TECHNOLOGY

(a) use in commerce any repro-duction, counterfeit, copy or col-orable imitation of a registeredmark in connection with the sale,offering for sale, distribution, oradvertising of any goods or serviceson or in connection with whichsuch use is likely to cause confu-sion, or to cause mistake, or todeceive; shall be liable in a civilaction by the registrant for theremedies hereinafter provided.

Section 43 of the act (unfair com-petition) provides protection toowners of both unregistered andregistered marks and protectsagainst dilution of famous marks.

Notwithstanding these provi-sions, there is no protection underthe act if the conduct complainedof constitutes a ‘‘fair use,’’ definedas use ‘‘otherwise than as a mark...of a term or device which is de-scriptive of and used fairly and ingood faith only to describe thegoods or services of such party, ortheir geographic origin.’’2 Accord-ing to Playboy Enterprises, Inc vTerri Welles, Inc, the ‘‘ ‘fair use’ de-fense, in essence, forbids a trade-mark registrant to appropriate a descriptiveterm for his exclusive use and so prevent oth-ers from accurately describing a characteris-tic of their goods.’’3 Virtually every metatagdecision involves claims of infringement, un-fair competition, or dilution under the Lan-ham Act. Most involve application of thefair use doctrine.

The Lanham Act, Domain Names,and Metatags

For years, mark owners have been suc-cessfully asserting their Lanham Act rightsagainst individuals registering domain names

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nternet websites are commonly ac-cessed by one of three methods. Auser who knows a site’s domain namecan type it into the address line onthe browser. Alternatively, a knownwebsite may provide a link to the tar-

get. However, more often than not, a searchis necessary.

In searching, or surfing, the Internet, thesurfer typically uses a search engine such asGoogle or Yahoo!, types in a few key words(with certain modifiers), and clicks ‘‘search.’’The search engine generates a list of sites con-taining the search terms entered, with a linkto and a short description of each. The sitesare ranked, with those most closely matchingthe entered terms at the top of the list. Assearch results may list thousands of sites, it isadvantageous for an entity to have its namenear the top of the list.

In determining the extent to which a sitematches entered key words, search enginesuse data from three main sources: the site’sdomain name, its visible text, and text pres-ent in the source code underlying the site,but not visible to the surfer—metatags. Fre-quently, metatags weigh very heavily in de-termining a site’s rank in the search results.

The metatag browser feature provides anincentive for webmasters to load up a sitewith multiple copies of metatags containingnot only their own marks, products, andservices, but those of their competitors. Pre-dictably, this practice has led to claims oftrademark infringement, unfair competition,and dilution under the Lanham Act.

Statutory Trademark ProtectionUnder the Lanham Act

Analysis of American trademark law ordi-narily starts with the federal Lanham Act.1Section 32(1) of the Lanham Act provides:

Any person who shall, without the consent ofthe registrant—

containing protected marks, or cybersquat-ters. In 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act,4which provides that the owner of a distinc-tive, famous, or registered mark may recoverdamages from one who, in bad faith, regis-ters, traffics in, or uses a domain name incor-porating the mark. For distinctive or famousmarks, the act extends to domain names in-corporating confusingly similar marks, aswell. Accordingly, it is now well-establishedthat use of a domain name incorporating an-other’s mark is often actionable.5

In many domain name cases, the de-fendant has also used the mark, or common

Oh, What a Tangled WebThe subtle difference between metatag usage as ‘‘fair use’’ and invisible infringement

By Douglas G. McCray

I Barring wrongful conduct, those using metatags

to direct surfers to noncommercial sites

should have no problem asserting lack of confusion

and fair use.

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misspellings of it, in metatags. In some ear-lier cases, courts treated the metatag issuein a cursory fashion, without consideringthe differences between metatags and do-main names. However, those differencesare substantial:

1. The Anti-Cybersquatting Consumer Pro-tection Act does not apply to metatags.6

2. A search engine’s ability to locate and ranksites is typically dependent upon a site’smetatags, not its domain name.

3. Use of a domain name takes the surfer di-rectly to the site. Thus, by using another’smark as a domain name, a webmasterguarantees that users typing ‘‘www.[mark].com’’ will arrive at the ‘‘wrong’’ (infringing)site. In contrast, a metatag-based key wordsearch provides the surfer with a list, pro-viding links and descriptions of multiplesites, including that of the mark owner.

