TABLE OF CONTENTS
I. Overview
    A. Methods of Linking
    B. Framing
    C. Framing as a Means For Linking Web Sites
II. The TotalNews Controversy
III. Federal Trademark Infringement
    A. Distinctiveness
    B. Commercial Use in Interstate Commerce
    C. Likelihood of Confusion
    D. The Polaroid Factors
        1. Strength of the Mark
        2. Degree of Similarity Between the Conflicting Marks
        3. Proximity of the Goods and Services
        4. Likelihood that the Plaintiff Will Bridge the Gap Between the Markets
        5. Actual Confusion
        6. Junior User's Good Faith In Choosing Its Mark
        7. Quality of the Junior User's Product
        8. Sophistication of Buyers
    E. High Likelihood of Consumer Confusion
IV. Trade Dress Infringement
    A. The Knitwaves Case and the Landscape Case
    B. Distinctiveness
    C. Functionality
V. Federal Copyright Infringement
    A. Section 102 Subject Matter of Copyright
        1. Originality
        2. Fixation
    B. Direct Copyright Infringement
    C. Right to Prepare Derivative Works
    D. Direct Infringement: The Hardenburgh Case and the WebbWorld Case
    E. Digital Browsing and the Fair Use Defense
        1. Purpose and Character of the Use
        2. Nature of the Copyrighted Work
        3. Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work As a Whole
        4. Effect of the Use Upon the Market or Value of the Copyrighted Work
    F. Implied License and Disclaimers
    G. Preventive Measures
VI. Conclusion
VII. Appendix
Exhibit A
Exhibit B
Exhibit C
Exhibit D
Exhibit E
Exhibit F
Exhibit G
 
 

Spurred by technological leaps and bounds, the Internet has become an information superhighway through which large amounts of data are transferred.[1] Because the Internet allows businesses to advertise and disseminate information to the widest audience at the lowest cost, it has become an important tool of commerce. Additionally, the Internet allows the average person to search and locate information quickly without ever having to run to a library or make a phone call. In fact, the information a person desires may be just a few clicks away.

The typical Internet user navigates from one web site to another by typing in the URL[2] assigned to that particular site. For example, if an Internet user wishes to go to the University of San Francisco web site, he may type in http://www.usfca.edu. Alternatively, he may navigate between web sites through the use of "hyperlinks." A hyperlink may appear to the user on his current web page as an underlined or highlighted phrase or an image. Typically, there are numerous hyperlinks displayed on a web page. When a person clicks on one of the hyperlinks, the web browser software automatically retrieves the corresponding web document and creates a copy which is then displayed on the screen. In effect, the web browser software allows Internet users to jump from one site to another, enabling them to easily follow relationships between documents without having to memorize long lists of addresses or to manually type in a URL. It is this ubiquitous feature of hyperlinking that allows Internet users to easily access information on the electronic superhighway.

A vendor who is able to advertise his goods to the widest audience is more likely to sell his products. This general marketing principle is applicable to a vendor who is conducting business on-line. Allowing web site publishers to place another vendor's hypertext link on their current site is analogous to placing a free advertisement on that current site. Assuming the current site has not been cached,[3] a consumer who activates the hyperlink to the vendor's site generates a "hit"[4] for the vendor.[5] The more hits the vendor receives, the greater the likelihood of a transactional sale. Additionally, the fact that a web site receives a great number of hits makes that site more attractive to advertisers who wish to place an advertisement on a vendor's web site. As a result, on-line vendors do not normally place any limitations on how their sites are linked. In fact, they generally welcome linkage from other web site publishers.[6]

Online vendors may also attempt to generate sales by purchasing advertising space at an external web site. Under a cost-benefit analysis, if the amount expended for advertising produced a profit that exceeded the cost for the ad, the advertising purchase was a wise investment. On the contrary, if the ad did not produce a profit as intended, the vendor made an unsound business decision.[7] Alternatively, external factors beyond the vendor's control such as consumer preference could have changed. But what if the ads were never shown at the external site in the first place because they were blocked off by a third party?

Currently, the technology of "framing" allows a web site to: (1) pull in the contents of an external site into the local site; (2) "chop" up the contents of the external site into different "frames" or parts; and (3) display only the frames that are beneficial to the framing site (see Exhibit A). When an advertisements is blocked off by a frame, an advertiser who paid to advertise at an external (framed) site may cease to purchase advertising space from that external site if the framing activities of another web site prevent the advertisement from reaching prospective viewers . From the perspective of the framed site, this will result in a loss of advertising revenue. When framing is used by a web site to pull content from other sites, strip that content of surrounding advertisements and source identifiers, and display the content as part of its own web site, the activities of the framing site might constitute copyright, trademark and trade dress infringement, as well as violate state unfair competition laws.

    A. Methods of Linking

To ascertain the legal ramifications of framing, an understanding of the two primary methods of linking, hypertext linking and inline linking, is helpful. A hypertext reference (HREF) link is the most basic form of hyperlink. It appears onscreen as a highlighted citation or phrase that is differentiated from regular text by a special color or format such as underlining.[8] When a viewer activates a hypertext link by clicking his or her mouse on the highlighted text, the web browser software retrieves the corresponding document from the external site and creates a copy which is then displayed onscreen.[9] Any connection with the local site (the linking site) is simultaneously terminated after the browser has established a connection with the external site. This type of linking is called "linking out."

An inline link allows a web site designer to inline or "pull in" a graphical image from an external site and incorporate it as part of the local onscreen display. For example, if an external site contains a photograph, it can be inlined into the local web site and shown as part of the current display. This type of linking is called "linking in." In contrast to a hypertext link where there is an immediate termination with the local site after connection to the external site, the local site remains current when the inlined image is displayed.

    B. Framing

The use of frames and framing are two different concepts. Frames allow a web site designer to divide her web page into multiple regions or sections that can operate independently of each other. Frames are often used to create a fixed region which may contain text, icons, graphics, hypertext links, and inline links that a viewer always sees.[10] In the Internet context, frames are used by many web sites to create multiple "windows" on the viewer's computer screen.[11] Each frame, or window, may display a different web page.[12] The primary frame may be utilized as a region for disseminating information. Other secondary frames may be utilized for displaying the web site's logo, hypertext links to external sites or to other sections of the same web site that are not visible onscreen, and an advertising banner (see Exhibit B). The use of frames is not unlawful and gives web site designers and viewers the added advantage of functionality. However, framing as a means of linking web sites may raise legal problems.

