|IP :: Search Engines :: Placement, Trademarks, Keywords and Metatags|
There are three closely related sets of cases that involve the use of trademark keywords to direct internet users to competitors online content. These involve
Metatags (trademarks used to manipulate search results), Keywords (trademarks used to display advertisements), and Pop-Up Ads (trademarks used to trigger pop-up ads).
Paid for Placement
On June 27, 2002 , the FTC transmitted a letter to the major search engines out of the concern that those services were "failing to disclose that advertisements are inserted into search engine result lists." In other words, an individual comes to a search engine, inserts "widgets" and gets back a result with the ACME Widget Company on the top. The user believes that this listing is presented because it falls within the proper criteria of the engine. What the user does not know, in this fictitious example, is that the listing is actually on the top because ACME has paid the site in order to be listed at the top. While the FTC did not elect to take action at that time, the FTC did transmit letters to the major search engines suggesting that proper disclosure might be in order .
- Letter from Heather Hippsley, Acting Associate Direct, Division of Advertising Practices, FTC, to Gary Ruskin, Executive Director, Commercial Alert (June 27, 2002)
- FTC Staff Recommendation to Search Engines: Clear and Conspicuous Disclosures June 2002
"Meta tags" are pieces of the Hyper Text Markup Language ("HTML") source code which contain keywords used to describe the contents of a web page. There are three types of meta tags: (1) descriptive meta tags, which describe the content of the document; (2) keyword meta tags, which are used by internet search engines to help determine whether a particular web page is relevant to a search term entered by a user; and (3) robot meta tags, which indicate to search engines that certain web pages are not to be indexed by the search engine. Meta tags are invisible to Internet users but are used by search engines to index websites. Upon indexing relevant websites, a search engine uses algorithms to process the keywords in the meta tags to produce a search results page that displays links to relevant websites in a list typically in order of decreasing relevance. [Wentworth]
This gave a few of the bright and the daring the brilliant idea of inserting the trademarks of their competitors into meta tags so that when search engine users type in that trademark-keyword, the results will display the competitors site and lead that individual to the competitors site instead. It's a cute trick. It's hidden from site so they can't get caught. Neat, huh?
Generally courts have had little patience for trademark infringing metatags. See
© Cybertelecom ::
There have, however, been decisions to the contrary where the use of a third party's trademark in a metatag is appropriate and permitted.
- Site Pro-1 v Better Metal, Inc., 06-CV-6508 (ILG) (RER) (May 9th, 2007) (According to the court opinion, defendant and plaintiff sold equipment for the construction of wireless telecom towers. In its motion to dismiss, defendant conceded that it had purchased a sponsored search from Yahoo! using the keywords "1", "pro" and "site" that would cause defendant's website to be included in the listings. Defendant also conceded that it placed these terms in the metatags of its website. Defendant argued however that its use of the trigger-terms "pro" "site" and "1" were never visible to the individual computer user, and therefore it was not a use of a trademark in commerce. The court concluded "The key question is whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin. Here, there is no allegation that Better Metal did so, and therefore no Lanham Act “use” has been alleged." Rejecting the Initial Interest Confusion argument of plaintiff, the court granted defendant's motion to dismiss.)
- Playboy Enters., Inc. v. Welles, 279 F.3d 796, 802-04 (9th Cir. 2002) (court affirmed use of terms "playboy" and "playmate" on website of a former playboy playmate, where website included disclaimer of affiliation with playboy; court concluded that viewers would not be confused that they were viewing a playboy website and defendant was appropriately using "playmate" as a title)
- Trans Union LLC v Credit Research, Inc., 142 FSupp2d 1029 (ND Ill 2001) (use of "Trans Union" in meta tags permissible where defendant offered products derived from Trans Union's database)
- Bihari v. Gross, 119 F. Supp.2d 309 (S.D.N.Y. 2000);
- Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1165 (C.D. Cal. 1998)
Keyword Advertising Cases
With advertising programs like Google Ads, an advertiser can purchase keywords and when an individual types those keywords into Google or when those keywords are on a webpage where Google Ads are used, the advertiser's ad will appear. Cybertelecom uses Google Ads; you can see them on the left column and you can note that the advertisements that appear are generally relevant to the page you are viewing. Google knows the words on a webpage and attempts to generate relevant ads based on those words.
