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Internet metatags: the hidden liability within hidden text

Just as what you don not know may hurt you, what you don not see may hurt you.

In several recent cases, courts have tackled the thorny problem of whether a Web site owner may use someone else’s trademark in the site’s metatags without infringing the trademark. Unfortunately for Web site owners, the answer is, "It depends."

Metatags are terms written in hypertext markup language within a Web site that describe the Web site’s contents. The more often a search term appears within a Web site’s metatags and text, the more likely that an Internet search engine will put that Web page at the top of its list of search results.

Trademarks owned by others often are inserted in the metatags of a Web site solely for the purpose of luring Web surfers to a particular Web site. An Internet searcher who types in a trademark to get to the Web site of the owner of that trademark will discover other Web sites whose metatags include it. Legal issues arise when persons use trademarks owned by others in the keyword field without authorization.

A recent case highlights the fine line between infringement and legitimate use. The U.S. Court of Appeals for the Seventh Circuit recently held that Equitrac Corporation infringed the Copitrak trademark of Promatek Industries, Ltd., solely by using the trademark in metatags on its Web site.

Equitrac, a seller of cost recovery equipment, instructed its Web designer to include the term Copitrak in the contents of Equitrac’s Web site as a metatag, although the actual metatag used was the alternate spelling Copitrack. Copitrak is a trademark used on cost recovery equipment sold by Promatek. Equitrac believed that it was entitled to use the term as a metatag because it services Copitrak equipment.

At issue was whether the use of Copitrack creates confusion in the minds of the public. In analyzing the likelihood of confusion created by Equitrac’s use of the Copitrack metatag, the Seventh Circuit focused on whether a customer is initially lured to a product by the similarity of the mark, but realizes that the true source of the goods is different before it makes a purchase.

In deciding against Equitrac, the court took as guidance an earlier Ninth Circuit case, in which that court reasoned that "using another’s trademark in one’s metatag is much like posting a sign with another’s trademark in front of one’s store." Following this reasoning, the Seventh Circuit explained that consumers who are directed to Equitrac’s Web page will, in all likelihood, learn more about Equitrac and its products before beginning another search for Promatek.

The Seventh Circuit also pointed out, however, that it is acceptable to use a trademark as a metatag when the trademark truthfully identifies a competitor’s product. For example, it is perfectly acceptable to advertise that you can service products bearing another’s trademark, to place truthful comparison claims on your Web site or to use a trademark within a press release describing litigation between you and another party in a trademark dispute.

Other cases have held that use of another’s trademark within one’s metatags is acceptable if that trademark describes a person, place, or an attribute of a product or service, and there is no reasonable alternative description. The legal term for this is nominative use. Classic examples of nominative uses include comparative advertisements, such as a Pepsi versus Coke taste test. Pepsi could not describe the attributes of its competitor without naming Coke. In one case, the Ninth Circuit allowed a former Playboy Playmate to use the terms "Playboy" and "Playmate" within the metatags of her own Web site to truthfully describe her past achievement.

Equitrac may have reasonably believed that it was using a Copitrak mark in just this manner: identifying itself as one who can service Promatek’s goods produced under the Copitrak mark. The Seventh Circuit, however, found that Equitrac used the Copitrack mark in a manner specifically calculated to deceive consumers into thinking that Equitrac was Promatek: Equitrac admitted that it meant to use the exact, incorrect spelling used by Promatek within its metatags, and that Equitrac and Promatek were direct competitors.

Given the dim view taken by courts of the use of another’s trademark within the metatags of one’s own Web site, even if a Web site owner believes there is a legitimate basis for doing so, the owner should stay within the following guidelines to minimize the likelihood of a trademark infringement complaint.

1. Use the trademarks of others within your own Web site only for the purpose of truthfully identifying the goods or services associated with that trademark’s owner. Such legitimate uses include truthful comparisons between one’s own goods and the trademark owner’s goods.

2. Limit the number of times that any trademark owned by another appears in your Web site’s metatags. The more often the other’s trademark appears, the more likely a court will find that you attempted to lure in the trademark owner’s potential customers.

3. Conform your use of another’s trademark to the standards for nominative use:
– The product or service represented by the mark cannot be readily identified without use of the mark
– Only as much of the mark as is reasonably necessary to identify the products or services is used
– The use does nothing that would suggest sponsorship or endorsement by the trademark holder.

4. If you repair or service goods made under a trademark owned by another, do not rely solely on that fact to include that trademark within your metatags, unless the trademark owner endorses your services.

Because these decisions frequently involve legal technicalities, anyone considering using another’s trademark on its Web site should discuss the matter with an attorney knowledgeable in trademark issues.

William F. Lang IV is an intellectual property attorney at the national law firm Eckert Seamans Cherin & Mellott LLC.

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