Metatag Mischief: How to Protect Your Copyright

Peter J. Bezek and Robert A. Curtis

The vast world of cyberspace and the Internet allow a company to promote its business and products in ways never thought of during the days of print ads and television commercials.  However, the dark side of this burgeoning and lucrative marketing opportunity is that countless competitors are lurking who may use the Internet to infringe on trademarks. Carefully hidden within the computer code of a competitor's website may be your company's trademark, trade name, or famous name, placed there in a calculated attempt to lure unwitting customers to your competitor's website.  In this dog eat dog world of e-commerce, what is a company to do to protect against these calculated trademark infringements?

The most common way people locate a business' website is through Internet search engines such as Yahoo, Northern Light, Alta Vista, or Lycos.  In conducting Internet searches, Internet users enter key words indicative of a website's contents or products.  Sometimes, Internet users conduct searches using trademarked words, products, or company names. The search engine then identifies websites that match the key words by finding words or phrases describing the content of a website hidden in its computer code.  These hidden words and phrases are called metatags.

Metatags are fields in the websites that contain key words that pertain to the content of the site, but that are not displayed to users viewing the website.  For example, an airplane manufacturer's website may have metatags that include words such as planes, airplanes, jets, transportation, flying, and the manufacturer's name. Businesses select as metatags words that will generate as many hits as possible when users conduct Internet searches. However, some businesses have begun to use their competitors' names, trademarks, trade names, and product names as metatags within their competing site in attempts to lure unwitting customers to their website.

This trend has spawned a series of recent lawsuits alleging trademark infringement, dilution, and unfair and deceptive trade practices.  One example is Playboy v. Calvin Designer Label, 985 F. Supp. 1220 (N.D. Cal. 1997). In that case, Calvin Designer Label had created an adult entertainment website and used "playboy" and "playmate" as metatags. Their alleged motivation was to generate hits when users conducted Internet searches using those phrases.  The court held that use of Playboy's trademarks constituted dilution and infringement and issued a preliminary injunction. Under the injunction, the defendant was prohibited from using Playboy's marks in any manner, including as metatags on its website.

Similarly, in Brookfield Communications, Inc. v. West Coast Entertainment Corp. 174 F.3d 1036 (9th Cir. 1999), Brookfield Communications provided entertainment services and operated a searchable entertainment industry database under the trademark "MovieBuff." Brookfield sued West Coast Entertainment, a chain of video rental stores, to prevent West Coast from using "MovieBuff" as a metatag on their website.  West Coast's website included a searchable entertainment database.  The court said that the two marks and their services were similar and lead to "initial interest confusion," which occurs when a consumer searching for a particular site is lead to another site offering a similar product or service.  The court reasoned that West Coast's use of "MovieBuff" as a metatag might result in a consumer being initially confused when westcoastvideo.com appears after typing the word "MovieBuff" into an Internet search engine.  The court issued a preliminary injunction to bar West Coast from using "Moviebuff" in its metatags.

Under the Lanham Act, businesses have an affirmative duty to police their trademarks.  Therefore, in order to police their trademark effectively, businesses must address the problem of infringing metatags. Locating infringing metatags can be difficult because the metatags on websites can be changed at any time. As a result, services exist to assist companies in finding infringing metatags. These companies provide corporations and legal professionals with the ability to track the use of trademarks, trade names, and famous names appearing in the title, text, domain name, or metatags of infringing websites.  Once infringing metatags are found, cease-and-desist letters become the most cost-effective way to resolve these matters.  However, if the cease-and-desist letter does not solve the problem, the only way to police your mark properly may be through litigation.

Peter J. Bezek is the cofounder and managing partner of Foley & Bezek, LLP, with offices in Santa Barbara. - Robert A. Curtis is an associate of the firm. Foley & Bezek specializes in Internet, e-commerce and related intellectual property litigation. Their telephone number is (805) 962-9495. © 2004 Foley & Bezek, LLP. All rights reserved.