United States: Stop Competitors Diverting Web Traffic: How to Prevent Misuse of Your Trademarks

Co-authored by Daniel Binstock

Originally published in International Technology Law Review, June 2001

Metatags are crucial to any internet presence. They are words in the form of HTML tags used to describe the content of a website. Although not readily visible to web surfers, metatags perform an important function by helping search engines analyze which websites should be listed in search results.

The greater the number of times a term appears in metatags and in the text of the webpage itself, the greater the chance that:

a) a search engine will choose that website in its search for the particular word; and

b) the website will be listed higher on the list of search results.

The use of metatags can therefore affect how often a website is accessed on the internet.

It comes as no surprise that unscrupulous traders use others’ trademarks as metatags to trade off of the goodwill of the trademark to attract users to their websites. The resulting lawsuits are the easy metatag cases for courts to decide.

For example, in Niton Corp. v. Radiation Monitoring Devices, Inc. (D. Mass. 1998), the plaintiff and the defendant both manufactured products to detect lead in paint. Although there was no relationship between the parties, the defendant used the metatag ‘The Home Page of [the plaintiff] Niton Corporation, makers of the finest lead, radon, and multi-element detectors.’

An internet search for ‘The Home Page of Niton Corporation’ turned up hits for the defendant’s website as well as the plaintiff’s. The court held that there was sufficient evidence to warrant the issuance of a preliminary injunction on the plaintiff’s claim for trademark infringement. It enjoined the defendant from using its website in a manner likely to suggest that the parties were affiliated or that the defendant manufactured products marketed by the plaintiff.

Similarly, in New York State Society of Certified Public Accountants v. Eric Louis Associates (S.D.N.Y. 1999), the plaintiff, a non-profit organization for certified public accountants, used the trademark ‘NYSSCPA’ and operated a website at ‘www.nysscpa.org’.

The defendant, a personnel placement firm featuring accounting professionals, used not only the domain name ‘www.nysscpa.com’ to identify its website but ‘NYSSCPA’ in its metatags.

The court held that the defendant’s actions constituted both false designation of origin and dilution. In reaching this conclusion, the court noted that ‘many persons searching for [the plaintiff’s] website, but unaware of its precise address, would . . . attempt to access it by typing [the plaintiff’s] NYSSCPA mark into a search engine’.

The more difficult cases are those where the defendant arguably has a legitimate right to use the plaintiff’s trademark in its metatags. These cases generally arise under three scenarios:

a) nominative fair use, where the defendant needs to use the plaintiff’s trademark in its metatags because it accurately advises users that the content of its website has something to do with the plaintiff;

b) descriptive fair use, where the defendant needs to use the plaintiff’s trademark in its ordinary descriptive sense to describe the defendant’s products or services; and

c) legal right to use, the defendant has independent rights in the same trademark for different products or services.

The doctrine of nominative fair use entails a defendant’s use of a plaintiff’s mark to identify the plaintiff’s products or services and/or their relationship to the defendant’s products or services.

To raise this defence successfully, the defendant must show three things:

a) an inability to identify the defendant’s product or service without referring to the plaintiff’s mark;

b) use of only as much of the plaintiff’s mark as necessary to identify the defendant’s product or service; and

c) an absence of conduct by the defendant suggesting endorsement or sponsorship by the plaintiff.

For example, a newspaper conducted a money-making survey encouraging fans of the music group New Kids on the Block to call a 1-900 number to vote for the ‘best kid on the block’. The newspaper could then use the mark ‘New Kids on the Block’ without incurring liability for trademark infringement. There was no other way the newspaper could identify the musical group, it used only what was necessary to describe the group, and it refrained from suggesting any endorsement by the trademark owner. See New Kids on the Block v. News America Publ’g (9th Cir. 1991).