In these cases, plaintiff-trademark-owners claim that defendant-advertisers have improperly purchased the use of plaintiff's trademark as a keyword to use in the Google Ads program. In other words, if some third party blog purchased the keyword "Cybertelecom," which resulted in an ad appearing for that third party blog, Cybertelecom might throw a hissy-fit.
The courts have struggled with these cases. Clearly the defendant is (allegedly) using the trademark, but is it "in commerce," and will in generate user confusion. Some courts conclude that the use of the trademark is entirely behind the scenes, that the computer-user doesn't see this, and therefore its not "in commerce." Other courts say "come on!" The Defendant is clearly using the mark, taking the benefit of the reputation or knowledge of that mark, to cause people to see Defendant's advertisement for some good or service. Of course, Eric Goldman points out that this is a bit akin to placing generic aspirin right next to ACME Trademark Aspirin at the grocery store, and this doesn't cause to much trouble (or maybe it should! Someone call the lawyers! ACME is getting screwed!).
If you can get past whether the use of the trademark is "in commerce," then the problem is whether it causes any confusion. If you visit the Cybertelecom page for Comcast, and a Vonage ad appears in the Google Ads, are you going to be confused that the Vonage Ad has something to do with Comcast. The courts generally conclude, no, there is no confusion here.
- 11th Circuit Freaks Out About Metatags--North American Medical v. Axiom, Tech & Marketing Law 4/8/2008
- Playboy Enterprises Inc. v Netscape Comm Corp., 354 F3d 1020 (9th Cir 2004) (where Netscape used trademark keyword "playboy" to trigger unlabeled banner ads for competitor's website, court found that Netscape trademark infringement based on initial interest confusion, take particular note of fact that banner ads were unlabeled as contributing to consumer confusion).
- T.D.I. Int'l Inc. v. Golf Preservations Inc., No. 07-313 (ED Ky 1/31/08) (motion to dismiss denied for action that claims purchase of trademark terms as google adwords is a trademark violation), EDKY 4/17/2008
- Hamzik v. Zale Corp./Delaware, No. 06-CV-1300 (TJM) (N.D.N.Y. Apr. 19, 2007), "the Court agreed with the reasoning in Rescuecom and Merck, but denied the motion to dismiss, because a search of plaintiff's trademark not only returned defendant's website among the search results, but plaintiff's trademark also appeared next to defendant's name, demonstrating that plaintiff's trademark could be displayed in a way indicating an association with defendant. Id. at *3 ("Thus, unlike Rescuecom and Merck & Co., in this case there may be facts demonstrating that Plaintiff's trademark does appear on the displays associated with [defendant's] goods or documents associates with the goods or their sale.")."
- Site Pro-1 v Better Metal, Inc., 06-CV-6508 (ILG) (RER) (EDNY May 9th, 2007) (According to the court opinion, defendant and plaintiff sold equipment for the construction of wireless telecom towers. In its motion to dismiss, defendant conceded that it had purchased a sponsored search from Yahoo! using the keywords "1", "pro" and "site" that would cause defendant's website to be included in the listings. Defendant also conceded that it placed these terms in the metatags of its website. Defendant argued however that its use of the trigger-terms "pro" "site" and "1" were never visible to the individual computer user, and therefore it was not a use of a trademark in commerce. The court concluded "The key question is whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin. Here, there is no allegation that Better Metal did so, and therefore no Lanham Act “use” has been alleged." Rejecting the Initial Interest Confusion argument of plaintiff, the court granted defendant's motion to dismiss.)
