[1]SeeReno v. ACLU, 117 S. Ct. 2329, 2334 (1997) "About 40 million people used the Internet at the time of the trial (in the summer of 1996), a number that is expected to mushroom to 200 million by 1999."

[2]URL (Universal Resource Locator) is the equivalent to an Internet address.

[3]Caching is widely used because it can shorten the amount of time required to download a document. When numerous requests to a popular site are made, the local server will cache (make a copy of) the corresponding document into its memory. Thus, when the next viewer requests the same document, the copy is retrieved from the local server. The transmission time required to download the copy from the local server is shorter than the time required to retrieve the actual document from the external site. However, caching also raises problems. If the local server did not update the copy, the viewer will see an older version of the corresponding document. Further, the external site is no longer able to count the number of hits (visits) it receives even though a copy is shown to the viewer.

[4]A "hit" occurs each time an Internet user accesses and views a web page.

[5]The author assumes that the external site has not been cached. Whether an external site has or has not been cached, its ramification will not affect the outcome of the author's finding.

[6]See Rebecca Quick, 'Framing' Muddies Issue of Content Ownership, Wall St. J., Jan. 30, 1997.

[7]Lower than expected sales are based on the assumption that the ads were shown in its intended manner.

[8]See Richard Raysman and Peter Brown, Dangerous Liaisons: The Legal Risks of Linking Web Sites, 217 N.Y.L.J. 66 (Apr. 8, 1997).

[9]See Freeling and Levi, supra note 9, at S5.

[10]For example, a non-Internet use of frames is implemented in the word-processing application. The actual onscreen display includes a primary frame where the writer types in the text to her document. A Status Bar at the bottom portion of the screen functions as a secondary frame and tells the writer exactly where she is within her document. As the writer continues to type from one page to the next, the Status Bar remains fixed and continuously updates her location. The Status Bar has been shown as an example of a frame where only information is disseminated to the user. Due to its usefulness and functionality, frames are widely incorporated in virtually every software program on the market.

[11]See Kenneth Freeling and Joseph E. Levi, Frame Liability Clouds the Internet's Future, N.Y.L.J., May 19, 1997, at S5.

[12]See Quick, supra note 6.

[13]Seeid.

[14]The URL is the web site's address. For example, the URL for the Time web site is http://www.time.com.

[15] See Wash. Post v. TotalNews, Inc. No. 97 Civ. 1190 (PKL) (S.D.N.Y. filed Feb. 20, 1997) (visited Oct. 9, 1998) <http://www.ljx.com/internet/complain.html> (hereinafter TotalNews Complaint). See Exhibit C for an illustration of the TotalNews web site.

[16]SeeTotalNews Complaint at para. 33.

[17]Wash. Post v. TotalNews, Inc. No. 97 Civ. 1190 (PKL) (S.D.N.Y. filed Feb. 20, 1997) (visited Oct. 9, 1998) <http://www.ljx.com/internet/complain.html> (hereinafter TotalNews Complaint).

[18]Id. at para. 10.

[19]Id. at para. 38-76.

[20]SeeTotalNews Complaint at para. 30.

[21]See id.

[22]See Wash. Post v. TotalNews, Inc. No. 97 Civ. 1190 (PKL) (S.D.N.Y. entered on June 5, 1997) (visited Oct. 8, 1998) <http://www.ljx.com/internet/totalse.html> (hereinafter TotalNews Settlement).

[23]For purposes of this article, plaintiff Time will be considered as the plaintiff unless otherwise specified. Further, since the complaint was filed in the District Court in the Southern District of New York, Second Circuit cases are assumed to be binding.

[24]TotalNews Complaint at para. 52.

[25]J. Thomas McCarthy, McCarthy's Desk Encyclopedia of Intellectual Property 443 (2d ed. 1995).

[26]See 15 U.S.C. § 1114 (1996); Prone v. MacMillan, Inc., 894 F.2d 579, 581-82 (2d Cir. 1990).

[27]See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (1976).

[28]While Lanham Act § 32(1)(a) is the statute to use for infringement for a registered trademark holder, and § 43(a) for an unregistered trademark holder, the courts have used both statutes interchangeably to find infringement for a registered trademark holder.

[29] U.S.C. § 1125 (1996).

[30]Id.

[31] U.S.C. § 1114 (1996).

[32]Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

[33]See Genesee Brewing Co. v. Stroh Brewing CO., 124 F.3d 137, 143 (2d Cir. 1997).

[34]See Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 842, 851 n.11 (1982) ("To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself."); Park N' Fly v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985); 15 U.S.C. 1065 (1994).

[35]Time news magazine began publication in 1922. Since then, the "Time" mark has been used in intrastate, interstate, and foreign commerce. The mark was subsequently registered with the Patent and Trademark Office (#246,868) in 1928.

