WhenU's software exists on 25 million computers, largely as a result of its partnership with Kazaa, the popular file-sharing service.
When internet users download the Kazaa software they also get WhenU's ad-serving software, or adware. Its software examines keywords, URLs and search terms in use on the user's browser and then selects which ads to serve the user. Its 400 advertisers include British Airways, JP Morgan Chase, General Motors, Priceline, and Verizon.
Following in a long line of disgruntled web site owners, 1-800 Contacts sued WhenU in October 2002 over the appearance of pop-ups advertising rival contact lens company Vision Direct when users had specifically typed trade marked search terms relating to '1-800 Contacts'.
On 22nd December, Judge Deborah Batts of the Southern District Court of New York granted 1-800 Contacts an injunction, prohibiting WhenU from sending the pop-ups, and requiring that the trade marked terms be removed from its search terms database.
According to Law.com, the judge was concerned that the customer was likely to be confused by the pop-ups. She wrote:
"The fact that Defendants' pop-up advertisement for competing internet contact lenses retailers appears shortly after a consumer types into the browser bar Plaintiff's trademarked name and accesses Plaintiff's homepage increases the likelihood that a consumer might assume Defendants' pop-up advertisements are endorsed or licensed by Plaintiff".
The decision breaks with recent rulings in favour of WhenU. The most recent – in September – supported WhenU's argument that its ads appear in clearly differentiated windows and that internet users have the choice to control the appearance of their desktops.
However, according to Law.com, Judge Batts disagreed on the basis of a survey carried out on behalf of 1-800 Contacts. This revealed that the majority of customers downloading the WhenU software were not aware of the download or what the software actually did. The consensus was that the owners of the site being viewed were responsible for the pop-up ads.
Consequently the Judge found that there was trade mark confusion, but dismissed a further claim that the ads infringed on 1-800 Contacts' copyright by blocking access to its web site.