Decision in Internet Ads Case Protects Consumers

New York - The Second Circuit Court of Appeals issued a decision this week that promises to prevent trademark owners from asserting control over the computers of consumers who visit the trademark owners' websites. The case, 1-800 Contacts v. WhenU, questioned whether it was a trademark violation for Internet "adware" company WhenU to provide users with software that gives them advertisements related to keywords found in their online searches. The Second Circuit found that the use of a trademark in software used to generate ads is not a "use in commerce" under trademark law.

The Electronic Frontier Foundation (EFF) filed an amicus brief in the case with the assistance of Professor Eric Goldman of Marquette University Law School. In it, EFF argued that consumers should not be prohibited by trademark law from installing software that allows them, when typing "1-800-Contacts" into a search engine, to see information (including advertisements) from the company's competitors as well as from the company.

"A trademark owner is not entitled to control your desktop just because you happen to be visiting its website," said Fred von Lohmann, EFF senior staff attorney. "This decision is good news for consumers who want the freedom to install tools that help them customize their web-surfing."

Online contact lens distributor 1-800 Contacts, Inc., won an initial preliminary injunction against, Inc., in October 2002, claiming that's SaveNow software confused potential customers by generating ads related to the words and web addresses users entered into online search engines and web browsers. appealed the lower court's ruling in December 2003, and the Second Circuit overturned the lower court's ruling.


Wendy Seltzer
Staff Attorney
Electronic Frontier Foundation

Fred von Lohmann
Senior Intellectual Property Attorney
Electronic Frontier Foundation

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