Website owners and designers utilize metatags to present their websites to Internet users searching for certain keywords in a search engine.  A metatag is a “special HTML tag that is used to store information about a Web page but is not displayed in a Web browser.  For example, metatags provide information such as what program was used to create the page, a description of the page, and keywords that are relevant to the page.  Many search engines use the information stored in metatags when they index Web pages.”  Website owners may add metatags containing keywords describing their products or competitors’ products to attract Internet users searching for similar products.  Problems develop when owners add metatags comprising the trademarks of third-parties.  Although an Internet user may not see the use of the third-party trademark, the use of the metatag will cause the website to be displayed as a search result when the user runs a query in a search engine, such as Google, for the third-party’s trademark. 

Courts and administrative panels around the world are now forced to deal with the issue of whether or not utilizing a metatag containing a third-party’s trademark constitutes bad faith (in a UDRP proceeding) or trademark infringement when only the Internet user’s computer has “seen” the third party’s trademark and not the actual user. 

In the United Kingdom, in rejecting a lower court’s argument of infringement, Lord Justice Jacob held that, “[a]ssuming metatag use counts as use of a trade mark, there is simply no confusion here.  I confess to not following the [lower court] Judge's reasoning on the point. He said that the 'ultimate purpose [of the metatag] is to use the sign to suggest a connection which does not exist.'  But purpose is irrelevant to trade mark infringement and causing a site to appear in a search result, without more, does not suggest any connection with anyone else.” 

On the other hand, in a 2003 UDRP decision from, the panel held that “[t]he use of the metatags incorporating the Complainant’s trademarks to misleadingly attract persons searching the web for information on Complainant’s products and services to Respondent’s website as opposed to a legitimate complaint website is evidence of use in bad faith.”

In a leading United States 11th Circuit Court of Appeals case, the court relied less on the argument that the use of metatags showed a likelihood of confusion, and more so on the argument that the use of metatags constituted a “use in commerce,” which is also part of the trademark infringement standard.  Because metatags are used primarily to promote a website in the context of a search engine’s rankings, and because the defendant used the plaintiff’s mark in its metatags, the defendant therefore used the plaintiff’s marks abusively in commerce.

Some articles suggest tips for website owners to avoid creating a likelihood of confusion while still utilizing third-party marks.  One suggestion is to “consider including a prominent disclaimer or other wording on the website which makes it clear to web users that the trade marks are the property of the trade mark owner and that the website is not affiliated with, sponsored by or approved by the trade mark owner.”  However, this suggestion would do nothing to avoid initial interest confusion.  Another suggestion is to just avoid third-party trademarks altogether or obtain permission from trademark holders. 

On a related note, courts have relieved the fears of many advertisers and search engine providers by acknowledging the legitimate use of displaying third-party trade marks when Internet users search by those marks.  In 1-800-Contacts, Inc. v. Whenu.com, Inc., a pop-up advertisement case, the 2nd Circuit Court of Appeals held that “[a] company’s internal utilization of a trademark in a way that does not communicate it to the public is analogous to a [sic] individual’s private thoughts about a trademark.  Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of such goods or services.”

For the moment, it seems that pop-up ads are safe from being held liable for trademark infringement in the Second Circuit; however, using another’s trademark to place your website next to theirs may still constitutes an improper use.  Yet the question remains: if your website is competing for customers, isn’t it fair use to identify the competing good or service in this manner?  As with most inquiries into fair use, the answer to this question may differ from case to case. 

In The News

Internet Service Providers Discuss Consumer Privacy on Capitol Hill

Cnet.com, September 25, 2008:  Several of the largest Internet Service Providers (“ISPs”) met with members of Congress about protecting consumer privacy against targeted ad campaigns.  The ISPs urged lawmakers to stay away from stiff regulations on Internet advertising and instead asked them to focus on giving the ISPs a chance to self-regulate.  Gigi Sohn, president of public-interest advocacy group Public Knowledge, outlined measures that ISPs, advertising networks, and search engine companies should be deploying, as the use of targeted online advertising gains favor with advertisers.  In addition, she stressed the importance of ISPs not using deep-packet inspections as a means for targeting consumers.  "Deep-packet inspection is the Internet equivalent of the postal service reading your mail. They might be reading your mail for any number of reasons, but the fact remains that your mail is being read by people whose job it is to deliver it," Sohn said.  Link to Full Story

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