As I muddle my way through a re-brand and redesign of my website, I am reminded of one of the most common questions I get from website designers. “Why can’t we just use XYZ company’s name in the metatags? That way it will appear with your competitor’s pages as well.” The short answer is, “We don’t do that because it is most definitely NOT OK.” Well, maybe it’s a little OK in some cases, but-word to the wise- tread lightly.
A metatag is a word or small phrase that’s embedded in the source code of your website. It’s not visible on the actual page itself. When a person types a phrase into the search bar of their favorite engine (such as Google or Bing) the engine uses an algorithm to crawl through the Internet looking for web pages with those particular words in them. The greater the number of times a term appears in metatags and in the text of the webpage itself, the greater the chance that a search engine will choose that website to be listed higher on the list of search results (page one of the results list as opposed to page 6, for example). Search engine optimization is an important step in marketing your company, but some folks are getting a little too creative with their optimization endeavors and have a tendency to use the trademarks of their competitors. Very. Bad. Idea. Listen up web guys and tech nerds because you can get in big trouble for this.
People have been arguing about the Internet since Al Gore invented it (sorry, I just couldn’t resist). One would think this issue would have been well settled by now but it’s not. The courts are starting to move toward some sort of congruency but there is still a very decided split in the decisions. And, as with oh-so-many issues in intellectual property, there is a litany of case law on the subject and not one bright line rule. It all boils down to what we consider a “use in commerce” and if we can call that “use” a source of confusion in the consumer. Briefly, in order to make a claim of trademark infringement stick, you have to show the defendant used your mark in commerce and you have to show that that use likely confused the purchasing public as to which company was actually selling that service or those goods. Since a metatag isn’t technically visible on the web page, federal courts haven’t agreed whether a metatag is “used or displayed in the sale or advertising of a service rendered in commerce or “placed in any manner” on a good transported in commerce”. See Lanham Act 15 U.S.C. 1127 . This is actually a colorable argument. But courts do seem to be moving toward accepting that metatags do count as “use” in the trademark sense of the word, so for the sake of argument, we’re going to assume that this is or will eventually be the standard. And even though use still remains an issue for some courts, the bigger issue in these types of cases is trademark law’s bread and butter- consumer confusion.
The likelihood of confusion test is a fact-driven, jurisdiction-dependent, multifactor analysis. This could partly explain the split among the decisions, but it also can easily be attributed to the (at times rather mushy) fairness standard of trademark law. Each circuit has a tendency to apply (and give weight to) factors differently and courts typically rely on precedent from their circuit. So not only do the actual factors of confusion vary from circuit to circuit, the weight they are given also varies. This isn’t necessarily a bad thing. Trademark law is rather subjective in its application and confusion can be dependent on a multitude of outside sources. It follows, then that the confusion factors should be applied flexibly, particularly in the context of Internet cases. This is because not only is e-commerce technology continually evolving, but so too, is the law governing it.
Metatag plaintiffs usually allege infringement under the initial interest confusion doctrine. Unlike the traditional likelihood of confusion analysis, initial interest confusion is a judicially created doctrine that permits liability for infringement if there is confusion in the customer before actually purchasing a good or a service. It happens when a customer seeks a particular brand of good or service but is lured to a competitor’s good or service through the competitor’s use of the first company’s mark. A person’s confusion over the source may be dispelled eventually, but she may instead choose buy the good or service from the competitor and not from the company she sought out in the first place. If that happens, arguably, the competitor has unfairly benefited from the strength of the brand of the first company to draw in a customer. Brookfield v. West Coast Entertainment (174 F.3d 1036)(9th Cir. 1999) is the go-to case on this one and it comes up over and over again in metatag cases. In that case, the Ninth Circuit used an offline analogy to find initial interest confusion when a defendant movie company used the trademark of their competitor in their metatags: “If Blockbuster put up a billboard with West Coast Video’s trademark advertising a store location off the next exit, and the consumer exited only to find a Blockbuster instead, she may simply go to Blockbuster, which has now capitalized on West Coast’s goodwill.”
The Brookfield decision is not without controversy; the court’s analogy has been routinely criticized for failing to take into account (among other things) the difference in time investment between the physical and digital worlds (i.e., a mouse-click versus driving back to the highway) as well as its reluctance to use a traditional factor-based likelihood of confusion test (like the ones found in DuPont, Polaroid, Sleekcraft, and others). The Brookfield court found that “the traditional test is not well-suited for analyzing the metatags issue,” and considered only whether the metatags caused initial interest confusion. This departure does not sit well with more than a few legal scholars and judges. They remain unconvinced that initial interest confusion alone is a viable theory to find trademark infringement liability in Internet cases.