4. Given the f inite number of domainnames containing just the correct spellingof a particular mark (for example, www.chrysler.com), it is impossible to enforcethe Lanham Act and avoid confusionwithout placing substantial restrictions onspeech. Content-neutral restrictions onspeech may not ‘‘burden substantiallymore speech than is necessary’’ to furthera substantial government interest.7 Withrespect to metatag-dependent search en-gines, several alternatives exist that wouldprevent confusion while minimally bur-dening the metatag user’s speech. Forexample, requirements could use specialmetatags for registered marks, requiringdisclaimers, and limiting the number ofmetatags in ‘‘unofficial’’ sites.

5. Restricting usage of marks and close ap-proximations in metatags restricts morespeech than restricting mark usage in do-main names.

In attempting to account for these factorswhile enforcing the provisions of the Lan-ham Act, courts have reached varying results.

The Brookfield Metatag DecisionThe number of case decisions regarding

metatags has grown rapidly since 1997. Oneof the most influential metatag cases decidedto date is the 1999 federal appellate decision

Brookfield Communications, Inc v West CoastEntertainment Corp.8 Brookfield sued WestCoast over use of its registered trademark‘‘MovieBuff,’’ which was used by Brookfieldto identify its entertainment industry data-base. West Coast, which used Brookfield’smark in its domain name and metatags,planned to launch a database similar toBrookfield’s and distribute it from its www.MovieBuff.com website.

Not surprisingly, the Ninth Circuit Courtheld that West Coast’s use of www.MovieBuff.com was likely to create confusion and re-manded with instructions that the trial courtenter a preliminary injunction. The courtalso enjoined West Coast’s use of ‘‘Movie-Buff ’’ or any ‘‘confusingly similar’’ term inmetatags. However, the court acknowledgedthat West Coast could use ‘‘MovieBuff ’’ visi-bly to describe Brookfield’s product (fair use)and could use the descriptive term ‘‘MovieBuff ’’ (with the space) in metatags.

The court noted that even though con-sumers mistakenly arriving at the West Coastsite were unlikely to believe they were view-ing Brookfield’s site, West Coast’s metatagusage created a likelihood of confusion. Thecourt compared West Coast’s conduct toBlockbuster Video’s posting a sign with WestCoast’s mark, on the road leading to Block-buster’s own store: ‘‘Even consumers whoprefer West Coast may find it not worth thetrouble to continue searching for West Coastsince there is a Blockbuster right there. Cus-tomers are not confused in the narrow sense:they are fully aware that they are purchasingfrom Blockbuster. . . . Nevertheless, the factthat there is only initial consumer confusiondoes not alter the fact that Blockbuster wouldbe misappropriating West Coast’s acquiredgoodwill.’’ (Emphasis added.)

As noted by one court, the relevance ofthe ‘‘misleading billboard’’ example is ques-tionable.9 After all, following a keyword

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a single, incorrect sign, but a list of sites andsite-descriptions, most likely containing thesite sought. Also, unlike the ‘‘billboard’’ exam-ple, a Web surfer need only click the mouseto return to the list. Nonetheless, Brookfield ’s‘‘initial consumer confusion’’ or ‘‘initial in-terest confusion’’ analysis has been of centralimportance in nearly every subsequent pub-lished opinion involving metatag use.

Factors Affecting Outcomes in Metatag Cases

Most courts analyze approximately eightfactors in determining whether use of anoth-er’s mark creates a likelihood of confusion(infringes).10 Many of these factors are of lit-tle assistance in establishing general rules inthe metatag context, primarily because theydo not vary among metatags cases. For in-stance, every metatag case involves languageidentical to the allegedly infringed mark. Ac-cordingly, the ‘‘similarity of marks’’ analysis isidentical in every case.

At least three factors, however, do vary andappear to affect case outcomes: the (non)-commercial nature of the use, relatedness ofgoods or services, and intent of user. Further-more, the (non)commercial nature of the useis closely related to the fair use doctrine,which is frequently applied in metatag cases.By examining these three factors in the con-text of Brookfield ’s ‘‘initial interest confu-sion,’’ it is possible to articulate general rulesfor whether a particular metatag use is likelyto infringe.

