Unauthorized Use of Trademarks In Web Site 'Metatags' Constitutes Trademark Infringement

Internet advertisers who attempt to maximize the exposure of their Web sites

by listing the trade names or trademarks of their competitors among the metatags

for those sites can be sued for trademark infringement, according to a recent

decision by the Ninth Circuit Court of Appeals. In Brookfield Communications,

Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir.

1999), the court (which has jurisdiction over federal courts in California and

five other western states) ruled that unauthorized use of a registered trademark

in the metatags for a Web site can constitute trademark infringement under the

Lanham Act, 15 U.S.C. 1125(a), even though the consumer viewing the Web site

never actually sees the metatags and even though the consumer is not actually

confused by the results of the search that the search engine displays.

As most Internet users know, search engines such as Yahoo or Alta Vista can

help locate a Web site, either by name or by subject matter. The search engine

uses a proprietary algorithm (program) to search for sites responsive to a

request by reviewing key words or site descriptions found in domain names, the

text of the sites themselves, or in the metatags supplied by Web site designers.

The more often a term appears in the metatags and in the text of the Web page,

the more likely it is that the Web page will be found in a search for that

keyword, and the higher on the list of "hits" the Web page will be.

Metatags are invisible or "buried" HTML (Hyper Text Marking

Language) code, usually found at the beginning of a Web site. (In Windows 95 or

98, metatags can be viewed either by right-clicking on the Web site itself or by

using the "view" pull-down menu and choosing "Page Source.")

In theory, the metatags inserted by a Web site builder will help search engines

find the appropriate site requested, either because the metatags provide a clear

description of the contents of the site or because they contain key words

relating to the contents of the site.

In practice, however, metatags have often been abused. Purveyors of

"adult" Web sites quickly discovered, for example, that they could

lure searchers to their sites by including the words "Playboy-TM"or

"Playmate-TM" among the metatags that purported to describe their

(usually) pornographic sites. A Web surfer looking for Playboy magazine's

official Web site who types in "playboy" or "playmate" thus

would find, along with the official Playboy site and articles...