- E.D.N.Y. holds purchase of competitor's trademark to trigger sponsored listing not trademark "use" under Lanham Act, Internet Cases 5/15/2007
- Hamzik v. Zale Corp., No. 3:06-cv-1300 Sec. III .a. (NDNY April 25, 2007) (denying motion to dismiss, finding possible Lanham Act violation where defendant purchased advertising with plaintiff's trademark as keyword, and alleged trademark term appeared in defendant's advertisement).
- JG Wentworth SSC Ltd v Settlement Funding LLC, No 06-0597 (EDPa Jan 4 2007)
- In Commerce: But like the Court in Buy for the Home, I recognize that defendant's use of plaintiff's mark to trigger internet advertisements for itself is the type of use consistent with the language of the Lanham Act which makes it a violation to use "in commerce" protected marks "in connection with the sale, offering for sale, distribution, or advertising of any goods or services," or "in connection with any goods or services." 15 USC §§ 1114(a) and 1125(a)(1). Such use is not analogous to "an individual's private thoughts" as defendant suggest. By establishing an opportunity to reach consumers via alleged purchase and/or use of a protected trademark, defendant has crossed the line from internal use to use in commerce under the Lanham Act.
- Confusion: At no point are potential consumers "taken by a search engine" to defendant's website due to defendant's use of plaintiff's mark in meta tags. Rather, as in the present case, a link to defendant's website appears on the search results page as one of many choices for the potential consumer to investigate. As stated above, the links to defendant's website always appear as independent and distinct links on the search results pages regardless of whether they are generated through Google AdWords program or search of the keyword meta tags of defendant's website. Further, plaintiff does not allege that defendant's advertisements and links incorporate plaintiff's marks in any way discernable to internet users and potential customers... Due to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant's services, goods, advertisements, links or website for those of plaintiff. Therefore, I find that initial interest protection does not apply here.
- Buying for the Home, LLC v. Humble Abode, LLC , 03-CV-2783, 2006 WL 3000459 (DNJ Oct 20 2006)
- First, the alleged purchase of the keyword was a commercial transaction that occurred "in commerce," trading on the value of Plaintiff's mark. Second, Defendants alleged use was both "in commerce" and "in connection with any goods and services" in that Plaintiff's mark was allegedly used to trigger commercial advertising which included a link to Defendants' furniture retailing website. Therefore, not only was the alleged use of Plaintiff's mark tied to the promotion of Defendants' good and retail services, but the mark was used to provide a computer user with direct access (ie, a link) to Defendants' website through which the user could make furniture purchases. The Court finds that these allegations clearly satisfy the Lanham Act's "use" requirement. [Slip p. 8]
- Edina Realty, Inc. v. TheMLSonline.com, 2006 WL 737064 (D. Minn. Mar. 20, 2006) (ruling in favor of plaintiff trademark owner)
- 800-JR Cigar, Inc. v. GoTo.com, Inc. , 2006 WL 1971659 (DNJ July 13, 2006) (trademark search engine case)
- Merck & Co. v. Mediplan Health Consulting, Inc , 425 F Supp 2d 402 , 415-16 (SD NY 2006) (purchase of keywords is not a "use").
- Gov't Employees Ins. Co. v. Google, Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) (granting defendant's motion for summary judgment on plaintiff's Lanham Act claim, where defendant sells plaintiff's trademark as a search term keyword that generates third party advertisements, and displays third party advertisements when plaintiff's trademark is used as a search term, where generated ads do not use GEICO's trademark. Case left unresolved situations where use of GEICO's trademark does generate ads that use GEICO's trademark).
- Rescuecom Corp. v. Google, Inc. , No. 5:04-CV-1055, 456 F. Supp. 2d 393 (NDNY 2006) (selling keywords that may be trademarks does not satisfy use of the trademark "in commerce" for a Lanham Act cause of action, citing 1-800 Contracts)
- American Blind & Wallpaper Factory Inc. v. Google, Inc. , 1:04 cv 00642 LLS (S.D.N.Y. 2004).
