First published in LexisNexis Internet Law Bulletin, June 2008
Your client is a big corporate with a big reputation in the real world — its brand is very valuable. It doesn't need to rely on website optimisation to attract new customers.
Its trading name is a registered trade mark and is frequently used by its competitors when meta tagging their own websites. The effect of this is has been (though it is becoming less significant as search engine technology becomes more sophisticated), that when somebody searches your client's trading name, search engines such as Google will include competitors' sites in the search results, with the possibility that searchers (among them potential new customers) will be effectively diverted to the competitors' offerings.
Your client's trademark is being used as a keyword trigger
More importantly, your client's trademark is being used as a keyword trigger in the competitors' paid advertising, like Google AdWords, with the effect that the competitors' sites come up in the 'sponsored links' in the search results.
While not wanting or needing to engage in a similar practice, your client is put out by this. In fact, that is an understatement. In any real-world scenario where a third party (particularly a competitor) wants to ramp up their business by using your client's valuable intellectual property, such as its registered trading name, it would be doing it only with the consent of your client, and paying handsome licence fees or royalties for the privilege.
Your client's reputation, after all, has been built up over years of hard work and the idea that just because it is the world wide web someone else can piggyback on it is galling, to say the least. Surely, your client says, this conduct is an infringement of our trade mark or some other legal requirement and can be stopped? After all, this practice has been around now for nearly as long as the internet, well over a decade – surely I'm not the first one to complain? This article attempts to answer that question in light of current cases.
What are meta tags and keyword triggers?
Meta tags are HTML source code behind the user interface on a web page. They contain various pieces of information about the page. These may be keywords but can also include descriptions of the page and ratings.
Meta tags are invisible, unless you deliberately choose to view them by selecting 'source' or 'page source' from the view menu on a webpage. But the meta tag is what search engines have used in the past to select particular web pages in response to a user's search request. Use of meta tags, and keyword triggers in paid advertising, will determine whether that web page will be brought up in the list of results for the search of the tagged word or phrase.
Not use 'as a trade mark'
Meta tags are therefore not, in the trade mark sense, being used use as a badge of origin of the goods. In other words there is no 'use as a trade mark' such as would found an action for infringement of a registered trade mark under the Trade Marks Act 1995 (Cth) (assuming your client's trade name is a registered trade mark, of course).
The current position under UK trade mark legislation would seem to be the same in that, despite some early cases in which the practice was viewed as trade mark infringement1, it has been suggested by the full Court of Appeal in Reed2 as possibly not being a use 'in the course of trade' as the legislation requires because of the invisibility of the tags themselves, though the court reserved its opinion on this point.
In that case it was necessary for the claimant, if it was to succeed, to also show user confusion had been caused, because the phrase used as a meta tag was not identical to the claimant's tag (and was in fact a trading name of the respondent). The trial judge's finding of infringement was overturned because 'causing a site to appear in a search result, without more, does not suggest any connection with anyone else'3 and will not confuse users because they expect the results of their web searches to be littered with rubbish results. The court further stressed that the intent of the tagger is irrelevant in the context of trade mark infringement.
The momentary confusion and uncertainty in the mind of the consumer that this practice in its simplest form creates, is traditionally not sufficient to found a claim in what is, after all, a tort. For a claim in passing off to have any chance of success, claimants are required to prove that users have been deceived into thinking that the two competitors are connected, or at least that the alleged wrongdoer deliberately set out to mislead, deceive or cause confusion in the mind of the user, even if confusion was dispelled when the user eventually realised that he or she has accessed the competitor's website instead.
In Reed4, the first instance finding of passing off was overturned on appeal because 'No-one is likely to be misled — there is no misrepresentation'5. It was noted in the judgment that the respondent's website (which had a completely different name to the complainant's), came up below the complainant's in the search results.
Trade practices to the rescue?
If a user is directed to a competitor's web page by the use of your client's trade mark, is this misleading and deceptive conduct such as would found an action under the Trade Practices Act 1974 (Cth) (the TPA)?
The answer to this will almost certainly depend on the particular facts and circumstances of your client's case.
If, for example, the meta tag used is a trading name, and all that is achieved by the use of the meta tag is that a competitor's website comes up in a list of search results, including your client's site, then it is hard to say that the user has been misled, especially if the competitor's website is clearly marked as such.
If, on the other hand, the search results are not clear in that regard, but the competitor's listing in the results somehow suggests a connection between the competitor's listing and your client or your client's website, this is akin to the competitor hanging your client's shop front sign out the front of its online business, and as such is not only sharp practice, but amounts to engaging in misleading and deceptive conduct and making false or misleading representations in contravention of ss 52 and 53 of the TPA.
The deception has to be fairly convincing as it has often been held that a reasonable web user will not normally treat the results of a web search with any particular reliability.6
Using a product or service name as a meta tag, another common practice, is also likely to be similarly unlawful if the product or service is not actually available through the competitor's website or business, but the results suggest that it is.
