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Wakeman, A.J. --- "'Building a Moving Bus...' Applying Established Legal Theories to the Internet-Related Issues of Hyperlinking and Framing" [2001] CanterLawRw 11; (2001) 8 Canterbury Law Review 208


"BOARDING A MOVING BUS..."APPLYING ESTABLISHED LEGAL THEORIES TO THE INTERNET- RELATED ISSUES OF HYPERLINKING AND FRAMING

ANGUS J. WAKEMAN[*]

I. Introduction

The World Wide Web as a medium of information exchange has sometimes been described as a "wild frontier", a reference to the relatively uninhibited use that users and web site operators currently enjoy on the Web. While its introduction has dramatically fuelled the rising popularity of the Internet, it has also been accompanied by a need to address the application of traditional intellectual property rights in this new medium. The courts, however, have been unable to keep pace with this technological revolution, for as author Rosalyn Morris has suggested "attempting to apply established ...law in the fast-developing world of the Internet is somewhat like trying to board a moving bus...".[1] The attempted creation of legal precedent in the area has been unduly complicated by the dynamic nature of the Internet, the Web's increasing commercialisation, and the exponential leaps in programming technology.

The need for resolution of these issues is manifest in that the World Wide Web is fast becoming the largest and comparatively most inexpensive medium for advertising and publishing in the world. The low cost and relative ease of publishing on the Internet enables freedom of speech and the press to an extent that far outstrips the traditional broadcast and print media. As the Web grows at an ever-increasing rate, it is accompanied by revolutionary new methods of conducting business on a global scale, giving rise to potential legal issues.

The practices of hyperlinking and framing are examples of these technological developments that facilitate the ready navigation and access of this dynamic marketplace of ideas. But the rapid expansion and commercialisation of the Internet, coupled with these technological practices, has blurred the fundamental conceptual borders that exist in the protection of proprietary rights and opened a "Pandora's box" of legal challenges as users encounter old legal issues in entirely new contexts.

The purpose of this paper is to examine the potential problems and implications posed by hyperlinking and framing practices in the wider context of Internet regulation. After a brief historical perspective and explanation of terms, this paper provides an overview of the areas of intellectual property law implicated by these practices, and whether they are applicable, and analyses the key authorities that have dealt with these issues thus far. The second part of this paper addresses the implied license arguments for operations on the Internet, and presents a number of technical solutions and practical recommendations for resolving this issue and avoiding similar conflicts in the future.

II.Background to the Internet and the World Wide Web

The Internet originated in 1969 primarily as an experimental tool to link government and industrial computers in the US defence field.[2] With the rapid increase in the number of networks, however, a new system was devised to make the varied content of the Internet more accessible. This new organisational model, which became known as the World Wide Web ("the Web"), involved the development of a decentralised global system of inter-related links between thousands of local computer servers, to connect and access data stored in each server's memory across the network.[3] One of the key mechanisms that facilitated the development of the World Wide Web as a uniquely interactive medium was the introduction of hyperlinking technology in 1989. In seeking to create this "intuitive interface", enabling instantaneous movement and the free exchange of ideas, the Web's "inventor", Tim Burners-Lee, noted that:[4]

The Web was designed to be a universal space of information, so when you make a bookmark or a hypertext link, you should be able to make that link to absolutely any piece of information that can be accessed using networks. The universality is essential to the Web: it loses its power if there are certain types of things to which you cannot link.

The Web has experienced dramatic growth in recent years, and has undergone a transformation from a primarily passive environment used principally as a research network to a largely for-profit, commercially dominated enterprise.[5] A recent survey estimated that there were approximately 43,230,000 Web hosts operating as of January 1999.[6] This proliferation of sites has led the united States Supreme court to liken the Web to "a sprawling mall offering goods and services".[7]

III. Explanation of Terms

1. Programming Techniques

A web page is constructed using Hypertext Mark-up Language (HTML), a basic text coding technique that provides display instructions to the web browser program viewing the file, generating the particular web page. The use of these codes instructs a Web browser where to implement new paragraphs, line breaks, bold letters or other display attributes necessary to determine the presentation of the document to the viewer. Although HTML tags are usually hidden from normal view, most web browsers include an option that allows users to view the HTML coding on a given web page.[8]

There are three principal methods for browsing the World Wide Web. First, if the user knows, or has book-marked, the Web site's Uniform Resource Locator (URL), then it can simply be typed in and the browser will locate it. Secondly, there are numerous search engines on the Web that can search the text of a selected "database" of sites and provide the user with a listing of the sites that correspond with the user's search terms. Finally, the user can follow hyperlinks from site to site.[9] This paper is primarily concerned with this third method and the implications of its use.

2. Overview of Hypertext Linking

Hyperlinking is a mechanism involving a distinct type of HTML tag and has been described as the "signature characteristic of the World Wide Web".[10] It enables a web surfer to connect to other web pages and to retrieve information within seconds, without having to perform new searches or complex tasks. By simply selecting a link, the Web user is transported to the corresponding place on the Web. This effectively streamlines the process of searching on the Web and enables users to effortlessly "jump" from site to site, without having to memorise long lists of addresses or manually type in a URL.

To fully ascertain the legal ramifications presented by these mechanisms, a closer examination of the two primary methods of linking, hypertext reference linking (HREF) and "inline" or image linking (IMG) is instructive. The most fundamental method of linking is through the use of hypertext references. An HREF, often represented by bold or underlined text, enables the Web browser to display the contents of a referenced web page simply by "clicking" the mouse on the hyperlink. It serves a comparable function to "a footnote reference in an article or a road sign" directing the user from one source or location to another on the Internet.[11] Once the user clicks on the link, a connection is made to the new site or page and the new document replaces the current document on the user's screen.

For the purposes of this paper, hypertext reference linking can be classified into two more specific types: surface and "deep" links. A surface link is one in which the linking site lists the outermost page or home page of the target web site. Surface linking, unlike "deep" linking, has largely been well received, as it increases the exposure and awareness of the linked site. "Deep" linking by contrast occurs when a linking site offers a link to an internal page within the target site. For example, compare a typical surface link which might be <www.nzoom.co.nz>, with a "deep" link, <www.nzoom.co.nz/headlines/linking.html>.[12] The critical difference is that while a surface link connects to the home page of the target site, a "deep" link provides the Web browser with additional referencing information enabling a direct connection to a specific page within the target site. Through the use of these "deep" linking techniques, a target site's directory or homepage is effectively bypassed, and the operator's intended structure and purpose in hosting pages may be negated. [13]

"Deep" linking triggers a number of legal concerns.[14] The act of directing a consumer deep within a site may result in important legal or commercial information provided on a home page being bypassed. The origin or ownership of the page displayed on the user's screen may also be unclear, as the user is not following the customary channels intended by the site operator.[15] As a result, the user may mistakenly assume that he or she is simply viewing part of the original site and not an internal page within another site.

The other primary method of linking is the "image" or IMG link. An IMG link is an inline link that enables images or graphics, originating at a different source from the host site's HTML code, to be viewed as part of the Web document's main body. The separate file may be contained on the Web author's file server, on the same web site, or on an entirely separate site.[16] Unlike accessing an HREF link, the IMG link is automatically activated upon loading the web page. The linked images or text are then displayed within the content of a web page in much the same way as photographs appear in newspaper or magazine articles.[17]

3. Overview of Framed Linking

Framing (sometimes referred to as inline linking) is a relatively recent phenomenon introduced by the Netscape Navigator 2.0 Web browser in mid-1997. It enables the publisher of a site to divide up the Web page into multiple separate windows on the user's screen. Each window can be operated independently and may display a different web page. The primary frame is used as a region for disseminating information. Other secondary windows might be used for displaying the Web site's logo, incorporating internal or external hypertext links, and including an advertising banner.[18] The techniques of framing and IMG links are analogous as both systems give the appearance that the original site is the authorised user or owner of the secondary content site.[19]

While the use of frames gives web site designers and users the added advantage of functionality and is not of itself unlawful, its use in certain forms may give rise to legal concerns. Framing enables an original site to incorporate entire pages of other sites into its screen while still retaining its own advertising and logo, as well as control over the user.[20] The origin of the framed site can therefore be entirely unclear to the user, particularly as the Web browser will continue to display the framing site's URL. As a result users may be misled as to the source of the contents displayed. This has given rise to legal claims alleging copyright infringement, reverse passing off, commercial misappropriation, and other breaches of intellectual property rights.

IV. Summary of Key Internet Regulation Arguments

The extensive and ever-increasing use of the Web as a medium for business and advertising has raised two diametrically opposing perspectives on Internet regulation within the context of intellectual property law. on one end of the spectrum is the argument that web site operators should be free to act without concern as to the potential infringement of intellectual property rights. Proponents of this argument cite the culture and history of the World Wide Web and the Internet as illustrating that its fundamental purpose lies in the promotion of the free dissemination and accessibility of information. Furthermore, it is suggested that limitations upon this freedom would decrease the power of the Web.[21] Linking and framing are the primary programming features that enable this ease of accessibility and prevent the network from becoming a "twisted thicket" of unconnected web sites, and consequently their use is encouraged.

On the opposite end of the Internet regulation spectrum is the argument embodied in the notion that "property and law were born together, and will die together".[22] The suggestion here is that the Internet is not a law-free zone, free from the strictures of ordered society. Instead, advocates of this argument[23] believe that the rules of intellectual property provide the basic structure for the regulation of Internet-related activity, and that practices such as linking and framing must be subject to these rules in order to preserve proprietary rights in the context of this electronic environment.

The ethos of open linking that was both accepted and encouraged when the Internet served principally as a research network is arguably no longer applicable with its commercialisation. Businesses whose sites include trade marks or other valuable content may now find their interests threatened by unauthorised and unwanted links. For such web site owners, the principles of open debate and the free exchange of information are eclipsed by their concerns for misappropriation of the site's contents or trade mark violations. Furthermore, the problem is exacerbated by the dramatic proliferation of new web sites in recent years. This increase in traffic and sites on the Web may, however, provide the very justification for the existence of accessing tools such as linking and framing.

V. Relevance of Advertising on the World Wide Web

The Web is now a commercial marketplace, with advertising on web sites constituting a billion-dollar business. Advertising makes up the primary source of revenue for many web site operators, and many commercial sites are entirely advertising supported so that web users can visit them free of charge.[24] Operators of these web sites often sell advertising space or "banner ads" on their web pages, so that visitors to the site will immediately be confronted by this advertising. A prevalent business model for internet businesses relies on this advertising revenue, which in turn depends on the Web site operator proving the size of the potential audience through a measurement of the number of "hits" or visits that the site receives.[25]

This competition for advertising revenue, coupled with the natural competition for popularity, spurs the desire to encourage as many "hits" as possible. Web site operators accordingly utilise linking techniques as a means of increasing traffic to their sites. The importance of this fact and the function that advertising plays in the context of the World Wide Web should not be discounted when considering the potential effect of linking and framing techniques.

On a purely financial benefit analysis, it has been argued that web site operators are indifferent as to how a person accesses the site, whether it is directly or through linking from another site.[26] This is because both types of access under the current measurement model will record the desired "hits" to the site, increasing exposure and advertising rates, and by inference, revenue. However with the rapid advances in technology already afoot on the electronic frontier, it is likely that more efficient monitoring methods will soon be developed that will be able to differentiate between the source of "hits" on a web site, so that this argument will no longer have any substance.

