Most people have never heard of Meta Tags but they have become in the last ten years one of the most important aspects of identifying your business to potential customers on the world wide web. A mega tag is a programming code used in the creation of a web site which has a direct correlation to the ability of the various search engines (Yahoo, Google, etc.) to locate your company or site. Normally, it is installed during the creation of your website. Depending on the code, the frequency of hits on your website can be radically altered…or you can divert searches for other websites to your own. It can allow your web site to become deluged with “hits” or can divert hits that might otherwise go to your competitors. And the effect is world wide and instant.
Even though an Internet user never sees this code, meta tags have been the subject of trademark lawsuits because companies have used them to divert or confuse consumers. For example, a company inserts the trademark name of a rival business, into its meta tag. A customer using a search engine to find that company may be diverted to the first company instead.
Or, a disgruntled ex employee or former owner is fired from Company X, creates a website to spread false rumors about Company X and inserts Company X's trademark into his site's meta tags. Customers searching for Company X are directed to those false statements.
Clearly the use and misuse of this hidden but powerful tool must be a matter of keen interest to all businesses who utilize the website…which, practically speaking means almost all businesses in the Western World. The ways to protect and best utilize your meta tag is the subject of this article.
BASIC APPLICABLE LAW
The reader is first well advised to read our web article on Intellectual Property. What is it and How to Protect It? for a general discussion of intellectual property rights in the United States. Further, the article on Internet Domain Names is useful in seeing how those intellectual property rights have been applied to certain aspects of the internet. It shall be assumed that the reader has already read those two articles.
The deceptive use of another company's trademark in these or similar ways can result in a successful trademark infringement lawsuit, leading to an award of financial damages and in some cases, attorney fees. But there are some instances when the use of another company's trademark is permitted in a meta tag. (See Permissible Uses, below.)
META TAGS AND HOW THEY WORK
Meta tags do not affect the appearance of a website and are not visible when you look at a Web page, but they provide information regarding the content of the site. While you are using Netscape Navigator or Internet Explorer you can actually view the meta tags on any Web page by clicking on "View," then "Source." The tags always start with the word "meta." For example, the meta tags for a website offering handmade sofas may appear as follows:
<META NAME ="Handmade Sofas" CONTENT="Handmade, sofas, furniture, seats, sofa beds">.
Meta tags are used primarily by search engines that wade through the programming code and text of each page. When a search engine finds a search term in a meta tag, it indexes the Web page and displays it in the search results. In the early days of Internet search engines, Web page programmers learned to influence Internet searches by "spiking" the meta tags with the same word over and over to increase the likelihood of the page being "hit". Most search engines have since been trained to largely ignore these repetitions.
IMPROPER USE OF META TAGS
Using Meta Tags to Divert Web Surfers (Trademark infringement)
Some websites use meta tags in a deceptive manner to lure Web surfers. Instead of using terms that properly describe the site, some programmers substitute the names of competing companies. For example, a rival shoe manufacturer may bury the meta tag "Adidas" in its Web page to lure web surfers searching for Adidas products. In the case of a website selling handmade watches, the meta tag might include "Rolex, Swatch, Bulova, and Cartier." One company went so far as to copy and use all of the meta tags at a rival site. This kind of deceptive use of another company's trademark in a meta tag is a form of trademark infringement when it confuses consumers. One judge described the practice as similar to a shop owner posting a sign with another company's trademark in front of its shop. (Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999)).
Bigcomputers.com sells mainframe computers over the Internet. Bigcomputers does not sell IBM mainframes, but nevertheless inserts "IBM, mainframe" into its meta tags. John is looking for an IBM mainframe and his search engine lists Bigcomputers as a "hit." John visits Bigcomputers.com and is initially confused; he can't find any IBM products. He emails the site and Bigcomputers responds that it doesn't sell IBMs, but it has many equivalent machines at discounted prices.
To curb this type of trademark infringement, the trademark owner must first request that the offending website stop the deceptive use. If the use continues and the two companies cannot reach an agreement, the trademark owner may file a lawsuit in federal district court. If it prevails, the court may order the offending website to pay money damages, and in some cases, the trademark owner's attorney fees as well. In egregious cases of intentional deception, the monetary award may amount to several hundred thousand dollars.
