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Almost all Web pages contain “hypertext links” (or “hyperlinks” or “links”)– highlighted words or images that, if selected by the user, result in the immediate delivery of another Web document. Recent cases show that Web sites that provide links risk liability for unfair competition and copyright infringement. Luckily, there are precautions that your Web site clients can take to reduce their risk of liability for linking. UNFAIR COMPETITION First, linking may be considered a form of misappropriation or unfair competition. The originating Web site may benefit from a sponsor of a commercial site at the expense of the linked Web site. That is, the third-party advertisements of the linked Web site may not be seen by the user or may conflict with the originating site’s advertisements. In addition, a site containing links could be the subject of a trademark-infringement or unfair-competition claim if the linking is likely to cause consumers to mistakenly believe that the two sites are somehow affiliated, connected or associated with each other. A Web site can also be liable for trademark dilution by tarnishment if, as a result of linking, users connect a trademark with a site that is inconsistent with the mark’s image and goodwill. For example, the Web site of a family-oriented establishment may appear in a link from a pornographic Web site. One of the first cases involving linking was Ticketmaster Corp. v. Microsoft Corp., (Case No. 97-3055). Microsoft operated a Web site called Seattle Sidewalk. Microsoft and Ticketmaster negotiated, but they failed to reach an agreement that would allow Seattle Sidewalk to profit from linking users to Ticketmaster. After the negotiations failed, Microsoft nevertheless established a “deep link” to a Seattle event listing and purchasing page within Ticketmaster’s site, bypassing all policies, service information and, more important, the advertising provided on the Ticketmaster homepage. Ticketmaster sued Microsoft, alleging numerous claims including trademark infringement, trademark dilution, unfair competition and unfair business practices. In response to Ticketmaster’s complaint, Microsoft raised 11 affirmative defenses, including fair use and the First Amendment. Microsoft also filed a counterclaim for declaratory judgment, stating that a judicial determination confirming the legality of its use of Ticketmaster’s URLs was necessary to “remove any chill from the free workings of the Internet.” Ticketmaster replied that its action was not an attack of the use of links in general, but instead, an attack on Microsoft’s unauthorized use of “deep” links to particular pages on Ticketmaster’s Web site, which was an unlawful use and misappropriation of Ticketmaster’s property for the commercial use and gain of Microsoft. Additionally, Ticketmaster replied that this unlawful use diminished the advertising revenue available to Ticketmaster and increased Microsoft’s advertising revenue. The case ultimately settled, with Microsoft agreeing to link only to the Ticketmaster homepage. In a similar case, Ticketmaster Corp. v. Tickets.com, (Case No. 99-07654), complaint filed July 23, 1999), Ticketmaster sued Tickets.com for deep linking. Tickets.com was an online ticketing service that would sell tickets to a user directly or direct the user to another ticket broker who could sell the user the tickets that he or she requested. With Ticketmaster as the ticket broker, the user clicked on “Buy this ticket from another online ticket company” on Tickets.com’s Web site, which deep-linked the user to an “interior” Web page on Ticketmaster’s Web site, thereby bypassing its home page and the attendant advertising. Although Tickets.com did not benefit from the sale of such tickets, Ticketmaster claimed that Tickets.com’s practices constituted, among other things, unfair competition, false advertising and misappropriation. In denying Tickets.com’s motion to dismiss, the U.S. District Court for the Central District of California agreed with the defendant’s position that deep linking by itself does not constitute unfair competition, but concluded that other conduct in connection with the linking could result in a valid claim of unfair competition. Ticketmaster Corp. v. Tickets.com, 2000 U.S. Dist. LEXIS 4553 (March 2000). The court allowed Ticketmaster to go forward with its unfair competition claims, which alleged that Tickets.com falsely suggested or implied an association with Ticketmaster, provided misleading information about phone numbers to obtain tickets and exercised unauthorized control over the event pages of Ticketmaster. COPYRIGHT INFRINGEMENT The most common legal risk associated with linking is the risk of linking to a Web site containing infringing content. A party may be liable for contributory copyright infringement if, with knowledge of the infringing activity, it induces, causes or materially contributes to the infringing activity of another. A&M Records Inc. v. Napster Inc., 114 F. Supp. 2d 896, 918 (N.D. Cal. 2000). While actual knowledge is not required, a party may be liable if it knows or has reason to know of a third party’s direct copying. Id. In Intellectual Reserve, Inc. v. Utah Lighthouse Ministry Inc., 75 F. Supp. 2d 1290 (D. Utah 1999), the defendants posted an illegally copied