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Hyperlinks: A Form Of Protected Expression?

A Georgia federal court implies a 1st Amendment 'right to link' defense to infringement claims.

By Jeffrey R. Kuester
and Peter A. Nieves

SPECIAL TO THE NATIONAL LAW JOURNAL

The National Law Journal (p. C10)
Monday, January 26, 1998

JUST WHEN SOME were beginning to refer to Georgia as a technological backwater1 after enactment of its "Internet Police" law,2 the statute was overturned.3 Roughly one year after a state legislator criticized colleagues who passed the law as "not knowing a gigabyte from a chigger bite,"4 Senior Judge Marvin H. Shoob, of the U.S. District Court for the Northern District of Georgia, issued an opinion that not only invalidated the statute, but that also arguably created a new First Amendment "right to hyperlink"5 as well. Such a right very well may stand up against claims of trademark infringement and unfair competition.
Until that ruling, an amendment to the Georgia Computer Systems Protection Act criminalized the use of any trade name, registered trademark, logo, legal or official seal or copyrighted symbol on the Internet in a manner that falsely implied that permission for such use had been granted.6 The statute's vague wording left unclear whether the law covered the use of trademarks as Web page hyperlinks. It was argued, however, that if mere use of a trademark without a disclaimer in some commercial contexts can be construed to create a likelihood of confusion as to sponsorship,7 then the mechanism of "clicking" on a trademark to view its owner's Web page very well may do the same, or at least imply permission.
In response to the legislation, a diverse coalition of 14 plaintiffs, including the American Civil Liberties Union and the Electronic Frontier Foundation, sued for injunctive and declaratory relief.8 They argued that the statute violated constitutional protections of free expression, free association, access to information and privacy, and that it was overbroad and unconstitutionally vague. The plaintiffs conceded that the state may have a legitimate interest in protecting certain intellectual property rights9 but argued nevertheless that the state could not constitutionally suppress protected expression under the guise of protecting such rights.10
Relying in particular on case law from the 1st U.S. Circuit Court of Appeals holding that the First Amendment restricts protections available to trademark owners,11 the plaintiffs argued that noncommercial use of a trademark for hyperlinking is a constitutionally protected form of expression. They noted also that there already were other, less restrictive civil and criminal remedies to protect intellectual property at the state and federal levels.12 They argued that the act's broad restrictions were not narrowly tailored to serve a compelling state interest but were simply content-based restrictions upon protected expression.
The district court found the statute unconstitutional under the First and Fifth Amendments. It held that the law was not narrowly tailored to achieve fraud prevention because it "instead sweeps innocent, protected speech within its scope" and "applies regardless of whether a speaker has any intent to deceive or whether deception actually occurs."13
Rejecting the state's claims that the statute was prone to a variety of narrowing constructions,14 the court noted that it was "not readily susceptible to a limiting construction and...its plain language is not narrowly tailored to promote a compelling state interest."15 Working from this conclusion that "the statute was not drafted with the precision necessary for laws regulating speech," it concluded also that the plaintiffs were likely to succeed in demonstrating that the statute was unconstitutionally vague.16
More important from a national perspective, however, is the court's treatment of the hyperlinking issue: "A fair reading of the clause, as written, is that it prohibits the current use of Web page links. The linking function requires publishers of Web pages to include symbols designating other Web pages that may be of interest to a user. This means that an entity or person's seal may appear on hundreds or thousands of other Web pages, just for the purpose of enabling the linking system. The appearance of the seal, although completely innocuous, would definitely 'imply' to many users that permission for use had been obtained. Defendants have articulated no compelling state interest that would be furthered by restricting the linking function in this way."17
Thus, the court clearly attached First Amendment importance to hyperlinking, arguably creating a right to link. On the other hand, it noted that hyperlinking would imply to users that permission to link had been obtained. Because "implication of permission" ordinarily would result in a finding of infringement outside the Internet context,18 the court's opinion suggests that the usual rules governing trademark infringement and unfair competition actions may not apply with equal force when hyperlinks are concerned.
Moreover, as the court noted, protection from infringement of trademarks and service marks is available through various causes of action, under state and federal law, other than those provided by the Georgia act. Consequently, if the right to link recognized by the court is, in fact, grounded in the First Amendment, the consequences of its recognition may extend far beyond the legislation at issue in this case. Presumably, the First Amendment specifically would restrict application of these other causes of action as well,19 leaving in question the ability of trademark owners to prevent uses of their marks in the hyperlinking context.