    C. Framing As a Means For Linking Web Sites

Framing, as used in conjunction with inline links, allows a web site author to incorporate or pull in an entire external site, or portions thereof, and surround it with frames of his or her own creation.[13] After inlining or "pulling in" the external site, the surrounding frames may cover up the external site's advertising and trademark and replace them with the contents of the framing site. In addition, the Uniform Resource Locator (URL)[14] displayed in the web browser is the URL of the framing site, even though the contents of the external site are simultaneously displayed. Thus, it is possible to inline or "pull in" the contents of an external site and display them with the local site's advertising, trademarks, and text. As a result, the content of the external site appears to be offered by the framing site. When framing is used in this way, viewers may be misled as to the source of the linked-to site's contents (see Exhibit C).
 

TotalNews operated a web site at <www.totalnews.com> that provided links to various news sources, including those operated by the Washington Post, Time-Warner, Cable News Network (CNN), Times-Mirror, Dow Jones, and Reuters.[15] When a viewer hyperlinked to one of the news sources (i.e., by clicking on the Time hyperlink) from TotalNews' site, the selected site was actually drawn into the TotalNews web site and displayed as part of it. However, not all of the content of an external news-source site (i.e. Time) was displayed. Instead, the viewer saw five independent frames (see Exhibit C) which contained the following:
a large, right-centered frame that displayed the external site's content
a small, rectangular frame located in the lower left-hand corner that displayed the "TotalNews" word mark
TotalNews' URL <www.totalnews.com> displayed as the current URL address in the upper portion of the screen
a vertical frame on the left-hand side that contained a menu of hyperlinks to plaintiffs' news services
a horizontal frame along the bottom of the screen that displayed commercial advertising sold by TotalNews.
Thus, the contents of the external news web sites, such as the Time web site, were displayed surrounded by frames containing the TotalNews logo, TotalNews URL, and advertising sold by TotalNews.[16]

At the present time, there is very little case law addressing the issue of framing within the Internet medium and, as such, a great deal of legal uncertainty exists. On February 20, 1997, the first complaint to challenge framing in the Internet context was filed in the Southern District of New York by the Washington Post, Time-Warner, Cable News Network (CNN), Times-Mirror, Dow Jones, and Reuters (collectively "plaintiff") against TotalNews and its affiliates (collectively "defendant") .[17] In their complaint, the plaintiffs alleged that TotalNews had "engaged in the Internet equivalent of pirating copyrighted material from a variety of famous newspapers, magazines, or television news programs; packaging those stories to advertisers as part of a competitive publication or program produced by Defendants; and pocketing the advertising revenue generated by their unauthorized use of that material."[18] In all, the plaintiffs alleged nine causes of action: (1) Misappropriation; (2) Federal Trademark Dilution; (3) Trademark Infringement; (4) False Designations of Origin, False Representations and False Advertising; (5) Trademark Infringement and Unfair Competition under State Law; (6) Dilution under State Law; (7) Deceptive Acts and Practices; (8) Copyright Infringement; and (9) Tortious Interference.[19]

Plaintiff protested that while the linked-to news services (external sites) were displayed in the news frame, advertising sold by TotalNews was simultaneously shown in the advertisement frame replacing what was once plaintiff's advertising.[20] Moreover, the TotalNews URL, not the actual URL of the original news source, was displayed in the address portion of the web browser.[21]

While many observers were anxious for a definite answer to this conflict, a settlement was reached on June 5, 1997 in which TotalNews agreed that it would no longer frame any of the plaintiffs' web sites.[22] As such, no legal precedent was set. However, the framing activities of web sites such as TotalNews may be actionable under one of the nine causes of action asserted in the TotalNews complaint. This paper will analyze the trademark, trade dress, and copyright infringement claims presented by the TotalNews case and apply federal law to determine the most likely outcome had the case been litigated.[23]
 

In their complaint, the plaintiffs contended that:

Defendants' unauthorized use of Plaintiffs' marks in connection with advertisements that have not been approved by Plaintiffs for use on their respective sites. . . . [and] the manner in which Defendants cause[d] Plaintiffs' websites to appear within a window on Defendants' site, together with those new and competing advertisements, and under the totalnews.com URL, [were] likely to cause confusion and mistake as to the source or origin of the content and advertising depicted at Defendants' website.[24]

Accordingly, the issue for a court to consider is whether defendant's unauthorized use of plaintiff's mark causes or will likely cause consumers to be confused as to the source, affiliation or sponsorship of the content and advertising depicted at TotalNews' website.

A trademark is defined as "[a] word, slogan, design, picture, or any other symbol used to identify and distinguish goods."[25] To prevail under trademark infringement, plaintiff must show that: (1) its trademark is entitled to protection under the Lanham Act and (2) there is a likelihood of confusion as to the origin of defendant's product.[26] To qualify for trademark protection, a mark must either be distinctive or have acquired secondary meaning.[27]

For the purpose of this article, the author will focus on Lanham Act § 32 and
§ 43(a) to determine whether TotalNews infringed upon plaintiff's mark.[28] In relevant part, § 43(a)(1)(A) prohibits a party from using in commerce any term of false designation of origin which "is likely to cause confusion . . . as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person."[29] Section 43(a)(1) is limited by § 43(c)(4)(B), which provides that "noncommercial use of a mark" is not actionable under the Lanham Act.[30] Section 32(1)(a) makes any person who, without the consent of the registrant, "uses in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive."[31]

    A. Distinctiveness

Judge Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc. set out the classic spectrum formulation for determining distinctiveness and categorized marks as generic, descriptive, suggestive, arbitrary, or fanciful. [32]Only suggestive, arbitrary, or fanciful marks are deemed to be inherently distinctive.[33] Nonetheless, a descriptive designation may still acquire distinctiveness through secondary meaning or become incontestable under Section 15 of the Lanham Act.[34] Each of the plaintiffs' marks are federally registered and are used in the dissemination of a hard-copy publication and its Internet counterpart. In all likelihood, a court would find that plaintiffs' marks are strong marks and are inherently distinctive. For example, the "Time" mark for news magazine is an arbitrary mark and has become a strong mark through years of use and consumer association of the mark with a news magazine.[35]

