2d 753, 107 S. Ct. 3254 (1987) (no other way to parody plaintiff’s product except by use of plaintiff’s trademark allowed under First Amendment).

66. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 U.S.P.Q. 161 (2d Cir. 1979) (DALLAS COWBOYS CHEERLEADERS mark infringed by use in pornographic film; parody and satire defense also rejected).

67. Glouberman, supra note 54.

68. See Jonathan Woodward, Acme Page.

“What the heck is `@cme’?” Well, it’s a cute way of avoiding using a WB trademark. Eventually, I hope to create my own cartoon-derived universe to write in, and “@cme” may be the title under which I do so. Plans are still vague, however. It’s pronounced either “AT-mee” or “AK-mee”, depending on how close you’re standing to a WB lawyer.

Anonymous, [Humorless Company] Warranty, and the response attributed to a McDonnell Douglas company attorney.

69. These are those sites (with an acknowledgment to Levi Strauss & Co., and the advertisement for their new pant line Slates): Slate and Stale.

70. Congress made it very clear that the exemption of noncommercial use was included to “address[] legitimate First Amendment concerns espoused by the broadcasting industry and the media….” H.R. No. 104-374 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031, 1035.

71. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33, 1 U.S.P.Q.2d 1753 (1st Cir.), cert. denied and appeal dismissed, 483 U.S. 1013, 97 L. Ed. 2d 753, 107 S. Ct. 3254 (1987).