October 2003
Law Update:
What are Meta tags?
Meta tags are keywords used in a computer language called Hypertext Markup Language (HTML) when creating a website. During a website’s creation, the website’s designer inserts keywords that describe the contents of the site to be used by search engines, such as Yahoo or Google, to connect those keywords to websites containing them. As such, when a search engine user carries out a search under a particular keyword or phrase, a list of websites or pages are retrieved, otherwise known as “hits”, which are connected to these meta tags.
Meta tags are hidden keywords or phrases that are not visible to the viewer when a website is accessed normally. Instead, meta tags are used by search engines to index web pages for their engines.
In order to increase traffic to a particular website, a web designer will normally insert a broad range of keywords and phrases as meta tags. These words and phrases should logically be descriptive or somehow relevant to the website itself. For example, a company such as Pepsi may include such words or phrases as “Pepsi”, “cola”, “beverages”, “carbonated beverages” and “drink” in their meta tags in order to attract users to their website.
It is also important to note that the more often a word appears in meta tags and in the text of the website, the higher it will appear in the list of matches, or hits, provided by the search engine.
Trademark Infringement – How does it Occur?
There are websites which contain meta tags that have nothing to do with their websites or are words or phrases related to their competitors in order to increase traffic to their website and divert it from their competitors. This is where trademark infringement may occur.
Traditional trademark infringement occurs when a party uses another party’s trademark without the owner’s authorization and such use results in a likelihood of confusion among consumers.
Meta tag trademark infringement occurs when one entity uses a competitor’s trademark in its meta tag in order to divert users from the competitor’s website and onto theirs. As a result, when a user types the competitor’s trademark into a search engine, the entity’s website appears as a match, and more likely, will appear at the top of the page of matches, thus, possibly preceding the listing for the competitor’s website. This results in web traffic being diverted from the website of the trademark owner, as well as, misleading consumers into believing that the website they have been diverted to is somehow related to the trademark or the trademark owner.
For example, if a law firm that is not related to Al Tamimi & Company inserts the words “Al Tamimi” and “Tamimi” in their meta tags, the said law firm could be liable to Al Tamimi & Company for trademark infringement, particularly where the law firm’s site does not contain any fair use of the trademark “Al Tamimi & Company”. In this case, clients searching for Al Tamimi & Company’s website will be diverted to the website of the infringing law firm.
Landmark Case Finding Meta Tag Trademark Infringement
The first appellate judgment in the United States finding meta tag trademark infringement is Brookfield Communications, Inc. v. West Coast Entertainment Corp. This was a ninth circuit appellate decision.
The Plaintiff, a company that markets entertainment-industry information, had registered the trademark “MovieBuff”. The Defendant, a large video rental chain, used the term “moviebuff” in its meta tags. The Plaintiff filed a lawsuit against the Defendant alleging that such use by the Defendant constitutes trademark infringement and unfair competition.
The district court found for the Defendant on the bases that the Defendant was the prior user of the “MovieBuff” trademark and that the Plaintiff did not successfully show a likelihood of confusion. The district court also treated the Plaintiff’s application for a temporary restraining order (TRO) as a motion for a preliminary injunction and denied it.
The case was appealed to the U.S. Court of Appeals who reversed the lower court’s judgment stating that the Defendant’s use of the Plaintiff’s trademark in its meta tags constituted trademark infringement under the Lanham Act. Thus, the Court of Appeals instructed the lower court to grant the Plaintiff a preliminary injunction.
In rendering its judgment, the appellate court stated that individuals surfing the web in search of the Plaintiff’s product and, as a result of the Defendant’s use of the word “MovieBuff” in its meta tags, are directed instead to the Defendant’s website by the search engines. These surfers would then find in the Defendant’s website a database similar enough to that of the Plaintiff so as to result in a significant percentage of them using the Defendant’s product instead.
As such, the court found the end result of such use of meta tags to be “initial interest” confusion and a wrongful diversion of consumer interest from the Plaintiff’s product to the Defendant’s website. This is actionable even without such confusion or diversion resulting in purchases by the consumers concerned.
The appellate court further found that such use of meta tags by the Defendant was a misappropriation of the Plaintiff’s goodwill and an infringement of the Plaintiff’s rights in its “MovieBuff” trademark as the Defendant would wrongly benefit from the goodwill associated with the said mark.
Fair Use Overriding Meta Tag Infringement
The first court holding allowing the use of trademarks in meta tags is Playboy v. Terri Welles.