    B. Commercial Use in Interstate Commerce

Section 32(1) of the Lanham Act imposes civil liability where a party uses a protected mark in commerce in such a way as to confuse consumers.[36] Section 45 of the Lanham Act defines the term "use in commerce" to include where goods and services are sold, transported, or rendered in commerce.[37]

TotalNews' framing of external sites affected interstate commerce. Time's on-line news service transcended state boundaries to a national, or even international, audience who utilized means of communication such as telephone lines linked worldwide to access plaintiff's website. TotalNews' framing of external sites affected Time's ability to offer its online news services and advertising in its entirety to its national audience. TotalNews' framing of Time's website also likely prevented some viewers from reaching the actual Time website and exploring the rest of the site. Internet users in search of Time's news service who mistakenly accessed TotalNews' website may have discontinued their search for the actual Time web site if they believed that they had already found it or a reasonable substitute. Furthermore, TotalNews was in business to disseminate current news to Internet users. Its profit-generating model was premised on the expectation that advertisers would pay TotalNews to display advertisements on its site and would be attracted to the site because of its popularity and the number of hits it received.

    C. Likelihood of Confusion

There is little likelihood of consumer confusion between the "TotalNews" mark and the "Time" mark themselves. As such, trademark infringement will not be analyzed in the traditional sense where one is comparing two similar marks. Rather, infringement will be analyzed in the website context where a viewer may be confused by the similarity of two different websites - the stand-alone Time home page versus the TotalNews home page displaying the framed Time website (compare  Exhibit D with Exhibit C). Accordingly, the issue is whether Time's home page with its source-identifying "Time" marks was inherently distinctive or had acquired secondary meaning rather than whether Time's mark alone is deserving of trademark protection.

On the Time home page, there were three locations where a viewer could have identified the online publication with its source: (1) where the "Time" word mark that was displayed within the primary frame; (2) where the "Time" word mark that was displayed in the secondary lower left-hand corner frame; and (3) where the Time URL <www.time.com> was located in the web browser in the upper portion of the screen (see Exhibit D). The dual display of the "Time" marks within the context of a rectangular computer screen with limited space made the word marks quite noticeable. Although the "Time" mark within the primary frame disappeared when the viewer pressed the down arrow button or scrolled down so that she could continuously read the publication, the other "Time" mark displayed in the secondary lower left-hand corner frame did not disappear (see Exhibit E). As such, the distinctiveness of the "Time" mark was carried over to its on-line usage.

    D. The Polaroid Factors

Each federal circuit has devised its own variation of a list of factors used to decide whether consumers would likely be confused regarding the origin of a product or service.[38] Since the TotalNews complaint was filed in the Second Circuit, the "Polaroid Factors"[39] are the proper factors to be considered and weighed to determine whether consumers are likely to be confused as to the source of the material on the TotalNews website. The eight Polaroid factors are: (1) strength of the mark; (2) degree of similarity between the conflicting marks; (3) proximity of the goods and services; (4) likelihood that the plaintiff will bridge the gap between the markets; (5) actual confusion; (6) junior user's good faith in choosing its marks; (7) quality of the junior user's product; and (8) sophistication of buyers.[40] None of these factors are dispositive and should not be applied mechanically. While the Polaroid factors are the proper measures of a likelihood of confusion for a suit brought forth in the Second Circuit, they have never been applied to the Internet framing context.[41]

        1. Strength of the Mark
The strength of the mark is defined as "[t]he power of a trademark or service mark to be recognized as an identifying symbol in the marketplace."[42] Its strength is determined by its position on the Abercrombie distinctiveness spectrum and by its degree of market recognition.[43] The "Time" word mark is an arbitrary mark and its distinctiveness carries over to its on-line usage. Its marketplace strength has been well established over many years of distribution. Furthermore, the Time mark has acquired prestige and a tremendous reputation among its readers for reporting current news events.

        2. Degree of Similarity Between the Conflicting Marks

The degree of similarity between the Time website and the TotalNews website should be tested on a visual basis and the websites should be compared as they are encountered in the marketplace. The visual onscreen display of both the TotalNews and Time website may be divided into four physical frames and a web browser (see Exhibit C and Exhibit D). Each of TotalNews' frames were virtually identical in size and location with those of Time.

Standing alone, Time's home page appears as follows:
    1. the "Time" mark is displayed in the primary frame along with its other publication
    2. the "Time" mark is displayed in a secondary lower left-hand corner frame
    3. Time's menu of hypertext links to other internal locations of the website is displayed in a secondary frame located on the left-hand side of the web page
    4. Time's commercial advertising paid for by third parties is displayed in a secondary frame located on the bottom portion of the web page
    5. Time's URL <www.time.com> is displayed in the web-browser in the upper portion of the screen.
    For an illustration of Time's home page, see Exhibit D.

After framing Time's website, TotalNews' home page appears as follows:
    1. the "Time" mark is displayed in the primary frame along with its publication
    2. the "TotalNews" mark is displayed in a secondary lower left-hand corner frame
    3. TotalNews' menu of plaintiffs' hypertext links to other news source publications (i.e. Time, CNN, etc.) is displayed in a secondary frame located on the
          left-hand side of the web page
    4. TotalNews' commercial advertising, paid for by third parties, is displayed in a secondary frame located on the bottom portion of the web page
    5. TotalNews' URL <www.totalnews.com> is displayed in the web-browser in the upper portion of the screen.
    For an illustration of the TotalNews home page, see Exhibit C.

The following side-by-side comparison of the TotalNews and Time websites reveals a high degree of visual similarity:

    (1) The primary frames

Since TotalNews' primary frame was a re-publication of Time's primary frame, both parties' primary frames were identical. Before being framed, the "Time" word mark was shown at two different locations on the Time web page - on the primary frame and in the secondary corner frame (see Exhibit D). TotalNews' framing resulted in the "Time" word mark appearing within TotalNews' primary frame (see Exhibit C). The "TotalNews" word mark also appeared in the secondary corner frame (see Exhibit C).