The problem arises when the same technology causes users to bypass web site advertising, resulting in a reduction in advertising exposure and revenue. Linking sites can evade the advertising content of the linked site by circumventing the home page through the use of "deep" links; by linking only to a specific image on a server through inline links; or by obstructing the sites with the use of framing technology.[27] With the fundamental importance of advertising as a method of financing a site's presence on the Web, the issue of regulating "deep" links assumes significant practical importance.[28] A simple solution might be to include advertising on every page of the site. The logistics of doing so may, however, not always be practical or appealing to an advertiser. A web site proprietor may also wish to protect his image or reputation, and thus even where there is no advertising revenue to protect, the objection to such links will still stand.

VI. Relevant Authorities

1. Shetland Times Case

The world's first notable hyperlink lawsuit arose in the Shetland Islands, off the coast of Scotland, out of an electronic newspaper rivalry.[29] The Shetland Times, a newspaper carrying local, national and international news, challenged a local news reporting service, Shetland News, claiming that the News' hyperlinks to some of the Times' stories constituted copyright infringement. The Shetland News' Web site contained a number of headlines that served as hyperlinks, providing direct access to the corresponding text published on the plaintiff's Web site, without the user having to go through the plaintiff's homepage.

The case deserves attention not only because it was a trailblazer in this area, but also because it demonstrates the dramatically divergent views of the parties concerning hyperlink practice.[30] One of the key arguments in the case was that the plaintiffs had planned to use advertising on their homepage as a source of revenue. It was claimed that visitors utilising defendant's "deep" link would not see these advertisements, by virtue of the fact that the home page would be bypassed. This could potentially result in a loss of revenue.

This was countered with the argument that the links had in fact increased traffic to the Times's site, and that an infringement action could not lie, as free access constituted the basic principle of the Internet. The Court of Sessions in Edinburgh disagreed and granted an interim interdict.[31] In doing so, his Lordship, Lord Hamilton, recognised that:[32]

It was fundamental to the setting up by the pursuers of their web site that access to their material should be gained only by accessing their web site directly. While there has been no loss to date, there is a clear prospect of loss of potential advertising revenue in the foreseeable future.

This seems to suggest that a right of action might be created simply through a potential loss in advertising revenue.[33] Lord Hamilton also found that there was no materiality to the defence that the plaintiff was benefiting from its newspaper items being made more available to the public through disclosure on the defendant's web site.

The case was ultimately settled out of court. The terms of the settlement agreement stated that the Shetland News would still be able to link to stories on the Shetland Times's Web site by the use of headlines. They were required, however, to ensure that: (1) any hyperlink to a Times's story used the legend, "A Shetland Times Story", which was to appear under the headline; (2) Next to each headline there was a button that showed, "legibly", the Shetland Times's logo; and (3) these legends and buttons contained hyperlinks to the Shetland Times's online headline page.[34]

2. Ticketmaster Case [35]

The Ticketmaster case addressed the implications of unauthorised "deep" linking. Ticketmaster, a ticket-selling agency, filed suit against Microsoft alleging improper use of Ticketmaster's name and logo on a Microsoft Web site, "Seattle Sidewalk". Through the use of "deep" hyperlinks to specific pages within the Ticketmaster Web site, users of the Seattle Sidewalk Web site were able to bypass all policies, service information and ads provided on the Ticketmaster homepage, and go directly to Ticketmaster's event listing to purchase tickets. It was alleged that Microsoft's actions constituted trademark dilution and unfair competition.[36] The case was settled in February 1999. Microsoft agreed to terminate all "deep" links to Ticketmaster's internal pages, and to link its Internet "Sidewalk" guide only directly through the Ticketmaster home page.[37]

3. Total News Case [38]

Probably the most widely publicised challenge to framing technology was brought by a group of plaintiffs led by the Washington Post against Total News inc, a Web site operator that offered access to several news reporting sites. Through the use of framing technology the plaintiffs' news reports could be viewed, surrounded by promotional advertising belonging to Total News. Advertising revenue was thus diverted from the framed sites to Total News, and because the displayed URL address continued to correspond with that of Total News, it appeared that the source of the content contained in the frame also belonged to Total News. The plaintiffs filed suit against Total News alleging that the defendants had "engaged in the Internet equivalent of pirating copyrighted material" and describing the Total News site as "parasitic". The plaintiffs' attorney suggested that the use of frames in this case was equivalent to cutting a news story out of a printed newspaper, pasting it on a new sheet of paper, and selling the advertising around the margins.[39]

The suit against Total News alleged violations of a number of intellectual property rules, including copyright infringement, misappropriation, trade mark dilution and trade mark infringement. The precise scope of these legal principles will be considered in detail later in this paper.[40] In this case, however, the legal issues were sketched out but not resolved as the case was settled out of court. In summary, the settlement agreement permitted Total News to create surface links to the plaintiffs' Web sites, but prohibited any unauthorised or indirect links, and all framing.[41]

VII. Traditional Causes of Action

[A]lmost everything we think we know about Intellectual Property is wrong. We are going to have to unlearn it. We're going to have to look at information as though we'd never seen the stuff before.
The protections that we will develop will rely far more on ethics and technology than on law
John Perry Barlow, Electronic Frontier Foundation [42]

With the increasing popularity of the Internet, and the World Wide Web in particular, users are encountering old legal concepts in entirely new contexts. Established legal rules must now be reconsidered in the light of the new technological options available to computer users. As with any new technology, consideration of the implications of linking and framing practices will require a careful balancing of the often-conflicting intellectual property principles. The need to encourage the creation and protection of information must be reconciled with the need to provide for easy public dissemination through open communication.[43]

Web site design and technological advances, such as linking and framing, that evolve according to user demand and the corresponding capabilities to meet that demand are now dictating Web practices and etiquette. The function of the law is to respond to this technological evolution by ensuring that necessary protections are provided in this burgeoning area. If any legal controls are to be imposed in an effort to realise some degree of regulation in cyberspace,[44] it is likely to lie within the realm of existing intellectual property actions. However, as Judge Kozinski noted:[45]

Overprotecting intellectual property is as harmful as under-protecting it. Creativity is impossible without a rich public domain. Nothing today, like nothing since we tamed fire, is genuinely new: Culture, like science and technology, grows by accretion, each new creator building on the works of those who came before. Overprotection stifles the very creative forces it's supposed to nurture.

Any regulation of the practices of linking and framing will have to achieve this balancing of interests if it is to provide a satisfactory solution to these issues.

This part examines whether the practices of linking and framing fall within the scope of the traditional heads of intellectual property law or whether, as Barlow suggests, intellectual property rules are unsuitable in this new electronic environment. For the purposes of brevity, only the traditional intellectual property heads will be examined, but it is acknowledged that other heads may also be available, either independently or in conjunction with the possible causes of action discussed.

1. Trade Mark Law

Trade marks serve an important function in the marketplace, and indeed on the global Internet, designating sources of origin and ensuring quality control.[46] It has been suggested that trade marks enhance market efficiency by lowering consumer search costs, in the sense that a trade mark enables a consumer to relate past consumption experiences to future decisions. Rational judgment and emotional preference intermingle in the myriad of choices confronting consumers, and as a result the existence of a trade mark becomes a crucial element in the decision-making process for a consumer. The performance of this economic function relies on the trade mark exhibiting consistent quality and not being duplicated. Permitting others to free-ride on the mark will eventually destroy the information capital embodied in the mark and may therefore ultimately eliminate the incentive to develop a valuable trade mark in the first place.[47]

Arguably there is no need to reinvent the wheel in the trade mark- hyperlink context, as the existing law of trade marks will be equally effective in its application to the new medium of the Internet. Infringement of a registered trade mark can occur in much the same way as it occurs in the usual commercial environment, so that existing laws will be suitable to deal with such transgressions. Furthermore, the application of these laws will not restrict the flow of information on the Internet any more than it currently restricts information in print.[48]

Trade mark law, however, is predicated on the principle that multiple users, operating in different industries, or different jurisdictions, can register the same or similar marks without infringement. The application of territorially based trade mark rights and concepts raises significant problems in the context of the borderless nature of the Internet. For example, the incorporation of a trade mark on a web site could potentially result in the instantaneous display of that mark in almost every jurisdiction, and conceivably cause significant confusion in the minds of the public.[49] Consideration may therefore need to be given to the adoption of appropriate protocols to regulate the use of trade marks on the Internet.[50]

In New Zealand, a "Trade Mark" has been defined as being a sign that is capable of being represented graphically, and of distinguishing the goods or services of one person from those of another.[51] Thus a registered trade mark will cover a wide variety of signs in the context of a web site including words, logos, numerals, colour schemes, or any combination of these things.[52] This suggests that the overall appearance of a web site might qualify as a trade mark, and therefore the actions of linking or framing that site might constitute an infringement of that mark. In order to receive statutory protection from misuse of its trade mark by a linking or framing site, the trade mark will however need to be registered.[53] It will also need to be shown that the trade mark owner intended to use the mark, and that it is subsequently used in the course of trade.[54]

In the context of linking and framing practices, the improper use of a trade mark on the linking web site has the potential to create a serious likelihood of deception or confusion. This confusion might involve the creation of a mistaken belief that the linking site's products are the same as that of the plaintiff, or that the linking site is somehow associated, affiliated with, authorised or sponsored by the target site in the course of trade.[55] Therefore the use of a trade mark on a linking web site to identify the proprietor's goods or services, by importing a reference to the target site, will amount to a use of that mark in a "trade mark sense", and accordingly constitute a trade mark infringement.[56]

In considering the applicability of trade mark law to linking and framing practices, it nevertheless needs to be acknowledged that trade marks also serve an investment or advertising function. By inference, therefore, their use in appropriate contexts is desirable. For this reason, the use of a hyperlink designated on the linking site as a trade mark, such as a proprietary name, image or logo, is relatively common, and will rarely give rise to legal claims. As with copyright, there is a fair use defence for trade mark infringement, with the primary requirement being that it can be established to the satisfaction of the court that the use is not likely to deceive or cause confusion to the consumer.[57] The use of a trade mark in good faith for the purpose of describing a product or service is unlikely to attract infringement.[58]

Likewise, the use of a target site's trade mark or name in the URL may fall within the fair use defence. All links contain the URL of the passively linked site, and many URLs will include the trade name of the owner of the target site. This use, standing alone, should be excused as a fair use of the trade mark. An inline link that incorporates a distinctive image or mark into an internal page of another site could be found to violate trade mark restrictions, however, where the trade mark owner objects to the context or manner of use of the trade mark.[59] The owner of a framed web site could also assert trade mark infringement for the unauthorised use of proprietary marks for commercial purposes as they appear within the frame.[60]

