Metatags and Trademark Law: Continuing Uncertainty


Legal constraints on use of metatags are in a state of confusion. It all started with the Ninth Circuit's infamous opinion in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F3d 1036 (9th Cir 1999), in which the court adopted the controversial doctrine of "initial interest confusion" to support a finding of trademark infringement when a company placed its competitor's trademark in metatags inserted into its Web site. Initial-interest confusion is said to occur when a customer is lured to a product by the similarity of the product's mark to that of a competitor, even if the customer realizes the true source of the goods before any sale is consummated.

The initial-interest confusion doctrine has been controversial generally, and its application to metatags remains uncertain. Although the Brookfield decision was widely criticized as extending trademark law beyond its traditional boundaries, the metatag usage there was "plain vanilla" in that it involved simple use of another company's trademark in the defendant's metatags as a method of luring the plaintiff's potential customers to the defendant's Web site, but where there was no relationship between the companies. In other words, there was no "fair use" argument available to the defendant.

But what about a situation where the defendant is an authorized (or unauthorized) reseller of the plaintiff's products, or where the defendant repairs or services those products, or offers complementary goods? Or what about a situation where the defendant conducts comparative advertising on its Web site, using the plaintiff's trademark? In all of these situations, it is clear that the defendant would be entitled to use the plaintiff's trademark in its advertising, on its Web site or elsewhere, assuming that the particular usage did not imply endorsement by or affiliation with the plaintiff. Can a company safely employ metatags in these situations?

The metatag wars plot thickened considerably when the Seventh Circuit weighed in on this issue recently. The case is Promatek Industries, Ltd. v. Equitrac Corporation, 300 F3d 808 (7th Cir 2002). In this case the court affirmed a preliminary injunction against the defendant's use of a competitor's trademark in its metatags, where the defendant provided maintenance and service on the plaintiff's equipment. The court found that this created initial-interest confusion, citing Brookfield.

What is interesting about Promatek is that the court initially issued its opinion and then later amended it, adding the following footnote:

"It is not the case that trademarks can never appear in metatags, but that they may only do so where a legitimate use of the trademark is being made." (Emphasis in original.)

The court obviously became sensitive to the fact that the language in its original opinion might have been overly broad. The court specifically acknowledged that the defendant "may advertise that it is capable of servicing [the equipment for which the plaintiff held the trademark]. . . It is also free to place comparison claims on its Web site and to include press releases mentioning the litigation between the parties". But the court added: "The problem here is not that Equitrac, which repairs Promatek products, used Promatek's trademark in its metatag, but that it used that trademark in a way calculated to deceive consumers into thinking that Equitrac was Promatek."

The odd thing about this language is that it is not clear from the opinion what the defendant did to "deceive consumers," other than putting the plaintiff's trademark in its site as a metatag-something that it arguably had a right to do as a method describing the contents of its site.

Comment: Until more guidance is issued by the courts, playing the metatag game is not for the faint hearted. Any unauthorized use of a competitor's trademarks in metatags is likely to lead to litigation. And here's another tip: any use of a competitor's trademark in your website itself or in advertising (for instance, for comparative advertising or because you sell or service those products) may not qualify under the fair use doctrine if you use the logo version of the mark. Several courts have held that fair use is limited to minimal use reasonably necessary to communicate your message and that this does not include use of any design or logo mark.

Jere M. Webb

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