White on White

by Lee Gesmer on September 9, 2008

Meta tags consist of words and phrases that are intended to describe the contents of a website. These descriptions are embedded within the website’s computer code. Although websites do not display their meta tags to visitors, Internet search engines utilize meta tags in various ways. First, when a computer user enters particular terms into an Internet search engine, the engine may rank a webpage that contains the search terms within its meta tags higher in the list of relevant results. Second, when a particular webpage is listed as a relevant search result, the search engine may use the meta tags to provide the searcher a brief description of the web page.

Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1045 (9th Cir. 1999)

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The First Circuit has affirmed a finding of trademark infringement based on the defendant’s use of meta tags to attract potential customers of the plaintiff using search engines to find the plaintiff’s web site. The case is Venture Tape v. McGill tried in U.S. District Court by Judge Morris E. Lasker. The defendant’s actions were described as follows by the First Circuit:

The record contains numerous admissions that meta tags and invisible background text on [defendant’s] website incorporated [plaintiff’s] exact marks. … [Defendant] even admitted that he intentionally used [plaintiff’s] marks for the express purpose of attracting customers …

The background text used by the defendant was “white lettering on a white background screen,” sort of a “poor man’s” meta tag.

If you don’t know what meta tags are, go to any web page, and in your browser click VIEW/PAGE SOURCE (or similar terms, depending on your browser). You’ll see the HTML code for the page, and you’ll see the meta elements in the head section of the document.

<meta http-equiv=“Content-Type” content=“text/html” />

As best I can recall (and determine, based on a quick Westlaw search), this is the first time the First Circuit has ruled on whether the use of meta tags can give rise to trademark infringement. There are technical and legal arguments that can be made against this conclusion, but they were not discussed by the First Circuit. In fact, the First Circuit appeared to assume that the use of meta tags constituted a violation of the Lanham Act, so long as the traditional criteria for trademark infringement were satisfied.

The 11th Circuit gave the meta tag/Lanham Act issue a much more exhaustive treatment earlier this year in North American Medical v. Axiom Worldwide, but still found liability based on the defendants’ placement of meta tags. However, not all courts agree; for cases where liability was not found, see Standard Process, Inc. v. Banks, (E.D. Wis. April 2008); Site Pro-1, Inc. v. Better Metal, (E.D.N.Y. May 2007) and S & L Vitamins, Inc. v. Australian Gold, Inc., (E.D.N.Y. Sept. 2007). For an in depth treatment of this issue see the 2005 Santa Clara Law Review article by Professor Eric Goldman, Deregulating Relevancy in Internet Trademark Law.

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