Dilution And Unfair Competition
In addition to claims of trademark infringement, deceptive uses of meta tags may result in claims of unfair competition or trademark dilution. Unfair competition is a legal principle that, among other things, prohibits one company from falsely claiming a connection with or endorsement from another. For example, the use of "Playboy" or "Playboylive" in a meta tag by an X-rated site may falsely imply that it is endorsed by Playboy Enterprises. On that basis, as well as infringement and dilution, Playboy Enterprises has successfully pursued several websites using deceptive meta tags.
Dilution occurs when a famous trademark is blurred or tarnished by someone else's commercial use of the mark.
Tarnishment occurs when a famous mark is damaged by an unpleasant or unwholesome use of a similar mark.
Blurring is a "whittling away" or weakening of the mark's distinction. For example, if "Gucci" was placed in the meta tag for a website selling shoddily-made leather goods, that would dilute the Gucci trademark.
PERMISSIBLE USES OF TRADEMARKS IN META TAGS
Not every meta tag use of another company's trademark is illegal. When the trademark is used only to describe the goods or services of a company, or their geographic origin, this is permitted under trademark law as a "fair use." For example, if a site called tropicalarts.com distributes literature and music from the Amazon region, it may use the word "Amazon" in its meta tags. This use would not infringe the Amazon.com trademark because the term "Amazon" is being accurately used to describe the goods offered at Tropicalarts. See the Intellectual Property. What Is It and How to Protect It web article for a fuller discussion of this aspect of trade mark use.
In one actual case, former Playmate Terri Welles established www.terriwelles.com and used Playboy and Playmate in her site's meta tags. This use of Playboy's trademarks was permitted because Ms. Welles was using the terms to describe herself and to properly index the pages. In addition, the court in this case was influenced by the fact that most of the free Web pages at the site included a disclaimer at the bottom: "This site is neither endorsed, nor sponsored by, nor affiliated with Playboy Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR and PLAYMATE OF THE MONTH are registered trademarks of Playboy Enterprises, Inc." (Playboy Enterprises, Inc. v. Welles, 7 F. Supp. 2d 1098 (Cal. S.D. 1998).)
Although a trademark can be used in a good faith descriptive manner, the only means of resolving a fair use issue if the parties cannot resolve their differences is through the prolonged and often expensive means of a suit in federal court. Unfortunately, there is no clear “objective” test for proving trademark fair use and, regardless of the rights at stake, a descriptive use of a trademark in a meta tag may trigger a lawsuit. Quite often the economic power of a party will decide if the other party will need to back down. Justice is only available to those who can afford it in the United States and the fact that if it is Bank of America or General Motors who insists your use is unfair may very well decide you that discretion is the better part of valor.
COMMONSENSE USE OF TRADEMARKS IN META TAGS ND THE PRACTICALITIES OF LITIGATION
Legally, and ethically, one should avoid deceptive uses of another company's trademark in a website unless the company has consented to the use. Such consent might be granted, for example, if you are a distributor for the trademarked brands in the meta tags. Not only is it unethical and illegal to use trademarks deceptively, but it is seldom a good bad business decision. The potential financial and legal consequences may vastly outweigh the increased traffic. Deceptive trademark meta tags can be easily uncovered and many well-known trademark owners regularly troll the Net searching for such violations. In short, when in doubt about using a trademark in your meta tag, leave it out.
But while this is a good general rule, the fact remains that the international scope of the internet often results in violations occurring in jurisdictions that have no effective legal system to control the actions. A judgment in the United States against a website located in Nigeria, the Ukraine, Bosnia or Syria will have little practical effect and we are only beginning to see the expansion of the commercial use of the web into such jurisdictions: we may expect increased improper use of meta tags in the future given the cost and effectiveness of protection available.
If you are a user of a meta tag and afraid others are improperly using your tag, you should regularly conduct your own web search of the typical search engines to determine if your trade name results in the wrong site appearing. Many of our clients conduct such searches quarterly or even monthly and aggressively assert their rights if it appears their names are being improperly used. Remember that lack of enforcement may later result in the claim that you have waived your right to object to the meta tag. Protection of this valuable tool should form as much a part of your business protection plans as buying insurance or copyrighting your confidential materials.