Trademark: Links, Frames, Search Engines And Meta-Tags
- 1 Links
- 2 Frames
- 3 Keyword Advertising
- 4 Meta-Tags
See also copyright issues with linking.
- Links provide part of the perceived “value added” at websites. Links can be internal to a website or external. External links “send” the user’s browser to a separate website.
- Since external links sometimes use a word or even design mark from the linked site or product, some have questioned whether such use creates an actionable likelihood of confusion regarding origin, affiliation, endorsement or sponsorship under Section 43(a) of the Lanham Act.
- Since the factors inherent in the “reasonable likelihood of confusion” test are so factually driven, it is likely some links pose such a risk. As a general proposition, however, it appears that a link that simply uses another’s name, rather than a logo, is understood by the marketplace to mean that a user can find an interesting or informative website at the linked location, rather than any implication about affiliation, endorsement or sponsorship. However, linking “below” another’s home page, or “deep linking,” may raise more difficult issues, as the Ticketmaster v. Tickets.com case illustrates.
- Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661 (E.D. Mich. 2001). Defendant linked from a disparaging website to the Ford website, and Ford sued. The district court stated that linking by using a trademarked domain name in programming code neither constitutes a violation of the Ford trademark nor dilution of the mark. The court further stated that the federal dilution statute was not intended to allow trademark holders to eliminate linking on the Internet simply because the holder did not like the domain name of, or content on, the linking Web page. The court also held that there was no basis for plaintiff’s infringement or unfair competition claims since defendant’s website did not compete with plaintiff in connection with goods or services. This case was distinguished in Nissan Motor Corp. v. Nissan Computer Corp., 2002 U.S. Dist. LEXIS 6365 (C.D. Cal. 2002) on other grounds. See subsection C(5)(c) below).
- Voice-Tel Enters., Inc. v. Joba Inc., No. 1:01 CV 3359 TWT (N.D. Ga. Mar. 31, 2003). Federal trademark dilution law does not provide a cause of action for a tarnishment claim arising from the use of a mark on a website containing a link to a potentially offensive site.
When one site uses frames to juxtapose pages incorporating the trademarks, products, services or content of another’s website, users may be confused regarding the source of the pages or of the goods or services advertised. See also copyright issues with framing.
- Hard Rock Cafe, Int’l, Inc. v. Morton, 1999 U.S. Dist. LEXIS 8340 (S.D.N.Y. 1999). Defendant website sold CDs on a web page that was created by a third party, but framed by the Hard Rock Hotel web page. The court found that a likelihood of confusion arose from framing the website because the distinction between the two sources of material appearing on the screen was not clear to the computer user. “Through framing, the Hard Rock Hotel Mark and the [infringing site] were combined together into a single visual presentation.” Id. at *75. The court did state, however, that framing is a flexible device that in other instances might provide a clear distinction between sources of material.
- See also Washington Post et al. v. Total News, in which TotalNews framed the news pages of plaintiffs' sites in a frameset that contained TotalNews advertising. (settled before decision)
Because advertising has proven a successful online revenue model, the ability to target advertisements based on search terms has become a valuable concern. When courts are faced with claims of trademark infringement arising out of the sale of trademarked keywords, there are ultimately three questions that must be addressed. The first is whether the alleged infringer has made a trademark use of the plaintiff’s mark. The second is whether the use creates a likelihood of confusion. The third, which has yet to be clearly addressed in this context, is whether and when the nominative fair use defense is available.
Before a court reaches the likelihood of confusion analysis, it must first determine whether the alleged infringer “used” the plaintiff’s trademark within the meaning of the Lanham Act. Section 43 of the Lanham Act, which deals with unregistered marks, applies to “any person who, on or in connection with any goods or services…uses in commerce any word, term, name, symbol, or device, or any combination thereof….” Section 32, which applies to registered marks, employs similar language.
Trademark use discussions are not confined to the Internet. See, e.g., Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 626 (6th Cir. 1996)(“the defendants' use of a protected mark or their use of a misleading representation is a prerequisite to the finding of a Lanham Act violation. Absent such a finding, the eight-factor [likelihood of confusion] test…is irrelevant.”)(emphasis in original). Nevertheless, perhaps because the Internet offers advertising possibilities that defy conventional trademark uses, the “trademark use” issue is frequently litigated in the online context.