Graphical Links

The ruling also affects use of graphical images as hyperlinks, not condoned by many who approve of plain-text hyperlinks. The likelihood of confusion may seem greater, but many graphical images also carry copyright protection.
As noted earlier, however, the statute also referred to "copyrighted symbols," and the court noted that "[t]he linking function requires publishers of Web pages to include symbols designating other Web pages which may be of interest to a user. This means that an entity or person's seal may appear on hundreds or thousands of other Web pages, just for the purpose of enabling the linking system."20 Thus, graphical image hyperlinks arguably are included in the newly created right to link.
There is no question that the First Amendment applies with force to the Internet. The importance of free speech on the 'Net recently was emphasized in the U.S. Supreme Court's ruling, in Reno v. ACLU,21 that the Communications Decency Act was an unconstitutional restriction of expression. Although the state had a compelling interest in protecting minors from pornographic and indecent material, the act was considered overly vague.22
Of particular interest was the court's distinction between commercial and non-commercial speech--the latter warranting a higher level of protection.23 This seems to suggest that non-commercial hyperlinking will fall within the domain of the ruling, whereas hyperlinking for commercial use may not.24 Nonetheless, if a First Amendment right to link indeed has been created, it is likely to be very strong.
One of the first tests of this new linking right may be the pending case of Ticketmaster Corp. v. Microsoft Corp.25 Ticketmaster filed suit in the U.S. District Court for the Central District of California, alleging improper use of Ticketmaster's name and logo on Microsoft's "Seattle Sidewalk" Web page.26 Specifically, through Microsoft's "deep" hyperlinks, a user of the site could bypass all policies and service information provided on the Ticketmaster home page and go directly to Ticketmaster's event listing to purchase tickets.27
Ticketmaster alleged numerous counts against the software giant, including dilution of Ticketmaster's trademarks, misrepresentation, unfair competition, unfair business practices and misleading statements.28 Microsoft has raised the First Amendment as one of its many defenses, although any commercial activity on the site may be detrimental to that defense.
Because Microsoft's hyperlinks are deep textual links into Ticketmaster's site, many are likening the dispute to Shetland Times Ltd. v. Wills,29 a recent dispute in the United Kingdom in which the court apparently disapproved of similar deep links. Although the case recently settled out of court,30 earlier developments in the matter may shed light on the issue of deep linking.
In the case, Lord Hamilton, of the Edinburgh Court of Session, granted an interim interdict--similar to a preliminary injunction under U.S. law--to stop The Shetland News from making free deep links to the Shetland Times Web site.31 The plaintiffs own and publish The Shetland Times, a newspaper carrying local, national and international news. The defendants provide a news reporting service called The Shetland News.
Both parties created Web sites based on their news reports. The defendant's site, however, contained a number of headlines that previously appeared in issues of the Shetland Times and that served as hyperlinks. These links provided direct, deep-link access to the corresponding text published on the plaintiffs' site without requiring users to go through the plaintiffs' home page. The plaintiffs planned to sell advertising on the home page, but use of the defendants' deep links would bypass such ads, jeopardizing the plaintiffs' advertising revenue.32