Nominative fair-use cases involving metatags can be divided into five factual scenarios:

a) a formal business relationship exists between the parties;

b) no formal business relationship exists, but the defendant’s business relates to the plaintiff’s trademarked goods or services (retailers for example);

c) a past business relationship existed between the parties;

d) comparative advertising; and

e) criticism websites.

In Trans Union LLC v. Credit Research, Inc. (N.D. Ill. March 26 2001), the plaintiff Trans Union, a leading credit reporting agency, sought a preliminary injunction against two local credit bureaus for misusing the plaintiff’s trademarks on the internet.

The suit resulted from a longstanding service agreement under which the defendants provided local credit information to the plaintiff in exchange for access to the plaintiff’s nation-wide credit database. The plaintiff objected to the defendants’ use of the ‘Trans Union’ name in metatags.

The court denied the plaintiff’s motion for preliminary injunction as to the defendant’s metatag use of the ‘Trans Union’ name because it constituted fair use – that is, it accurately described the defendants’ affiliation with the plaintiff and the availability of products derived from the plaintiff’s database.

Significantly, the defendants used only one ‘Trans Union’ metatag, so it had not engaged in ‘cyber-stuffing, the practice of repeating a term numerous times in a website’s metatags in order to lure the attention of internet search engines’. Moreover, this single ‘Trans Union’ metatag did not misdirect users to the defendants’ sites; the defendants’ sites did not even rank among the top fifty listings when the term ‘Trans Union’ was searched on several popular search engines.

The court in Bernina of America, Inc. v. Fashion Fabrics Int’l, Inc. (N.D. Ill. February 8 2001), agreed with the Trans Union decision conceptually but reached a different result. The defendant, an independent seller of various brands of sewing machines including the plaintiff's Bernina and Bernette machines, used the ‘Bernina' and 'Bernette’ trademarks on its website as a means of promoting and describing the plaintiff's products and as metatags.

In addition, the defendant stated on its site that it knew about all the latest developments regarding the plaintiff's products and manufacturing processes. The plaintiff sought a temporary restraining order, arguing that the defendant’s website was confusing to users.

Although independent dealers can use a manufacturer's trademark to resell the manufacturer’s products, the court noted that they must do so in a way not likely to cause confusion or imply that the reseller is associated with the manufacturer.

The defendant misled consumers into believing that the defendant was affiliated with the plaintiff in two ways:

a) the defendant's representations about its knowledge of the plaintiff's products and manufacturing processes; and

b) the absence of any statements that the defendant was not an authorized dealer of the plaintiff's products.

The plaintiff thus established ‘some likelihood of success' on the merits of its trademark-infringement claim, and the court enjoined the defendant from using the plaintiff's trademarks in any manner on its website. Moreover, because the defendant's website was misleading, the court also enjoined the defendant from using the plaintiff's marks as metatags.

The court noted however, that had the defendant’s website not been confusing to users, an injunction against the defendant's use of plaintiff's marks as metatags:

In contrast, the court in Paccar, Inc. v. Telescan Technologies, L.L.C. (E.D. Mich. 2000), adopted a narrow application of the fair-use doctrine for resellers. The plaintiff owned the 'Peterbilt' and ‘Kenworth' trademarks for trucks.

The defendant, owner of several online truck-locator services, used the plaintiff's trademarks in various ways:

a) in a number of domain names ('peterbilttrucks.com'; ‘peterbiltdealers.com' and ‘kenworthdealers.com' for example);

b) repetitively on its website, including in a background wallpaper that covered the entire webpage; and

c) in its metatags.

The court granted a preliminary injunction against these uses of the plaintiff’s marks. In finding trademark infringement, the court noted that the addition of generic terms such as ‘trucks’ or ‘dealers’ in the defendant’s domain names did not avoid a likelihood of confusion between those names and the plaintiff’s marks.

The court rejected the defendant’s argument that its use of the plaintiff’s trademarks in its domain names was a fair use. The court distinguished use of another’s trademark in domain names from use in advertising.