A small minority maintains that Congress did not intend for trademark use to be a threshold question. See McCarthy § 23:11.50 (2006)(“the Lanham Act nowhere explicitly states that ‘use as a trademark’ is required for an accused use to be an infringement.”). The majority of courts, however, have ruled that trademark use must be established before the court can proceed to the likelihood of confusion analysis. See, e.g., 1-800 Contacts v. WhenU.com, 414 F.3d 400, 412 (2d Cir. 2005)(“‘use’ must be decided as a threshold matter because, while any number of activities may be ‘in commerce’ or create a likelihood of confusion, no such activity is actionable under the Lanham Act absent the ‘use’ of a trademark.”).
As written, sections 43 and 32 create two threshold requirements: (1) that the mark be used “in commerce” as is required for any law passed by Congress under the Commerce Clause; and (2) that the mark be used in connection with the sale of goods or services. Courts have consistently had no trouble applying the first requirement. The second requirement, however, has caused widespread confusion. Some courts have failed to consider the “on or in connection with any goods or services language.” See, e.g., Playboy Enters., Inc. v. Netscape Communications, Corp., 354 F.3d 1020, 1023 n11 (9th Cir. 2001)(finding that the trademark use question was satisfied because “[f]ederal jurisdiction over trademark cases rests on the Commerce Clause, sweeps as broadly as possible, and clearly encompasses the circumstances of this case.”). The Ninth Circuit recently attempted explain the distinction: “‘Use in commerce’ is simply a jurisdictional predicate to any law passed by Congress under the Commerce Clause….[T]he district court should have determined…whether [the defendant’s] use was "in connection with a sale of goods or services" rather than a "use in commerce.” Bosley Medical Institute v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005).
The Second Circuit, in 1-800 Contacts, articulated what is now the prevailing approach to deciding questions of trademark use. Apart from the plain statutory language, the court also looked to the “use in commerce” language of section 1127, which offers a detailed explanation of the ways in which marks can be affixed to products. Most courts have followed the Second Circuit's lead. See, e.g., Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425 (S.D.N.Y. 2006) (citing 1-800 Contacts and adopting the Second Circuit’s reliance on §1127); Edina Realty, Inc. v. TheMLSonline.com, 2006 WL 737064 (D. Minn. 2006)(citing §1127 for its “use in commerce” definition); Buying for the Home, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006)(same).
Courts have consistently held that pop-up advertising programs do not make a trademark use of protected marks. In U-Haul v. WhenU.com, plaintiff U-Haul claimed that defendant WhenU, through its pop-up ad software, committed trademark infringement. U-Haul Int’l, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723 (E.D. Va. 2003). On cross-motions for summary judgment, the court ruled in favor of the defendant, finding that the pop-up ads did not use the plaintiff’s trademarks commerce within the meaning of the Lanham Act. Id. The court offered four reasons for its holding. Id. at 727-28. First, the pop-up ads appeared in a new window. Second, comparative advertising is not a use that violates the Lanham Act. Third, the trademarks were only used internally for a “pure machine-linking function.” Fourth, the user made a conscious decision to install the program and viewing the ad did not prevent the user from accessing the plaintiff’s website. See also Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734, 747 (E.D. Mich. 2003)(finding no infringement where defendant did not use plaintiff's trademarks “to identify goods or services, to indicate any sponsorship or affiliation with the goods or services advertised by WhenU, or to identify the source or origin of any goods or services advertised by WhenU.”).
In 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), the leading circuit court case on the issue, the Second Circuit held that the Lanham Act trademark use requirement does not extend to the triggering of pop-up advertisements. This court rejected the plaintiff’s argument that trademark use occurred simply because the defendant sought to free ride on the plaintiff’s mark. Id. at 410. Drawing an analogy to product placement in retail stores, the court held that no improper use had occurred. Id. at 411.
Many online search engines offer sponsored links that are triggered when a user searches for a particular keyword. A number of trademarks holders have complained that competitors are purchasing their trademarks so the competitors’ webpages can appear as sponsored links when an Internet user searches for the trademark holder’s website.
Most district courts that have visited the issue have held that selling trademarked keywords is a trademark use under the Lanham Act. Government Employees Insurance Co. (“GEICO”) v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004); 800-JR Cigar, Inc. v. GoTo.com, Inc., 437 F. Supp. 2d 273 (D.N.J. 2006); Buying for the Home v. Humble Abode, 459 F. Supp. 2d 310 (D.N.J. 2006); Edina Realty, Inc. v. TheMSLonline.com, 2006 WL 737064 (D. Minn. 2006); J.G. Wentworth, S.S.C. Limited Partnership v. Settlement Funding LLC (“Peachtree”), 2007 WL 30115 (E.D. Pa. 2007).
A strong minority takes the opposing view. Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425 (S.D.N.Y. 2006), Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393 (N.D.N.Y. 2006).