The Defendant, Terri Welles, was a model for the Plaintiff, an adult magazine, who appeared on the magazine’s cover in 1980, was featured as Playmate of the Month in December 1980, was named Playmate of the Year in 1981 and, subsequently, appeared in 13 more issues of the magazine, as well as, 18 “newsstand specials” published by the Plaintiff. The Defendant then developed a website using the domain name terriwelles.com. In her website, the Defendant inserted, among other things, photographs of herself, an autobiography and her personal appearance schedule. The Defendant used the words “Playboy” and “Playmate” in both her website and the meta tags in her website. The Plaintiff filed a lawsuit against the Defendant requesting a preliminary injunction.
The Plaintiff filed the lawsuit against the Defendant claiming that the Defendant’s use of the words “Playboy” and “Playmate” in her meta tags and her website were a infringement of their rights in their trademarks “Playboy” and “Playmate”. The Plaintiff requested that the court grant them a preliminary injunction preventing the Defendant from making such use of these words.
The Court found in favor of the Defendant and denied the Plaintiff’s petition for preliminary injunction.
In rendering its judgment, the Court stated that the Defendant had exercised fair use of the Plaintiff’s trademarks by using them legitimately as a description of herself and to accurately categorize her website with search engines. In fact, the Court stated that, “…given that Ms. Welles is the ‘Playmate of the Year 1981’, there is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases.”
Furthermore, the Court noted that the Defendant’s use of the Plaintiff’s trademarks in her meta tags was not to mislead web surfers into believing that her website was in any way affiliated with the Plaintiff. This is supported by the fact that the Defendant did not use any of the Plaintiff’s trademarks that were not necessary to describe herself, such as the Playboy rabbit logo. In addition, the Defendant’s site contained disclaimers stating that she was neither affiliated nor endorsed by the Plaintiff.
Conclusion
Therefore, whether the use of another party’s trademark in a meta tag constitutes trademark infringement depends on how and why the trademark is used. This has been illustrated by the above two court cases. However, one thing is for certain. Cyberspace can no longer be assumed as the wild west of trademark use as one can be found liable for trademark infringement in that media as it can in other forms of “real world” media.
Law Update:
What are Meta tags?
Meta tags are keywords used in a computer language called Hypertext Markup Language (HTML) when creating a website. During a website’s creation, the website’s designer inserts keywords that describe the contents of the site to be used by search engines, such as Yahoo or Google, to connect those keywords to websites containing them. As such, when a search engine user carries out a search under a particular keyword or phrase, a list of websites or pages are retrieved, otherwise known as “hits”, which are connected to these meta tags.
Meta tags are hidden keywords or phrases that are not visible to the viewer when a website is accessed normally. Instead, meta tags are used by search engines to index web pages for their engines.
In order to increase traffic to a particular website, a web designer will normally insert a broad range of keywords and phrases as meta tags. These words and phrases should logically be descriptive or somehow relevant to the website itself. For example, a company such as Pepsi may include such words or phrases as “Pepsi”, “cola”, “beverages”, “carbonated beverages” and “drink” in their meta tags in order to attract users to their website.
It is also important to note that the more often a word appears in meta tags and in the text of the website, the higher it will appear in the list of matches, or hits, provided by the search engine.
Trademark Infringement – How does it Occur?
There are websites which contain meta tags that have nothing to do with their websites or are words or phrases related to their competitors in order to increase traffic to their website and divert it from their competitors. This is where trademark infringement may occur.
Traditional trademark infringement occurs when a party uses another party’s trademark without the owner’s authorization and such use results in a likelihood of confusion among consumers.
Meta tag trademark infringement occurs when one entity uses a competitor’s trademark in its meta tag in order to divert users from the competitor’s website and onto theirs. As a result, when a user types the competitor’s trademark into a search engine, the entity’s website appears as a match, and more likely, will appear at the top of the page of matches, thus, possibly preceding the listing for the competitor’s website. This results in web traffic being diverted from the website of the trademark owner, as well as, misleading consumers into believing that the website they have been diverted to is somehow related to the trademark or the trademark owner.
For example, if a law firm that is not related to Al Tamimi & Company inserts the words “Al Tamimi” and “Tamimi” in their meta tags, the said law firm could be liable to Al Tamimi & Company for trademark infringement, particularly where the law firm’s site does not contain any fair use of the trademark “Al Tamimi & Company”. In this case, clients searching for Al Tamimi & Company’s website will be diverted to the website of the infringing law firm.