In a recent US Federal District Court decision,[61] it was held that a trade mark infringement had occurred when a dial-up computer bulletin board (similar to a web site) uploaded computer images that displayed the registered mark of Playboy, then removed the trade mark and added the name of the bulletin board to the photographs. An analogy may be drawn between this situation and that of framing. A frame that displays the logo of the framing site could arguably be considered to be obscuring the trade mark of the framed site, and therefore constitute an infringement. The addition of advertising or a logo to a framed site will not be as objectionable as removing the original trade mark and replacing it with the trade mark of the framing site, as the latter involves the deliberate creation of consumer confusion or deception.[62]

In determining whether a trade mark infringement has occurred a court will have regard to factors such as whether the trade mark is distinctive and whether its use by a linking site has threatened consumer confusion, tarnished the mark's reputation, or reduced its distinctiveness.[63] An example of where a link could be actionable would be if it referenced (but did not directly use) a well-known mark in linking to an "unwholesome" site, or to one that cheapens the image of the legitimate mark by giving it a bad association.[64]

In the US, the need for trade mark owners to be able to impose quality restrictions on the use of their marks in order to preserve their rights in these situations has been expressly recognised through the development of a separate trade mark dilution action.[65] As its title suggests, a dilution claim principally involves the diluting of the distinctive quality of a mark, either by blurring the trade mark association with the products or services it represents, or through tarnishing the mark by giving it a bad association. Trademark dilution can be distinguished from an infringement claim on the basis that it doesn't involve confusion, as consumers still associate the trade mark with its owner. Nevertheless, the association or reputation of that mark is weakened by dilution.[66]

Web site owners seeking to prohibit the use of their trade marks by other linking sites often assert two main arguments in support of a dilution claim.[67] Firstly, the argument is made that the association between the linking and target sites tarnishes or blurs the value of the image associated with the mark. Secondly, it is argued that the use of "deep" links distorts the image the viewer has of the site, and consequently, the trade mark associated with that site.[68]

A recent example of where these two types of dilution claim were argued was the Ticketmaster case. [69] Ticketmaster claimed that Microsoft's link to its site "enhanced the value of Microsoft's Web site and business and diluted and diminished the value of Ticketmaster's Web site and business". The claim was supported by the use of Ticketmaster's name and mark on Microsoft's Web site, and the structure of the link that transmitted viewers to an internal page within the Ticketmaster site, bypassing Ticketmaster's advertising.[70]

By contrast with the US position, New Zealand law only recognises the trade mark infringement action, and doesn't provide for a separate trademark dilution action.[71] Aggrieved trade mark owners are more likely therefore to seek remedies under the common law tort of "passing off" or under the Fair Trading Act 1986.[72]

Frames may be more likely than ordinary links to cause confusion among users, in that framing blurs the conceptual boundary between sites. If it is not clearly indicated to the user that a framing site includes material from another site, the user may not realise that the framed site is in fact owned by someone else, the holder of the trade mark.[73] Framing also poses a danger of tarnishing a site by incorporating unwholesome elements or elements that may be considered to be of a lower quality than the framed site.

2. Passing Off

The respective practices of linking and framing on the World Wide Web may attract liability under the broad head of unfair competition. One of the principal branches of unfair competition that requires examination here is the common law tort of "passing off", which addresses the extent to which a firm or business' reputation is appropriated or misused by another.[74] Essentially the question is whether one party, or web site operator in this case, attempted to "pass off" its goods or services as those of another. The concept of "reverse passing off" where one party attempts to pass off a competitor's product as its own will also be relevant here.

Lord Diplock identified the key elements required for a successful action in passing off in Erven Warnink BV v J Townend & Sons (Hull) Ltd (the Advocaat case) as requiring: [75]

(1) A misrepresentation,
(2) Made by a trader in the course of trade,
(3) To prospective customers of his or ultimate consumers of goods or services supplied by him,
(4) Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and
(5) Which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.

Linking may constitute "passing off" if the linking web site through its actions suggests that its goods or products are those of the target site.[76] It will need to be established, however, that there is a likelihood of the consumer or web user being confused by the link and assuming that a connection between the sites existed,[77] and that the linked web site owner suffered actual damage to its business or goodwill.[78] This will be most likely to occur where the linking site offers inferior or competing goods or services that may discourage visitors from the site on the basis of product, and consequently lead to a loss in revenue.

In assessing potential actions for passing off, a distinction can be drawn between the creation of any confusion as to the source of goods or services offered, and confusion created by the appearance of the site itself. Confusion as to the latter might result in the potentially damaging effect of diverting users from the site, particularly where the linking site is not user friendly in its appearance.[79] Linking mechanisms in the form of graphics or images, rather than text, or the use of artistic embellishment, such as suggestive designs and colours, may be used with the deliberate purpose of misleading or deceiving the casual user as to the source of the site itself.[80] This mimicking of the distinctive appearance, or what is commonly referred to as the "get-up",[81] of a target site, may attract liability for passing off.

Linking practices may also constitute "reverse passing off" if, for example, a web site publisher were to use a link to suggest that it was responsible for the goods or services on a competitor's page to which it had linked.[82] While this may pose a lower threat of harm to the injured competitor or web site than direct passing off, it may still have the potential effect of diverting future business from the target site to the linking site.

A good example of the potential application of a "passing off" action in a linking dispute is the Ticketmaster case.[83] Microsoft attempted to reduce its exposure to liability for passing off by informing viewers that it was possible to purchase tickets through Ticketmaster, and by providing information about Ticketmaster's operations. This would have made most ticket-buyers aware that they were purchasing tickets from Ticketmaster, and not Microsoft. In the case, no claim of reverse passing off was actually made, although there is a suggestion on the facts that had Ticketmaster failed to indicate its ownership on the relevant page of its site, that page may have appeared to users to be part of Microsoft's site. Thus, Microsoft potentially could have misled viewers into believing that the goods or services on its web site were in fact provided by Microsoft and not Ticketmaster, consequently satisfying the constituent elements for a reverse passing off claim.[84]

The dangers posed by this form of linking in relation to potential passing off actions indicates the importance of clear disclosure by the linking site of its ownership, as it will have no control over the presentation of the target site's page in this regard. In practical terms, if a linking site fails to make such a disclosure it could later be liable for creating a likelihood of confusion, even if this confusion is caused after the creation of the link by a subsequent change in the presentation of the target site. This possibility therefore demonstrates the importance of clearly indicating on every page of a web site, who owns or controls the page.

The torts of passing off and reverse passing off, however, may prove to be more potent in the context of framing. This is because the imposition of the framed link, utilising the framing site's logo in the frame, has the potential to cause more confusion than a hypertext link due to the substantial and false implications that an affiliation, association, or sponsorship exists between the two sites. Users might mistakenly believe that the framing page's operator also operates the framed page, or that the work of the framing page's operator is really the work of another. Additionally, a claim for reverse passing off could be sustained because the URL displayed will be that of the framing site, so that there is no discernible move from the original site to a new one. Therefore, the origin of the framed material cannot be easily distinguished from the framing site. [85]

3. Fair Trading Act 1986

In New Zealand, liability for unauthorised linking or framing may also arise under the Fair Trading Act 1986 ("FTA"). The remedies available under the FTA are similar to those available at common law under the tort of passing off, but a plaintiff web site operator will not have to prove that any damage to its business has occurred to succeed in an action under the FTA. This is because the FTA was enacted to protect consumers, not the goodwill and reputation of traders.[86] The relevant sections to consider relating to misleading and deceptive conduct in trade are sections 9 and 16.[87]

It is possible that linking would constitute misleading or deceptive conduct required under the FTA. Framing, however, will be more likely fall under the provisions of the FTA because of the confusion created by the fact that the framed images are displayed on the framing site. For example, where these practices have been employed, users or consumers may infer a business relationship between the owners of the respective web sites where in fact one does not actually exist. Such practices may also amount to false representations as to endorsement, sponsorship or approval, which would give rise to liability, as the linking of materials from two web sites on the same screen could give rise to an inference of endorsement or approval of the other's goods or services.[88]

Hyperlinking, in the New Zealand context, may also be a breach of the Commerce Act 1986 if the two web sites have contractual or collaborative arrangements, such as the provision for referral fees or royalty payments, and the linking amounts to anti-competitive behaviour. Web site owners seeking to link to other sites with which they have a business relationship should, therefore, be sure to assess whether their behaviour amounts to an anti-competitive arrangement within the terms of the Commerce Act.[89]

4. Copyright Infringement

Copyright protects "original" works expressed in various material forms. While the concept was originally designed to protect works in a tangible form, it has recently been extended in New Zealand to cover digital works and computer programs as literary works.[90] Under general copyright law, the owner of a copyright can prohibit others from reproducing or distributing copies of that work, preparing derivative works, and from publicly performing or displaying the copyright work, subject to certain limited exceptions.[91] The risk of copyright infringement now posed by activity on the World Wide Web is significant because of the ease at which copyrighted works can be copied, reproduced and disseminated in this electronic environment.

There is currently considerable debate centred on the proposition that the imposition of copyright law onto the electronic frontier may upset the balance between users and authors that is so intrinsic to the nature of the Web. Web users claim that if current practices are restricted the Web will fail to live up to its potential as a democratic, interactive medium of communication and social interaction. The counter-argument advanced by those seeking to protect their works or sites is that unless copyright law is strengthened on the Internet, Web site owners will cease to make content available and the network will fail.[92] While this may seem an extreme argument, it represents the concerns raised by advocates of proprietary rights on the Internet.[93] These arguments also find support in the economic rationale for copyright. [94]

Notwithstanding this debate, the issue has arisen as to whether the practices of hyperlinking and framing constitute infringement of copyright. A simple link from a web page to another is comprised of two key parts: text that is displayed on the viewer's screen, and the URL (the address from which the target page can be obtained) which is not normally displayed. These links might attract copyright in three different ways: (1) the page might be protected as a literary work; (2) the URL might be protected as a literary work; and (3) the combination of the two might be a compilation and thus be protected as a literary work.[95]

A number of commentators have opined that the act of creating a hypertext link to another site does not of itself constitute an infringement of copyright for the simple reason that a web site's URL is not copyrightable.[96] As Reed notes, the URL consists of four distinct elements that are composed separately and assembled according to standard conventions.[97] The combination of these elements, therefore, requires no labour, skill or judgement, and will not fulfil the requirements for copyright protection. Further to this, a link will only require the reproduction of the URL of the site, not its content.