1. Noncommercial Use Generally Does Not Infringe‘‘[N]oncommercial use of a mark is not

actionable under the Lanham Act.’’11 Mostcases pertaining to noncommercial use of amark in metatags involve criticism of themark’s owner or related products and serv-ices.12 Such criticism falls squarely within thefair-use doctrine.13 Furthermore, since thecritics generally are not selling anything, thereis no possibility that they will misappropriate(as opposed to damage) the owner’s goodwill. Accordingly, the noncommercial meta-tag user generally prevails.

Cases involving metatags that incorporateanother’s mark for commercial purposes are

less predictable, and commercial metatagusers unable to assert a strong fair-use de-fense invariably lose.14 Cases involving use ofa mark contained in metatags to direct con-sumers to a site describing a competitor’sproduct or service, or one’s own goods, serv-ices, or accomplishments—traditional ‘‘fairuses’’—have reached varying results.15 Ac-cordingly, even commercial entities using an-other’s mark descriptively should exercisecaution in placing that mark in a metatag.

2. Proximity or Similarity of Goods or ServicesIn nearly every case involving use of a

commercial competitor’s mark in metatags,courts have found infringement or a likeli-hood of confusion for purposes of a prelimi-nary injunction.16 When the allegedly infring-ing party is not a competitor, results vary.17

3. Intent of UserWithin a given case, inequitable conduct

is likely to result in an adverse ruling regard-ing metatag use (infringement), even if theconduct has nothing to do with metatag use.Examples of such conduct include egregiouscybersquatting, attempting to sell domainnames containing another’s mark, and crim-inal activity.18 Courts may also take a dimview of metatag use when there is no visiblereference to the mark in the Web page.19

This may be because for a fair (descriptive)use of the mark to exist, it must be visible.

‘‘Nominative Use’’Earlier this year, the Ninth Circuit Court

of Appeals decided Playboy Enterprises v Welles(‘‘Welles II’’),20 which held that ‘‘nominativeuse’’ of metatags did not infringe. Citing NewKids on the Block v New America PublishingCompany,21 the court defined nominative useas that which satisfies three criteria: (1) theproduct or service is not ‘‘readily identifiablewithout use of the trademark’’; (2) only somuch of the mark as is necessary to identifythe product or service is used; and (3) theuser does nothing that ‘‘in conjunction withthe mark suggest[s] sponsorship or endorse-ment by the trademark holder.’’ In this case,former Playboy Playmate Terri Welles (usingthe mark to identify herself as a former ‘‘Play-mate of the Year’’) satisfied all three criteria.

It is noteworthy that in reaching its decision,the court relied heavily on the fact that themarks (e.g. ‘‘Playboy’’ and ‘‘Playmate’’) werenot repeated excessively in metatags and,therefore, Ms. Welles’ site did not appear ‘‘atthe top of search results.’’

The ‘‘nominative use’’ test is intuitivelyappealing, and perhaps better suited to themetatag context than the more traditionaltest. Whether it eventually will become thestandard in metatag cases remains to be seen.

ConclusionBarring wrongful conduct, those using

metatags to direct surfers to noncommercialsites should have no problem asserting lackof confusion and fair use. A clearly wordeddisclaimer on the site and in the descrip-tion should further decrease any likelihoodof confusion.

In the commercial context, those incor-porating a competitor’s protected marks intometatags should exercise caution, makingcertain it is used only in a descriptive fashion.By definition, to constitute fair use, the com-petitor’s mark should be visible on the site.Copious disclaimers on the site and in thedescription may prevent confusion, as may aproduct name dissimilar to the mark at issue.In light of Welles II, it is probably unwise touse so many copies of a particular mark inmetatags that the site appears before that ofthe mark’s owner in search results. Lastly, thesite owner should refrain from any conduct,whether or not it relates to metatags, thatcould be viewed as unethical, such as cyber-squatting and site spamming.