    (2) The lower left-hand corner frames (secondary frames)

Time's and TotalNews' secondary lower left-hand corner frames were different. On Time's home page, the "Time" word mark appeared in its corner frame (see Exhibit D). Similarly, on TotalNews' home page, the "TotalNews" word mark also appeared in its corner frame (see Exhibit C). As compared to the whole visual screen, the physical space where each corner frame was located was relatively small.

    (3) The left-hand vertical menu frames (secondary frames)

The two secondary left-hand menu frames where each party's hyperlinks were located had the same geometrical design. Each vertically positioned rectangular frame was divided by a series of evenly spaced horizontal lines that intersected the two vertical segments of the frame. This resembled a menu-box standing upright filled with a series of horizontal racks. The hyperlink text within each rack was different between each party. For example, Time's internal hyperlinks text included International, Local, Weather, and Sports. TotalNews' hyperlinks text included Time, CNN, and The Wall Street Journal (see Exhibit C and Exhibit D).

    (4) The advertising banners (secondary frames) (See Exhibit C and Exhibit D)

To determine the degree of similarity between TotalNews' and Time's advertising banners, a court would examine whether a broadcast of a similar ad at TotalNews' and Time's advertising banners was likely. Given that the Time and TotalNews websites were targeted toward an audience with a propensity for current news, the likelihood of a broadcast of a similar advertisement was high. If, however, a distasteful advertisement (i.e. a pornographic advertisement) was shown in the TotalNews banner after Time's website was framed, the viewer would have been immediately alerted to the indecent display (recall that immediately after framing, the "Time" word mark was shown in TotalNews' primary frame together with the "TotalNews" word mark in TotalNews' secondary frame). Thus, there was a possible danger that Internet users would have associated the Time publication with the distasteful ad or the product advertised or considered it an endorsement of a product.

    (5) The web-browsers (secondary frames)

The only difference between the two web-browsers was the physical text that signified the URL located within each browser: <www.totalnews.com> versus <www.time.com> (see Exhibit C and Exhibit D). On a browser filled with large quantities of text and geometrical images, one would probably not have noticed the difference.

In the author's view, a high degree of similarity existed between Time's web page and TotalNews' web page after framing had occurred. First, the primary frames between the two parties were identical. Second, since each party's secondary frames were located on the edge of the web page and surrounded the much larger primary frame that was in the direct line of sight, the different secondary frames between the two web pages were not noticeable. Third, given the high likelihood of a broadcast of a similar ad between the two sites was high even assuming that the ads were constantly changing, a viewer would probably not have noticed any difference if his primary purpose was to examine the news.

        3. Proximity of the Goods and Services

Since both TotalNews and Time provided identical news publication on the same channel of communication (the Internet) to the same audience, confusion between the sites was likely. The confusion caused by TotalNews' framing may have diverted viewers from the Time news publication. In addition, since an advertiser was limited by a fixed advertising budget, TotalNews' framing may have supplanted Time's advertising revenues as some Internet users were diverted to TotalNews.

        4. Likelihood That the Plaintiff Will Bridge the Gap Between the Markets

Since Time and TotalNews were both vying for the same audience and the same limited amount of advertising revenues within the same Internet platform, the parties were competing in the same market. The court in Paddington Corp. v. Attiki Importers[44] maintained that where the market for competing goods or services is the same, there is no need to consider whether plaintiff would have entered into defendant's market. Thus, this factor is irrelevant in the analysis of whether TotalNews infringed Time's mark.

        5. Actual Confusion

This factor requires a showing that viewers were actually confused as to the origin of the website they were viewing, as opposed to the likelihood viewers were confused.[45] Evidence of actual confusion may be shown by direct evidence in the form of viewer survey or an inquiry (i.e., letter or telephone call) by a viewer to Time or TotalNews asking whether there was any association or affiliation between the two parties. No evidence of actual confusion was available in the TotalNews case.

       6. Junior User's Good Faith In Choosing Its Mark

The issue here is whether TotalNews intended to confuse the public into believing that defendant's website was associated with plaintiff's site. It is established in some circuits that when an alleged infringer knowingly adopts a mark similar to another's, there is a presumption that the public will be deceived.[46] While this generalization pertained to a mark, it should be interpreted broadly to include any forms of deceitful misrepresentation, including a website, made by an alleged infringer.[47]

Prior to the filing of the complaint, counsel for TotalNews stated that "a lot of news organizations are very pleased by what [we]'re doing."[48] Among the many inferences that can be drawn by TotalNews' responses or lack thereof, two possibilities stand out. By centralizing all the news sources into one location, TotalNews was providing easier access to information. Even assuming this, TotalNews could have accomplished its objective without framing the Time website, especially after being notified by Time of its alleged infringing activity.[49] The more likely possibility, however, was that TotalNews used framing as a means to generate advertising revenues by passing off Time's news content as its own.

        7. Quality of the Junior User's Product

Assuming that the Time website has not been cached, TotalNews' literal copying of Time's primary frame was repeated every time the Time website was updated. Since both parties' primary frames were identical and their websites were very similar, a typical viewer would not have been able to distinguish the two sites in terms of quality.

        8. Sophistication of Buyers

The others plaintiffs in the TotalNews case included TheWashington Post, CNN, Times-Mirror, Dow Jones, and Reuters. Although not accounted for in the complaint, other party plaintiffs including Sports Illustrated for Kids were subsidiary publications of the plaintiffs. A young viewer of the Sports Illustrated for Kids website would be less knowledgeable about the actual quality and uniqueness of the site compared to an adult viewer, who would be more perceptive. However, differences in sophistication among the viewers should not matter. Viewers would be less discriminating as to which site they were on since both websites provided identical news contents and were available free of charge.

    E. High Likelihood of Consumer Confusion

All of the Polaroid factors favored I except the "likelihood that plaintiff will bridge the gap between the markets," which was not applicable, and evidence of "actual confusion," which was not provided in the TotalNews case. Between the two websites, a viewer would likely have been confused by the two sites' similar "look and feel." The news contents embedded within the two sites' primary frames were identical. Given that the "Time" word mark and the "TotalNews" word mark were shown on the same screen immediately after framing, it is the author's opinion that a viewer would have been led to believe that the two sites were affiliated with each other. In addition, the surrounding secondary frames were similar in location and physical size. The advertising contents within each secondary frame were also similar. Finally, given that access to either site was free, viewers were less selective as to which site they were on. Taken together, it is the author's opinion that there would have been a high likelihood of consumer confusion between the two sites, which supports a finding of trademark infringement.
 