[36] U.S.C. § 1114 (1996).

[37] U.S.C. § 1227 (1996).

[38]See, e.g., AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979); Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992), cert. denied, 113 S. Ct. 206 (1992).

[39]Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961).

[40]Seeid. at 495

[41]See Digital Equip. Corp. v. Altavista Tech., Inc., 960 F. Supp 456, 461 n.12 (D. Mass. 1997) (referring to defendant's act of altering its web site to "look, feel, and function very much" like plaintiff's site as "framing"). In the author's view, "framing" as used in the Digital court pertained to the design of a web site. This is different from framing as used in the TotalNews context where the technology allowed defendant to pull in a web site, chop up the contents, and display only the frames that benefited the local site.

[42]McCarthy, supra note 25, at 416.

[43]See McCarthy, supra note 25, at 416 (referring to the placement of the mark on the Abercrombie spectrum as "conceptual" strength and to the degree of market recognition of the mark as "commercial" strength).

[44]Paddington Corp. v. Attiki Importers & Distrib., Inc., 996 F.2d 577, 586 (2d Cir. 1993).

[45]It is established that evidence of instances of actual confusion is the strongest proof of the fact of a likelihood of confusion.

[46]See Little Caesar Enter., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 572 (6th Cir. 1987) (noting that intent to confuse customers gives rise to an inference of likely confusion because "a defendant who purposely chooses a particular mark because it is similar to that of a senior use is saying, in effect, that he thinks that there is at least a possibility that he can divert some business from the senior user - and the defendant ought to know at least as much about the likelihood of confusion as the trier of fact.").

[47]See J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition § 23:110 (4th ed. 1996).

[48]David S. Hilzenrath, Online Publishers Wage a Battle over Frame and Fortune, The Wash. Post, Feb. 11, 1997, at D4.

[49]Prior to the filing of the complaint, TotalNews had received numerous cease and desist letters from Time and the other plaintiffs requesting TotalNews to stop framing plaintiffs' web-sites.

[50]See McCarthy, supra note 25, at 441 ("Trade dress law is not a separate body of law with separate rules. It is merely one form of trademark law and is governed by the same rules of validity and infringement as trademark law.").

[51] U.S.C. § 1125(a) (1996).

[52]See generally J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition §§ 15:1 - 15:11 (4th ed. 1996).

[53]McCarthy, supra note 25, at 441.

[54]Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776 (1992).

[55]Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995) (declining to extend trade dress protection to plaintiff's leaf and squirrel designs on its sweaters because they were "functional in that their primarily purpose [was] aesthetic - to enhance the sweaters' ornamental appeal - rather than to identify the sweaters as Knitwaves products.").

[56]Id. at 1007.

[57]See Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977) (setting forth test used to determine whether design is distinctive by asking: (1) whether it was 'common' basic shape or design; (2) whether it was unique or unusual in particular field; (3) whether it was mere refinement of commonly-adopted and well-known form or ornamentation for particular class of goods viewed by the public as dress or ornamentation for goods; or (4) whether it was capable of creating commercial impression distinct from accompanying words). See also J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition §§ 8 - 13 (4th ed. 1996) ("In reality, all [of the Seabrook] questions are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origin - a trademark.").

[58]See Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997) (holding that plaintiff's description of its furniture as "wavelike, . . . [and] floating" was not particularized, and thus failed to indicate the unique combination of features required to serve as a source identifier.)

[59]See J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition §8:3 (4th ed. 1996) (commenting that lack of particularity may "leave the defendant uncertain as to what to do to avoid a charge of contempt and create dangers of anti-competitive over-protection" and is "unfair to the party accused of infringement who is forced to defend against an amorphous claim of exclusivity which is of uncertain and indeterminate dimensions.").

[60]Landscape Forms, 113 F.3d at 381. This requirement is in accord with the court's acknowledgment that although each element by itself may be unprotected, the particularized description of the design's unique combination may serve as a source indicator.

[61]Id.

[62]This is the view taken when prosecuting a patent claim. The claim should be as broad as possible. Its threshold is met as long as the claim does not read on prior art. A hypothetical Time site could be described as: A vertically positioned web page surrounded by a border embedded within the video screen giving the effect of a vertically positioned "81/2 by 11 piece of paper" set on top of a rectangular-shaped computer screen; the empty space that surrounds the left and right side of the "81/2 by 11 piece of paper" is intentionally left blank. A border enclosing the "81/2 by 11 piece of paper" is of a red and black combination with the red border encircling the black border; the thickness of the color border combination gives the effect of a thin trimming around the "81/2 by 11 piece of paper." A distinctive sound is heard every time the Time web site, or portion thereof (as in the case when the Time site is framed), is linked. See Exhibit G.