According to the court, use of a brand of truck in an advertisement conveys the source of the truck, not the seller of the truck. In contrast, use of the brand name in domain names communicates information about the source of the website, not the source of the products being sold on the site.

In finding dilution, the court rejected the defendant’s claim that no dilution or tarnishing occurred because the trucks shown on its websites were manufactured by the plaintiff. The court emphasized that ‘the issue is the website itself, not the trucks’. Because the plaintiff had no control over what messages, goods, or services were associated with the defendant’s websites, ‘it is effectively "at the mercy" of [the defendant].’

The preliminary injunction enjoined the defendant from using the plaintiff’s trademarks in any domain name, in metatags, as the title of a webpage or as a wallpaper background of a webpage.

The injunction did not, however, prohibit the defendant from using the plaintiff’s trademarks on its website in a noninfringing manner. For example, the court suggested that the defendant could use the plaintiff’s trademarks in the postdomain path of a URL (www.telescan.com/peterbilt for example).

Perhaps the court might have also found the defendant’s metatags to be a fair use had it not been for the defendant’s use of the plaintiff’s marks in its domain names and on the website’s wallpaper.

The court in SNA, Inc. v. Array (E.D. Pa. 1999), addressed nominative fair use for a defendant that specialized in helping people assemble the plaintiff’s do-it-yourself kits for an amphibious aircraft called the Seawind. The dispute arose when the defendants began using the domain name ‘seawind.net’ and ‘Seawind’ as a metatag.

In an initial decision, the court issued a preliminary injunction, enjoining the defendants’ use of the ‘seawind.net’ domain name. Even though the content of the defendants’ website was ‘mean-spirited’ so that visitors to the site would not likely believe that it was an SNA-sponsored or approved website, the initial confusion of drawing the viewer to the site was actionable.

In a later decision, after a bench trial, the court permanently enjoined the defendants from using the ‘seawind.net’ domain name and from using ‘Seawind’ as a metatag. It provided that the defendants 'inten[ded] to harm the plaintiffs’ by using ’the plaintiff’s mark . . . to lure internet users to their site instead of [the plaintiffs’] official site’. This is in contrast to the Playboy v. Welles case, where the court found that a former playboy playmate lawfully used Playboy’s trademarks as metatags to index the content of her website.

In fact, this case, Playboy v. Terri Welles (S.D. Cal. 1999) is the leading case on this point . It involved a dispute between the former ‘1981 Playmate of the Year’ Terri Welles, and Playboy Enterprises. Welles established an adult internet website located at ‘terriwelles.com’, on which she promoted herself as ‘Terri Welles - Playmate of the Year 1981.’

Playboy objected to her use of the terms 'Playboy' and 'Playmate' as metatags on the basis of trademark infringement and dilution. The district court denied Playboy’s motion for a preliminary injunction. This was because the defendant's use of the terms ‘Playboy’ and 'Playmate' as metatags legitimately referenced editorial uses of the terms in the text of her website, as well as the subject of her site, namely, her identity as 'Playboy Playmate of the Year 1981'.

The district court later denied Playboy’s motion for summary judgment on the same issue, noting that internet users do not necessarily intend to reach the official Playboy website when entering the terms ’Playboy’ or ‘Playmate’ in a web search. They may merely be searching for the website of a former ’Playboy Playmate of the Year’ whose name they cannot recall.

In Eli Lilly & Co. v. Natural Answers, Inc. (7th Cir. 2000), the defendant sold a herbal alternative to Prozac called Herbrozac. The defendant’s website advertised Herbrozac as ’a powerful, and effective all-natural and herbal formula alternative to the prescription drug Prozac’, and also used the plaintiff’s ’Prozac’ mark in its metatags.

Finding a likelihood of success on the plaintiff’s claims for trademark infringement and dilution, the court enjoined the defendant from using the mark ‘Herbrozac’ in any manner and from using the ‘Prozac’ mark in its metatags.

