Invisible infringement

Electronic News, March 16, 1998 by Jonathan Wilson

Web Site Metatag Field Can Infringe Trademarks Without A Trace

Although the legal rules governing conduct on the Internet have been developing for only the past few years, disputes concerning trademarks have played an important role. Within the last few months, however, an entirely new type of trademark infringement claim has arisen that stretches the fabric of trademark law to new lengths.

When the commercial use of the Internet was first developing in the mid-1990s, disputes arose over whether the use of a party's trademark as a domain name, or Internet address, was an infringement on that trademark. Later in 1996 and 1997, disputes arose over the unauthorized "linking" of web sites.

Within the last few months of 1997, however, a new form of infringement claim has arisen that is entirely invisible to the naked eye. The potential claim arises when one party (the "site designer") uses a trademark owned by another party (the "trademark owner") in the site designer's "metatag". Although the trademark itself will not be visible to an Internet user, the use of the trademark in the metatag will cause the site designer's site to appear as a "match" if an Internet user searches for the trademark with a search engine.

To understand why this use of a trademark is important, it is necessary to understand the connection between metatags, search engines and the "war for eyeballs" that is driving the growth of Internet advertising so far.

Much in the way the Nielsen rating determine the price of television advertising, Internet advertising so far has been valued on the number of "hits" a web site receives. The greater the number of hits, the greater the number of people viewing the site and the greater the value in advertising on that site.

To generate hits, a web site needs to describe and position itself so that it will be accessed by the greatest number of users. One way to do this is to negotiate a link to the site designer's site from another famous site. Many of the popular search engine sites, for example, have links posted on the home pages of famous sites, like MSNBC (www.msnbc.com), CNN (www.cnn.com) and others. Obtaining rights to post these links, however, can be expensive as the owners of the famous sites recognize the value in their own popularity.

The other way to generate hits is to create metatags that make the site likely to generate hits from Internet search engines. An Internet search engine takes a search command from a user and scans the metatags of Internet sites to find metatags containing the search term. Metatags are invisible fields in the web site that contain key words or descriptors that pertain to the content of the site. A car manufacturer's web site, for example, would probably have a metatag that included words like "cars, automobiles, driving, transportation," the manufacturer's name, and so on.

To generate additional hits, however, the site designer may add other words that are frequent search terms, even where those words have nothing to do with the site. Words like "sex, nude and pornography" are good examples.

To take the effort a step further, however, a site designer might even list a competitor's name in his own metatag. Doing this would cause every search for the competitor's site to cause the designer's site to appear on the match list for the search engine. It is this type of trademark use that triggers the latest claim of Internet trademark infringement.

One of the few judicial decisions of the topic was delivered in September 1997 in Playboy v. Calvin Designer Label, 44 U.S.P.Q. 2d 1156 (N.D. Cal. Sept. 8, 1997). In Calvin Designer, the defendant, Calvin Designer, had developed and adult entertainment site and had used Playboy's famous marks, "playboy" and "playmate" in its metatag. In a decision that may be the only of its kind to date, Judge Charles Legge held that this use of the Playboy's trademarks constituted infringement and dilution that justified an injunction.

In a similar claim Insituform Technologies, Inc. sued National Envirotech Group, a competitor in the field of pipeline construction, when National Envirotech used Insituform's name in its metatag. (Insituform Technologies, Inc. v. National Envirotech Corp., 97-2064, S.D. La.). National Envirotech settled the case to avoid litigation and agreed not to use Insituforms' trademark in its metatag.

A slightly different claim is presented in Oppedahl & Larson v. Advanced Concepts, (C.D. Colo., filed July 23, 1997). The law firm of Oppedahl & Larson sued Advanced Concepts and other defendants for using the firm's name in a metatag. The defendants have removed the name from the metatags, leaving only the question of whether the past act of infringement justifies an award of damages.

What these cases mean is that the use of a trademark in a metatag is likely to be viewed as an infringement by the trademark owner. As a practical matter, most business managers responsible for commercial web sites will want to take care to ensure that their metatags do not contain trademarks of other parties. Businesses that hire outside consultants or professional web site designers should negotiate appropriate provisions in the consulting agreement to ensure that the consultant avoids pitfalls like these.