The URL can be likened to a street address. It defines a unique location on the Internet where a piece of information can be located for the user in much the same way as listing a phone number or address in a phone book.[98] No technical copying of a copyright work is involved. This argument has, however, been countered by other commentators who suggest that the link is not simply a statement, but rather a mechanism that delivers the linked page to the viewer, and thereby infringes on the protected rights of the copyright holder.[99]

The transmission of a copyright work via linking is arguably an infringement of a copyright owner's exclusive distribution right since this would amount to the distribution of copies of the work to the public.[100] Even if an HREF hypertext link does not constitute direct copyright infringement, the creation of the link could arguably give rise to liability for secondary or contributory infringement. This is problematic, however, because in order to hold a linking site liable for contributory infringement, it would be necessary to find the user or viewer of the linked page liable for direct infringement. Although the issue is not settled, it seems unlikely that any court would find such direct infringement on the part of the end user, as the online world facilitates, and even requires, the creation of copies. Courts are more likely to apply a fair use exception or implied license defence in these situations.[101]

In the Shetland Times case, Lord Hamilton held, in granting an interim injunction,[102] that Shetland News infringed copyright by including a "protected cable program" in a cable program service.[103] Ceri Wells suggests that this is a dubious argument as the equivalent definition of a cable program service in s4 of the Copyright Act requires a service that consists mainly in sending visual images, sounds or other information by means of a telecommunications system.[104] A web site does not send material, but rather is a passive receptacle of information, so that the Shetland News did not send the text of articles to the browser by hyperlinking the browser to the Shetland Times Web site. The hyperlink merely transported the browser to the target site.[105]

The issue of whether linking gives rise to claims of copyright infringement might be different with respect to IMG links. Inline links cause a file or image from another web site to appear automatically on the linking site. There has been no published case law concerning this area, although the issue was raised in a dispute concerning the Dilbert comic strip.[106] Dan Wallach created an IMG link to the United Media Web site so that the cartoon images appeared on a web site he had created for this purpose. United Media sent Wallach a letter requesting that Wallach discontinue the link. Wallach argued that he was not infringing copyright because no actual "copy" of the image was created or stored in any form on his own computer. His page simply instructed the user's browser to go to the Dilbert site to retrieve the strip and display it on Wallach's page. Following a second letter that again threatened litigation,[107] Wallach removed the IMG links, and relied instead on the use of HREF links to the United Media home page.[108]

While the dispute was ultimately settled without judicial involvement, it seems to indicate that the infringement of display and reproduction rights will be likely avenues for redress in future inline links litigation. The owner of the copyright in the linked page is more likely to have an action and remedy under copyright law in respect of framing than direct linking. The existence of the frames, themselves, could indicate the creation of a derivative work, and this would be further supported by any distortion of the original view of the site.[109] Another theory would be that the right to distribute would be infringed by the framing link, as the framing site has "taken a step toward distributing the content of the framed site beyond the confines of the cyberspace where its owner placed it." [110] As evidenced in the Wallach case, however, this theory rests on the misconception that the linking site retrieves the linked site for the user. In reality, the link simply instructs the user's computer to access the linked site in its original position.

If a link is considered to create a copy under copyright law, linking or framing sites could invoke traditional defences. Firstly, the implied license defence may apply.[111] Subject to the affirmative defence of "fair dealing", the use of a copyright work without the consent of its owner may be exempted from infringement. This defence recognises the balance between the public benefit derived from an unauthorised use and the need to protect the copyright owner's exclusive control. In the context of linking, it may arguably be permissible under copyright law for a site operator to link to a target site for the purposes of criticism or review.[112] Take for example, a situation where an academic, in providing a critique of that work, utilises a link to a web site containing another academic work. While linking for this purpose will be subject to the proviso that the sourced work is sufficiently acknowledged, and that the critical quotation is not merely a veneer for wholesale borrowing of the copyright work,[113] there would seem to be no objection in principle to such practices under copyright law. This principle embodies the intrinsic nature and purpose of the Web; to facilitate the linking and accessibility of related sites. There is also less likely to be any objection by web site operators themselves to the use of a site's content for these purposes.

A further practice that may qualify for protection under the fair dealing defence would be linking undertaken for educational or referencing purposes (such as the use by libraries).[114] In determining whether a fair dealing defence exists in the context of linking or framing, the Courts are likely to have regard to a number of factors.[115] The commonwealth jurisdictions have taken a more restricted approach to the fair dealing defence than the US,[116] and the defence will be less likely to be applicable if the link was established for commercial purposes, as the link may detract from the value of the site.[117]

Under the Berne Convention,[118] the owner of copyright in a work created in one country is entitled to national treatment by all other Berne Convention signatory countries.[119] This means that a copyright infringement action may be brought in the alleged infringer's own jurisdiction where injunctive remedies will more easily be enforceable.[120] Unlike the law relating to trade marks, it is not necessary to establish the existence of the copyright holder's reputation in a particular jurisdiction or that registration requirements have been complied with.[121]

VIII. Implied Licence Arguments

Perhaps the strongest argument against regulation of linking practices is based on the assumption that the operator of a web site is conclusively presumed to have made the site available for linking, without the need to obtain any prior consent simply by placing material on the Web. The prevalent view of the Internet community appears to be that publication of a site on the World Wide Web should be regarded as tantamount to granting an implied licence to link by any other site.[122] Proponents of this argument suggest that it is accepted "netiquette" that authors may add links to other web sites without obtaining permission from the target site. Indeed, the inventor of the Web and the hyperlink, Burners-Lee, emphasised that "[t]here is no reason to have to ask before making a link to another site", as the Web was built on a foundation of linking.[123]

The implied licence argument will have particular application in situations amounting to copyright infringement. since all the information on the Internet, assuming a minimal degree of originality, is copyrightable, it is arguable that any organisation that makes information available on the Internet grants an implied licence to anyone who wants to use that information. Consequently, the granting of this implied licence will operate as a defence to copyright infringement.[124]

This principle would seem to fit nicely within the Internet dynamic, as the entire culture of the Web is based on the notion of free accessibility, and the vast majority of web sites can be visited by anyone without charge. The principle of free accessibility is also supported by the fact that typically web site owners do not object to links by other sites as such links are seen to be beneficial in that they attract additional visitors to the site. Any sophisticated web site owner knows how the Web operates and what is expected Internet behaviour, and therefore it can be implied from their conduct that they have consented to the granting of a non-exclusive licence.[125] One commentator noted following the Shetland case:[126]

The copyright owner made a deliberate choice to place his web site online, with full knowledge (presumably) of how the system operates. Linking of web sites to one another is extremely common and is, arguably, both the raison d'etre of the WWW and the reason for its success. It is custom and practice, and so if a copyright owner puts up a web site, he must expect others to link to his site. Services such as web search rights could not operate without this ability.

It is well recognised that the law can develop over time by pressure of commercial convenience and custom, so as to recognise the existence of an implied term set against the background of common usage, such that it can be considered to be familiar to all those who engage in similar negotiations.[127] New Zealand authorities have established a set of requirements that must be satisfied in order for a term to be implied by custom into contracts.[128] These principles may be summarised as follows:

(1) The custom must have acquired such notoriety that parties must be taken to be aware of it and intended that it form part of the contract between the parties; and
(2) The custom must be certain; and
(3) Must be reasonable; and
(4) Until the Courts take judicial notice of the custom, it must be proved by clear and convincing evidence.

On the basis of these requirements, it is questionable whether an implied licence will be said to occur where a web site owner unknowingly or unwittingly submits to linking by other sites simply by launching a web site. The custom of linking and its implications for a web site operator have not yet assumed such general notoriety as to impose an implied licence on any potential web site operator. The decision to make a work available on the Web will, however, undoubtedly be an influential factor in evaluating whether an implied licence was granted to other users on the Web.

Nevertheless, there will also need to be consideration of whether, based on all facts and circumstances, a broader licence permitting copies to be distributed to third parties should be implied. Several factors in such circumstances would operate against the presumption of an implied licence, such as the target site owner not preparing the site's material specifically for the owner of the linking site, or the absence of any consensual agreement between the owners of the respective sites.[129]

A different approach to the implied licence question was taken in the Ticketmaster case.[130] In responding to the Ticketmaster suit, Microsoft asserted its right to link on the basis of technology rather than the custom- based argument advanced above. Microsoft submitted that web page publishers invite the public to view their sites, and that the use of hyperlinks merely facilitates that activity. At a simplistic level, Microsoft was asserting that such linking is in effect no different from footnotes or directory listings in print, which scholars and newspapers are free to publish, and which only have the effect, if at all, through the independent actions of readers. On this basis, linking itself does not constitute a contravention of any of the site owner's intellectual property rights.

Whether the argument is based on custom or technology, implied licence theories will be dependent to a great extent on the evidence regarding actual Web practices. If Web publishers begin incorporating prohibitions against linking in their web pages, a technique that is occurring with increasing frequency, or if the trends towards requiring prior consent continue, then these practices will seriously undercut the implied licence or consent arguments. [131] This will make it more difficult to justify the right to link freely on the Web, particularly in instances involving framing of the linked material.

IX. Technical Solutions

Arguably the nature of the World Wide Web and the Internet is such that the very presence of a site on the Web will expose it to links from other sites, even where such links may be uninvited or unwanted. The possible lack of legal remedies in the courtroom, however, does not deprive Web publishers of any protection from unwanted links. Web site operators may instead have recourse to technical solutions as a form of self-help remedy. Frequent users of the Web may in fact prefer to employ such options, in preference to having their proprietary rights on the Internet defined by courts. This is because the common courts are often perceived to be inadequately cyber-sophisticated in their outlook.[132]

Regular checks by web site owners to determine whether any unauthorised links exist has been recognised as "good commercial practice", and can be conducted easily enough by using one of the major commercial search engines. If unwanted links are found to exist, shifting the addresses of the internal pages periodically could block these links, making unwanted links obsolete at least for a time. This method of protection may, however, have the disadvantageous effect of interfering with links from search engines. [133] Preventative measures such as the implementation of a password or registration requirement, to be complied with by any new visitor to the site, may also be taken to prevent linking to an internal page within a web site.

Other technological solutions that could be employed might include the use of computer coding terminating access to the Web site by all potential linking and framing sites. Technology already exists to prevent a linking site from bypassing the target site's home page, so that any visitors can be monitored and screened.[134] Alternatively, a web site operator could also block an uninvited guest from linking to a web page by specifying a list of URLs from which the operator does not wish to be accessed, or through the adoption of a "pay for access" system.[135]

Proposed Technical Solution

It has been suggested by Effross that a simple Web-wide solution for resolving the problems associated with unauthorised linking would be the creation of a "traffic-light" icon, that could be embedded on the home page, selected pages or all pages of the target site.[136] The placement of the icon on a site would primarily be the responsibility of the owner, but could also be done by a potential linking site with the express consent of the target site owner. Depending on the colour of the lamp lit on the depicted traffic light, it could be determined whether or not the owner of the site had granted permission to link to or frame the relevant page.

The use of such an icon would fulfil several purposes. Firstly, it would serve as a practical reminder to all visitors to a site that web site owners generally lack satisfactory control over which sites link to theirs. Secondly, the presence of a red light on the icon would serve as a clear indication that the web site owner has not licensed the link. The granting of any licence to link would need to be explicit, either through the inclusion of the linking site on a list that would appear when the visitor clicked on the icon, or through the use of a linking agreement.[137] Finally, the simplicity of this icon feature and its use would enable a site owner to convey its message in a relatively unobtrusive but nonetheless effective manner, without deflecting visitors from the site.

This virtual signpost would enable the identification of interlopers and enhance the ability of a web site owner to counterattack. It might therefore provide a more effective alternative to the technical solutions advanced above, and enable the more efficient protection of the intellectual property and reputation of a web site owner. As with any of the proposed technological solutions, however, the success of the "traffic-light" icon will be subject to the fact that for every technical solution developed to prevent linking, there will more often than not be a corresponding technical advance to avoid or overcome the remedy. While the use of this icon might be effective in principle, it could be bypassed, wrongfully replicated or altered by programming techniques. It will be difficult to protect against technological countermeasures, and as a result the icon feature may be rendered ineffective.

