Callahan McCune & Willis APLC | METATAG CYBERTHEFT

Not only the business of our clients, but also our own profession, is rapidly becoming "wired." According to an Associated Press release of February 19, 2001, the Internet was used by more than half of the U.S. adult population last year as some 16 million new users ventured online in the last six months. "As more people go online, the value of being online increases," said Lee Rainie, the director of the Pew Internet and American Life Project, which has been tracking Internet usage and habits since March of last year. However, that value can be diluted if searchers are being deliberately diverted from your web site by the unauthorized use of your name or mark.

When a potential customer of one of your clients is searching for a product or service, or for that matter, when a potential client of yours goes online looking for a lawyer, exactly how do they get to a particular web site? Therein lies the subject of this paper, which will also discuss the holding of Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir., April 22, 1999). That extremely informative and well-written decision held that the defendant's use of a "mark" that was confusingly similar to the plaintiff's trademark in web site metatags, which are a type of Hypertext Markup Language (HTML) code that is used by search engines but not visible to web users, is actionable as a trademark infringement under the Lanham Act, since the use of metatags can create "initial interest confusion" in the mind of a potential consumer. Parenthetically, in this article the generic term "mark" will be used to describe both a "trademark" and a "service mark," since both are simply a word, phrase, symbol or design, or combination thereof, used to distinguish the source of goods or services. The only difference in the two terms is that the less familiar term "service mark" distinguishes the source of a service instead of a product, and appears in advertising for the service rather than being affixed to the product or its packaging.

How do you know if your mark (or your client's) is being "infringed" (misused)? It's really fairly simple to find out if you have a potential metatag violation: Start by making a list of your competitors. Pull up their web sites. After one appears on your screen, take your mouse and press the right click button once to pull up a menu. Scroll down to View Source, click left mouse button once and it will pull up the various metatags. If your "trademarked" name, or that of your client's, is listed, you have a clear violation.

The Brookfield decision, authored by Justice Diarmuid F. O'Scannlain, is an interesting and informative read despite its 31-page length. We can do no better than quote Justice O'Scannlain's preliminary explanation of the technical matters: "We must venture into cyberspace to determine whether federal trademark and unfair competition laws prohibit a video rental store chain from using an entertainment-industry information provider's trademark in the domain name of its web site and in its web site's metatags. 174 F.3d at 1041.
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To resolve the legal issues before us, we must first understand the basics of the Internet and the World Wide Web. Because we will be delving into technical corners of the Internet--dealing with features such as domain names and metatags -- we explain in some detail what all these things are and provide a general overview of the relevant technology.

The Internet is a global network of interconnected computers which allows individuals and organizations around the world to communicate and to share information with one another. The Web, a collection of information resources contained in documents located on individual computers around the world, is the most widely used and fastest-growing part of the Internet except perhaps for electronic mail ("e-mail"). With the Web becoming an important mechanism for commerce, see Reno v. ACLU, 521 U.S. 844 (1997) (citation omitted) (citing an estimate that over 200 million people will use the Internet in 1999), companies are racing to stake out their place in cyberspace. Prevalent on the Web are multimedia "web pages" -- computer data files written in Hypertext Markup Language ("HTML") -- which contain information such as text, pictures, sounds, audio and video recordings, and links to other web pages. (Citation omitted).

Each web page has a corresponding domain address, which is an identifier somewhat analogous to a telephone number or street address. Domain names consist of a second-level domain -- simply a term or series of terms (e.g., westcoastvideo) -- followed by a top-level domain, many of which describe the nature of the enterprise. Top-level domains include ".com" (commercial), ".edu" (educational), ".org" (non-profit and miscellaneous organizations, ".gov" (government), ".net" (networking provider), and ".mil" (military). (Citation omitted) Commercial entities generally use the ".com" top-level domain, which also serves as a catchall top-level domain. See id. To obtain a domain name, an individual or entity files an application with Network Solutions listing the domain name the applicant wants. Because each web page must have a unique domain name, Network Solutions checks to see whether the requested domain name has already been assigned to someone else. If so, the applicant must choose a different domain name. Other than requiring an applicant to make certain representations, Network Solutions does not make an independent determination about a registrant's right to use a particular domain name. (Citation omitted).