Will these safeguards satisfy competitorswhose marks are used in metatags? Probablynot. However, they may prevent actual con-fusion, thereby benefitting mark owners, andprovide some protection to those engagingin fair use such as criticism or comparison.Until this rapidly evolving area of law be-comes more settled, there is no guaranty thatthe above principles will apply in any givencase. Accordingly, as long as courts wrestle toresolve the Lanham Act, public policy, andthe constitutional considerations discussedabove, attorneys advising commercial websiteowners should recommend caution when aclient is considering use of a competitor’smark in a metatag. ♦

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Douglas G. McCray is an associate with Kelley,Casey & Clarke, P.C., in St. Clair Shores and is amember of the firm’s Information Technology Lawpractice group. In addition, McCray regularly han-dles environmental law, environmental insurance,and complex litigation matters. The views and opin-ions expressed in this article are those of the authorand do not necessarily reflect those of Kelley, Casey &Clarke, P.C., or its clients.

FOOTNOTES1. 15 USC 1114(1).2. 15 USCA 115(b)(4).3. 7 F Supp 2d 1098, 1103–05 (SD Cal 1998) aff ’d

162 F3d 1169 (CA 9, 1998) [citing New Kids onthe Block v New Am Pub, Inc, 971 F2d 302 (CA 9,1992)] (former Playboy Playmate’s use of wordsPlayboy and Playmate in metatags was fair use.

4. 15 USCA 1125.5. See, OBH, Inc v Spotlight Magazine, Inc, 86 F

Supp 2d 176 (WD NY 2000); Playboy Enter-prises, Inc v Calvin Designer Label, 985 F Supp1220 (ND Cal 1997); Planned Parenthood Fed-eration of America, Inc v Bucci, 1997 WL 133313(SD NY 1997) aff ’d 152 F3d 920 (CA 2, 1998),cert denied 525 US 834 (1998).

6. Bihari v Gross, 119 F Supp 2d 309, 320 n 15 (SDNY 2000).

7. Turner Broadcasting System, Inc v Federal Commu-nications Comm’n, 520 US 180, 213–14, 117 S Ct1174, 1198 (1997) (citations omitted).

8. 174 F3d 1036 (CA 9, 1999).9. Bihari, 119 F Supp 2d at 330 n 15.

10. See, Bally Total Fitness Holding Corp v Faber, 29F Supp 2d 1161, 1164-44 (CD Cal 1998); Victo-ria’s Secret Stores v Artco Equipment Co, Inc, 194 FSupp 2d 704 (SD Ohio 2002).

11. Bihari, 119 F Supp 2d at 318 (citing 15 USC(c)(4)(B)).

12. Bally, 29 F Supp 2d at 1161; Servicemaster Co vVirga, No 99-2866-TUV (WD Tenn 1999).

13. Bihari, 199 F Supp 2d at 321–23.14. See, Playboy Enterprises, Inc v AsiaFocus Int’l, Inc,

1998 WL 724000 (ED Va); Calvin Designer Label,Brookfield, Ontario Ltd v Lencore Acoustics Corp,105 F Supp 2d 56 (ED NY 2000); Victoria’s Secret.

15. Eli Lilly & Co v Natural Answers, Inc, 233 F3d 456(CA 7, 2000); PACCAR, Inc v Telescan Technologies,LLC, 115 F Supp 2d 772 (ED Mich 2000); TerriWelles, Inc, 78 F Supp 2d at 1066.

16. See, Brookfield, Calvin Designer Label, PACCAR,Inc, Eli Lilly and Co. But see Terri Welles, Inc.

17. Nissan Motor Co, Ltd v Nissan Computer Corp, 89F Supp 2d 1154 (CD Cal 2000), aff ’d 246 F3d675 (CA 9, 2000); Bihari, NYSSCPA v Eric LouisAssoc, Inc, 79 F Supp 2d 31 (SD NY 1999).

18. See, Calvin Designer Label (cybersquatting); SNA,Inc v Array, 51 F Supp 2d (ED Pa 1999) (breachof contract; civil conspiracy; PACCAR, Inc (cyber-squatting); NYSSCPA (cybersquatting, domainname sale).

19. See, 777388 Ontario Limited, 105 F Supp 2d 56(ED NY 2000); Oppedahl & Lawson v AdvancedConcepts, No 97-2-1592 (D Colo 1997) (DavidLoundy, Hidden Code Sparks High-Profile Lawsuit,Chicago Daily Law Bulletin Column, http://www.loundy.com/CDLB/Meta_Tags.html).

20. 279 F3d 796, 801 (CA 9, 2002).21. 971 F2d 302 (CA 9, 1992).