This technological dichotomy will give rise to a continuing circular battle, and possibly strengthens the argument for the legal protection of proprietary rights on the Internet.[138] If, however, the members of the Internet community are able to find adequate technical solutions to these problems without legal involvement then the Internet will be able to retain its technologically governed environment.[139] The onus therefore must be on web site publishers wherever possible to engage in creative self-help remedies to protect their intellectual property where the courts cannot.

X. Other Self-Help Remedies

1. Use of Disclaimers

The use of a common disclaimer on a web site would seriously reduce the likelihood of confusion as to any affiliation between the respective sites in the case of unauthorised linking. The disclaimer could state that the web site and its owner are neither associated nor sponsored or affiliated with any owners of the specific trade marks used on the Web site, including those constituting hyperlinks. These solutions, however, are problematic. many of these contracts or warning notices are often unclear and difficult for even the law-abiding user to comply with and even more difficult to enforce.[140]

2. Linking Agreements

Web site publishers may seek to clarify their stance on linking through the construction of a web-linking agreement. This restrictive practice has received vigorous opposition by some academics on the basis that the purpose of the Internet is to promote effortless linking to different sources. Nevertheless, linking agreements will invariably become more common on the Web with the continuing debate over the legality of Web linking and framing. A linking agreement could expressly permit the parties to link their respective web sites, and might also include provisions for the sharing of resources, maintaining quality standards, establishing performance criteria, and managing site availability. Web sites containing "click contracts" at sign-on, purporting to make it a condition of accessing the site that other sites not link or frame without permission, are now appearing with more frequency. if the law in fact requires the linking site to seek permission from the operator of the Web site to which it wishes to link as a primary step before employing any such link, then a web-linking agreement may provide the best method of securing such permission.

3. Policy Arguments on Self-Help Remedies

All of these self-help remedies or technical solutions are consistent with the notion that linking is a fact of life on the internet and that web site owners should themselves take whatever measures are reasonably necessary to protect and preserve their proprietary interests. Arguably with the wealth of technological options that are available to a web site operator, a failure to take such technologically feasible steps should be seen as a "stubborn refusal to protect [their] own interests"[141] and should not receive protection of the law. This is reflected in the suggestion by some academics that all technological options should be exhausted before a web site operator is permitted to resort to legal remedies or actions.[142] While such a suggestion may seem like a suggestion that the legal system abdicate its responsibility to govern on the online frontier, it should be noted that intellectual property rules operate in part on a self-help basis.

While there is some merit in these sentiments, the argument is problematic. The protection of proprietary rights in other areas such as trespass, for example, does not require the holder of the property to exhaust all possible options to protect that property in order to receive protection under the law. Therefore, it is questionable whether the position should be any different in the context of the World Wide Web. While web site operators should take what options are available to prevent unauthorised linking, a failure to do so should not necessary justify a denial of legal remedies.

XI. Policy Arguments

With its rapid expansion and commercialisation in recent years, it is inevitable that the World Wide Web will give rise to an increasing number of legal challenges and disputes. While it is accepted that the expansive and amorphous nature of the Web undoubtedly provides a challenge to the application of existing laws, it is essential that a practice as fundamental as linking should not remain clouded in legal uncertainty for very long. Legal solutions will need to be developed, either through the application of current intellectual property laws or through the development of new laws that are better suited to the nature and function of this nebulous medium.[143] The application of legal solutions must, however, be approached with caution so as to ensure the preservation of those elements that are essential to the functioning of the Web and the control of those that are not.

Traditionally, the legal system has been founded on the use of analytical tools such as precedent and analogy. In an area such as the Internet where precedents are lacking, however, the Courts should be wary of relying too much on analogies. Linking techniques need to be examined afresh, without the prejudgment of forced analogies. In seeking to regulate these practices, the courts will also need to recognise the unique nature and value of these information-linking technologies. This is because the potential negative effects of bad precedent, arising from the ruling of a judge ignorant in this area, are profound.[144]

There is a strong temptation to resort to sophisticated technological solutions as the sole means of maintaining order and protecting proprietary rights on the electronic frontier. This form of self-regulation, however, may ultimately prove to be short sighted, as it may threaten the fundamental freedoms that embody the very essence of the Web. Technological solutions will also invariably be met with corresponding technical advances designed to avoid or overcome the remedy created, resulting in a continuing struggle for control.

It is suggested that the long-term answer lies in the development of specific Internet-related rules or laws that can operate to regulate misuse of linking practices. The implementation of any new laws will, however, need to be subject to the requirement that these laws are flexible enough to permit adaptation to further technological advances and allow for creative growth. The Internet is a rapidly changing and evolving medium, and as such the courts must be careful not to promulgate doctrines narrowly tailored to today's technology that may be outdated by tomorrow. New methods of linking may soon be developed that specific law in this area will be inadequate to control. Likewise new technologies may empower private problem solving. For example, HTML programming language may soon be replaced by Extensible Markup Language (XML), a new computer language that has the potential to dramatically affect the way links operate, and which might empower web site operators to more adequately deal with disputes themselves.[145]

For this reason, a flexible body or rules or laws should be applied until the use of the Web and the technology involved has matured sufficiently to allow for comprehensive statutory regulation that considers and recognises the unique capabilities of the Internet. Unfair competition doctrines, such as "passing off" and laws prohibiting unfair trading practices,[146] could arguably achieve this balance and still afford adequate protection to web site operators. These laws, as opposed to the stricter copyright and trade mark laws, lack media-specific definitions and concepts and may therefore be more easily applied in the cyber-environment. In this transitional period, however, it would be preferable for the courts to adopt a minimalist approach and encourage the development of a body of self-regulating rules and customs, through which market forces and accepted practices dictate the use of hyperlinking and framing techniques on the Web.

A number of recommendations as to the form and substance of this body of rules are made in the following section of this paper.

XII. Recommendations

In achieving a satisfactory balance between the protection of proprietary rights and the preservation of the fundamental right to link on the Internet, some restrictions on linking practices are essential. The imposition of any restraints should not, however, entail a wholesale prohibition on linking practices, but instead should co-exist with a requirement that web-site publishers assume greater responsibility for preserving their own proprietary interests. Web site publishers are aware of the ubiquity and functionality of links, and therefore must assume this responsibility in light of the medium in which they have chosen to participate. Accordingly, the suggestions discussed below will all be subject to the requirement that the complaining entity has taken reasonable steps to preserve its own interests.

A presumptive right to make reference links should be recognised. HREF links serve a legitimate function and indeed are an integral part of the medium, without which the Web would conceivably cease to function as a reliable communicative mechanism. A web site to which there is no links is, effectively, invisible to other users of the Web. Furthermore, the imposition of a rule making it unlawful for web site proprietors to utilise HREF links would return the Internet to the position it was in prior to the advent of the World Wide Web. This would mean that each site would need to be individually accessed and a user would only be able to access a site if he or she knew the site's URL. Such a solution is neither progressive nor desirable.

A balancing of the threats posed by this basic form of surface linking and the benefits of its function weigh in favour of the preserved use of such links. Given the intrinsic importance of linking to the functioning of the Web, it would also be unnecessarily burdensome and needlessly protectionist to require web site proprietors to obtain permission before implementing any HREF links. A default rule is advocated whereby the creation of a surface or HREF link to a site will be permissible unless the site owner has asserted its right by providing clear notification to the contrary.

In contrast, the practice of "deep" linking to internal pages within another web site, in circumvention of that site's reasonably effective preventative measures, should be prohibited in the absence of consent, on the basis of the laws of unfair competition. A web site operator seeking to utilise these "deep" links should be required to employ appropriate formatting techniques to credit the material and should also be required to obtain consent from the target site owner. Circumventing the home page of a site in breach of these basic rules has been described as "the Internet equivalent of climbing into the third floor rear window when the shop-owner has locked the front door".[147] Part of the experience of using the Web involves entering through the front door of a site and not bypassing site disclaimers or advertising contained on the home page.[148]

The web user should be subject to the same commercialism, and in this context, legal disclaimers, inherent in other mediums such as watching television.[149] The Web, as with a "sprawling mall",[150] is more than just a collection of hosts; it involves a complementary relationship between vendors and customers furnished by standardised rules and practices that must be respected. The product or service provided by a site must be effectively presented, and "commercial fair play" dictates that this effectiveness not be undermined. Consequently, all links should be limited to the home page of the target site, in the absence of consent or agreements to the contrary.

Framing and inline linking technologies present more dangers than simple reference hyperlinks. It should be recognised that frames serve a useful function on the Web, and therefore merit tolerance, but not unrestrained use. When used properly, frames can make a viewer's time on a web page significantly more productive. However, frames can be subject to abuse, and potentially mislead or confuse users as to the source of the content being viewed. A possible solution would be to require framing sites to notify the viewer of a method of viewing the linked site without the frame, at the viewer's discretion. If the frame is imposed, the framing site should ensure that it displays the framed site with minimal distortion and that clear attribution of the owner of the framed site is shown. This may include a requirement that the URL of the framed site be shown.[151] Once again, the answer may lie in technological solutions. For example, a possible solution might be the development and incorporation by Web- browser manufacturers of a facility that automatically displays the URL of framed pages.[152]

A web site proprietor seeking to frame another web site would ideally seek consent to do so in all circumstances, because of the dangers posed by framing techniques. This may be unduly restrictive, but some rules should nevertheless be imposed. Where the frame modifies or distorts the linked site in any way, such as deleting the author's name, then consent of the owner of the relevant site should be obtained. If this consent is not obtained then the framing site is likely to be in breach of copyright and a violation of commercial fair play.

Similarly, the use of inline links involving unassociated web pages should be prohibited in the absence of express consent to do so. While inline links may be a useful tool for web site publishers within their own or associated web sites, their use will invariably cause the viewer to assume that the image is associated with the framing site. The importation of any copyright image into an unassociated page is a clear infringement of the copyright owner's rights and should not be permitted. Web site operators should also avoid using the trade mark or logo of the target site for referencing the link, as this may be a violation of trade mark or result in the dilution of that trade mark. However, this may not always be possible assuming the presumptive right to link exists in the first place.[153]

XIII. Conclusions

The freedom to link and frame on the Internet facilitates the greatest possible access to on-line information, and embodies the very essence of the World Wide Web. These accessing tools should therefore be preserved to the greatest extent possible. This will, however, require careful balancing with the need to preserve intellectual property rights on the Internet. Through the development of a specific set of rules that regulate these practices, this balance can be successfully achieved, and the free exchange of ideas can be encouraged, without stifling the growth and expansion of the revolutionary medium. While the pioneers of the Web would be shocked to discover that legal rights might now impinge on the freedom to link, this rapid expansion and commercialisation of the Web demands that there be some form of intervention.


[*] Angus Wakeman, Solicitor, Brookfields Lawyers. This paer was awarded the Canterbury Law Review Prize for the best undergraduate Honours paper completed in 2001. It was submitted in February 2001 and is published in its original form.

[1] RP Morris, "Be Careful to Whom You Link: How the Internet Practices of Hyperlinking and Framing Pose New Challenges to Established Trademark and Copyright Law" (1998) 30 Rutgers LJ 247.