Sale of Trademarked Keywords a Use in Commerce
In one of the first sponsored links cases, GEICO sued Google and other search engines for trademark infringement, claiming that selling keywords for sponsored advertisements constitutes a trademark use. GEICO, 330 F. Supp. 2d at 701. Denying the search engines’ motion to dismiss, the court sided with GEICO. According to the court’s reasoning, the sale of trademarked keywords is a trademark use because the defendants “unlawfully used [GEICO’s] trademarks by allowing advertisers to bid on the trademarks and pay defendants to be linked to the trademarks.”. Id. at 704. The court distinguished the pop-up ad cases as follows: “WhenU allowed advertisers to bid on broad categories of terms that included the trademarks, but did not market the protected marks themselves as keywords to which advertisers could directly purchase rights.” Id.
In Edina Realty, a case involving competing real estate brokerage firms, the defendant purchased several keywords comprised of or containing the plaintiff’s EDINA REALTY trademark from Google and Yahoo!. Edina Realty, 2006 WL 737064 at *2. The court found the sale to be a use in commerce. Recognizing that this type of trademark use is unconventional, the court likened the sale of keywords to the use of trademarks in meta tags, which has been found to be a use in commerce. Id. at *3 (citing Brookfield Communs., Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1064 (9th Cir. 1999)). Notably, the court did not draw a distinction between the point at which the competitor buys the keyword and the point at which the user inputs the keyword and triggers the competitor’s ad. Instead, the court deemed the combination of the two events a “use in commerce.” Id..
In Peachtree, the defendant's use of the plaintiff’s trademarks as meta tags and its purchase of keywords were held to constitute uses in commerce. Peachtree, 2007 WL 30115 at *4. The court focused on the use of the protected mark to trigger the defendant’s advertisements. Id. “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.” Id.
Other courts have also adopted the reasoning in GEICO. See 800-JR Cigar, 437 F. Supp. 2d at 284(holding that, unlike the pop-up ad cases, the sale of trademarked keywords is a public event which implies that the seller has obtained permission from the trademark holder to conduct the auction); Buying for the Home, 459 F. Supp. 2d at 323(“the alleged purchase of the keyword was a commercial transaction that occurred ‘in commerce,’ trading on the value of Plaintiff’s mark.”).
Sale of Trademarked Keywords Not a Use in Commerce
Two district courts have held that the sale of trademarked keywords does not satisfy the trademark use threshold requirement.
In Merck, the owner of the “ZOCOR” mark for cholesterol medication sued Canadian pharmacy operators who had purchased the mark as a keyword for sponsored links on Google and Yahoo!. Merck, 431 F. Supp. 2d at 427. In an earlier opinion, the district court dismissed the plaintiff’s trademark infringement claim. The court had based its ruling on its assumption that “trademark use” is not a threshold question. On a motion for reconsideration, the district court reversed. In changing its mind, the court relied heavily on the Second Circuit’s decision in the 1-800 Contacts case. Id.. As in the pop-up ad cases, the court found that the relevant use was the use of the plaintiff’s trademark to trigger the sponsored ad. Id. at 428. Because this use was completely internal, the court reasoned, there was no source or sponsorship indication as is required by the Lanham Act. Id. Furthermore, the court noted, “keywording is less intrusive than pop-up ads as it involves no aggressive overlaying of an advertisement on top of a trademark owner’s webpage.” Id.
Also relying on the 1-800 Contacts case, the court in Rescuecom explained why it was bound by circuit precedent to hold that there was no trademark use: “to the extent GEICO and Edina Realty base findings of trademark use on allegations of a likelihood of confusion or commercial use of a mark, they are inconsistent with the law of the Second Circuit which specifies that trademark use, in commerce, and likelihood of confusion are three separate elements.” Rescuecom, 456 F. Supp. 2d at 400. The court went on to find that the defendant did not place the plaintiff’s trademark “on any goods, displays, containers, or advertisements” nor did the defendant use the trademarks “in any way that indicates sources or origin.” Id. at 403. Accordingly, the court reasoned, the trademark use requirement was not met and, as a matter of law, there could be no infringement.
The Second Circuit, which is currently reviewing the Rescuecom decision, will be the first federal court of appeals to weigh in on the issue.
