A “metatag” is text inserted into the “head’ or “beginning” of the source code for a web page, which identifies the content of the page.

 Metatags are HTML [Hyper Text Markup Language] code intended to describe the contents of the web site. There are different types of metatags, but those of principal concern to us are the “description” and “key word” metatags.           

Description metatags:   These are intended to describe the web site.

Keyword metatags: These kinds of metatags contain keywords relating to the contents of the web site.

The more often a term appears in the metatags and in the text of the web page, the more likely it is that the web page will be “hit” in a search for that keyword and higher on the list of “hits” the web page will appear.

Thus, a clever web designer can unscrupulously divert business to its site using metatags, which refer to names or trade- or service marks of competitors. This may lead to 'Pagejacking', a practice by which the page's contents, or the metatags and title information of another's web page, are copied and resubmitted to a search engine.

As the use of Internet web sites increases through E-commerce, web site builders and owners need to be aware that their use of another’s trademarks in the “Metatags” for a web site can constitute trademark infringement.

Trademarks owned by others often are inserted in the “Metatags” of a web site merely for the purpose of luring internet users to a particular web site. A user who types in a trademark to get to the web site of the owner of that trademark will discover other web sites due to the fact the trademark is included in the “Meta-tags” of those web sites. Legal issues arise when persons use trademarks owned by others without authorization in the keyword field.

The HTML code used to create a web site has a keyword field that search engines look for when searching for a site. These keywords are known as "Meta-tags" because the HTML code uses the tag "META" to signify the keyword field, as in These META tags are not visible to the user looking at the site.

Web sites add and change trademark use:

Historically, trademark infringement was based on the visual use of a service mark or trademark,. If a competitor used a company's mark in a manner likely to confuse customers and divert business away from the company and to the competitor, the company would take action to protect its trademark. In most instances, the corporate attorney would send a strongly worded "cease-and-desist" letter to the competitor wrongfully using the mark. If the competitor continued to use the mark, the company would then file a lawsuit.

The "invisibility" of metatags put a new wrinkle in determining trademark infringement,. Using a trademark in a metatag (the HTML code that lays out for display a site's content) is an invisible use of the mark. Most Internet search engines hit the metatag field when conducting searches. A Web site may therefore attract hits by placing terms within its metatags, even if such terms are not used in or relevant to the Web site content.

It is interesting to note that the use of trademarks in metatags is interesting because you don’t get to see the mark.

Confusion, or the likelihood of confusing buyers, is the most important issue in determining trademark infringement, whether in Print or on the Web. When courts look at confusion in trademark infringement claims, they review the strength of the mark, the similarity of the marks, the sophistication of buyers, the similarity of the goods, actual confusion, good faith in adopting a trademark, quality of the defendant's products, and other factors

The court found a likelihood of confusion in the Eli Lilly metatag case, the attorney says. The court stated that "Natural Answers' use of 'Prozac' as a metatag ... is evidence of Natural Answers' intent ... and creates a risk of confusion. Natural Answers was clearly using a competitor's trademarked product and was trying to drive customers away from the competitor and trying to create confusion.

The first full UK decision concerning the use of a competitor's trademarks as metatags was given on 20 May 2002. In a case between the recruitment agency group, Reed Executive Plc[1], and the publishing group, Reed Business Information Ltd. (RBI), Pumfrey J held that the use of registered trademarks as metatags on a website could amount to trademark infringement and passing off.

Metatags are words which appear in the HTML code of a website but are not visible to the user. Their main purpose is to provide a list of terms describing the content of a site, enabling search engines to analyze and categorize it. Bristows' website might contain metatags like 'Bristows', 'law' and 'solicitors'. It is easy for metatags to be misused. Using 'David Beckham' as a metatag would no doubt attract far more hits than 'Bristows' - although the click-through rate (the number of users choosing to go through from the search results to Bristows' home page) would be low. However, a football website would probably find using 'David Beckham' in its metatags to be very successful.

Some companies go one step further and use competitors' names in their metatags to divert potential customers who are looking for those competitors' sites.

However, this was not the case in Reed. Both companies traded legitimately under the name 'Reed', one in the field of recruitment consultancy, the other in publishing. Reed Executive had registered the word 'Reed' as a trademark since 1986 for 'employment agency services'. When RBI established a recruitment website, initially to display the jobs sections of its magazine titles, RBI called the website 'totaljobs.com'.

Nevertheless, one of the metatags used for the site was 'Reed Business Information'. Early versions of the site displayed the RBI logo and contained an RBI copyright notice. The entry for totaljobs.com in certain website directories referred to the fact that the site was owned by RBI. In addition, RBI accepted an offer from Yahoo to reserve the word 'Reed'. This meant that if users searched for 'Reed' on the Yahoo search engine, a totaljobs.com banner advertisement would appear alongside their search results.