[2] The idea for the Internet was spawned in the 1960s by researchers funded by the US Defence Department's Advanced Research Projects Agency ("ARPA") as a means of achieving a decentralised network structure. The purpose of this decentralised structure was to ensure the continuation of vital research and communication if parts of the system were damaged or shutdown in the event of a nuclear strike - A Roarty, "Link Liability: The Argument for Inline Links and Frames as Infringements of the Copyright Display Right" (1999) 68 Fordham LRev 1011, at 1012.

[3] RP Morris, op cit n 1, at 248.

[4] T Burners-Lee, "Realising the Full Potential of the Web" 3 December 1997, <http://www.w3.org/ 1998/02/Potential.html>

[5] JR Warner, "Trademark Infringement Online: Appropriate Federal Relief from the Illicit Use of Trademarked Material in Web Site Meta Tags" (2000) 22 Thomas Jefferson L Rev 133.

[6] Internet Domain Survey (January 1999) <http://www.nz.com/zone/WWW/report.html> . A definitive count of the sites on the Web at any given time is probably impossible.

[7] Reno v ACLU [1997] USSC 73; (1997) 117 S Ct 2329, at 2334.

[8] JR Kuester & PA Nieves, "Hyperlinks, Frames and Metatags: An Intellectual Property Analysis" (1998) 38 IDEA: The Journal of Law and Technology 243, at 262.

[9] P Jakab, "Facts and Law of Web Linking", Computer Law Section of the State Bar of Georgia (New York, 12th Annual Computer Law Institute, 1997) <http://www.computerbar.org/seminars/ 97jakab.htm>

[10] M Sableman, "Link Law: The Emerging Law of Internet Hyperlinks" <http://www.ldrc.com/ cyber2.html> . In the words of the World Wide Consortium, "the link has been one of the primary forces driving the success of the Web" - See World Wide Consortium, HTML 4.0 Specification, Part 12.1 <http://www.w3.org/TR/REC-html40/struct/links.html>

[11] JD Shelby Clark, " 'What a Tangled Web We Weave, When First We Practise to Deceive': Frames, Hyperlinks, Metatags, and Unfair Competition on the World Wide Web" (1999) 50 Hastings LJ 1333, at 1335.

[12] These site addresses have been used for illustrative purposes only and may not represent actual Web addresses.

[13] Commercial web sites will typically have multiple pages. The initial page that the web site owner intends most users to encounter is called the "home page", and may contain, important disclaimers or other legal information. More importantly these pages often contain much of the advertising intended for the viewer, and thus generate the bulk of the site's revenue (See Part V).

[14] For a discussion of the relevant authorities that have concerned "deep" linking see Part VI. In a New Zealand context, Television New Zealand advised local web designers not to link directly to internal pages within its web site, or use its logo to highlight a hypertext link to the TVNZ Web site without their express consent -Reported by 25 November 1996 edition of Aardvark (Volume 36) <http://www.aardvark.co.nz/av1125.htm> . Noted in Russell McVeagh Intellectual Property Update (December 1996), "Hypertext Links: Are they Legal?" <http://www.rmmb.co.nz/ updates/ipdec96.html> .

[15] MJ Elgison & JM Jordan III, "Trademark Cases Arise from Meta-Tags, Frames: Disputes Involve Search Engine Indexes, Web Sites Within Sites, As Well As Hyperlinking" 10/20/97 National LJ C6. This practice of identifying the ownership of a site is dictated only by practicality. Site publishers are encouraged to take credit for their own sites. The identification also allows the viewer to quickly ascertain whether the relevant site is of interest to them.

[16] A Roarty, op cit n 2, at 1018.

[17] P Brown & R Raysman, "Dangerous Liaisons: The Legal Risks of Linking Web Sites" (1997) 217 NYLJ 3.

[18] R Chan, "Internet Framing: Complement or Hijack?" (1999) 5 Mich Telecomm Tech L Rev 143. A typical layout might be a small frame to the left used as a menu, and a large one to the right containing the body of the text.

[19] Both IMG links and framing are effectively forms of virtual cutting and pasting. While they are conceptually very similar and may both result in confusion, the main difference is that, in circumstances where the framing results from a deliberate activation of a link by a user, it will be clear to the user that the framed material derives from another site - A Christie, "Copyright Protection for Web Sites" in Going Digital: Legal Issues for Electronic Commerce, Multimedia and the Internet - A Prospect Intelligence Report (St Leonards, NSW: Prospect Media, A Fitzgerald et al eds, 1998), at 11.

[20] RL Tucker, "Information Superhighway Robbery: The Tortious Misuse of Links, Frames, Metatags and Domain Names" (1999) 4 Va JL & Tech 8.

[21] See for example JP Barlow, "The Economy of Ideas: A Framework for Patents and Copyrights in the Digital Age (Everything You Know About Intellectual Property is Wrong)" Wired Magazine, March 1994, at 84. <http://www.wired.com/wired/archive72.03/ economy.ideas_pr.html> .

[22] E Mackay, "The Economics of Emergent Property Rights on the Internet" in The Future of Copyright in a Digital Environment (The Hague, Kluwer Law International, P Bernt Hugenholtz ed, 1996), at 13.

[23] See for example NM Bond, "Linking and Framing on the Internet: Liability Under Trademark and Copyright Law" (1998) 11 De Paul Bus LJ 185. See also B Bolin, "Linking and Liability" <http://www.bitlaw.com/internet/linking.html> .

[24] RL Tucker, op cit n 20.

[25] A Roarty, "Link Liability: The Argument for Inline Links and Frames as Infringements of the Copyright Display Right" (1999) 68 Fordham L Rev 1011, at 1015.

[26] See MA O'Rourke, "Legal Issues on the Internet: Hyperlinking and Framing" <http://www. Dlib.org/dlib/april98/04orourke.html> .

[27] A Roarty, op cit n 25, at 1014.

[28] The Chief-Executive of Ticketmaster (in the context of its claim against Microsoft for unauthorised linking, affecting the value of its own sponsorship and attracted advertising to the Microsoft site) put the argument in very simple terms:

"The advertising and promotional component of the Web will far exceed the transactional - why should they (Microsoft) get the benefit of the advertising when the money is mine"

Reproduced in M Chissick & A Kelman, Electronic Commerce: Law and Practice (London, Sweet & Maxwell, 1999), p191.

[29] Shetland Times Ltd v Dr Jonathon Wills & Another [1997] FSR 604.

[30] Dr Wills (editor of the Shetland News) responded to the Times' protest at its periodic links to Times' stories by publishing his reply in a Shetland News editorial. It is useful to include part of that reply as it encapsulates the argument against the imposition of any liability for hyperlinking:

"The principle of the Internet is free access. We have no turnstile where we vet or charge readers. Nor do you. What we have done, are doing, and will continue to do is direct our readers to your web site on those occasions when your six editorial staff [sic] manage to come up with a story which our single member of staff has either missed or not got round to writing ... We don't need your written permission to put up links to your site, or to any other. You ought to be jolly pleased, because we are bringing you hundreds of readers a day you wouldn't otherwise have". J Wills, "Internet Publisher Doesn't Want the Hits" Shetland News (October 16, 1996) <http:// www.shetland-news.co.uk> .

[31] It is worth noting that Lord Hamilton made his decision on the basis that the inclusion of copyright material on Shetland News' Web site was infringing copyright by inclusion in a cable program service. See later discussion on copyright issues in Part VII. However, Ceri Wells suggests that it is a dubious argument that the operation of a web site qualifies as being a cable programming service - C Wells, "Intellectual Property Issues in Electronic Commerce" (New Zealand Law Conference 1999), at 11.

[32] [1997] FSR 604 at 609 (per Lord Hamilton).

[33] JS Mackenzie, "Setting Up a Legal Website: Pitfalls and Promises" in L Edwards & C Waelde, Law and the Internet: Regulating Cyberspace (Oxford: Hart Publishing, 1997), p 40.

[34] J Wills, " Shetland Times Internet Case Settled Out of Court" Shetland News (November 11, 1997) <http://www.shetland news.co.uk/headline/97nov/settled/settled.html> .

[35] Ticketmaster Corp v Microsoft Corp Complaint, Case No 97-3055 DDP (CD Calif, Filed April 28, 1997).

[36] JR Kuester & PA Nieves, "Hyperlinks, Frames and Metatags: An Intellectual Property Analysis" (1998) 38 IDEA: The Journal of Law and Technology 243, at 262.

[37] M Sableman, "Link Law: The Emerging Law ofInternet Hyperlinks" <http://www.ldrc.com/cyber2.html> .

[38] Washington Post CO v Total News Inc 97 Civ 190 (PKL) (SDNY).

[39] R Chan, "Internet Framing: Complement or Hijack?" (1999) 5 Mich Telecomm Tech L Rev 143,at 145.

[40] See Part VII.

[41] JD Shelby Clark, " 'What a Tangled Web We Weave, When First We Practise to Deceive' Frames, Hyperlinks, Metatags, and Unfair Competition on the World Wide Web" (1999) 50 Hastings LJ 1333, at 1341.

[42] JP Barlow, "The Economy of Ideas: A Framework for Patents and Copyrights in the Digital Age (Everything You Know About Intellectual Property is Wrong)" Wired Magazine, March 1994, at 134. http://www.wired.com/wired/archive/2.03/economy.ideas_pr.html.

[43] RJ Burger & CR Merrill, "Keeping the Chain Unbroken" <http://www.ipmag.com.merrill> .

[44] Cyberspace has been defined as "the conceptual 'location' of the electronic interactivity using one's computer" - WS Byassee, "Jurisdiction of Cyberspace: Applying Real World Precedent to the Virtual Community" (1995) 30 Wake Forest L Rev 197, at 198.

[45] Quoted in IS Nathenson, "Internet Infoglut and Invisible Ink: Spamdexing Search Engines with Meta Tags" (1999) 12 Harv J Law & Tech 43, at 92.

[46] WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (London, Sweet & Maxwell, 4th ed, 1999), p 612. A classic definition of a "trade mark" that has been cited extensively by New Zealand Courts is that of Bowen LJ in In Re Powell's Trade Mark [1893] 2 Ch 388 at 403-4:

"The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods - to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market. It tells the person who is about to buy that what is presented to him is either what he has known before under the similar name, as coming from a source with which he is acquainted or that it is what he heard of before coming as coming from that similar source".

See for example Villa Maria Wines v Montana Wines [1984] 2 NZLR 422.

[47] WM Landes & RA Posner, "Trademark Law: An Economic Perspective" (1989) Intellectual Property LR 229.

[48] CE Gatewood, "Click Here: Web Links, Trademarks and the First Amendment" <http:// www.richmond.edu/joly/v5i3/gatewood.html> . See also C Wells, "Intellectual Property Issues in Electronic Commerce" (New Zealand Law Conference 1999), at 2.

[49] An issue that is not examined in this paper but is nonetheless worth considering is whether the link provided by a search engine to the site containing the trade mark in fact constitutes a "display" of that work. The interpretation of the term "display" may need to be addressed in the context of search engines on the Internet.

