KEYWORDS, META TAGS AND TRADEMARKS
IVAN HOFFMAN, B.A., J.D.
One of the areas of potential trademark infringement that is peculiar to the Internet is the use of marks within the body of the meta tag section of the source code of a writer web site. Part of the meta tag are the keywords, used by search engines to locate sites in the vastness of the Internet. Thus, the manner in which such keywords are created and used in the meta tag section can often make the difference between being found at all on the Net or where, within the search results, your site pops up. However, the use of trademarks in the keywords can present legal issues for the site, the site’s designer and the trademark owner.
The cases turn primarily on the twin concepts that that the use of such marks in the keywords amounts to a diversion of traffic from the site of the trademark owner as well as presenting a source of confusion in the minds of the visitor as to whether or not the site using such keywords is related to the site of the trademark owner. Confusion as to origin is the key element in trademark infringement.
But in addition there are other cases that involve the purchase of trademark names by parties other than the trademark owner so that when a searcher enters the trademark, the returned information points to the site of the non-trademark owner or to ads for that said site or similar returns. These cases turn on whether such purchase is a “use in commerce” of the mark or a “fair use” of the mark.
Some of the Cases
In Brookfield Communications vs. West Coast Entertainment, the site run by the defendant West Coast used the term “moviebuff” in its keywords, which term was actually a registered trademark of the plaintiff, Brookfield. Even though the defendant owned the domain moviebuff.com (in the days before the Uniform Domain Dispute Resolution Policy or the Anticybersquatting Consumer Protection Act…read the articles on my site under the link “Articles About Trademarks and Domain Names”), the court held that the use of the registered mark in the keywords amounted to a diversion of traffic from the site of the plaintiff and as such, was an unauthorized use of plaintiff’s registered mark and thus an infringement.
In a case that was settled, Reed Elsevier, Inc. sued Rice Innovator Corp. along with DoubleClick and AltaVista on the grounds that when the defendant Rice bought the rights to certain keywords that were trademarks belonging to plaintiff Reed (“Lexis” etc.), and when a searcher entered those keywords, an advertisement would come up on the search engine page with the results, which advertisement was an ad for the defendant’s company.
Further, Playboy sued Netscape and Excite on the grounds that those engines/portals sold keywords including “Playboy” and “Playmate,” both trademarks belonging to Playboy, to advertisers and when searchers entered these trademarks/keywords, banner ads would pop up for adult advertisements. The Court (the Ninth Circuit Court of Appeals) found that when the banner ad was displayed without identification of the source, such action on the part of the search engine could be a trademark infringement under the theory of “initial interest confusion” as well as possibly being a dilution of Playboy’s trademarks. (Read Beanies: Dilution And Generic Legal Issues” and “Trademark Dilution: The Victoria’s Secret Case.”)
However, when Geico sued Google claiming that Google’s practice of using the mark “Geico” as a search word or keyword in Google’s advertiser program, a federal trial court ruled that using marks as keywords to launch advertising does not indicate a trademark violation provided that the mark does not appear in the sponsored links. However, the court ruled that the use of the Geico name in those sponsored links might create sufficient confusion so as to constitute an infringement.
In 1-800 Contacts, Inc. vs. Whenu.com, Inc. et. al., the Second Circuit ruled that the practice of the defendants whose software provided pop up advertisements for competitors of plaintiff when a user accessed plaintiff’s web site did not constitute a use of plaintiff’s marks and thus was not an infringement of plaintiff’s marks. Additionally, the Court said that the said software was not an infringement simply because it listed plaintiff’s marks as part of its directory that causes such pop up ads to appear since such listing was also not a use of the marks as contemplated by the Lanham Act. The Court stated:
But a contrary result was reached in Edina Realty, Inc. v. TheMLSonline.com. In that case, the trial court found that a similar practice did constitute a “use in commerce” and that such practice did not constitute a “fair use” of the trademarks. Read “Fair Use of Trademarks” and “Fair Use of Trademarks-Further Issues.”We hold that, as a matter of law, WhenU does not “use” 1-800’s trademarks within the meaning of the Lanham Act, 15 U.S.C. § 1127, when it (1) includes 1-800’s website address, which is almost identical to 1-800’s trademark, in an unpublished directory of terms that trigger delivery of WhenU’s contextually relevant advertising to C-users [computer users] ; or (2 )causes separate, branded pop-up ads to appear on a C-user’s computer screen either above, below, or along the bottom edge of the 1-800 website window.
Playboy also sued one of its former Playmates, Terri Welles, on a number of grounds including that Ms. Wells, in her site, included the trademarks “Playboy” and “Playmate” in her meta tags. The Court found that because Ms. Welles was in fact a Playmate, including Playmate of the Year, that the use of these marks in her meta tags, especially when combined with an express disclaimer on her site that the site was not endorsed by Playboy magazine etc., was not likely to cause confusion in the minds of the public. The Court reasoned that such use was a “fair use” of the trademark since the use of the marks was actually part of Ms. Welles identification.
The Court said, in part:
With respect to the meta tags, the court finds there to be no trademark infringement where defendant has used plaintiffs trademarks in good faith to index the content of her website. The meta tags are not visible to the websurfer although some search engines rely on these tags to help websurfers find certain websites. Much like the subject index of a card catalog, the meta tags give the websurfer using a search engine a clearer indication of the content of a website. The use of the term Playboy is not an infringement because it references not only her identity as a “Playboy Playmate of the Year 1981,” but it may also reference the legitimate editorial uses of the term Playboy contained in the text of defendant’s website. Plaintiff conceded, both in its papers and in oral argument, that defendant may properly use the term Playboy in an editorial fashion (i.e. in reference to the Playboy Mansion). Therefore, the court finds that defendant has not infringed on defendant’s trademarks by using them in her website meta tags.
In the Reed Elsevier case mentioned above, it is worth noting that one of the defendants was DoubleClick which company placed advertising on various of the defendant’s sites and was sued for its role as such. Thus, web designers and firms that do search engine placement are potentially liable for their activities and thus the need for contract protection with regard to the client.
In the web design-client agreements I prepare on behalf of my web designer clients, there are provisions which place the sole responsibility for the designation of keywords and meta tags squarely on the client. This means that even though the designer does the actual placement of such keywords and meta tags, the client is deemed to have created those and in the event that there are any such trademark or other claims, the client is liable to hold the designer harmless from any such claims.
There are also firms that contend that they can assure site owners search results near the top of all searches and this is done, in part, by the inclusion of keywords in the source code in such a way so that search engines rank these sites higher than other sites. Whether this is actually so or not is not the subject of this article but it is important to note that in any such agreement, the responsibility for the creation and placement of such keywords should be covered by the express terms of the written agreement.
Trademark owners are mandated by trademark law to vigorously pursue all manner of potential infringement of their marks lest they run the risk of being considered to have abandoned that mark. This means that if the trademark owner knows of a potential unauthorized use of a mark, it must seek to prevent the same.
Thus, we can expect many more cases like the few mentioned above, which are only a sample.
Designers, site owners,
marketers and others should take note.
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