version of the “Mormon Church Handbook of Instructions.” After being ordered to remove the illegally copied handbook, the defendants posted on their site three other Web sites that illegally posted the handbook. The defendants also posted e-mail encouraging users to browse the Web sites that illegally posted the handbook. The Utah district court held that the defendant was likely to be found liable for contributory infringement. In Bernstein v. J.C. Penney Inc., 50 USPQ2d 1063 (C.D. Cal. 1998), a photographer brought a copyright infringement action against Elizabeth Arden Co. Parfums International Ltd. and J.C. Penney. J.C. Penney’s Web site linked to an Internet movie database site, which in turn linked to other sites. At the end of these multiple links, a user ultimately arrived at a Web site displaying two allegedly infringing photographs of Elizabeth Taylor. The photographer owned the copyrights to these photos. The defendants moved to dismiss the complaint for failure to state a claim upon which relief can be granted. The defendants argued that the photographer’s theory of infringement by multiple linking would have a devastating impact on the Internet and argued that the claim should be dismissed for the following reasons: � A company whose product is merely displayed on another entity’s Web site cannot be held liable for any infringement by the author of that Web site. � Linking cannot constitute direct infringement because the computer server of the linking Web site does not copy or otherwise process the content of the linked-to site. � Multiple linking cannot constitute contributory infringement because (a) Internet users’ viewing of the material at issue is not infringing and thus there was no direct infringement in the Unites States, (b) linking is capable of substantial noninfringing uses and thus cannot support a claim for contributory infringement, (c) the court cannot infer from the facts alleged that the defendants knew the photos had been posted to one of the Web sites in the chain and (d) multiple linking does not constitute substantial participation in any infringement in which the linking Web site does not mention the fact that Internet users could, by following the links, find infringing material on another Web site. The court granted the motion to dismiss, without providing any analysis or discussion of the challenged conduct. Courts in California and New York have entered preliminary injunctions barring defendants from posting or knowingly linking on the Internet to codes that overcome the encryption system that protects DVDs. The material on DVDs is encrypted to prevent unauthorized copying, and the encryption system is known as the “Content Scrambling System.” Last year, hackers cracked the encryption system and posted copies of this program (known as DeCSS) on the Internet. Hundreds of sites have either posted copies of the program or linked to sites that have copies. In DVD Copy Control Association v. McLaughlin, 2000 WL 48512 (Cal. Super. Ct. 2000), the DVD Copy Control Association, the legal license holder of CSS, filed suit in California, alleging the defendants misappropriated its trade secrets in the CSS technology. While the defendants were enjoined from posting the DeCSS program on their Web sites, the court refused to enjoin the defendants from linking to sites that contain DeCSS, stating: “The court refuses to issue an injunction against linking to other Web sites which contain the protected materials as such an order is overbroad and extremely burdensome. Links to other Web sites are the mainstay of the Internet and indispensable to its convenient access to the vast world of information. A Web site owner cannot be held responsible for all of the content of the sites to which it provides links. Further, an order prohibiting linking to Web sites with prohibited information is not necessary since the court has enjoined the posting of the information in the first instance.” In Universal City Studios Inc. v. Reimerdes, 82 F. Supp. 2d 211 (S.D.N.Y. 2000), the defendants were sued for posting the DeCSS program on the www.2600.com Web site. Shortly after the suit commenced, the court entered a preliminary injunction barring defendants from posting DeCSS, holding that posting the program violated copyright law. The defendants responded with what they termed “electronic civil disobedience,” by creating and posting links on the Web site to nearly 500 other Web sites that posted or linked to DeCSS. Subsequently, the court enjoined the links, holding that the posting of DeCSS violated the anti-trafficking and anti-decryption provisions of the Digital Millennium Copyright Act (DCMA), which make it illegal to traffic in certain forms of decryption technology. See Id. at 294. The court concluded that, even if a link was to a site that did not directly provide a download, the creation of a link was still enough to violate the DCMA: “To the extent that defendants have linked to sites that automatically commence the process of downloading DeCSS upon a user being transferred by defendants’ hyperlinks, there can be no serious question. Defen-dants are engaged in the functional equivalent of transferring the DeCSS code to the user themselves.” Potentially more troublesome might be links to pages that offer a good deal of content other than