Likelihood of Confusion
- Playboy Enters., Inc. v. Netscape Communications, Corp., 55 F. Supp. 2d 1070 (C.D. Cal. 1999). Defendant search engine sold advertising based on searches for two Playboy trademarks, PLAYBOY and PLAYMATE. Thus, a search for “playmate” on the search engine would cause certain paid advertising to appear in addition to the relevant links. Playboy sued. The court found that Playboy was not likely to prevail, since both “playboy” and “playmate” are English language words that are not necessarily affiliated with a particular company. In an interlocutory appeal, the Ninth Circuit affirmed under an abuse of discretion standard but noted that its opinion provided “no guidance as to the appropriate disposition on the merits.” Playboy Enters., Inc. v. Netscape Communications Corp. 1999 U.S. App. LEXIS 30215, at *2 (9th Cir. 1999).
- Google v. American Blinds & Wallpaper Factory, 2005 WL 832398 (N.D. Cal. March 30, 2005) Following Playboy Enters. v. Netscape, the court denied Google's motion to dismiss for failure to state a claim on the grounds that their sale of a search terms to a competitor of plaintiff was not a "use in commerce" under the Lanham Act.
A meta-tag is typically HTML code not visible to the user that is read by Web browsers and search engines and describes the contents of a website or lists keywords relevant to the site. Meta-tags are valuable for ranking websites in results pages of search engines and otherwise directing traffic to a site. A web publisher can use the “keyword” meta-tag to assist search engines in indexing the subject matter of the web page. “Description” meta-tags allow a web publisher to provide a brief summary of a page, which search engines can incorporate into its search results pages. Content marked off by these types of meta-tags generally remains invisible when a page is displayed in a browser window.
Meta-tags and formatting tags serve distinct purposes. Keyword meta-tags are similar in function to the genre headings that one finds on paperback novels. Publishers use these genre headings to indicate to bookstore owners where they should shelve the books so that customers can find the book quickly and easily. Description meta-tags are similar to the teaser plot summaries included on book-jacket flaps. Use of third party trademarks in meta-tags can create conflicts and claims of infringement.
- Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008) (rejecting initial interest confusion, discussing Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006)).
- Finance Express, LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008) (finding initial interest confusion).
- Soilworks, LLC v. Midwest Industrial Supply, Inc., 2008 WL 3286975 (D. Ariz. Aug. 7, 2008) (finding initial interest confusion).
- Cintas Corp. v. Unite Here, 2009 WL 604099 (S.D.N.Y. March 9, 2009) (finding Internet initial interest confusion requires a showing of intentional deception)
- Site Pro-1, Inc. v. Better Metal, LLC, Slip Copy, 2007 WL 1385730, (E.D.N.Y. 2007). The court held that defendant's use of plaintiff's name in metatags did not violate the Lanham Act. The court stated: "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." The court also rejected plaintiff's initial interest confusion claim, affirming (per 1-800-Contacts v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir.2005)) that "use" was a threshold matter without which any further claims could not stand.
- J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007)
- Pop Warner Little Scholars, Inc. v. New Hampshire Youth Football & Spirit Conference, 2006 WL 2591480 (D. N.H. Sept. 11, 2006)
- Tdata, Inc. v. Aircraft Technical Publishers, 2006 WL 181991, (S.D. Ohio Jan. 23, 2006) (Tdata’s use of Aircraft Technical's marks in meta-tags violated the Lanham Act because of likelihood of confusion).
- Bosley Medical Institute, Inc. v. Kremer, 2005 WL 752337 (9th Cir. Apr. 4, 2005)
- Faegre & Benson, LLP v. Purdy, 367 F.Supp.2d 1238 (D.Minn. 2005) (fair use for meta-tags: Defendant "may legitimately use Faegre's trademarks in his meta-tags in order to refer to Faegre and to describe the content of his website.")
- Horphag v. Pellegrini, 337 F.3d 1036 (9th Cir. 2003). Defendant used plaintiff’s trademark in meta-tags on a website through which defendant sold competing products. Affirming the lower court, the Ninth Circuit found that defendant’s use of the trademark did not constitute nominative fair use under the New Kids on the Block test because it created confusion as to sponsorship and attempted to “appropriate the cachet” of plaintiff’s trademark.
- J.K. Harris & Co. v. Kassel, Order Granting Reconsideration, No. 02-0400 CW (N.D. Cal. Mar. 28, 2003). In an order granting reconsideration and amending a previous order granting a preliminary injunction (see J.K. Harris & Co. v. Kassel, 2002 U.S. Dist. LEXIS 7862 (N.D. Cal. 2002)), the court determined that Kassel’s use of plaintiff’s trade name on its website did not constitute trademark infringement or “initial interest confusion.” The use consisted of (1) creating a keyword density using J.K. Harris’s trade name and permutations thereof, (2) creating “header tags” and “underline tags” around sentences that used J.K. Harris’s website, (3) using J.K. Harris’s trade name as a “keyword” in numerous areas of the website, and (4) using various link to websites with information about J.K. Harris. The court held that such use was a permissible “nominative use” under the three-part test in New Kids on the Block (see subsection B(4)(b) above) because the use was (1) intended to criticize plaintiff, which could not be accomplished without using plaintiff’s trade name; (2) limited to a reasonably necessary portion of plaintiff’s trade name (Kassel used only the text of the trade name and not the distinctive font or logo); and (3) not suggestive of sponsorship by plaintiff of Kassel’s services.
