With the rise in popularity of the Internet and the vast commercial possibilities it offers, competition is fierce to attract Internet users to individual websites. One controversial technique of attracting traffic to one’s website by using others’ trademarks and names is receiving attention from the courts as well.
Upon developing a web page, most companies list the site’s location with search engines. Persons on the Internet utilize search engines to find locations when they are unsure of a website’s exact address. The user simply inputs several key words and the search engine displays sites that contain those words. Brief summaries of keywords known as “meta tags” are used by website developers to identify the content of their website. A meta tag gives specific information, such as keywords or site summaries about a site, which allows users to find locations related to the words used in their search. The meta tags are part of the website code and ordinarily remain invisible to the user. A website author creates sentences or paragraphs as a meta tag to index the site and attract the attention of search engines.
Unfortunately, the information in a meta tag is not always reliable and may not reflect the actual content of the site. The descriptions are usually not checked for accuracy by the search engines. Many companies and individuals have been found to be using meta tags that do not reflect the actual content of their site. Some, without proper authority, blatantly display trademarks owned by others.
The motivation for this practice is simply profits. By using popular trademarks or names in its meta tags, a site can attract thousands of visitors using search engines. Businesses that market competing or related goods may benefit from increased sales and additional public exposure. In addition, websites often contain advertisements and set their rates based on the amount of traffic that their sites receive. By diverting a significant amount of “net traffic” to their sites, advertising revenues increase dramatically. Thus, owners of sites that pirate trademarks may profit handsomely whether or not they increase their direct sales.
Besides any ethical questions that these practices raise, they may cause significant harm to the true owner. First, users trying to find a website may be unsuccessful or become frustrated and give up, thereby depriving the true owner of publicity, potential sales and advertising revenue. Second, consumers may become confused by thinking that the “fake site” is owned by or affiliated with the true owner, thereby resulting in a potential loss of goodwill.
Does this technique constitute trademark infringement or unfair competition? In a recent decision, the U.S. District Court of the Northern District of California issued a preliminary injunction ordering the defendant to stop using plaintiff’s mark, which the defendant had imbedded in its website.1 Based upon a showing that the defendant was using plaintiff’s registered trademark to attract users to its site, the court found that plaintiff was likely to succeed on the merits and had demonstrated irreparable harm. The motion was granted based upon claims of trademark infringement, trademark dilution and unfair competition, including false representation and false designation of origin. Several similar cases have been filed but most are settled prior to any resolution.2
While these practices differ from the typical infringement case, the same issues are usually involved. To establish infringement, a plaintiff must prove that another person is using a mark, symbol or term, in connection with services or goods, that is likely to cause confusion or deceive the public regarding the origin or sponsorship of the goods.3 That a person is making commercial use of another’s mark is unquestioned. Whether this practice creates a substantial likelihood of confusion by the general public is a more complex issue. Differences in the display and labeling of a site might vary the likelihood of confusion substantially. However, logic and notions of fair play may dictate that, at least concerning a registered trademark, the practice itself and not the specific display, should control the analysis.
If confusion is the deciding factor in these cases, developers may begin to place disclaimers on their sites indicating that their organizations do not own the rights to the marks and that they are not affiliated with the true owner. Although this technique might limit actual confusion to the public, it is questionable whether the unaffiliated entity should be allowed to profit in this manner. Net traffic will still be diverted and users will become frustrated in their attempts to find the intended website. As litigation in this area increases, answers to these questions will become clearer.
What is readily apparent is that an owner of a registered mark should protect its rights aggressively. A trademark owner should occasionally perform Internet searches to discover businesses that are using the owner’s mark in this manner. Aside from protecting its reputation among consumers, a trademark owner that fails to protect its rights vigorously may be barred from bringing an action years later.
1 Playboy Enterprises, Inc. v. Calvin Designer Label, No. 97-3204 CAL (N.D. Cal. Sept. 8, 1997).
2 See eg. Insituform Technologies, Inc. et al. v. National Envirotech Group, L.L.C. et al., No. 97-2064 (E.D. La. filed July 1, 1997); Oppedahl & Larson v. Advanced Concepts, No. 97-CV-1592 (D. Colo. filed July 24, 1997).
3 15 U.S.C. 1125(a).