Re: TotalNEWS & Derivative Works

John Kasdan <kasdan[_at_]columbia.edu> wrote:
>
> Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
> >
> > I think IMG links and framing are indistinguishable for copyright
> > purposes. However, I agree with John's intuition that image inlining
> > is somehow "worse" than framing; I suspect the difference is in how
> > the viewer perceives the resulting page, something which will be
> > critically important in resolving a *trademark* dispute arising out
> > of such a link.
>
> The only problem with this analysis is that, in many cases, there is
> not going to be anything which even vaguely looks like a trademark.
> Say that I decide to decorate my home page with a bunch of image links
> to www.corbis.com (Microsoft's image licensing company) I don't think
> that Corbis could claim that any and all of the images they license
> act as trademarks. Perhaps they could claim some sort of business
> tort, similar to the crime of theft of services, but I find it hard to
> believe that the availability of recourse in this circumstance depends
> solely on the business of the party to whom I link.

To which Jamie Powers <jamie[_at_]srgpe.com> replied (edited to fit an 80 col screen):
>
> One way to frame the inquiry here may be to use the language most
> often used in bringing a claim for objectionable linking: False
> designation of origin. The big stick to be wielded by a website
> operator is section 43(a) of the Lanham Act (our federal trademark
> law). Section 43(a) (originally intended to address some of our
> international treaty obligations), has become a useful vehicle to
> protect anything which an owner claims has come to indicate source and
> thus operates as a trademark. 43(a) does not require a registered
> trademark, does not require any showing of distinctiveness as a
> prerequisite to bringing the claim, and affords the party invoking the
> Act substantially all of the remedies available to a registrant of a
> federal mark. It can be used for any source identifying feature -
> trade dress is a hot item.
>
> So. . . the site owner would claim that the link implies, suggests,
> intimates (pick any attenuated verb) an association or sponsorship
> between the linker and the linked which creates a false designation of
> origin.

It's been a long time since I litigated a 43(a) case, but, back then, only commercial competitors had standing to sue. So, although in my hypothetical Corbis might possibly have a cause of action, taking pictures from a purely private site would be immune from action under 43(a). Furthermore, the language of 15 USC 1125 states:

  Any person who, on or in connection with any goods or services, or any   container for goods, uses in commerce any word, term, name, symbol,   or device, or any combination thereof, or any false designation of   origin, false or misleading description of fact, or false or   misleading representation of fact, which -   

  (A) is likely to cause confusion, or to cause mistake, or to deceive   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, or   

  (B) in commercial advertising or promotion, misrepresents the nature,   characteristics, qualities, or geographic origin of his or her or   another person's goods, services, or commercial activities, shall be   liable in a civil action by any person who believes that he or she is   or is likely to be damaged by such act.   

So it appears that the linker would have to have some commercial purpose to her site to come under the act. So in many (most?) cases of direct IMG linking there would be no redress under 43(a). The problem is, this looks like a copyright issue, but, as we noted in the frames discussion, there is no unauthorized copying going on. Nonetheless, my highly suspect intuition tells me that I would have a hard time winning the case on behalf on the linker, even if the linkee wasn't as big as Corbis.   

By the way, what "international treaty obligations" was 43(a) designed to address? As I understood it, it was a response to the problem of showing injury when a competitor used false advertising. (Ie., if you make real aluminum washboards and I advertised my galvanized iron washboards as being made of aluminum, how do you show that, but for my false advertising, you would have sold more washboards? Maybe you could do that if you were the only manufacturer of aluminum washboards (and there were cases with that sort of fact situation) but what if you weren't?)

John Kasdan
<kasdan[_at_]columbia.edu> Received on Wed Jun 18 1997 - 22:46:50 GMT