The judge found that each of these uses of the word 'Reed' in relation to the totaljobs.com website amounted to trademark infringement and passing off. However, RBI had stopped using the metatags in January 2001 and removed all references to RBI from the site by August 2001. The judge doubted whether there were therefore any grounds for an injunction to be granted. It was also not clear whether he would award damages to Reed Executive, although he indicated that he would order RBI to pay its costs. The judge was concerned that there was little evidence as to the impact of the uses which RBI made of the word 'Reed' and, in particular, the fact that Reed Executive's website seemed to be given greater priority in most results when searching against 'Reed jobs'.

The judge felt that it would be an infringing use to include a third party's trademark in metatags even if, when the search results were displayed, it was clear that the site in question had no connection to the trademark owner and the results displayed did not use the trademark. However, the judge had not been addressed by the parties in detail on this issue, which may leave his judgment open to challenge in the future.

The judge commented that he did not find anything 'sinister' in the fake search results used by totaljobs.com as advertising. A search for 'jobs' might trigger a totaljobs.com advertisement which looked like a genuine search result but said, for example: '"JOB" MATCH FOUND - 1 site. "I'm a designer lost in the world of accountancy."' But, while this might be 'a potentially irritating form of advertising', it was not passing off or trademark infringement, because the result was triggered by a search for 'jobs', not for the word 'Reed'.

The only previous UK decision in relation to metatags was Roadtech v Mandata [2000] Ch D, 25 May 2000; [2000] ETMR 970. But in that case, trademark infringement was admitted and the brief judgment was given by a Master, not a judge. Reed makes the position much more clear: the use of metatags and other 'invisible' uses of trademarks can amount to trademark infringement and passing off. However, some areas of the judgment do leave room for dispute, particularly in cases, like this, where there is no real attempt to trade off the reputation or goodwill of the trademark owner.

SALE OF KEYWORDS BY SEARCH ENGINES

A unifying thread in many forms of Web abuse is an attempt to take advantage of the unavoidably automated methods employed by popular search engines to index the Web. Such efforts recognize that popular search engines are the gateway to finding information on the Internet. While users may know a few widely-advertised domain names, such as eBay and Amazon, and bookmark many more, typically when a user is looking for information the only practical entrée is a popular search engine, such as Google or Yahoo. These gatekeepers to the Internet are keenly aware of their market power and have understandably sought to exploit it for commercial advantage.

An obvious way for search engines to generate income is to sell "keywords," such that a search for certain words or word combinations will generate a specific banner advertisement or a "sponsored link." For example, a Denver law firm might purchase the keyword Boolean search (Denver and (law* or attorn*)) such that when any combination of these words or word roots are entered into the search engine, the attorney's advertisement, or a link to a law firm's website, is presented at the top of the search result list. While there is nothing inherently nefarious in this form of advertising, a search for "Moye Giles" which produced a banner advertisement to another law firm would certainly attract the attention of the author.

However, absent confusion as to source, it is doubtful keyword advertising is actionable, and the major websites have taken extra steps to distinguish sponsored links from search results. There is, therefore, to date no definitive rule of law regarding the propriety of keyword advertising, though there has been plenty of legal action. E.g., Playboy Enterprises Enters., Inc. v. Netscape Communications Corp., 55 F. Supp. 2d 1070 (C.D. Cal. 1999), aff'd without op., 202 F.3d 278 (9th Cir. 1999) (keywords "playboy" and "playmate," which produced banner advertising for hard-core pornography sites when entered into search engine, found to be used in generic and trademark sense).

See also Esté Lauder, Inc. v. Fragrance Counter, 1999 U. S. Dist. Lexus 14825 (S.D.N.Y. 1999) (searches for "Esté Lauder" and "Clinique" produced banner advertisement for Fragrance Counter, leading to a competitor's website; banner advertisement actually contained words "Esté Lauder" in large font together with smaller-fonted "Fragrance Counter." Case settled.)

 Litigation in this arena continues. See, e.g., Mark Nutritionals, Inc. v. Overture Services, Inc.,

Civil Action No. SA-02-CA-0086 OG (W.D. Tex. 2002)

(plaintiff alleges search engines are selling keywords "Body Solutions," its trademark, to its competitors and seeks $440 million in damages).

In  Washington Post, et al. v. Gator Corp. (E.D. Va. 2002) (Civil Action No. 02-909-A, July 16, 2002)

(preliminary injunction entered against the Gator Corporation, whose software shadows users' Web movements and launches pop-up, context-sensitive competitive advertising).

ARKODEB SINHA

[P.S: Mr Sinha is a Lawyer practicing in the HIGH COURT AT CALCUTTA and an associate of FOX & MANDAL ]