Monday, April 10, 2006

Christine's presentation

Christine’s Presentation: Trademarks as Metatags – Is This Trademark Infringement?

This issue is whether or not the use of a trademark as a metatag for a website of someone other than the trademark owner constitutes infringement.

Some background on Metatags and Search Engines: Metatags are HTML code used to describe the contents of web pages. The user can not see them but, they can be scanned by search engines. They are important for internet marketing strategy because many users will not look beyond the first 20 sites that are returned by a search. Thus, some designers use competitor trademarks as metatags in an attempt to lure the competitors’ customers to their site. However, metatags are not the sole factor in determining which pages are returned by a search. Rather search engines use a number of other factors. For example, Google uses over 100 factors including a PageRank algorithm. The single biggest factor on google is the number of other sites that link to a particular URL. Nevertheless, there have been a number of cases in which designers have been able to successfully manipulate metatags in order to alter search results and possibly confuse customers. By renouncing all responsibility in such cases, the search engines have provided little assistance to trademark owners. Google at least has a complaint procedure and claims it will conduct a “limited investigation of reasonable complaints.” I was not even able to find a procedure for Yahoo.

Metatag cases are different from other trademark infringement cases because metatags are invisible to the user. Thus, courts have found it difficult to apply traditional tests, such as the strength of conflicting marks and the degree of similarity between conflicting marks, for establishing likelihood of customer confusion (as required by the Lanham Act). A few courts have taken notice of the fact that the Internet market operates differently and have followed the “initial interest doctrine” in deciding such cases. In Playboy, the district court explained this doctrine as follows: Initial interest confusion, as coined by the Ninth Circuit, is a brand of confusion particularly applicable to the Internet. Generally speaking, initial interest confusion may result when a user conducts a search using a trademark term and the results of the search include web sites not sponsored by the holder of the trademark search term, but rather of competitors. The Ninth Circuit reasoned that the user may be diverted to an unsponsored site, and only realize that she has been diverted upon arriving at the competitor's site. Once there, however, even though the user knows she is not in the site initially sought, she may stay. In that way, the competitor has captured the trademark holder's potential visitors or customers.” Playboy Enters v. Netscape Communs. Corp., 55 F. Supp.2d. at 1074 citing (Brookfield Communs. Inc. v. West Coast Entertainment Corp., 174 F.3d at 1062-64).

Brookfield was the first case to deal directly with the metatag issue. The court concluded that West Coast improperly benefited from the goodwill in Brookfield's trademark by placing the mark in its metatags for the sole purpose of diverting customers to its own web site. The court reasoned that "web surfers looking for Brookfield's 'MovieBuff' products who are taken by a search engine to '' will find a database similar enough to 'MovieBuff' such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead." Even if the initial confusion is dispelled and the misdirected cus-tomers do not make a purchase, the act of purposefully generating pre-sale confusion by attracting or diverting potential customers by using another's trademark is sufficient to constitute trademark infringement. Paylago article from the IDEA: Journal of Law and Technology citing (Brookfield Communs. Inc. v. West Coast Entertainment Corp., 174 F.3d at 1062-64).

On the other hand, the 6th circuit has recognized the doctrine of initial interest confusion but, has never analyzed the metatag issue separately and even in other contexts has not applied the doctrine so broadly. The court has continued to look at other more traditional factors and has been primarily concerned with "whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties." Gibson Guitar Corp. v. Paul Reed Smith Guitars, 423 F.3d 551 citing (Paccar Inc. v. Telescan Techs., 319 F.3d 243).

The broad view of the 9th circuit appears to be the majority. I would like to propose a more narrow view – similar to the 6th circuit requiring confusion as to source or possibly even confusion at the point of sale rather than pre-sale. I would like your opinions as to which doctrine you think is the best and why.


Blogger duffee said...

Although I don't know much about trademark law, I actually think the 9th Circuit's view of the problem might be better (if I understand the distinction correctly). Even though consumers might immediately realize that they did not end up at the intended web site, there is a significant possibility that the infringer might be able to unfairly obtain benefits through the unauthorized use of the mark.

For instance, if I searched "Amazon" and ended up at "Barnes and Noble," I may still end up buying the same thing I would have bought at Amazon. Thus, Amazon potentially lost a sale to Barnes and Noble based on its improper use of the Amazon metatag.

It's not all that different from a McDonald's franchise putting up a Burger King sign and getting customers who thought they were going to Burger King. They may have inteded to go to Burger King, actually realized that they were not at Burger King as soon as they arrived, but still end up buying from McDonald's.

Therefore, I think use of the metatag to induce an Internet user to end up at an unintended web site should constitute infringement even if the user realizes that he or she ended up at a site he/she did not intend to visit since the same potential for harm still exists in such cases.

2:28 PM  
Blogger Brian Bulson said...

I agree with duffee's comments, especially the McDonald's/Burger King hypo and if he didn't post this I planned to say something similar to this.

So instead I'll try and add an opposite view. Under current law, comparative advertising is allowed and vendors can include competitive trademarks on their products or in commercials for comparative advertising purposes (of course it must be clear what they are doing). I'm not sure if this could somehow be equated to including metatags of competitors on web pages, because then a Google Search would most likely bring up the true trademark owner's product alongside the competitors and allow the consumer to pick and choose from the choices.

6:23 AM  
Blogger Christine said...

I think these are good comments - Thanks guys! :)

5:09 PM  
Blogger ed said...

I mentioned this in class, this was the page I was reading off of. Here

1:45 PM  

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