Consumers use the internet to research and purchase almost every type of good and service. Clients often ask me about their trademarks being used by their competitors in their competitor’s meta-tag data. This article discusses that issue.
“Meta tags” are words and phrases that describe a website’s content. Meta tags do not show up on the website itself. Instead meta tags are used in source code. A website designer may include whatever metatags he or she desires. Many internet search engines use metatags to determine the content of a website. Thus, for example, if a web designer creates a website to advertise for an electronics store, he or she might include in the source code keyword meta tags such as “computers,” “cameras,” “televisions,” and “We sell electronics at the best prices.” Additionally, if the web designer wanted to attract customers searching for better known electronics stores by name, the web designer might also include metatags such as “Best Buy” and “Circuit City.”
For example, HTML metatags may look like this:
<meta property=”og:type” content=”Best Buy” />
<meta property=”og:title” content=”Circuit City” />
<meta property=”og:site_name” content=”Best Electronic Store” />
A competitor’s use of a brand owner’s trademark in metatags allows advertisements and websites displaying the competitor’s products and services to appear in the search results of an internet search when a consumer searches for the trademark owner’s trademark. As a result, a competitor may benefit from the good will, marketing and good reputation of another trademark. Many trademark owners may have a problem with this.
The scenario described above is known in trademark law as “initial interest confusion.” Initial interest confusion occurs when a customer is lured to a product or service, by the similarity of the mark, even if the customer realizes the true source of the goods or services before the sale is completed. That said, initial interest confusion alone caused by a competitor’s use of a brand owner’s trademarks in metatags may not be enough to prevail in a trademark infringement lawsuit.
The Eleventh Circuit refused to take up whether initial interest confusion alone was a viable method of proving likelihood of confusion. See ADT LLC v. Alarm Prot. Tech. Fla., LLC, 646 F. App’x (11th Cir. 2016). Much of the Eleventh Circuit’s analysis came through a comparison to a Ninth Circuit case, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). The Eleventh Circuit noted that Brookfield is a leading case on the issue of metatags in the Ninth Circuit. Although refusing to take up the issue of whether initial interest confusion was actionable, the Eleventh Circuit noted that the court in Brookfield found actual confusion was present and did not find that the defendant committed trademark infringement on the doctrine of initial interest confusion alone.
In the case Alzheimer’s Disease & Related Disorders Ass’n, Inc. v. Alzheimer’s Found. of Am., Inc., a court in the Southern District of New York explained what type of initial interest confusion is actional and not actional trademark infringement. 307 F. Supp. 3d 260 (S.D.N.Y. 2018). In Alzheimer’s Disease, the court explained that the task of distinguishing between situations that are and are not actionable based on initial interest confusion caused by the use of meta tags may be best illustrated by two scenarios. The first is a pure bait and switch scenario, which is clearly actionable.
For example, if Company A had purchased Company B’s trademarks as keywords and then advertised itself as “Company B” with nothing in its advertisement to distinguish Company A from Company B aside from Company A’s URL, this would be a clear case of trademark infringement. On the other hand, comparison ads are not violations of the Lanham Act because it is clear to consumers that Company B’s trademark is only being used as a point of contrast. For example, if Pepsi were to purchase the keyword “Coca–Cola” and then publish an ad with the headline “Try Pepsi—It Is Better than Coca–Cola,” it would be the rare consumer confused by the source of the advertisement. The consumer searching for “Coca–Cola” may have been diverted, but she has not been confused or misled. The court explained that the essence of trademark infringement is consumer confusion caused by the infringing behavior, and behavior meant to harm a competitor does not necessarily entail infringement if a consumer is unlikely to be confused. The court explained that for this reason, courts have repeatedly found that the purchase of a competitor’s marks as keywords alone, without additional behavior that confuses consumers, is not actionable.
To determine whether the use of trademarks as meta tags in source code is trademark infringement requires a thorough analysis of how the metadata is being used and several other factors. If you have questions about whether your use, or a competitor’s use, of a trademark in source is actionable trademark infringement, please contact our firm for a consultation. To learn more about the author of this article, Derek Fahey, click HERE.