As an alternative to trademark (tradesite) infringement, a website may be subject to trade dress[50] protection under Lanham Act § 43(a).[51] To prevail, plaintiffs must show that: (1) their trade dress is inherently distinctive or has acquired secondary meaning; (2) their trade dress is primarily nonfunctional; and (3) the defendant's trade dress will likely cause consumer confusion in the marketplace.[52]

Although trade dress infringement was not alleged by plaintiff in the TotalNews complaint, this remedy may be available if Time showed that its overall website design and configuration without the identifying "Time" word mark was inherently distinctive such that it served as a source identifier to the consumer public (see Exhibit F).

Trade dress is defined as "[t]he totality of elements in which a product or service is packaged or presented. These elements combine to create the whole visual image presented to customers and are capable of acquiring exclusive legal rights as a type of trademark or identifying symbol of origin."[53] The Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc. held that nonfunctional product packaging or design could be protected if it was inherently distinctive regardless of whether it had acquired secondary meaning.[54]

    A. The Knitwaves Case and the Landscape Case

Subsequent to Taco Cabana, the Second Circuit in Knitwaves, Inc. v. Lollytogs Ltd. drew a distinction between product packaging and design (configuration).[55] It rejected the Abercrombie classification as the proper test for product design and configuration because "it would have the unwelcome, and likely unintended, result of treating a class of product features as 'inherently distinctive' . . . even though they were never intended to serve a source-identifying function."[56] Instead, the court set forth the Knitwaves test to evaluate inherent distinctiveness for product design and configuration by asking whether the images were likely to serve primarily as a source indicator.[57] In a later decision, the Second Circuit in Landscape Forms, Inc. v. Columbia Cascade Co.[58] required that a plaintiff who asserts trade dress protection for product design and configuration articulate and support its claim with "sufficient particularity."[59] The court reasoned that without such a precise idea or expression, the plaintiff may be seeking protection for an "unprotectible style, theme or idea."[60]

To be subject to trade dress protection, Time must to satisfy the Second Circuit's Landscape standard. Thus, Time must describe its website design and configuration with "sufficient particularity" to identify what Time is trying to protect.[61] At the same time, each description must also be broad enough so as to preclude others from creating an essentially "identical" claim with only insignificant changes.[62]

    B. Distinctiveness

Applying the Second Circuit standard for product design and configuration distinctiveness to the Internet context, a website may be subject to trade dress protection if the publisher is able to show that the website's overall design is distinctive and described with particularities. In general, the small size of a video screen makes it difficult for a designer to create a website that stands out from most other typical sites. Further, there is a finite number of possible website designs and layouts. Here, without the identifying "Time" word mark or the URL, the Time site could be described as:
Several story headlines in bolded and enlarged fonts, each followed by an interesting expression located within the primary frame. The most important headline was almost always accompanied by a photograph. Each headline may function as a hyperlink.
Several hyperlinks such as "Weather" or "Sports" located on the edge of the web page directing the reader to different internal locations of the website.
Commercial advertising placed either at the upper or the lower part of the web page, and almost always surrounding the primary frame.
See Exhibit F.

Because most of the features composing the Time website were similar to many other on-line news publications, it is the author's opinion that the layout and features of the Time site were not distinctive. Nonetheless, there may be websites with distinctive features that are more identifiable than others.

Generally, a typical web page fills up the entire screen. This is a logical arrangement since the more text and images a designer can pack onto the screen, the more information she can disseminate. However, there are a few websites designed in such a way where the site physically looks like a piece of 81/2 by 11 paper shown in a vertical position embedded within the rectangular-shaped computer screen. This projection leaves empty spaces on both the left and the right-hand side of the screen where they are filled with a colored background.

The Supreme Court in Qualitex Co. v. Jacobson Prods. Co. held that a single product color can function as a trademark when the color has attained secondary meaning.[63] It follows that a combination of colors can function as a trade dress. For the Time website to be subject to trade dress protection, it must show that viewers associate Time's color combination with the product itself. Time may show that the viewing public has come to associate a color combination, in this case a red and black border combination enclosing the page, using survey evidence and evidence of mass market advertising.[64]

    C. Functionality

A feature that is functional cannot be protected as a trade dress.[65] The Supreme Court in Inwood Labs, Inc. v. Ives Labs, Inc. defined a functional feature as one that "is essential to the use or purpose of the article or . . . affects the cost or quality of the article." [66]While this is true, "[a] combination of individually functional features can form a nonfunctional and protectible composite image."[67] For example, the Second Circuit in LeSportsac, Inc. v. K Mart Corp. maintained that the "particular combination and arrangement of design elements" that identified plaintiff's bags were subject to trade dress protection.[68] Such design features included material made of parachute nylon and trimmed in cotton carpet tape with matching cotton-webbing straps along with color coordinated zippers, hollow rectangular metal sliders, and a elongated ellipse design for the logo.[69]

Although each of Time's previously described features may be functional, their overall combination may form a website protectible as trade dress if the site identifies Time as the publisher.[70] Thus, if a viewer would recognize the source of a website by the unique visual design and the overall combination of features and colors, then that website is deserving of trade dress protection. Given the limited space on a web page, there are many design features, such as a line that separates two frames or sections within a frame or a darkened border that resembles a picture frame with an enclosed graphical image, that are typical. Nonetheless, unusual designs may be possible since there is more than one way to convey text and information onscreen. Time's overall combination of colors and features on their website could have met the distinctiveness threshold necessary for trade dress protection.
 

In the complaint, plaintiff contended that TotalNews' "conduct violate[ed] several of the exclusive rights under 17 U.S.C. § 106 belonging to the Plaintiffs as owners of the copyrights in their respective content and websites."[71]

    A. Section 102 Subject Matter of Copyright

Since much of the material subject to copyright protection transmitted on-line falls under the realm of a § 102(a) work of authorship such as literary works, musical works, audiovisual works, pictorial and graphical works, and the like,[72] copyright law will protect the authors of on-line publications and websites. In the present case, the subject matter to be protected was Time's original expression of the current news embodied in its on-line publication. As a threshold matter, before an action can be sustained for infringement of any of the author's exclusive rights,[73] the author must show that the work in question complies with the two requirements under §102(a): originality and fixation.