- Google, Inc. v. American Blind & Wallpaper Factory Inc., 5:03-cv-05340-JF (N.D. Cal. 2003).
American Airlines And Google Settle Keyword Advertising Spat, Techdirt 7/21/2008 Keyword Metatags and Keyword-Triggered Ads Don't Create Initial Interest Confusion--Designer Skin v. S&L Vitamins, Tech & Marketing Law 6/6/2008 Court Slams Competitive Metatagging and Keyword Advertising--Soilworks v. Midwest Industrial Supply, Tech & Marketing Law 8/28/2008
Displaying Back Term: It is not a trademark violation where someone comes to a search engine, types in a trademark, and the search engine result page displays "You typed in [trademark term]" along with results; the mere redisplay of the typed in term does not cause consternation. [Hamzik Sec. III.a.] (The fact that the website exhibited (displayed back) the search phrase entered by the computer user does not transform the Defendant's actions into a "use" within the Lanham Act. Defendant cannot be held responsible for Plaintiff's own actions in typing the words "dating ring" in the website search function").
Displaying Results when Trademark is Entered: "Case law makes it clear that merely displaying alternative products in response to a computer search on a tradename is not a Lanham Act use. See 1-800 Contacts, 414 F3d 400 , 409- 411 (2d Cir 2005); Rescuecom Corp v. Google, Inc., 456 F Supp 2d 393 (ND NY 2006); Merck & Co. v. Mediplan Health Consulting, Inc., 425 F Supp 2d 402 , 415-16 (SD NY 2006). Akin to the situation addressed by the Second Circuit in 1-800 Contacts, "it is routine for vendors to seek specific 'product placement' in retail stores precisely to capitalize on their competitors' name recognition." 414 F3d at 411." [Hamzik Sec. III.a.]
- Kendall Bodden, Pop Goes The Trademark? Competitive Advertising on the Internet , 1 Shidler J. L. Com. & Tech. 12 (Aug. 2, 2005)
- Trademarks on the Internet - Fair Play or Fair Game, IPFrontline (Mar 2006)
- Mark Lemley and Stacey L. Dogan, Trademarks and Consumer Search Costs on the Internet, TPRC 10/2/2004
- Tom Monagan, Can an Invisible Word Create Confusion? The Need for Clarity in the Law of Trademark Infringement through Internet Metatags, 62 OHIO ST. L.J. 973 (2001)
- McQuaig, Halve the Baby: an Obvious Solution to the Troubling Use of Trademarks as Metatags, 18 John Marshall J. Computer & Info. L. 643 (2000)
- F. Gregory Lastowka, Note, Search Engines, HTML, and Trademarks: What’s The Meta For?, 86 VA. L. REV. 835 (2000)
- 426,487 Reasons Why Metatags Still Matter (In Court)--Venture Tape v. McGills, Tech & Marketing Law 9/10/2008
- Two Regressive Search Engine Advertising Rulings--Standard Process v. Total Health and Finance Express v. Nowcom, Tech & Marketing Law 7/8/2008
- ABA IP Section Quietly Considering Anti-Consumer Proposals to Regulate Keyword Advertising, Tech & Marketing Law 1/29/2008
- 1-800 Contacts Sues Competitors For Keyword Ads Despite Losing Similar Cases And Buying Keyword Ads Itself, Techdirt 1/11/2008
- Yet Another Keyword Advertising Suit... And Yet Another Ruling That Keyword Ads Don't Violate Trademarks, Techdirt 1/8/2008
- Keyword Ads and Metatags Don't Confuse Consumers--J.G. Wentworth v. Settlement Funding, Technology and Marketing Law Blog (Jan 5, 2007)
- Courts Can't Figure Out if Buying Keywords Constitutes Trademark Use--Buying for the Home v. Humble Abode, Technology and Marketing Law Blog October 20, 2006