DeCSS but that offer a hyperlink for downloading, or transferring to a page for downloading the program. For example, if the Los Angeles TimesWeb site somewhere contained the DeCSS code, it would be incorrect to say that anyone who linked to the Los Angeles Times Web site, regardless of purpose or manner in which the link was described, thereby offered, provided or otherwise trafficked in DeCSS merely because DeCSS happened to be available on a site to which one linked. But that is not this case. Defendants urged others to post DeCSS in an effort to disseminate DeCSS and to inform defendants that they were doing so. Defendants then linked their site to those “mirror” sites, after first checking to ensure that the mirror sites in fact were posting DeCSS or something that looked like it, and proclaimed on their own site that DeCSS could be had by clicking on the hyperlinks on defendants’ site. By doing so, they offered, provided or otherwise trafficked in DeCSS, and they continue to do so to this day. See Id. at 325. The court rejected defendants’ argument that applying the DMCA to these links was unconstitutional under the First Amendment. While the court admitted that computer code is expressive and entitled to First Amendment protection, the court suggested that, when applied to linking, the DMCA does not suppress freedom of expression, but rather regulates the functionality of computer code. Recognizing the potential chilling effect of enjoining Internet linking, the court attempted to circumscribe its ruling on linking narrowly by adopting a two-tiered approach for liability found in the “public figure” doctrine in defamation cases. The court stated that liability arises only if there is “clear and convincing evidence” that the creator of the links has both (1) knowledge that material that violates the DMCA’s provisions is on the linked-to site and (2) an intention to create the link for the purpose of disseminating such material. RECOMMENDATIONS Despite the above-described risks involved with providing links from one Web site to another, there are procedures that should be employed to protect a site from liability for linking. First and foremost, a Web site owner should take advantage of the safe harbor provisions for Internet service providers found in the DMCA, 17 U.S.C � 512(d). The DMCA provides a limitation on liability for “service providers” who have linked to a site containing infringing material. The definition of “service provider” is vague and conceivably encompasses every Web site. To take advantage of this limitation on liability, a service provider must not have actual knowledge of infringing material on the linked-to site, must not be aware of facts or circumstances from which infringing activity is apparent, and cannot receive any financial benefit directly from the infringing activity in situations in which the service provider has control over such activity. Also, when the service provider is given a detailed notice of a claimed infringement in the form dictated by the DMCA, or when it obtains actual knowledge of a claimed infringement, it must act expeditiously to terminate the link. (For a detailed discussion of how a Web site can avail itself of the DMCA’s potential protections, see the October 2000 issue of the Intellectual Property Strategist.) Second, Web sites should examine all of the links appearing on their Web site. Recall that a party may be liable for contributory copyright infringement if it knows or has reason to know of a third party’s direct infringement, and a party may be vicariously liable if it has the right and ability to supervise the infringing activity. Also, with respect to vicarious liability, a Web site should examine whether it has a direct financial interest in connection with its links. Third, a Web site should take steps to avoid the appearance that it endorses or is associated with the linked site. To do this, links should contain minimal text (the title of the Web site or domain name) and not use registered logos. Furthermore, if possible, Web sites should link to a home page or index page of the linked-to Web site, and not directly to a location deep within the site. In addition, to avoid the likelihood that the two sites are somehow associated with or endorsed by each other, a disclaimer describing the relationship between the sites should be added. Of course, there is also the common sense way to reduce any risk: Seek permission to link to another site. The unfair competition cases mentioned above involve nonconsensual links. Thus, a Web site owner may consider a “linking agreement” with the linked-to site. However, such agreements may be difficult to obtain, if, for example, the linked-to site will not receive any benefit from the agreement or if the linked-to site is a competitor. The American Bar Association’s committee on the law of commerce in cyberspace has published a guide with model linking agreement provisions and commentary to assist those contemplating such agreements. For more information, see www.abanet.org/buslaw/cyber. Manny D. Pokotilow and Salvatore Guerriero are litigators with Philadelphia’s Caesar Rivise Bernstein Cohen & Pokotilow prosecution and litigation of patent, trademark, copyright, trade secret, computer and Internet law.

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