        1. Originality

Section 102(b) of the Copyright Act limits copyright protection for an original work of authorship 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."[74] Simply stated, copyright protection is only accorded to original expression, not facts or ideas.
 

The Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co. stated that "[o]riginal . . . means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity . . . [of which] even a slight amount will suffice."[75] In Feist, the defendant took and used plaintiff's expression (alphabetical listing of the names, towns, and telephone numbers in a directory) and published it in a competing telephone directory without plaintiff's consent. The court denied plaintiff's work copyright protection because it lacked the requisite selection, originality, and creativity.[76]

According to the TotalNews' complaint, "[e]ach Plaintiff spends substantial amounts of time, money and effort collecting, preparing and distributing copyrighted accounts of 'hot news' and other stories of interest in a variety of media, including, but not limited to, their respective websites."[77] The originality requirement is not at issue; there is no doubt that each story was an original expression based on the underlying facts.[78]

        2. Fixation

Copyright protection only comes into existence if the original works of authorship are fixed in a tangible medium of expression. According to 17 U.S.C. § 101, the author is required to take the affirmative step of placing her work in a tangible form where it is relatively stable and permanent. [79]If the work is recorded or written, the fixation requirement is satisfied.[80]

After Time's on-line publication was downloaded,[81] the visual representation made by the local RAM allowed the viewer to read, examine, and make copies of Time's on-line publication. The visual display remained onscreen for as long as the viewer did not terminate access (i.e. turn off her computer). Thus, Time's onscreen display was "sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration."

The Ninth Circuit in MAI Systems Corp. v. Peak Computer, Inc. held that the loading of a copyrighted operating system program in RAM[82] constituted a fixation and qualified as the making of a copy of the copyrighted program within the purview of the Copyright Act.[83] Even allowing for the fact that the copy in RAM was not fixed in a traditional tangible form (as on a piece of paper), the court determined that "the representation created in the RAM [that is ultimately displayed onscreen] is 'sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.'"[84]

In view of the MAI decision, many copies of Time's on-line publication may have been created as it was downloaded from its source. Under current technology, a document is transmitted through the Internet by a technique known as "packet switching" in which a copy of the document is broken up into smaller "packets" that are sent as discrete units.[85] En-route to their destination, these packets pass through the RAM of each interim computer node on the network. Under MAI, there may arguably be copyright infringement if copies were made in the RAM of each interim computer node.[86]

    B. Direct Copyright Infringement

To sustain a case of direct copyright infringement, the plaintiff must first prove (1) ownership of a valid copyright,[87] and (2) the defendant copied protected elements of her work.[88] Once copying has been established, Time can show direct copyright infringement by proving that TotalNews used the copies in any of the ways enumerated in Section 106 of the Copyright Act.[89] Section 106 grants copyright owners the exclusive right: (1) to reproduce the copyrighted work; (2) to prepare derivative works based upon the copyrighted work; (3) to publicly distribute copies of the copyrighted work; (4) to publicly perform the copyrighted work; and (5) to publicly display the copyrighted work.[90] While TotalNews could have infringed on any of Time's exclusive rights, Time's § 106(2) exclusive right to prepare derivative works was especially implicated.[91]

    C. Right to Prepare Derivative Works

Section 101 defines a derivative work as "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted."[92] The author of the preexisting work has the exclusive right to prepare derivative works, unless the original work has fallen into the public domain.[93]

Under Subsection 106(2), the author's exclusive right is infringed when a third party has "prepare[d] derivative works based upon the copyrighted work[.]"[94]After a viewer activated the hyperlink to the Time website or typed in the Time URL in the web browser while at TotalNews' home page, he or she saw Time's news content enclosed within TotalNews' primary frame surrounded by several of TotalNews' secondary frames. These secondary frames included the TotalNews word mark, the TotalNews URL, and commercial advertising (see Exhibit C). In other words, Time's copyrighted material was mounted within an electronic visual frame designed by TotalNews. However, TotalNews did not directly republish Time's copyrighted material. Rather, it designed a site that allowed for the republication that came into existence only when a viewer affirmatively activated the Time hyperlink or typed in the Time URL in the web browser while at TotalNews' home page. Thus, the issue is whether TotalNews' on-line republication of Time's copyrighted material constituted direct derivative work infringement.

In a similar and more recent case that involved Internet framing, the Central District of California in Futuredontics Inc. v. Applied Anagramics, Inc. denied plaintiff's motion for preliminary injunction, citing insufficient evidence to show that the accused infringer's website created a derivative work.[95] The outcome of this case remains uncertain as the same court also denied the defendant's motion to dismiss.[96] Defendant AAI's website contained a hyperlink to plaintiff Futuredontics' website.[97] Once a viewer activated plaintiff's hyperlink at AAI's website, plaintiff's site was displayed within defendant's primary frame along with AAI's other secondary frames.[98]

Plaintiff Futuredontics primarily relied on Mirage Editions, Inc. v. Albuquerque A.R.T. Co.[99]to allege derivative work infringement. The Ninth Circuit in Mirage found that the defendant prepared derivative works without the consent of the plaintiff when defendant removed plaintiff's copyrighted art images from a commemorative book and mounted them individually with glue onto ceramic tiles.[100] Although the Mirage court acknowledged that framing and other traditional means of mounting and displaying art do not infringe an author's exclusive right to prepare derivative work, gluing the art images onto the tiles created derivative works because the epoxy resins bonded the plaintiff's art images to the tiles. As such, the court concluded that defendant had "recast or transformed" the copyrighted work into another version of plaintiff's art works. The Futuredontics court, however, was not persuaded by plaintiff Futuredontics' reliance on Mirage since defendant AAI had not mounted an image onto a ceramic tile, but rather "placed an electronic frame or border on Plaintiff's web page."[101] and found that Mirage did not conclusively determine whether the defendant's frame page constituted a derivative work.[102]