- Netbula, LLC v. Distinct Corp., 212 F.R.D. 534 (N.D. Cal. 2003). The court granted leave allowing Distinct to add counterclaims alleging trademark infringement based on Netbula’s use of Distinct’s trade name “Distinct” on its website to publicize the underlying law suit.
- Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808 (7th Cir. 2002). The court upheld a preliminary injunction based upon the use by Equitrac, a servicer of equipment marketed under Promatek’s trademark, of Promatek’s trademark as a meta-tag on its own website. Moreover, the court further extended the injunction to prevent Equitrac from using Promatek’s trademark on its website without linking it to Promatek’s website. Although consumers were only briefly confused by Promatek’s trademark appearing on Equitrac’s website, such confusion resulted in Equitrac reaping the goodwill attributable to the Promatek mark.
- Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Playboy Enterprises, Inc. (PEI) sued Terry Welles, a former Playboy Playmate, alleging that she had infringed PEI’s trademarks by using the terms “Playboy,” “Playmate of the Month,” “Playmate of the Year” and the initials “PMOY” on her website and by including the terms in the site’s hidden text as meta-tags. Affirming the lower court, the Ninth Circuit held that the use of the terms on the website and as meta-tags constituted permissible “nominative use” under the test in New Kids on the Block v. News America Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992). However, the repeated use of “PMOY ‘81” as a background image on the website did infringe PEI’s trademark, as it was not necessary to describe Welles.
- Washingtonpost.Newsweek Interactive Co. v. Gator Corp., Civil Action 02-909-A (E.D. Va. 2002). The court issued an injunction against defendant Gator Corporation, enjoining Gator from displaying its pop-up ads when accessing plaintiffs’ website. Moreover, the court enjoined Gator from infringing plaintiffs’ trademarks by including the trademarks in meta-tags that caused Gator’s pop-up ads to appear on plaintiffs’ website.
- Bernina of Am. Inc. v. Fashion Fabrics Int’l, 57 U.S.P.Q.2d 1881 (N.D. Ill. 2001). The court found that an independent online reseller infringed plaintiff’s trademarks by giving detailed information about the products so as to appear to be an authorized dealer. The court granted a TRO prohibiting defendant from using the trademarks in its website or meta-tags, but noted that (1) defendant could have avoided the TRO by an appropriate disclaimer; and (2) the meta-tags were only improper because the website could lead to consumer confusion. The court concluded that an injunction against the use of plaintiffs’ trademarks only in meta-tags would be improper because such use “merely directs customers to the location where they may purchase genuine branded goods from a reseller that does not hold itself out to be anything but an independent retailer unaffiliated with [plaintiff].” Id. at *8-9.
- Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999). The Ninth Circuit held that the use of a competitor’s trademark in a website’s meta-tags caused “initial interest” confusion. While leaving the door open to fair use, the court found that West Coast was improperly benefiting from the goodwill of Brookfield’s trademark. The court distinguished its holding from that in Playboy v. Welles, where defendant’s use of plaintiff’s mark in her meta-tags was “descriptive” of the content on her site and not likely to cause initial interest confusion.
- Lewis v. Rocky Mountains Internet, No. 96-CV-4693 (D. Colo. Sep. 26, 1997). Colorado Rockies Baseball Club, owner of the trademarks ROCKIES and COLORADO ROCKIES, obtained an injunction limiting defendant from using the domain name ROCKIES.COM to describe its baseball-related website. Recognizing that “Rockies” is a geographically descriptive term, especially in Colorado, the court limited the scope of the injunction to prohibit uses of the term ROCKIES to identify any website, web page or other publication specifically related to baseball. The injunction also prohibited use of the ROCKIES mark in meta-tags and required a disclaimer of any relationship with the Colorado Rockies Baseball Club.
- Playboy Enters., Inc. v. Calvin Design Label, 985 F. Supp. 1220 (N.D. Cal. 1997). The court issued an injunction against website operators who used plaintiff’s registered trademarks PLAYBOY and PLAYMATE in domain names, in website text and in meta-tags designed to cause search engines to direct users to defendant’s sites.