[50] A universal registration requirement might have to be considered to prevent a trade mark from being registered by several different proprietors operating in different areas given the potential for confusion that this would create given the borderless nature of the Internet. Similar problems have been encountered in the context of the use of Domain Names on the Internet.

[51] Trade Marks Act 1953, s 2(1). For the U.S. Federal definition see Trademark Act 1946 ("Lanham Act") 15 USC 1127. In that Act, a trade mark or service mark is defined as any word, name, symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods or services and distinguish them from those manufactured or sold to others.

[52] C Wells, op cit n 48, at 1.

[53] Trade Marks Act 1953, s7. The mark may be registered in Part A or Part B (or both in some cases) of the Register depending on the class of goods or services to which the trader proposes to apply it. To be registrable under Part A (governed by s14) the mark must satisfy a statutory requirement of distinctiveness - See for example Lever Bros v McGill [1917] NZGazLawRp 96; [1917] NZLR 595. The registering of a mark under Part B (governed by s15) entails a lesser standard, of being "capable of distinguishing" the goods or services of the trader from those of another - The Law of Torts in New Zealand (Wellington, Brookers, 2nd ed, S Todd ed, 1997), p 799.

[54] Ibid s8(1A). The mark must be used in promotion of goods or service or in relation to goods or services.

[55] MA O'Rourke, "Legal Issues on the Internet: Hyperlinking and Framing" <http://www. Dlib.org/ dlib/april98/04orourke.html> .

[56] Trade Marks Act 1953, s 8(1A); See Villa Maria Wines Ltd v Montana Wines Ltd [1984] 2

NZLR 422 at 430.

[57] Ibid s9(2).

[58] A court will have regard to factors such as: (1) the manner in which the word or mark is being used by the defendant (such as its visual placement, font size and prominence); (2) whether it is used in good faith; and (3) whether it is likely to confuse or deceive consumers - JR Kuester & PA Nieves, "Hyperlinks, Frames and Metatags: An Intellectual Property Analysis" (1998) 38 IDEA: The Journal of Law and Technology 243, at 262.

[59] M Sableman, "Link Law: The Emerging Law of Internet Hyperlinks" <http://www.ldrc.com/ cyber2.html> .

[60] RL Tucker, "Information Superhighway Robbery: The Tortious Misuse of Links, Frames, Metatags and Domain Names" (1999) 4 Va JL & Tech 8.

[61] Playboy Enterprises Inc v Frena 839 F Supp 1552 (MD Fla 1993).

[62] K Beal, "The Potential Liability of Linking on the Internet: An Examination of Possible Legal Solutions" (1998) BYUL Rev 703, 728.

[63] If a page clearly indicates its true owner's identity, a link to that page in the absence of other factors, is unlikely to confuse consumers.

[64] JD Shelby Clark, " 'What a Tangled Web We Weave, When First We Practise to Deceive' ": Frames, Hyperlinks, Metatags, and Unfair Competition on the World Wide Web" (1999) 50 Hastings LJ 1333, 1353.

[65] See Federal Trademark Dilution Act 1996 15 USC 1127.

[66] M Sableman, "Link Law: The Emerging Law of Internet Hyperlinks" <http://www.ldrc.com/ cyber2.html> .

[67] See for example Ticketmaster Corp v Microsoft Corp Complaint, Case No 97-3055 DDP (CD Calif, Filed April 28, 1997)

[68] K Beal, op cit n 62, at 727.

[69] Op cit n 67.

[70] K Beal, op cit n 62, at 728. For further discussion of the case see Part VI (ii).

[71] For an example of trade mark infringement in a New Zealand context see PC Direct Ltd v Best Buy Ltd [1997] 2 NZLR 723.

[72] C Wells, "Intellectual Property Issues in Electronic Commerce" (New Zealand Law Conference 1999), at 4.

[73] This likelihood of confusion is heightened by the fact that the URL of the framed site, if visible at all, will be considerably less prominent than that of the framing site.

[74] A general tortious remedy for unfair competition has been codified in US Federal law under the Lanham Act s43(a) 15 USC 1125. This provision is designed to encompass all types of action that would not be included in other provisions relating to proprietary rights, and to protect property interests against a broader range of unfair trade practices than is provided for by trade mark law. The section includes statutory protection against "passing off. NB. In New Zealand, despite considerable academic debate, calls for the recognition of a general tortious remedy against unfair competition or trade practices have been rejected. Some of the relevant concerns that were raised have been alleviated by the enactment of the Fair Trading Act 1986 which will be discussed later in this paper - The Law of Torts in New Zealand (Wellington, Brookers, 2nd ed, S Todd ed, 1997), p 817.

[75] [1979] AC 731 at 742. These elements have been recognised as describing the elements necessary for the modern action in passing off and applied in New Zealand case law - see for example Taylor Bros Ltd v Taylors Group Ltd [1988] 2 NZLR 1, at 16 (HC).

[76] M Sableman, op cit n 66.

[77] The test for establishing confusion in this context would likely require it to be shown that a substantial or significant number of web users would be confused by the linking or framing. See Klissers Farmhouse Bakeries Ltd v Harvest Bakeries Ltd [1988] 1 NZLR 16, at 18 (per Cooke P).

[78] A link may divert business from a site to other sites or deter visitors to the site where the link might be seen as unfavourable. A web site operator might also have agreements with other web site owners allowing them to link to the target site for the payment of a fee. An unauthorised link would devalue that arrangement and consequently damage the goodwill of the target site owner. The definition of "goodwill" most commonly relied on is that formulated by Lord Macnaghten in Inland Revenue Comrs v Muller & Co's Margarine Ltd [1901] AC 217 at 223:

"It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom."

In the New Zealand context see Dominion Rent A Car Ltd v Budget Rent A Car Systems Ltd [1987] NZCA 13; [1987] 2 NZLR 395.

[79] Difficulties can arise in this context, however, if the "get-up" becomes mixed up with the function of the goods or services. The key question is whether the get-up or appearance is essentially dictated by purpose or function or whether it is merely capricious. The position now seems to be that if the feature is a functional one it will only qualify as part of the "get-up" if the characteristic that distinguishes the product in the minds of the public is not the functional idea per se but the capricious way in which the idea has been expressed. - See Tot Toys Ltd v Mitchell [1993] 1 NZLR 325, at 344 (per Fisher J).

[80] A linking site seeking to trade on the success and reputation of the target site can easily copy elements of the target site, so that the linking site gives the appearance of being part of the same site. The name of the linking site and its address (ie. the domain name or URL) could also be made similar to that of the target site. A further tool that might perpetuate the deception would be the incorporation of "meta-tags" or keywords that will attract viewers to the site - See C Wells, "Intellectual Property Issues in Electronic Commerce" (New Zealand Law Conference 1999), at 5. For a detailed discussion of meta-tags and their implications see TW Mills, "Metatags: Seeking to Evade User Detection and the Lanham Act" (2000) 6 Rich JL & Tech 22.

[81] Confusion by "get-up" is a common form of passing off under the common law tort. See for example Dominion Rent A Car Ltd v Budget Rent A Car Systems Ltd [1987] NZCA 13; [1987] 2 NZLR 395. In the US context, a claim for infringement of "trade dress" (the distinctive overall image and impact of a combination of elements that are source-identifying) can be raised under s43(a) Lanham Act. For a general definition of "get-up" see Klissers Farmhouse Bakeries Ltd v Harvest Bakeries Ltd [1985] NZCA 70; [1985] 2 NZLR 129 at 147 (per Davison CJ):

"Get-up of goods is the dress in which they are presented to the buyer. It comprises in particular the size and shape of the packages, the material, the colour, and the decoration of their wrappers, and the lettering and the arrangement of their labels."

[82] M Sableman, "Link Law: The Emerging Law of Internet Hyperlinks" <http://www.ldrc.com/ cyber2.html> .

[83] Ticketmaster Corp v Microsoft Corp Complaint, Case No 97-3055 DDP (CD Calif, Filed April 28, 1997).

[84] JD Shelby Clark, " 'What a Tangled Web We Weave, When First We Practise to Deceive' Frames, Hyperlinks, Metatags, and Unfair Competition on the World Wide Web" (1999) 50 Hastings LJ 1333, at 1343.

[85] K Beal, "The Potential Liability of Linking on the Internet: An Examination of Possible Legal Solutions" (1998) BYUL Rev 703, at 730.

[86] C Wells, op cit n 80, at 2.

[87] Section 9 provides:

"No person shall, in trade, engage in conduct that is misleading or deceptive or is likely to mislead or deceive." Section 16:

"No person shall, in trade, - forge any trade mark; or falsely apply to any goods, any trade mark or mark so nearly resembling a trade mark as to be likely to mislead or deceive."

[88] Russell McVeagh Intellectual Property Update (December 1996), "Hypertext Links: Are they Legal?" <http://www.rmmb.co.nz/updates/ipdec96.html> .

[89] Simpson Grierson's Intellectual Property Law Newsletter, On Your Marks (July 2000): "The Hype about Hyperlinks".

[90] Section 2(1)Copyright Act 1994. Introduced following the recommendations of TRIPS Agreements 1984 and 1986 ("Agreement on Trade-Related Aspects of Intellectual Property Rights"). Copyright as a legal concept can be dated back as far as the development of the printing press in the 15th Century and it has been developing to new communication technologies ever since - DJ McIlroy, Electronic Commerce (1999), at 130.

[91] Copyright is now recognised as entirely a creature of statute in the UK, United States and New Zealand: Copyright Act 1976 (US); UK Copyright, Designs and Patent Act 1988 (UK); and Copyright Act 1994 (NZ). While the provisions of these respective statutes differ in certain respects the substantive provisions in each jurisdiction are broadly similar and comparable.

[92] M Jackson, "Linking Copyright to Homepages" (1997) Fed Com LJ 731.

[93] D Bencivenga in suggesting that a lack of protection will stifle the growth of the Internet noted that "people are afraid of putting information out there, only to have it stolen or misused" - D Bencivenga, "Protecting Copyrights: Law and Technology Out of Sync in Digital Age" 10/16/ 97 NYLJ <http://www.ljx.com/copyright/1016cpdig.html> .

[94] M Jackson, op cit n 92. The economic rationale for copyright, according to Jackson, is based on the following assumptions: (1) granting property rights in a work will allow the author to earn a profit from his or her labour; (2) the ability to earn a profit will provide the author with the necessary incentive to create; and (3) the more works that are created, the greater the benefit to the public and the greater advancement of science. See also NM Bond, "Linking and Framing on the Internet: Liability Under Trademark and Copyright Law" (1998) 11 De Paul Bus LJ 185, at 189.

[95] C Reed, "Controlling World Wide Web Links: Property Rights, Access Rights and Unfair Competition" <http:www.law.indiana.edu/glsj/vol6/no1/reed.html>.

[96] See for example M Jackson, op cit n 92, at 739; See also P Brown & R Raysman, "Dangerous Liaisons: The Legal Risks of Linking Web Sites" (1997) 217 NYLJ 3.