In a similar and more recent case with virtually identical facts as Mirage, the Seventh Circuit in Annie LEE v. A.R.T. Co. disagreed with Mirage and found that a derivative work was not prepared when defendant mounted plaintiff's copyrighted notecards with glue onto ceramic tiles.[103] The court stated that plaintiff's "copyrighted note cards . . . were not 'transformed' in the slightest" because "[i]t still depict[ed] exactly what it depicted when it left Lee's studio."[104] Further, the court noted that "[i]f mounting works a 'transformation,' then changing a painting's frame or a photograph's mat equally produces a derivative work."[105]

The Ninth Circuit and the Seventh Circuit are in direct conflict. According to the Ninth Circuit's Mirage, preparation of a derivative work depends on whether the copyrighted work was permanently bonded onto a different medium of display. If so, a §101 "transformation" has occurred even without any material alterations to the copyrighted work. In the author's view, the Seventh Circuit in LEE provided the better analysis because the court's broad interpretation in Mirage would give any author the right to block any subsequent modifications where there is a permanent affixation of the copyrighted work to a new medium or where a copy is produced from a copyrighted work placed against a different background.[106] Following LEE, a court faced with an Internet framing case such as TotalNews should focus on whether a LEE "transformation" has occurred after the Time website has been framed and appears within the TotalNews website.

After the TotalNews website framed the Time site, the image onscreen did not depict what was displayed at the Time website. TotalNews did not just merely "add-on" or surround the entire Time website with a different background (electronic visual frames). Rather, it altered the Time site by deleting plaintiff's secondary frames (which contained Time's word mark, URL, and advertising) and replacing them with its own secondary frames (which contained TotalNews' word mark, URL, and advertising (see Exhibit C). Consequently, TotalNews' web site that included Time's copyrighted work within its primary frame was substantially different from the stand-alone Time site. Thus, a §101 "transformation" occurred. However, even if a court followed Mirage instead of Lee, there would be similar finding of a §101 "transformation" given the Ninth Circuit's expansive interpretation of the statute and the fact that TotalNews' framing activities resulted in Time's web site being permanently bonded onto a different web site.

In its defense against Futuredontics, defendant AAI relied on LouisGaloob Toys, Inc. v. Nintendo of America, Inc..[107] The Ninth Circuit in Galoob accorded limited protection to an author of a computer "add-on."[108] Galoob manufactured the "Game Genie," a program that was inserted between a game cartridge and the Nintendo Entertainment system which allowed a player to alter aspects of a Nintendo game by increasing the speed and the number of lives. No preparation of a derivative work was found for the enhanced audiovisual displays generated by a program that originated in another program (Nintendo) because "[t]he Game Genie [was] useless by itself [since] it can only enhance, and cannot duplicate or recast, a Nintendo game's output . . . in some concrete or permanent form, nor does it supplant demand for Nintendo game cartridges."[109] After analogizing the Game Genie to the visual display generated by a kaleidoscope (or a magnifying glass) that allowed one to view a work in a different way, the court found that an enhancement should not be considered a derivative work.[110] The Futuredontics court, however, was not persuaded by defendant AAI's reliance on Galoob since it "[did] not foreclose Plaintiff [Futuredontics] from establishing that AAI's web page incorporate[d] Futuredontics' web page in some 'concrete or permanent' form or that AAI's framed link duplicate[d] or recasts plaintiff's web page."[111]

The author disagrees with the Galoob holding that an enhanced audiovisual display based on a preexisting audiovisual output was not a preparation of a derivative work.[112] Unlike the magnifying glass, the onscreen display generated by the Game Genie could have been duplicated each time it was plugged into the Nintendo module. The aspect of the likelihood of duplication is important because the more likely an enhancement can be reduplicated, the more permanence it has. Thus, in the author's view, the enhancement produced by the Game Genie was a preparation of a derivative work.[113]

Even allowing for the author's disagreement, TotalNews' framing may have constituted a preparation of derivative works under the reasoning of the Ninth Circuit's Galoob. TotalNews' framing resulted in the publication of Time's primary frame along with TotalNews' own secondary frames. TotalNews' secondary frames did not enhance the Time publication. They were not like kaleidoscopes (or a magnifying glasses) that allowed a viewer to read news in a novel way. Rather, TotalNews' framing resulted in a literal copying of Time's copyrighted work. As a result, both web sites' primary frames were identical. In addition, TotalNews profited from the republication of plaintiff's work from the sale of advertising. Advertisers must have been convinced that TotalNews had a substantial audience base for them to justify paying to advertise on TotalNews' web site. TotalNews' action both supplanted consumers' demand for Time's underlying work and diverted advertising revenues that would have gone to Time.

    D. Direct Infringement: The Hardenburgh Case and the WebbWorld Case

In Playboy Enterprises, Inc. v. Russ Hardenburgh, Inc. defendant operated a computer bulletin board service (BBS).[114] Defendant encouraged its subscribers to upload plaintiff's copyrighted photographs onto defendant's BBS and thereafter screened each photograph before moving it to a central file to be downloaded by its paying customers.[115] Finding that defendant was not merely a passive conduit of unaltered information, but rather an active participant, the court found defendant liable for direct infringement.[116]
Similarly, in Playboy Enterprises, Inc. v. WebbWorld, Inc. defendant downloaded copyrighted photographs from a "news feed" which consisted of both text and images.[117] Defendant discarded the text that was located on the images and made smaller "thumbnail' copies and thereafter distributed the altered images to its subscribers for a fee on its web site.[118] Finding that defendant took affirmative steps to cause the copies to be made, the court found defendant liable for direct infringement.[119]

In the present case, TotalNews was not just a passive conduit providing space for on-line activities to occur. Rather, TotalNews actively participated in the infringement that took place on its web site. Although no framing of the Time web site occurred until a viewer took an affirmative step to activate the Time hyperlink or type in the Time URL in TotalNews' web browser, TotalNews engaged in infringing activities by designing a web site that allowed framing to occur. When framed, Time's secondary frames were deleted and replaced with TotalNews' secondary frames, resulting in a material alteration of Time's copyrighted publication. Moreover, TotalNews had absolute dominion and control over which one of the plaintiffs' site to frame by placing plaintiffs' hyperlinks in its menu frame (see Exhibit C).