Landmark Case Finding Meta Tag Trademark Infringement
The first appellate judgment in the United States finding meta tag trademark infringement is Brookfield Communications, Inc. v. West Coast Entertainment Corp. This was a ninth circuit appellate decision.
The Plaintiff, a company that markets entertainment-industry information, had registered the trademark “MovieBuff”. The Defendant, a large video rental chain, used the term “moviebuff” in its meta tags. The Plaintiff filed a lawsuit against the Defendant alleging that such use by the Defendant constitutes trademark infringement and unfair competition.
The district court found for the Defendant on the bases that the Defendant was the prior user of the “MovieBuff” trademark and that the Plaintiff did not successfully show a likelihood of confusion. The district court also treated the Plaintiff’s application for a temporary restraining order (TRO) as a motion for a preliminary injunction and denied it.
The case was appealed to the U.S. Court of Appeals who reversed the lower court’s judgment stating that the Defendant’s use of the Plaintiff’s trademark in its meta tags constituted trademark infringement under the Lanham Act. Thus, the Court of Appeals instructed the lower court to grant the Plaintiff a preliminary injunction.
In rendering its judgment, the appellate court stated that individuals surfing the web in search of the Plaintiff’s product and, as a result of the Defendant’s use of the word “MovieBuff” in its meta tags, are directed instead to the Defendant’s website by the search engines. These surfers would then find in the Defendant’s website a database similar enough to that of the Plaintiff so as to result in a significant percentage of them using the Defendant’s product instead.
As such, the court found the end result of such use of meta tags to be “initial interest” confusion and a wrongful diversion of consumer interest from the Plaintiff’s product to the Defendant’s website. This is actionable even without such confusion or diversion resulting in purchases by the consumers concerned.
The appellate court further found that such use of meta tags by the Defendant was a misappropriation of the Plaintiff’s goodwill and an infringement of the Plaintiff’s rights in its “MovieBuff” trademark as the Defendant would wrongly benefit from the goodwill associated with the said mark.
Fair Use Overriding Meta Tag Infringement
The first court holding allowing the use of trademarks in meta tags is Playboy v. Terri Welles.
The Defendant, Terri Welles, was a model for the Plaintiff, an adult magazine, who appeared on the magazine’s cover in 1980, was featured as Playmate of the Month in December 1980, was named Playmate of the Year in 1981 and, subsequently, appeared in 13 more issues of the magazine, as well as, 18 “newsstand specials” published by the Plaintiff. The Defendant then developed a website using the domain name terriwelles.com. In her website, the Defendant inserted, among other things, photographs of herself, an autobiography and her personal appearance schedule. The Defendant used the words “Playboy” and “Playmate” in both her website and the meta tags in her website. The Plaintiff filed a lawsuit against the Defendant requesting a preliminary injunction.
The Plaintiff filed the lawsuit against the Defendant claiming that the Defendant’s use of the words “Playboy” and “Playmate” in her meta tags and her website were a infringement of their rights in their trademarks “Playboy” and “Playmate”. The Plaintiff requested that the court grant them a preliminary injunction preventing the Defendant from making such use of these words.
The Court found in favor of the Defendant and denied the Plaintiff’s petition for preliminary injunction.
In rendering its judgment, the Court stated that the Defendant had exercised fair use of the Plaintiff’s trademarks by using them legitimately as a description of herself and to accurately categorize her website with search engines. In fact, the Court stated that, “…given that Ms. Welles is the ‘Playmate of the Year 1981’, there is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases.”
Furthermore, the Court noted that the Defendant’s use of the Plaintiff’s trademarks in her meta tags was not to mislead web surfers into believing that her website was in any way affiliated with the Plaintiff. This is supported by the fact that the Defendant did not use any of the Plaintiff’s trademarks that were not necessary to describe herself, such as the Playboy rabbit logo. In addition, the Defendant’s site contained disclaimers stating that she was neither affiliated nor endorsed by the Plaintiff.
Conclusion
Therefore, whether the use of another party’s trademark in a meta tag constitutes trademark infringement depends on how and why the trademark is used. This has been illustrated by the above two court cases. However, one thing is for certain. Cyberspace can no longer be assumed as the wild west of trademark use as one can be found liable for trademark infringement in that media as it can in other forms of “real world” media.
Mona Ashour
© Al Tamimi & Company 2003