[63]Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).

[64]See Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., (2d Cir. 1989).

[65]See LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75-76 (1985).

[66]Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10. (1982).

[67]McCarthy, supra note 25, at 182.

[68]LeSportsac, 754 F.2d at 76.

[69]Id. at 74.

[70]See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).

[71]TotalNews Complaint at para. 72.

[72] U.S.C. § 102(a) (1996) (providing that "[c]opyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.").

[73] U.S.C. § 106 (1994).

[74] U.S.C. § 102(b) (1996).

[75]Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).

[76]Seeid. at 363 ("[T]here is nothing remotely creative about arranging names alphabetically in a white pages directory [such that it is] an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course.").

[77]TotalNews Complaint at para. 28.

[78]Given that the Sweat of the Brow doctrine was rejected under Feist, the "amounts of time, money and effort" that plaintiff Time spent on gathering the underlying facts was non-determinative.

[79]See 17 U.S.C. § 101 (1996) (providing that "[a] work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.").

[80]See 17 U.S.C. § 102(a); H.R. Rep. No. 94-1476, 94th Cong., 2nd Sess. 52-53 (1976).

[81]See David L. Hayes, The Coming Tidal Wave of Copyright Issues on the Internet (1997) <http://www.fenwick.com/pub/wave.html> ("During the course of [a] transmission, no less than seven interim copies may be made: the modem at the receiving and transmitting computers will buffer each byte of data, as will the router, the receiving computer itself (in RAM), the Web browser, the video decompression chip, and the video display board.").

[82]RAM (Random Access Memory) is the hardware device where data and programs are temporarily stored when the computer is turned on.

[83]MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993).

[84]Id. at 518.

[85]See id.

[86]Since there is no case to date that addresses this issue, it is the author's view that copies of the Time document were not made at the RAM of each interim computer node. First, as the packets that made up Time's publication were transmitted, each interim computer node may buffer only one or a few bytes of data at a time. These data were transmitted as bits and bytes that were incomprehensible to a viewer without an interface program that translated these bits and bytes into text or graphics. Secondly, since a transmission generally took a few seconds or less, the amount of time each packet resided in the RAM of each node was a lot shorter than the amount of time for which data resided in the RAM under the facts of MAI. According to the language of 17 U.S.C. § 101, these ephemeral bits and bytes are not "sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration."

[87]See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Each plaintiff registered with the United States Copyright Office the contents of its web site no more than six days prior to the filing of the complaint. Although no certificates of registration were yet issued by the time of the filing of the complaint, they were expected to issue within three months of the filing of the registration forms. Upon the issuance of the certificates, there was a presumption of the validity of the copyrights under 17 U.S.C. § 410(c); See TotalNews Complaint at paras. 69, 72.

[88]SeeFeist, 499 U.S. at 361.

[89] U.S.C. § 106 (1996).

[90]See 17 U.S.C. § 106 (1996).

[91]See 2 Melville B.. Nimmer & David Nimmer, Nimmer on Copyright, §8.09[A] (1997) ("[I]f the right to make derivative works, i.e., the adaptation right, has been infringed, then there is necessarily also an infringement of either the reproduction or performance rights.").

[92] U.S.C. § 101 (1994).

[93]See Paul Goldstein, Derivative Rights and Derivative Works in Copyright, 30 J. Copr. Society 209 (1983).

[94] U.S.C. § 106(2) (1994).

[95] U.S. Dist. LEXIS 22249, at *2 (C.D. Cal. 1997), aff'd 1998 U.S. App. LEXIS 17012 (9th Cir. 1998).

[96]See 1998 U.S. Dist. LEXIS 2265 (C.D. Cal. 1998).

[97]SeeFuturedontics, 1997 U.S. Dist. LEXIS 22249, at *3.

[98]Seeid.

[99]Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F. 2d 1341 (9th Cir. 1988).

[100]Id.

[101]Futuredontics, 1997 U.S. Dist. LEXIS 22249, at *2.

[102]SeeFuturedontics, 1998 U.S. Dist. LEXIS 2265, at *10

[103] F. 3d 580 (7th Cir. 1997).

[104]Id. at 582.

[105]Id.

[106] M. Nimmer & D. Nimmer, Nimmer on Copyright, §3.03 (1997) "Even apart from the questionable contribution of intellectual labor in the physical activities of page-removal and mounting, it is difficult to imagine that the artist . . . could take separately copyrighted individual art works and, merely by reproducing them in a compilation and then taking the reproduced pages out of the compilation and remounting them, thereby obtain a new copyright in the same art works. For the sole contribution added in this process is the method of mounting; choosing ceramic rather than cardboard as the backing material should scarcely be construed as a 'meaningful' variation in the eyes of the Copyright Act. It is therefore submitted that the [Mirage] court's analysis was in error." (footnotes omitted).

