New Jersey Law Journal

April 10, 2006

There are no clear guidelines on the application of traditional sourcing rules to the use of trademarks for invisible expression, such as meta tags, domain names or keywords.

Internet Law

Lawful Use of Internet Keywords

Use of trademarks as meta tags can lead to infringement claims

By Jonathan Bick

Bick is of counsel to WolfBlock Brach Eichler of Roseland and is an adjunct professor of Internet law at Pace Law School and Rutgers Law School. He is also the author of 101 Things You Need To Know About Internet Law [Random House 2000].

            Internet search engine providers allow advertisers to sponsor search terms known as keywords. When a particular keyword is used in a search request by an Internet search engine user, that particular keyword sponsor’s ad will appear near to the search results. When properly employed, trademarks may be lawfully used as keywords; when improperly used, valid infringement claims arises.

            Google, Yahoo, MSN Search and others offer keyword related advertisement placement services. For example, if Bicklaw.com purchases the “law” keyword from Google, and a Google user enters the term “law” in the Google search box and hits “Search,” that user would receive a Bicklaw.com advertisement with the other results from the keyword “law” search, clearly marked as an ad. The Bicklaw.com advertisement might appear within the search results, as well as at the top and/or bottom of the page, sandwiching the actual search results.

            The Google AdWords service allows customers to create their own ads, choose keywords to match ads, and pays per click. This Google service sells ad placements on the Internet pages where it displays the results of users’ searches for particular trademarks or other words associated with particular sellers. AdWords service users can purchase the right to have links to their Web sites appear in the search results for particular keywords, and their links appear before the normal search results. Netscape and Excite used a variation of the Google service, requiring advertisers to purchase a “bundle” of keywords that would trigger the ads according to the court in Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1023 (9th Cir. 2004).

            The United States Patent and Trademark Office defines a trademark as a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. The trademark’s owner is protected from a competitor’s unauthorized use of the trademark, if such use confuses consumers. In Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 157 (1989), the Court held that the “general concern [of unfair competition] is with protecting consumers from confusion as to source.” Advertisers who purchase the keywords expect to profit from their purchases, and therefore infringement liability is appropriate, if such profit is unlawful. The keyword purchasers would presumably profit because they seek to use another’s mark to divert Internet users.

            Even if the keyword use of a trademark is contractually authorized, it is unlawful if the use could result in confusion among consumers as to the source of the ad. Additionally, the overuse of authorized trademarked keywords is unlawful. In particular, ‘‘trademark cyber-stuffing,’’ which is the practice of repeating a trademark numerous times in a Web site’s meta tags to lure the attention of Internet search engines, is unlawful. A meta tag is a special HTML tag that provides information about an Internet Web page. Unlike normal HTML tags, meta tags do not affect how the page is displayed. Instead, they provide information, such as who created the page, how often it is updated, what the page is about and which keywords represent the page’s content. Many search engines use this information when building their indices.

            The Internet sites that include another’s trademark obviously benefit more from the mark in a potentially unlawful way -- as might those who purchase trademarks as keywords. Hence the meta tag cases have analyzed the meta tag users as possible direct infringers and may be used to find keyword purchasers as direct infringers.

            However, the courts are loath to provide overly-broad trademark protection. To do so, courts might afford owners of marks the unwarranted power to block consumers from obtaining comparative information about products.

            The court in Government Employees Insurance Company v. Google, Inc., 2005 U.S. Dist. LEXIS 18642 (D. Va. 2005), found that Google’s display of third-party advertisements labeled as “sponsored links” -- ads triggered by the entry of a trademark as a search term -- do not violate the Lanham Act provided such advertisements do not contain the searched-for trademark. However, displays of “sponsored links” that contain the searched-for trademarked keyword and are likely to cause confusion violate the Lanham Act.

            The ruling in Government Employees Insurance Company v. Google, Inc., is typical of the recent trademark cases that attempt to apply traditional trademark sourcing protection law to trademarks that are not used as visible expression, but as invisible tools, such as a meta tags.

            In Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the Ninth Circuit held federal trademark and unfair competition laws prohibited a video rental store chain from using an entertainment-industry information provider's trademark in the domain name of its Web site and in its Web site's meta tags.

            Brookfield designed a movie-related product called MovieBuff. When West Coast Entertainment Corporation (West Coast), launched an Internet site by that name, Brookfield filed a Lanham Act action seeking to enjoin West Coast’s use of the site. The lower court found for West Coast, holding that it had priority due to the fact that it had previously registered “moviebuff.com,” and that there was no likelihood of confusion between the names. Brookfield sought review. The Ninth Circuit reversed and granted a preliminary injunction to Brookfield, holding that there was a likelihood of confusion. The court held that despite domain name registration occurring prior to the MovieBuff product’s release, the issue of time did not arise until there was a likelihood of confusion. Further, the court held that both the embedded use of the name and the site name relating to the MovieBuff product were sufficiently similar to create a likelihood of confusion.

            The Brookfield ‘‘initial interest’’ confusion concept was applied to meta tags by other courts. In particular, the court in Promatek Industries v. Equitrac Corp., 300 F.3d 808, 812-13, (7th Cir. 2002), affirmed a preliminary injunction prohibiting defendant from using another’s trademark as a meta tag for the defendant’s Web site and required defendant to display a disclaimer, based on likelihood of initial interest confusion. The court in Victoria’s Secret Stores v. Artco Equip. Co., 194 F. Supp. 2d 704, 724-29 (S.D. Ohio 2002), found that the defendant’s use of the ‘‘Victoria’s Secret’’ mark as a meta tag to ‘‘bait and switch’’ Internet users who were looking for plaintiffs’ products was trademark infringement. The court in Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834 (S.D. Ind.), ordered the removal of “Prozac” from meta tags so as to prevent initial confusion.

            However, the nominative use of another’s trademark in meta tags has been held to be permissible. In Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002), the court held that the 1981 Playboy Playmate of the Year’s use of plaintiff’s “Playboy,” “Playmate,” and “Playmate of the Year,” trademarks in meta tags was nominative use. And in Trans Union LLC v. Credit Research, 142 F. Supp. 2d 1029, 1040 (N.D. Ill. 2001), the court found that the use of the ‘‘Trans Union’’ mark as a meta tag in an Internet site was lawful. The court reasoned that the cite offered consumer credit information from Trans Union’s database pursuant to agreement and merely described content of defendant’s Web site.

            Unfortunately, there are no clear guidelines on the application of traditional sourcing rules to the use of trademarks for invisible expression, such as meta tags, domain names or keywords. However, many relevant cases have been initiated. Courts are addressing the application of source protection without creating undue restrictions on competition and consumer choice. The implications are significant; where the courts ultimately strike the balance will directly impact the future for search engines operators, contextual marketers and competitive advertisers.