The district court extensively analyzed the Ninth Circuit's discussion of fair use in Brookfield, including the statement that 'its holding would not prohibit use of another's trademark on a web site or in metatags where the use would be a "fair use" under the Lanham Act, such as in non-deceptive comparative advertising or in a fair description of the site.’

The district court, however, did not specifically analyze whether the defendant's use of 'Prozac' in metatags constituted non-deceptive comparative advertising or a fair description of the site. Instead, it broadly stated that ‘where the person viewing a website may not even see the metatags, it is difficult to see how the use could be fair, except in some unusual situations.'

This case was not one of those ‘unusual situations’ however, given the strength of the plaintiff’s 'Prozac’ mark and the court's finding that the defendant intentionally selected the Herbrozac name to suggest an association with the plaintiff's Prozac products. Perhaps the court would have permitted the Prozac metatags if the defendant adopted a non-infringing trademark for its products and compared them to Prozac products on its website.

The two cases addressing this scenario have both indicated that use of trademarks as metatags in these circumstances is a fair use.

In Bihari v. Gross (S.D.N.Y. 2000), the plaintiff, an interior designer, was engaged in a business dispute with the defendant, a former client. The defendant registered the domain names 'bihari.com' and 'bihariinteriors.com,' and posted websites critical of the plaintiff. The plaintiff filed suit asserting various trademark claims, including violation of the Anti-Cybersquatting Consumer Protection Act (ACPA).

The plaintiff later discovered that the defendant registered the domain names ‘designscam.com' and 'manhattaninteriordesign.com', and posted the same critical websites at those names, which also contained 'Bihari Interiors' as metatags. The plaintiff then sought a preliminary injunction.

The court held that the defendant's use of 'Bihari' in the metatags of its websites was not prohibited by the ACPA because that act covered only domain names. Moreover, the metatags constituted a fair use, as they were used to identify the content of the defendant’s sites—the plaintiff and her business. Accordingly, the court denied the plaintiff's motion.

Another case supporting use of metatags in a critical setting is Bally Total Fitness Holding Corp. v. Faber (C.D. Cal. 1998). The defendant set up a website called 'Bally's Sucks’ that was dedicated to complaints and commentary about the plaintiff's health-club business practices.

Although the defendant did not use the mark ‘Bally' or any 'Bally'-formative marks in its metatags, the court stated in dicta that this use would be permitted. The court explained that if the defendant were prohibited from using the plaintiff's marks as metatags, internet users seeking all available information and commentary about the plaintiff would be unable to locate such material.

Explicitly recognizing the descriptive fair use defence, the Lanham Act prevents trademark registrants from appropriating descriptive terms for their exclusive use.

In the quintessential case involving descriptive fair use, a defendant uses the plaintiff's mark to describe the defendant's products or services. For example, a defendant might use the term 'sweet-tart' to describe its cranberry juice, which tastes both sweet and tart. Such a use was held to constitute a fair use that did not infringe the plaintiff's trademark ‘Sweetarts' used for candy. See Sunmark, Inc. v. Ocean Spray Cranberries, Inc. (7th Cir. 1995).

The doctrine of descriptive fair use can apply in the metatags context. In Brookfield Communications Inc. v. West Coast Entertainment Corp. (9th Cir. 1999), the plaintiff owned the trademark 'Moviebuff' for an online movie database.

The plaintiff objected to the defendant's use of ‘moviebuff.com’ as a domain name for an online movie website and to the use of 'Moviebuff’ in its metatags.

The court first found that the use of 'moviebuff.com' as a domain name caused a greater likelihood of confusion than ‘Moviebuff' as a metatag. Nonetheless, the court stated that even if the defendant used a domain name other than ‘moviebuff.com,' the 'Moviebuff' metatags would still result in initial-interest confusion.