No Deep Linking

In granting the interim interdict on copyright grounds, which may not apply equally in the United States, Lord Hamilton believed it crucial that all access to the substantive material on the plaintiffs' site be obtained exclusively by accessing the site through the home page--that is, no deep linking--and that there was no materiality to the defendants' defense that the plaintiffs were benefiting from their newspaper items being made more available to the public by being displayed on the defendants' site.33
The new right to link created by a federal court in Georgia soon will be evaluated in the deep textual hyperlinking context. It is only a matter of time, however, before the First Amendment's impact on other areas of linking information on the Internet--including graphical hyperlinking, framing,34 and search engine manipulating, or meta-tagging35--are hammered out. Meanwhile, the First Amendment certainly should be considered when evaluating potential defenses to claims of intellectual property violations on the Internet.

(1) Grass-roots Groups Slow in Responding to New Legal Curbs, Atlanta Constitution, May 6, 1996, at C6.

(2) O.C.G.A. Sec. 16-9-93.1 (1996 Supp.) provides: "(a)It shall be unlawful for any person, any organization, or any representative of any organization knowingly to transmit any data through a computer network or over the transmission facilities or through the network facilities of a local telephone network for the purpose of setting up, maintaining, operating, or exchanging data with an electronic mailbox, home page, or any other electronic information storage bank or point of access to electronic information if such data uses any individual name, trade name, registered trademark, logo, legal or official seal, or copyrighted symbol to falsely identify the person, organization, or representative transmitting such data or which would falsely state or imply that such person, organization, or representative has permission or is legally authorized to use such trade name, registered trademark, logo, legal or official seal, or copyrighted symbol for such purpose when such permission or authorization has not been obtained; provided, however, that no telecommunications company or Internet access provider shall violate this Code section solely as a result of carrying or transmitting such data for its customers. (b)Any person violating subsection (a) of this Code section shall be guilty of a misdemeanor. (c)Nothing in this Code section shall be construed to limit an aggrieved party's right to pursue a civil action for equitable or monetary relief, or both for actions which violate this code section."

(3) American Civil Liberties Union v. Miller, 43 U.S.P.Q.2d 1356 (N.D. Ga. 1997).

(4) See Jeffrey R. Kuester, "Cyber-Sheriff's in Town," NLJ, 7-1-96, at C1.

(5) Hyperlinks are segments of text or images that refer to other Web pages. When a user clicks on the link, the linked document is displayed automatically on the user's computer screen.

(6) The act also created civil remedies for any violation of the act. O.C.G.A. Sec. 16-9-93(g)(1).

(7) Likelihood of confusion as to sponsorship is one test for trademark infringement under state and federal law. See, e.g., 15 U.S.C. 1117, 1125(a) (1994); O.C.G.A. Secs. 10-1-372, 10-1-450(1) (1994).

(8) See Jeffrey R. Kuester & Matthew C. Kramer, "Coalition Challenges State Law Guarding 'Net IP", NLJ, 10-28-96, at C22.

(9) See 43 U.S.P.Q at 1359.

(10) See (http://www.efga.org/hb1630/brief01.html).

(11) See L.L. Bean Inc. v. Drake Publishing Inc., 811 F.2d 26, 32 (1st Cir. 1987).

(12) See, e.g., 15 U.S.C. 1114, 1125(a) (1994); O.C.G.A. Sec. 23-2-55 (1994); id. Sec. 10-1-393; id. Sec. 10-1-372; id. Sec. 10-1-450 et seq.; id. Sec. 10-1-453; see also Jellibeans Inc. v. Skating Clubs of Georgia Inc., 716 F.2d 833, 837 and n.6 (11th Cir. 1983).

(13) 43 U.S.P.Q.2d at 1359.

(14) See American Communications Ass'n v. Douds, 339 U.S. 382, 407 (1955) ("[I]t is...the duty of this Court to construe a statute so as to avoid the danger of unconstitutionality if it may be done in consonance with the legislation's purpose"); see also U.S. v. CIO, 335 U.S. 106, 120-21 (1948); United States v. Delaware & Hudson Co., 213 U.S. 366, 407-08 (1909).