[107]SeeFuturedontics, 1998 U.S. Dist. LEXIS 2265, at *9; Louis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir. 1992).

[108]See Louis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir. 1992).

[109]Id. at 969.

[110]Id. In dictum, the court noted that its earlier holding in Mirage "would have been much different if [defendant] had distributed lenses that merely enabled users to view several artworks simultaneously." Further, the court stated that "[t]he ceramic tiles physically incorporated the copyrighted works in a form that could be sold [and] ... supplanted purchasers' demand for the underlying works."

[111]Futuredontics, 1998 U.S. Dist. LEXIS 2265, at *10.

[112]First, with the Game Genie add-on, the resulting onscreen display was not what the original author had intended. It was materially altered from the original work based on the added characteristics (increased speed and the number of lives). Second, although the add-on did not supplant demand for plaintiff's game cartridges; nevertheless, the Game Genie's popularity was based partly on plaintiff's good will. Taken together, the author acknowledges that the Game Genie could have been compared to a magnifying glass such that the enhanced display disappeared once the add-on or the magnifying glass was removed. However, the likelihood of reduplication of the enhanced display between the add-on and the magnifying glass was vastly different. With a magnifying glass, a different enhanced display was generated each time since it was impossible to place the glass at exactly the same distance away from the object. With the Game Genie, the visual output generated onscreen was the same each time regardless which module or television the add-on was plugged into.

[113]However, the enhancement produced by the Game Genie may be saved under the doctrine of fair use.

[114]Playboy Enter., Inc. v. Russ Hardenburgh, Inc., 982 F. Supp. 503 (N.D. Ohio 1997).

[115]See id. at 505-06.

[116]See id. at 513.

[117]Playboy Enter., Inc. v. WebbWorld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997), aff'd 168 F.3d 486 (5th Cir. 1999).

[118]See id. at 549-50.

[119]See id. at 552.

[120]Religious Tech. Ctr. v. Netcom On-Line Communication Serv., 907 F. Supp. 1361, 1378 n.25 (N.D. Cal. 1995).

[121]Id.

[122]McCarthy, supra note 14, at 163-64.

[123] U.S.C. § 107 (1996).

[124]See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994); American Geophysical Union v. Texaco Inc., 60 F.3d 913, 916 (2d Cir. 1994).

[125]Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984) (finding at-home taping of copyrighted works from public airwaves for time-shifting purposes was non-infringing fair use.)

[126]Id. at 451 (noting that "every commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright. . . .").

[127]See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (holding that a commercial parody of Roy Orbison's "Oh, Pretty Woman" recorded by rap music group 2 Live Crew may qualify as fair use).

[128]Id. at 579 (quoting Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990)).

[129]Id.

[130]Id.

[131] See Feist, 499 U.S. 340 (1991).

[132]See, e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566 (1985) (holding verbatim copying of only 300 words out of 200,000 words from plaintiff's book did not constitute fair use because defendant took "what was essentially the heart of the book."); Roy Export Co. v. Columbia Broadcasting Sys., Inc., 503 F. Supp. 1137 (S.D.N.Y. 1980) (holding that taking 55 seconds out of a 1 hour and 29 minute file was qualitatively substantial).

[133]Acuff-Rose, 510 U.S. at 590 (quoting M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.05[A][4] (1993)).

[134]See Freeling and Levi, supra note 9, at S5.

[135]In the author's view, providing notices in addition to ceasing all framing upon request and giving viewers the option of making the frames go away decrease the likelihood of an immediate lawsuit.

[136]See Polaroid Corp. v. Polorad Elec. Corp., 287 F.2d 492 (2d Cir. 1961).

[137]See Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946); Sid & Marty Krofft Television Prods. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977).

[138]See Quick, supra note 6 ("Some content providers are thrilled to be [framed]. Anything that's driving extra traffic to us is good.").

[139]Netscape Server's software tools allows a web site author to reject linking from specific address.

[140]See TotalNews Complaint, supra note 15.

[141]See TotalNews Settlement, supra note 22 at para. 3 and 4. Under the terms of the agreement, TotalNews agreed not to frame the plaintiffs' web sites from the TotalNews site. The settlement also prohibited TotalNews from framing or unauthorized linking to the plaintiffs' web sites by indirectly linking through a third site (i.e., framing another site that contained links to plaintiffs' sites). TotalNews may, however, place plaintiffs' hypertext links in its web site, provided that the links consisted only of the names of the linked sites in plain text and the plaintiffs' continuing consent.