The fact that the user often quickly overcomes their confusion and does not end up dealing with the competitor is not a defence for the competitor in these circumstances.7 It is well established that transitory effects do not affect the fact that the conduct is misleading and will only be relevant in considering whether or not an injunction should be granted.8
It has been suggested that the requirement for the conduct to be 'in trade or commerce' may defeat such claims, but as the use of meta tags is a marketing activity it seems to have the requisite trading or commercial character to fulfil this requirement. To suggest the use of meta tags is not conduct in trade or commerce is to fail to recognise its importance to the overall marketing strategy of the businesses that use it.
It may be a form of unpaid advertising, but is of no less significance than spam, or other direct marketing practices, and in some businesses is much more so, particularly in start-up situations where there is no access to an existing mailing list. As for it being 'unpaid', this certainly does not mean there are no resources allocated to it. On the contrary, search engine optimisation, including meta tagging, is often outsourced to specialists and the appropriate fees paid. In some businesses it may be undertaken in-house utilising dedicated staff.
The major issue for complainants to overcome in making out a misleading and deceptive conduct claim will be the substantive one of whether in fact the overall effect of the conduct is, or is likely to, mislead or deceive.
It is submitted that in this way the TPA will allow complainants to address the truly unlawful instances of this conduct (those that are likely to confuse consumers), while not outlawing those that result in the user simply being provided with more information about the market allowing comparisons to be more easily made between competitors.
Australian case study - Kailash Center for Personal Development Inc v Yoga Magik Pty Ltd
Legal precedent in Australia is thin on the ground, but it is interesting to note that in one case, Kailash Center for Personal Development Inc v Yoga Magik Pty Ltd, 9 where the owners of a website (Yoga Magik Pty Ltd and Meghan Stevens aka Gayenand) were found to have engaged in misleading and deceptive conduct in associating a third party (Jonn Mumford aka Swami Anandakapila Saraswati) with their website and the material on it.
In its final claim at the hearing the claimant did not specifically seek, and accordingly the relief ordered did not include changing the meta tags on the website so that they no longer contained Mumford's name. This was because by the time of the hearing this had already been done. The respondent had, in the period leading up to the hearing, agreed to 'remove "offending" meta tags' as part of an attempt at 'accommodating the demands of the applicants'.10
It is interesting that the meta tags aspect of the claim (which was but one of many) was recognised by the respondent as being something that she was prepared to address before the hearing.
Do those who engage in this practice recognise it as a short-term game, one which they will readily forfeit at the first sign of trouble?
The author's personal experience bears this out. I was asked to demand on behalf of a client that a website owner change their meta tagging, and found they had done so before I had the chance to send a letter of demand. This was done apparently on the strength of my client's earlier email to the website owner.
Contrast the US position
The US has been a fertile source of case law on this subject since the late 90s owing to the Lanham (Trade mark) Act (15 USC) (the Lanham Act) and what has become known as its statutory unfair competition provisions. The doctrine of initial interest confusion developed in these cases has allowed claimants to make out a prime facie case even where confusion was transitory only, though in some cases defendants have been successful in claiming fair use in their defence, where the claim was based on the trade mark infringement section of the Lanham Act.11
Section 1125 of the Lanham Act on the other hand, while it is part of a trade marks statute, to Australian eyes blends elements of ss 52 and 53 of our Trade Practices Act in a provision that prohibits the use of 'any word, term, name, symbol or device, or any combination thereof' which is likely to cause confusion as to the origin of the goods or services, or misrepresent the 'nature, characteristics, qualities or geographic origin' of the goods or services.
This section has, not surprisingly, provided a cause of action for complainants in cases where confusion is likely to arise through a party's conduct even though the elements of trade mark infringement have not been made out.
That part of the section that contains the wording giving rise to the statutoryright of civil action does not even mention trade marks. This section has been described as providing a statutory right to claim unfair competition, but it is really a much narrower remedy, relying on either confusion or misrepresentation in commerce in connection with goods and services. In other words, it is a remedy that is more akin to ss 52 and 53 of the Australian TPA than anything in the Australian trade mark law, but in fact much more prescriptive than TPA remedies.
It does appear that the US law has provided stronger protection for owners of trade names in this area over the years, but it is submitted that the existence of the TPA remedies obviates the need for Australian trade mark reform along the lines of the US trade mark legislation, particularly given the declining significance of meta tags in recent years to the way in which search engines operate.
There is no doubt that in the process of legitimate comparative advertising the addition of meta tags to a web page referring to the competitor who is being compared to a web page is unassailable under our trade marks law12 but if the content of the comparison is deleted from the web page, it is surely illegitimate to retain the meta tags.
If the remedy is not to be found under trade marks law, it is likely that the failure to remove the tags will qualify as unlawful misleading and deceptive conduct, depending of course on the overall effect of the conduct, as discussed above.