The Eastern District of Pennsylvania and the District Court in Utah think the Brookfield court got it flat out wrong. These two courts took the position that rather than directing a consumer to a competitor, a search engine just gives the consumer a buffet of independent and distinct links that she may choose from at will. As a result, initial interest confusion isn’t even an issue with metatags because consumers don’t have the opportunity to confuse the source of the goods in the first place. They put it like this: if a customer asked a clerk in a pharmacy for Advil brand pain reliever and the clerk sent the customer to the pain reliever aisle which also had Tylenol on the shelf, the customer wouldn’t be confused because if she really wanted Advil, she would purchase Advil regardless of the other competing pain relievers available to her. Arguably, the same analogy applies to a metatag for a competing product comes up with the search result. Therefore, by itself, the use of a competitor’s mark in metatags can’t constitute initial interest confusion because the consumer is still free to choose (and purchase the products of) the website she initially searched for. For further reading, See J.G. Wentworth S.S.C v. Settlement Funding, LLC, and 1800 Contacts v. Lens.com, Inc.
How’s that for a lump of coal in your stocking? Never fear- there may be a diamond in the rough in a little gem of a case from the District of Massachusetts. In Hearts on Fire Company LLC v. Blue Nile, Inc., a couple of jewelry companies were fighting over the use of one’s trademarks in the sponsored ads and metatags of the other. The District Court appears to have recognized the dangers of relying solely on the initial interest confusion doctrine while at the same time understanding that there is such a thing as a middle ground that may reflect where the law is (or should be) headed. Judge Gertner didn’t quite buy Brookfield’s billboard analogy, but instead defined the inquiry as: “[w]hether the consumer is likely confused in some sustained fashion by the sponsored link and the defendant’s website, or whether the link serves instead as a benign and even beneficial form of comparison shopping…Where the competing products are clearly distinguished –it is not, in and of itself, truly a case of confusion at all, and therefore cannot support an infringement claim. In fact, in order for a plaintiff pleading initial interest confusion to prevail, that confusion must be more than momentary and more than a mere possibility” (Emphasis added). The court then went on to note that some people will use metatags to try to piggyback on another’s brand recognition for the purpose of misdirecting their customers, suggesting that while diversion to a competing product is not enough, it may be a viable claim if the confusion hurdle is met. That actually makes sense and, boy, does it strike a good balance. Bravo, District of Massachusetts!
A final thought concerning fair use. Courts are permitting fair use as a defense in metatag cases. Basically, you are allowed to use someone else’s trade name in your metatags and other forms of advertising in limited circumstances. For our purposes, the biggies are nominative fair use and descriptive fair use. The long and short of it is that you can get away with using someone else’s trademark in your metatags if:
1) You have a formal business affiliation with a need to describe your goods or services that result from that affiliation (Trans Union LLC v. Credit Research, Inc.142 F. Supp. 2d 1029 (N.D. Ill. 2001)( Defendants’ metatag use of a trade name was fair use because it accurately described defendants’ affiliation with plaintiff and the availability of products derived from plaintiff’s database);
2) No formal business relationship exists, but your business relates to the plaintiff’s trademarked goods or services (Designer Skin, LLC v. S & L Vitamins, Inc. (560 F. Supp.2d.811) (Retailer selling tanning products of the plaintiff permitted to use the trademark on its website and in its metatags to describe the products so long as there was no suggestion of affiliation of sponsorship);
3) You have a past business relationship with the owner; (Playboy v. Terri Welles (S.D. Cal. 1999) (Former Playmate of the Year was permitted to use “Playmate” and “Playboy” because they legitimately referenced editorial uses of the terms in the text of her website, as well as the subject of her site, namely, her identity as “Playboy Playmate of the Year 1981”);
4) You’re doing good ol’ fashioned comparative advertising (The Pepsi Challenge comes to mind );
5) You want to criticize the trademark owner (Bally Total Fitness Holding Corp. v. Faber (C.D. Cal. 1998). (The defendant set up a website called “Bally’s Sucks” that was dedicated to complaints and commentary about the plaintiff’s health-club business practices); or
6) You need to use the plaintiff’s trademark to describe the your products or services. (Sunmark, Inc. v. Ocean Spray Cranberries, Inc. 64 f.3d 1055 (7th Cir. 1995)( Defendant use of the term “sweet-tart” to describe its sweet / tart tasting cranberry juice did not infringe the plaintiff’s trademark “Sweetarts” used for candy).
By the way, metatag does not equal domain name. DO NOT snatch up someone else’s trademark and try to use it as your domain name. That is an extraordinarily bad idea. It has been routinely rejected as a fair use and screams “please sue me”. But other than that…that’s all she wrote.
Except for this- truthfully, this may be a big nothing at some point. As more and more designers mess with the metatags and key words to increase rankings for a page they’re designing, search engines have started to rethink a metatag’s reliability in indicating a page’s relevancy. So now some of them are now starting rank websites by the number of other sites that link or point to it. Be that as it may, at least for now, metatags are still the norm. And until they become extinct in the grand scheme of Internet evolution, it’s best to be smart about them. Think about it before you use someone else’s trademark in your page’s source code. Really think about it. Trust me-you’ll spend less on proper marketing than you will defending against a trademark infringement suit. But at any rate, even if metatag cases go the way of the dodo, I have no doubt that there will be many more new and exciting flavors of online trademark infringement to keep me busy regardless of where metatags go. For what it’s worth, my money’s on top level domains (.xxx, .brand, .co, .pro, etc) for the next wave in Internet infringement cases. But don’t quote me- I haven’t consulted my magic 8-Ball about it. Yet.