    E. Digital Browsing and the Fair Use Defense

Another source of controversy is digital browsing. In Religious Tech. Center v. Netcom On-Line Communication Service, the court stated that under MAI, "[b]rowsing technically causes an infringing copy of the digital information to be made in the screen memory."[120] However, the court maintained that "[browsing] is the functional equivalent of reading, which does not implicate the copyright laws and may be done by anyone in a library without the permission of the copyright owner. . . . Absent a commercial or profit-depriving use, digital browsing is probably a fair use. . . ."[121] In the present case, TotalNews allegedly passed off the Time on-line publication as its own and sold advertising space on its banner frame for profit. In the author's view, TotalNews' framing activity would not have been entitled to a fair use defense.

"The defense of fair use to a charge of infringement of copyright has long been recognized as an equitable rule excusing certain types of otherwise infringing conduct."[122] Section 107 provides four factors to be considered and weighed in determining whether the affirmative defense of fair use is available: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.[123] None of these factors are dispositive and should not be applied mechanically.[124]

        1. Purpose and Character of the Use

After the holding of Sony Corp. of America v. Universal City Studios,[125] many believed the Supreme Court pronounced the general presumption that a commercial use was unfair.[126] The Supreme Court in Campbell v. Acuff-Rose Music, Inc.[127] clarified this misconception and stated that the proper inquiry is "whether and to what extent the new work is 'transformative.'"[128] The Court defined a "transformative work" as "add[ing] something new, with a further purpose or different character, altering the first with new expression, meaning, or message."[129] Thus, "the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use."[130]

After the Time web site was framed, the viewer saw TotalNews' secondary frames surrounding its primary frame. Since there was literal copying, both web sites' primary frames were identical (see Exhibit C and Exhibit D). However, TotalNews' secondary frames did not add anything of substantive value (i.e., an editorial comment or response) to Time's copyrighted materials that would have increased a viewer's understanding or provided a new perspective to the news. Rather, TotalNews' secondary frames were self-serving and used for linking, source identification, and advertising purposes. Taken together, TotalNews actively sought to exploit the value of Time's work instead of altering it using or creating a "new expression, meaning, or message."

        2. Nature of the Copyrighted Work
Given that copyright protection is only accorded to original expression and not to facts or ideas,[131] the underlying facts behind Time's new stories were not subject to protection. However, TotalNews did not just isolate the factual elements from Time's publication. Rather, it literally copied Time's subjective expression of the factual events in its publication. Such use by TotalNews exceeded that which was necessary to disseminate the facts.

        3. Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work As a Whole

In quantitative terms, TotalNews republished Time's copyrighted material in its entirety within its primary frame. TotalNews' literal copying also embodied Time's distinctive expression of original graphics and photographs, and the placement thereof, in addition to the words themselves. In qualitative terms, TotalNews' literal copying republished the essence of Time's on-line publication which viewers relied on as objective and in-depth news reporting.[132]

        4. Effect of the Use Upon the Potential Market or Value of the Copyrighted Work

The Supreme Court in Campbell v. Acuff-Rose Music, Inc. stated that this factor "requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also 'whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market' for the original."[133] Since Time and TotalNews competed for the same audience and the same limited amount of advertising revenues within the same Internet platform, the parties were competing in the same market. Had TotalNews' framing activities continued, more viewers would have became indifferent as to which web site they utilized since both parties provided identical services. Further, since advertisers are limited by a fixed budget, TotalNews' framing may have diverted a portion of Time's advertising revenues to TotalNews.

Since none of the fair use factors discussed above favored TotalNews, they most likely would have been liable for copyright infringement.

    F. Implied License and Disclaimers

Some commentators have argued that TotalNews had an implied license to use hyperlinks and frames to access plaintiffs' news services.[134] They contend that plaintiffs should have anticipated that their materials would be linked due to the present technology. Thus, by making their news services available without any express limitations, plaintiffs have granted TotalNews an implied license. However, even assuming that such an implied license existed, plaintiffs have revoked that license by notifying TotalNews to cease all framing to plaintiffs' sites.

After being notified of its alleged infringing activities, TotalNews posted a disclaimer on its web site informing viewers that it was not affiliated with any of the framed sites. Although a disclaimer may prevent an immediate filing of an infringement suit,[135] it cannot by itself resolve the problem of trademark and copyright infringement. First, liability for trademark infringement is based on the likelihood of consumer confusion.[136] Even if a defendant had no intent to confuse its viewers by posting obvious disclaimers on its site, it may still be liable for trademark infringement as long as consumers were likely to be confused. For copyright infringement, liability depends on unlawful appropriation of protected work and whether the works are substantially similar.[137] A disclaimer would not have absolved the alleged infringing activity for a violation of one or more of the copyright owner's §106 exclusive rights if the two works were substantially similar.
 
       G. Preventive Measures

A substantial number of web-publications (external sites) are in favor of allowing a local site to insert a hypertext or an inline link to the external sites, even if this amounts to framing an external site by the local site. Publishers of the external sites contend that this will direct more viewers to the external sites.[138] Nonetheless, technological measures that prevent an external site from being framed by a local site are available. Blocking technology[139] allows an external site to stop unauthorized framing by rejecting URL requests originating at a specific address. Further, removal technology allows a framed site to remove surrounding frames. In addition, a web site publisher can require registrations and passwords before giving access to a requesting site. However, these solutions may be temporary if the local site can override these preventive measures with newer and better technology.
 

In the complaint, the media companies alleged that TotalNews' manner of framing was "parasitic" in that TotalNews passed off plaintiffs' news content as its own while keeping all the advertising revenues.[140] In the author's opinion, TotalNews should have been found liable for trademark and copyright infringements. Thus, preliminary and permanent injunctions as well as actual and statutory damages and fees would have been the proper remedies. However, as web viewers become more sophisticated and accustomed to using frames, the argument for likelihood of confusion may become more difficult to prove.

While no precedent was set as a result of the settlement,[141] the short term ramifications may discourage certain types of commercial activity (i.e., inlined linking) and raise the cost of setting up and maintaining web sites for small publishers. These costs may include additional expenses for licensing and administrative and attorney fees. Thus, parties who are unable to cover the extra expenses may no longer afford to publish on the web. On the contrary, the long term ramifications may provide greater incentive for creativity if the authors know that their work can be protected under trademark and copyright laws. But because there must be a balance between protection of web-publication and the expansion of the Internet, the courts must be careful to distinguish between framing and linking. One misinformed ruling may be detrimental to the growth of the Internet.