As usual, just when the law finally starts to catch up, the use of meta tags for search engine optimisation starts to wane as search engines develop different methods of searching for and ranking search results.
However, the concepts discussed in this article may continue to be instructive when applied to meta data generally. The interactivity of modern web-based applications is giving rise to more and more services that allow subscribers to upload information onto a profile or portfolio which can then be utilised by others who are searching the site, looking to procure goods or services. 'Utilising' in this sense does not mean looking at the profile, as the full profile may be in the form of meta data, and therefore invisible to the user.
The user enters a search term, for example the name of a product or service, and because of terms that the subscriber included in the profile, is directed to a brief entry and a link to the subscriber. The use of product names as part of the profile by the subscriber in this context where the subscriber does not in fact supply those products must qualify as misleading and deceptive conduct, (if not a false and misleading representation such as would found an action under s 53 of the TPA).
To suggest that this type of conduct is acceptable because the average web user knows you can't trust search results on the internet13 is to settle for mediocrity and a lack of integrity in terms of the internet where the importance of the medium to commerce demands that the same standards be applied to it as are applied in the tangible world of business.
This article has so far focused on unsponsored links, or 'organic' search results. A recent court settlement suggests that a quick look at sponsored links might be warranted.
Recently, (8 April 2008) Telstra admitted to misleading and deceptive conduct in its Trading Post business organising sponsored links via Google. The background to this litigation is neatly summarised in the ACCC's press release when it launched the case in mid - 2007:
'The ACCC is alleging that Trading Post contravened sections 52 and 53(d) of the Trade Practices Act 1974 in 2005 when the business names 'Kloster Ford' and 'Charlestown Toyota' appeared in the title of Google sponsored links to Trading Post's website. Kloster Ford and Charlestown Toyota are Newcastle car dealerships that compete against Trading Post in automotive sales.
The ACCC is also alleging that Google, by causing the Kloster Ford and Charlestown Toyota links to be published on its website, engaged in misleading and deceptive conduct in breach of section 52 of the Act.
Further, the ACCC is alleging that Google, by failing to adequately distinguish sponsored links from 'organic' search results, has engaged and continues to engage in misleading and deceptive conduct in breach of section 52 of the Act.'
Google maintains that the ACCC's claims against it in this litigation are without merit and will continue to defend them vigorously.
Where Trading Post went wrong, of course, is that the relevant trading names appeared in the headlines of the sponsored links, not just in the 'invisible' keyword triggers.
Google has long had a policy in many countries (including Australia) of investigating trade mark complaints by registered owners and if upheld, disabling the relevant keyword triggers from the ads complained of, but it will not review keyword triggers in the US and Canada, and has recently extended the US and Canada policy to the UK and Ireland.14
This policy change appears to be a reaction to the 'Mr Spicy' case recently decided by the English High Court15 in which it was held that Yahoo had not infringed the claimant's registered trade mark Mr Spicy by allowing a search for 'Mr Spicy' to produce sponsored links to two supermarkets. In that case the keyword used was actually 'spicy' but the Court held that Yahoo was not using the mark in the relevant sense and even if it had been, the trade mark owner's interests were not being affected in the relevant way to support a trade mark infringement. Note the search results did not refer at all to the claimant's business or products.
As part of the policy change, previously disabled keywords in the UK and Ireland will be reinstated (effective 5 May 2008). Google will, however, still investigate complaints against trademark use in ad text (as opposed to keywords) in all these jurisdictions.
Traders who have developed a business reputation, whether in the traditional business world or online, should be able to stop incidences of meta tagging where it infringes the consumer protection provisions of the TPA. If the result produced does not and is not likely to confuse the user, but merely provides them with an alternative source of the goods and/or services to consider, this is something that the trader with the established brand might just have to put up with, whether or not the tags used are registered trade marks.
In paid advertising, such as Google AdWords, the aggrieved trader can still (except in the US, Canada, the UK and Ireland) lodge a trade mark complaint with Google in respect of keywords that are trade marks.
Finally, it is interesting to note that Google itself advises that, apart from paid advertising, 'the best way to ensure a results listing on Google is for many other sites to link to you'. This has become the focus of those wishing to optimise organic search results, rather than relying on meta tagging.
1 Reed Executive Plc v Reed Solutions Plc  EWHC 1015
2 Reed Executive Plc v Reed Business Information Ltd  EWCA Civ 159.
3 Above at .
5 Above, at .
7 ACCC v Telstra Corp Ltd  FCA 987; BC200404708 .
8 United Telecasters Sydney Limited v Pan Hotels International Ltd (1978) ATPR 40-085.
9  FCA 536; BC200302768.
10 Above, paragraph 36.
11 Lanham (Trademark) Act (15 USC) s 1114.
12 Trade Marks Act 1995 (Cth) s 122(d).
13 Above n 2.
15 Victor Andrew Wilson v Yahoo! UK Ltd and Overture Services Ltd  EWHC 361 (Ch.) 68
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.