(15) 43 U.S.P.Q.2d at 1360.

(16) Id.

(17) Id. at 1360, n.5.

(18) See, e.g., University of Ga. Athletic Ass'n v. Laite, 756 F.2d 1535, 1546 (11th Cir. 1985).

(19) In other contexts, the use of the First Amendment to restrict applicability of unfair competition causes of action is well established. See, e.g., Cliffs Notes Inc. v. Bantam Doubleday Dell Publishing Group Inc., 886 F.2d 490, 493-97 (2d Cir. 1989); Rogers v. Grimaldi, 875 F.2d 994, 997-1002 (2d Cir. 1989).

(20) 43 U.S.P.Q.2d at 1360, n.5.

(21) 117 S. Ct. 2329 (1997).

(22) Id. at 2346.

(23) Id. at 2347.

(24) After losing in its bid to defend the Communications Decency Act before the Supreme Court, the Clinton administration appeared to change its position by releasing a new electronic commerce policy opposing any new CDA-like laws and calling for industry self-regulation, filtering software and other means of enabling parents to control what their children view. See generally William J. Clinton & Albert Gore, Jr., A Framework for Global Electronic Commerce (1997).

(25) Civil Action No. CV 97-3055 RAP (C.D. Cal. filed 4/28/97).

(26) See (http://www.ljx.com/LJXfiles/ticketmaster/complaint.html).

(27) This would not have happened if the hyperlinks from Seattle Sidewalk had been "surface" links to the Ticketmaster home page, rather than to one of the subsidiary pages in the site.

(28) Interestingly, before the lawsuit, the companies were in negotiations to set up hyperlinks from the Sidewalk site to the Ticketmaster site, suggesting that Microsoft was concerned about the legal bases for doing so. After negotiations failed, Microsoft established the links anyway. After the initial complaint was filed, however, Ticketmaster amended it to reference deep linking, creating an inference that it suspects that merely linking to a home page may not be actionable in the abstract.

(29) Edinburgh Sess. Cas., filed Oct. 24, 1996.

(30) Details of the Nov. 11 settlement may be found at (http://www.shetland-news.co.uk/headline/97nov/settled/settled.html). Shetland News still will be able to link to stories on The Shetland Times Web site, using the original story headlines, provided that each hyperlink to one of Shetland Times' stories uses the legend "A Shetland Times Story" under the headline and in the same size; next to each headline there is a button showing "legibly" Shetland Times' masterhead logo; and these legends and buttons are to be hyperlinks to The Shetland Times' online headline page.

(31) Lord Hamilton's order may be found at (http://www.shetland-news.co.uk/opinion.html).

(32) Id.

(33) Id.

(34) Frames provide a means for dividing a Web page into scrollable portions, or windows, that are viewed in separate parts of the screen simultaneously, while functioning independently. When used properly, frames can make a viewer's time on a Web page drastically more productive and convenient. Frames typically are manipulated with hyperlinks and are a natural extension of the hyperlinking technique, essentially specifying the area of a screen into which linked information will appear upon activation.

(35) Meta-tags embody one method of communicating keywords with search engines to manipulate search results, such as through the use of others' trademarks. In a sense, meta-tag keywords are "pre-hyperlinks," because their use on a Web page likely will cause one or more search engines to create a search-result hyperlink to that page when a user performs a search including that keyword. Because search engines frequently examine other words on a Web page in addition to meta-tag keywords, however, search engine manipulation is not restricted to meta-tags. Thus, other words on a page may constitute this type of "pre-hyperlink." In addition, the purchase of keyword-specific banner ads on search engine result pages may be problematic when others' trademarks are used as keywords.¤

Mr. Kuester is a partner at Atlanta's Thomas, Kayden, Horstemeyer & Risley, practicing in intellectual property and computer law. Mr. Nieves, a former summer associate at the firm, is a student at Franklin Pierce Law Center.


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