Let's say
you want to buy a Chevrolet. Looking for information, you go to your
favorite search engine and type in "Chevrolet." If websites
for other car brands popped to the top of your search results, you might
wonder how that happened. The answer would probably be "metatags."
"Metatags" are words in a website that are hidden to the casual
web surfer. You don't see the metatags because they're embedded in the
hypertext markup language (HTML) code. ("HTML" is technospeak
for the programming language used to create a website.) You can see
the metatags if you choose "view" and then "source"
from your browser's menu when you're at a website.
Metatags often include generic categories like "books," "computers,"
"legal services," or "doctor," but they can also
include trademarked terms like "Addidas," "Quicken,"
"Xerox," or "Dell." Although you may not see the
metatags, many search engines do and they use them to help the search
engine rank results.
This means that if a website for another car brand includes the word
"Chevrolet" in its metatags, when you search the word "Chevrolet,"
the website for this other brand will be included in the results generated
by your search. Now if you're "Chevrolet," you might be less
than pleased to find out that when people search for your brand, they
get information about your competitors.
Clearly, you can't open a Ford dealership, put up a sign that says "Chevrolet,"
and then when a potential customer walks in trying to buy a Chevy, sell
her a Ford. You don't need to go to law school to know that a "Chevrolet"
sign in front of a Ford dealership is a trademark infringement.
Likewise, this hypothetical Ford dealer can't use the domain name "ChevroletInformation.com"
to lure you to their site about Ford cars. Again, common sense tells
you that this would be over-the-line conduct and that this Ford dealer
is going to end up on the wrong end of a Federal court lawsuit.
What both of these scenarios have in common is that the eyes of the
most casual observer can see the word "Chevrolet" being used
to sell Ford cars. What makes the metatag issue cute is that with metatags,
the casual observer can't see that the Ford dealer's website is using
the word "Chevrolet" to lure you to a Ford dealer's website.
So, can you infringe a trademark if the infringement is invisible? The
question seems simple enough, but as with so many questions in Internet
law, the answer isn't completely clear. The issue is just too new for
our legal system to have formulated unambiguous answers.
What is clear is that this can be a treacherous area. The one thing
that legal uncertainty generates is litigation as businesses look to
courts to provide answers to confusing scenarios. Legal scholars and
courts are grappling with this issue.
While traditional tests used to determine whether the particular use
of trademarked terms is an infringement don't seem to perfectly fit
the hidden metatag issue, I suspect that we'll see a trend where courts
will be imaginative in stretching traditional doctrine to demonize metatags
that use trademarks owned by others to draw traffic to a website.
After all, law should be about good public policy. From the consumer's
perspective, it's a form of bait and switch to ask for information about
Chevy and get Ford information instead.
Viewed another way - if the law is unclear, do you want to be the test
case, which helps clarify the law for the benefit of others. Think about
the potential number of zeros on the number when you consider a damage
award against you if you lose and the attorney's fees involved as you
test the limits of the law.
Until the law is clearer, I recommend against using your competitors
trademarks in your metatags. It's just begging for a problem.
If you hire an independent contractor website developer, I also recommend
that you take control of the metatags. Most developers take the initiative
with metatag creation and that's fine. In a way, part of what you're
buying from them is their creativity in creating metatags for you. Still,
there may be legal consequences arising from the choice of metatags
and you really should run the choice by your tech lawyer before your
site goes live.
Now, there is a flip side to this too. Run your trademarks through all
the search engines. You may just find that your competitors have used
your trademarks to draw traffic to their site. If you discover that
they have done this, I think that a cease and desist letter from your
lawyer may be in order. If they won't back down, you have to evaluate
whether you want to use your only sledgehammer -- a lawsuit.
While expensive and a test case, I'd rather take this side of this test
case because I think that most courts will see that good public policy
requires the protection of trademarks even if the infringement is invisible
to the casual eye.
Disclaimer: The advice given in the TechLaw column should not be considered
legal advice. This newsletter only provides general educational information.
You must never rely upon the advice given here. Your individual situation
may not fit the generalizations discussed. Only your attorney can evaluate
your individual situation and give you advice. Except as provided below,
you may feel free to forward, distribute and copy the TechLaw column
if you distribute and copy it without any changes and you include all
headers and other identifying information. You may not copy it to a
website.
© 2003 Mark Grossman All Rights Reserved