Riddle me this—how can a company be liable for trademark infringement when the infringing material is invisible to a consumer? The answer—by using trademarked phrases in a company’s metatag.

Metatags are HTML codes that describe the content of a particular website. While the metatag is invisible to an individual, it allows a search engine to identify a website. When an individual types a search phrase into Google or a similar search engine, an algorithm determines what webpages the individual is attempting to visit. The more metatags that match the words in the search, the higher the website is listed on the search engine’s results page.

A recent decision of the Federal Court of Canada raised discussions regarding trademark law as it relates to website metatags. The Canadian court found that Canada does not recognize the “initial interest confusion” doctrine—a legal doctrine that finds a defendant liable for trademark infringement even though the consumer’s initial confusion was corrected by the time of purchase—and concluded the use of metatags alone is not trademark infringement.

Conversely, several courts in the United States have adopted the initial interest confusion doctrine and determined the use of trademarked phrases in metatags constitutes trademark infringement. The pivotal case in this regard is a Ninth Circuit case, Brookfield Communications Inc. v. West Coast Entertainment Corp. In Brookfield, an entertainment-industry information provider brought an injunction action against a video rental store chain, West Coast. West Coast used Brookfield’s trademark “MovieBuff” in its metatags. The district court denied the injunction because Brookfield did not establish a likelihood of confusion.

The Court of Appeals reversed the district court’s decision and instructed the district court to grant the preliminary injunction. The court concluded that trademark law bars West Coast from including in its metatags any term confusingly similar with Brookfield’s mark. The court reasoned that using another company’s trademark in one’s metatags is much like posting a sign with another’s trademark in front of one’s store. Customers looking for Brookfield but being directed to West Coast’s website may simply purchase goods from West Coast instead. Consumers are not confused at the time of purchase—they are fully aware that they are shopping at West Coast and have no reason to believe that West Coast is related to Brookfield. Regardless, the fact that there is only initial consumer confusion does not alter the fact that West Coast would be misappropriating Brookfield’s acquired goodwill.

Similarly, the Seventh Circuit in Promatek Indus., Ltd. v. Equitrac Corp. affirmed the district court’s decision to grant a trademark owner a preliminary injunction against a competitor using the mark in its metatags. The court reiterated that what is important to the infringement determination is not the duration of consumer confusion but rather the misappropriation of the trademark owner’s goodwill. Once a competitor uses another’s trademark, the competitor cannot un-ring the bell.

The First Circuit in Venture Tape Corp. v. McGills Glass Warehouse affirmed a jury verdict awarding monetary damages and attorney’s fees. As a consequence for McGills’ use of Venture’s trademark for over three years, McGills was forced to pay Venture over $400,000.

Other American courts have been hesitant to find that the use of trademarked phrases in metatags constitutes trademark infringement. In Southern Snow Mfg. Co. v. Sno Wizard Holdings, Inc., the federal court in the Eastern District of Louisiana ruled in favor of Sno Wizard even though it used Southern Snow’s trademarks in its metatags and appeared ahead of Southern Snow in search results. Without evidence of actual confusion between the companies, the court refused to rule in favor of Southern Snow. Federal district courts in Florida, New York, and Pennsylvania have reached similar results.

In short, the law regarding the use of trademarks in metatags varies across jurisdictions. An American court could find that a company using a competitor’s mark in its metatags constitutes trademark infringement. The initial confusion is enough ammunition for a court to grant a preliminary injunction. A prolonged dispute could result in monetary damages.

If you have any questions or concerns regarding your metatags in terms of trademark infringement, e-mail or call one of the Conway, Olejniczak & Jerry Intellectual Property Team members at (920) 437-0476.

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Law Firm of Conway, Olejniczak & Jerry, S.C.

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