The court compared initial-interest confusion to ‘posting a sign with another's trademark in front of one's store.' Even if users searching for the plaintiff's website mistakenly ended up at the defendant's website – only then realizing that they had not reached the plaintiff's website – they might nonetheless decide to purchase their movies from the defendant.

Because the similarity of the services would motivate visitors to stay at the defendant's website, the court found a likelihood of initial-interest confusion. The court did not, however, restrict the defendant’s right to use ‘Moviebuff’ descriptively. Because ‘movie buff’ is a term used to describe a motion-picture enthusiast, the court drew a distinction between the term ‘moviebuff’ as one word and as two words.

According to the court, the defendant's use of ‘Moviebuff’ as one word in its metatags was infringing because it changed the meaning of the term from describing a motion picture enthusiast to designating the source of the plaintiff’s goods and services. But the court explicitly noted that the defendant was permitted to use ‘movie buff’ in its metatags and on its website as two words, as this constituted a descriptive fair use. Additionally, the court noted that the defendant could use ‘Moviebuff’ as one word on its website so long as it referred to the plaintiff’s – not the defendant’s – services. The court provided the following example of a permissible banner advertisement: ‘Why pay for MovieBuff when you can get the same thing here for FREE?’

The court in Nissan Motor Co. v. Nissan Computer Corp. (9th Cir. December 26 2000), addressed this question. Uzi Nissan used his surname Nissan as a trade name for various businesses since 1980. In 1991, he incorporated the defendant Nissan Computer Corporation. The defendant registered the domain name ‘nissan.com’ in 1994 and ‘nissan.net’ in 1996, and used both names for websites offering computer-related services. In August 1999, the defendant modified its website to include numerous banner advertisements linking to various automobile-related websites.

The plaintiff sought a preliminary injunction to enjoin the defendant from displaying advertisements and links on its websites and to require the defendant to display a disclaimer and link to the plaintiff’s website or, alternatively, to enjoin the defendant from using the domain names pending resolution of the trial. The court held that the defendant's domain names infringed the plaintiff’s federally registered ‘Nissan’ mark.

The court found that:

a) although ‘Nissan’ was a Hebrew and Arabic surname and word, it had acquired secondary meaning and was a strong mark;

b) the goods and services were similar to the extent the defendant posted automobile-related links and advertising on its sites; and

c) although the defendant did not initially register the domain names to confuse consumers, an intent to confuse could be inferred from the defendant’s later inclusion of automobile-related information and a confusingly similar logo.

Although the court entered a preliminary injunction, it did not completely enjoin the defendant’s use of ‘Nissan’. Rather, the court required the defendant to prominently display in the upper portion of the first page of its websites a statement identifying the websites as affiliated with ‘Nissan Computer Corporation,’ and a statement disclaiming affiliation with the plaintiffs and identifying the location of the plaintiff’s website.

The defendant was also enjoined from displaying on its sites any automobile-related information, advertising, or links, including links to automobile-related portions of internet search engines. The court expressly permitted the defendant to continue:

a) conducting and advertising its own computer business under the ’Nissan’ mark;

b) using the word ‘Nissan’ as a metatag; and

c) displaying non-automobile-related third-party ads and links on its websites.

Trademark law has gone far beyond those initial cases that arose from the use of trademarks as domain names. Now the law pervades the use of the internet, for trademarks show up not only in domain names but also in metatags, links, and other internet locations.

Those who use the trademarks of others in metatags must tread cautiously. Trademark owners constantly monitor the internet and act quickly when their marks show up in metatags in a potentially infringing or diluting way. But in that vigilance, the trademark owners must recognize that some trademark uses may be perfectly legitimate. They can avoid costly litigation or enhance the chances of success in litigation by carefully analyzing the nature and extent of use of their marks in metatags in light of the applicable law.

Copyright © 2002 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The information provided in this article is for informational purposes only and is not intended and should not be construed as legal advice. This memorandum may be considered advertising under applicable state laws.