[97] C Reed, op cit n 95. The four elements of the URL according to the conventions produced by the World Wide Web Consortium are: (1) the HTML elements of the URL, which are common to all URLs and are therefore not original; (2) the domain name of the Web server on which the page resides, devised by the operator of that server when the domain name was registered; (3) the directory structure of the web server, chosen by the operator for the convenience of maintaining the website; and (4) the filename of the HTML file containing the Web page, which might be generated automatically by the software used to create the page. See also T Maltz, "Copyright, Hyperlinks and Networked Information Resources - Changing the Contours of Intellectual Property Law" in Internet Law Anthology: A Prospect Intelligence Report (Sydney, Prospect Publishing, P Leonard ed, 1997), at 60.

[98] P Brown & R Raysman, op cit n 96, at 5. See also K Beal, "The Potential Liability of Linking on the Internet: An Examination of Possible Legal Solutions" (1998) BYUL Rev 703, at 724.

[99] See for example B Templeton, "Linking Rights" <http://www.clari.net/brad/linkright.html> . Here he suggested that a link was more in the nature of an online "physical" button that causes browser software to move to a new site. Therefore the suggestion is that it is more of an infringement than a street address.

[100] See A Morrison, "Hijack on the Road to Xanadu: The Infringement of Copyright in HTML Documents via Networked Computers and the Legitimacy of Browsing Hypermedia Documents" (1999) 1 JILT <http://www.law.warwick.ac.uk/jilt/99-1/morrison.html> .

[101] A Roarty, "Link Liability: The Argument for Inline Links and Frames as Infringements of the Copyright Display Right" (1999) 68 Fordham L Rev 1011, at 1038.

[102] Some commentators have noted that this authority is limited or weakened by the fact that it was an action for an interim interdict and that the matter was subsequently settled. The implications of this are that the decision was made by one judge on the balance of convenience and based on limited argument by counsel - JP Connolly et al, "Fair Dealing in Webbed Links of Shetland Yarns" (1998) Volume 2 Journal of Information, Law and Technology, reproduced at <http:elj.warwick.ac.uk/ jilt/copyright/98_2conn/>. This also explains in part why the US Courts have shown a disregard for the decision in this case - See RL Tucker, "Information Superhighway Robbery: The Tortious Misuse of Links, Frames, Metatags and Domain Names" (1999) 4 Va JL & Tech 8.

[103] This was found to be an infringement of s 20 of the UK Copyright, Designs and Patents Act 1988. The equivalent New Zealand provision is s 33 of the Copyright Act 1994. Section 33 provides that the inclusion if a literary or artistic work, or a sound recording or film, in a cable program service is a restricted act under the Copyright Act.

[104] However, the wording of the sections of the Act considered in Shetland is very similar to the New Zealand sections, so it remains unclear whether the New Zealand courts would adopt a similar interpretation - Bell Gully Communication, Technology and Media Group, E-Commerce and the Internet: A New Zealand Legal Perspective (Wellington, Bell Gully Technology Group, December 1999), at 21.

[105] C Wells, "Intellectual Property Issues in Electronic Commerce" (New Zealand Law Conference 1999), at 12.

[106] An explanation of the reasons for and history of the dispute is found at: http://www.cs.rice.edu/ ~dwallach/dilbert.

[107] In the second letter, United Media asserted that Wallach's in-line links to copyrighted material constituted an unauthorised display of a copyrighted work, which violated established copyright laws.

[108] A Roarty, op cit n 101, at 1033.

[109] JL Dean & NT Himmelrich, "Keeping Online Activity in Line: Internet Trademark and Copyright Law" (2000) 33 Maryland BJ 39, at 42.

[110] RJ Burger & CR Merrill, "Keeping the Chain Unbroken" <http://www.ipmag.com.merrill> .

[111] For further discussion of the Implied Licence Argument see Part VIII.

[112] Copyright Act 1994 (NZ), s42; Copyrights, Designs and Patents Act 1988, s 30(1).

[113] See for example Hubbard v Vosper [1972] 2 QB 84 at 98.

[114] Copyright Act 1994, ss44 and 51.

[115] In the US, these factors are set out in the Lanham Act 17 USC Section 107. The factors to be taken into account are: (1) the purpose and character of the use by the linking site; (2) the nature of the copyright work; (3) the amount and substantiality of the portion used in relation to the copyright work as a whole; and (4) the effect of the accused use on the potential market for or value of the copyright work.

[116] See A Brown & A Grant, "The Law of Intellectual Property in New Zealand" (Wellington, Butterworths, 1989), p404. See also C Reed, "Controlling World Wide Web Links: Property Rights, Access Rights and Unfair Competition" <http:www.law.indiana.edu/glsj/vol6/no1/reed.html>. The Fair Dealing defence under ss29 and 30 of the Copyright, Designs and Patent Act 1988 is more precisely delimited than the US equivalent. The defence will only be satisfied if it is done: (1) for the purposes of criticism, review or news reporting, or (2) for the purpose of research or private study. The provision in the New Zealand Act is substantially similar.

[117] K Beal, "The Potential Liability of Linking on the Internet: An Examination of Possible Legal Solutions" (1998) BYUL Rev 703, at 726.

[118] Berne Convention for the Protection of Literary and Artistic Works 1886. The other major international conventions governing copyright are the Universal Copyright Convention 1952 and the Rome Convention of 1961.

[119] Article 5(1) Berne Convention for the Protection of Literary and Artistic Works, July 24, 1971.

[120] C Reed, op cit n 116.

[121] see discussion of Trade Mark Law, see Part VII.

[122] RL Tucker, "Information Superhighway Robbery: The Tortious Misuse of Links, Frames, Metatags and Domain Names" (1999) 4 Va JL & Tech 8.

[123] K Beal, op cit n 117, at 709.

[124] A Morrison, 'Hijack on the Road to Xanadu: The Infringement of Copyright in HTML Documents via Networked Computers and the Legitimacy of Browsing Hypermedia Documents' (1999) 1 JILT <http://www.law.warwick.ac.uk/jilt/99-1/morrison.html> .

[125] RJ Burger & CR Merrill, 'Keeping the Chain Unbroken' <http://www.ipmag.com.merrill> .

[126] C Oppenheim, 'The Internet Copyright Case and its Implications for Users of the WWW' (6 December 1996) <http://www.shetland-news.uk/editorial/profopp1.html> (Site visited 14 August 2000) .

[127] JF Burrows, JN Finn & SM Todd, The Law Of Contract in New Zealand (Wellington, Butterworths, 8th ed, 1997), at 172.

[128] See for example Woods v N J Ellingham & CO Ltd [1977] 1 NZLR 218, at 220-21 (per Henry J).These principles were applied in Everist v McEvedy [1996] 3 NZLR 348 where Tipping J held that a custom may be found to exist that prevents one party from exercising the rights the law would otherwise give him. Such an implied term would arguably apply here to prevent a linked site from seeking legal remedies for unauthorised linking or framing on the basis that, by launching a site on the Web, the aggrieved Web site operator had accepted or impliedly consented to these practices.

[129] WA Effross, "Withdrawal of the Reference: Rights, Rules, and Remedies for Unwelcomed Linking" (1998) 49 South Carolina L Rev 651, at 677.

[130] Ticketmaster Corp v Microsoft Corp Complaint, Case No 97-3055 DDP (CD Calif, filed April 28, 1997).

[131] M Sableman, "Link Law: The Emerging Law of Internet Hyperlinks" <http://www.ldrc.com/ cyber2.html> .

[132] R Chan, "Internet Framing: Complement or Hijack?" (1999) 5 Mich Telecomm Tech L Rev 143, at 145.

[133] M Sableman, op cit n 131.

[134] MM Luria, "Controlling Web Advertising: Spamming, Linking, Framing and Privacy" (1997) 14(11) Computer Law 10, at 13 <http://eon.law.harvard.edu/property00/metatags/mixed2.html> .

[135] RP Morris, "Be Careful to Whom You Link: How the Internet Practices of Hyperlinking and Framing Pose New Challenges to Established Trademark and Copyright Law" (1998) 30 Rutgers LJ 247.

[136] WA Effross, op cit n 129, at 690.

[137] See discussion of Web linking agreements (Part X).

[138] P Jakab, "Facts and Law of Web Linking" Computer Law Section of the State Bar of Georgia (New York, 12th Annual Computer Law Institute, 1997) <http://www.computerbar.org/seminars/97jakab.htm.>

[139] M Sableman, op cit n 131.

[140] P Jakab, op cit n 138. For example, some are so restrictive that they have already been violated by the act of signing on, as this creates an electronic copy which is prohibited by the terms the user is then reading on his or her screen. enforceability of these contracts will also depend on their prominence to the user. It is suggested that any "click-on" contract or warning should be supplemented with a warning such as this:

"These are the only terms and conditions on which we are willing to permit access and use of this Web site; any user not willing to accept these terms should exit the site immediately"

[141] RL Tucker, "Information Superhighway Robbery: The Tortious Misuse of Links, Frames, Metatags and Domain Names" (1999) 4 Va JL & Tech 8.

[142] JR Kuester & PA Nieves, "Hyperlinks, Frames and Metatags: An Intellectual Property Analysis" (1998) 38 IDEA: The Journal of Law and Technology 243, at 277.

[143] See for example arguments in DR Johnson & D Post, "Symposium: Surveying Law and Borders" (1996) 48 Stan L Rev 1367.

[144] See S Finkelstein, "The Total News Lawsuit", ILPN (April 1997) <http://www.collegehill.com/ipr-news/finkelstein1.html> .

[145] See M Sableman, "Link Law: The Emerging Law of Internet Hyperlinks" <http://www.ldrc.com/cyber2.html> .

[146] See Fair Trading Act 1986 and Commerce Act 1986 in the New Zealand context.

[147] D Mirchin, "Can You Be Legally Liable for Hypertext Linking" <http://www.silverplatter.com/hypertext.html.>

[148] Nevertheless, if a site owner does not take steps to adequately prevent "deep" linking then arguably they should not receive protection.

[149] For instance, a television viewer is required to tolerate commercials and end credits when watching television. Similarly, in reading a magazine, the reader is sometimes required to filter through pages of advertisements before reading the article they want to or finding the table of contents. In the same way, a web user should not be able to access information without first being subject to the advertising or legal disclaimers asserted by the offeror of that information.

[150] See analogy of "sprawling mall" referred to in Reno v ACLU [1997] USSC 73; (1997) 117 S Ct 2329 at 2334.

[151] K Beal, "The Potential Liability of Linking on the Internet: An Examination of Possible Legal Solutions" (1998) BYUL Rev 703, at 726.

[152] JD Shelby Clark, " 'What a Tangled Web We Weave, When First We Practise to Deceive': Frames, Hyperlinks, Metatags, and Unfair Competition on the World Wide Web" (1999) 50 Hastings LJ 1333, at 1357.

[153] Take for example the situation of a web site operator seeking to link to the Nike Web site. It would be preferable for the linking site to link by underlining the Nike name rather than by using its trade mark swoosh. This is complicated by the fact that the Nike name is also trade marked. Its use, however, would be unavoidable by virtue of the fact that there is no other reasonable way to reference a link to the Nike Web site. The solution to these problems though would arguably be remedied in any event by obtaining the consent of Nike to link to its site - Example adapted from D Mirchin, "Can You Be Legally Liable for Hypertext Linking" <http:// www.silverplatter.com/hypertext.html.> .


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