Using a Web browser, such as Netscape's Navigator or Microsoft's Internet Explorer, a cyber "surfer" may navigate the Web -- searching for, communicating with, and retrieving information from various web sites. (Citation omitted). A specific web site is most easily located by using its domain name. (Citation omitted) Upon entering a domain name into the web browser, the corresponding web site will quickly appear on the computer screen. Sometimes, however, a Web surfer will not know the domain name of the site he is looking for, whereupon he has two principal options: trying to guess the domain name or seeking the assistance of an Internet "search engine."

Oftentimes, an Internet user will begin by hazarding a guess at the domain name, especially if there is an obvious domain name to try. Web users often assume, as a rule of thumb, that the domain name of a particular company will be the company name followed by ".com." (Citations omitted) For example, one looking for Kraft Foods, Inc. might try "kraftfoods.com," and indeed this web site contains information on Kraft's many food products. Sometimes, a trademark is better known than the company itself, in which case a Web surfer may assume that the domain address will be " 'trademark'.com." See Panavision, 141 F.3d at 1327, Beverly v. Network Solutions, Inc., No. 98-0337, 1998 WL 320829, at *1 (N.D. Cal. June 12, 1998) ("Companies attempt to make the search for their web site as easy as possible. They do so by using a corporate name, trademark or service mark as their web site address."). One interested in today's news would do well visiting "usatoday.com," which features, as one would expect, breaking stories from Gannett's USA Today. Guessing domain names, however, is not a risk-free activity. The Web surfer who assumes that "X.com" will always correspond to the web site of Company X or trademark X will, however, sometimes be misled. One looking for the latest information on Panavision, International, L.P. would sensibly try "panavision.com." Until recently, the Web surfer would have instead found a web site owned by Dennis Toeppen featuring photographs of the City of Pana, Illinois. (Citation omitted.) Having registered several domain manes that logically would have corresponded to the web sites of major companies such as Panavision, Delta Airlines, Neiman Marcus, Lufthansa, Toeppen sought to sell "panavision.com" to Panavision, which gives one a taste of some of the trademark issues that have arisen in cyberspace. (Citation omitted.)

A web surfer's second option when he does not know the domain name is to utilize an Internet search engine, such as Yahoo, Altavista, or Lycos. (Citations omitted.) When a keyword is entered, the search engine processes it through a self-created index of web sites to generate a (sometimes long) list relating to the entered keyword. Each search engine uses its own algorithm to arrange indexed materials in sequence, so the list of web sites that any particular set of keywords will bring up may differ depending on the search engine used. (Citations omitted.) Search engines look for keywords in places such as domain names, actual test on the web page, and metatags. Metatags are HTML 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 "keyword" metatags. The description metatags are intended to describe the web site; the keyword metatags, at least in theory, 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 the higher on the list of "hits" the web page will appear. (Citation omitted.)

Justice O'Scannlain then engages in an accurate, comprehensive and entertaining discussion of various intellectual property issues and doctrines, including the "prior use" by both plaintiff and defendant of very similar marks, pointing out that the plaintiff's registration at the federal Patent and Trade Office (PTO) constitutes prima facia evidence of validity of a registered mark and of a resulting exclusive right to use it (USC §1057(b) and §1115(a)) but going on to correctly point out that §43(a) of the Lanham Act protects against infringement of unregistered marks and trade dress as well as registered marks. 174 F.3d at 1047, fn. 8. More germane to this paper, however, he also states that "[T]o acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services." He then discusses the concepts of prior use and "tacking," and disposes of the defendant's ingenious argument that it "used" the disputed designation in its e-mail correspondence and points out that "the core element of trademark infringement is the likelihood of confusion, i.e., whether the similarity of the marks is likely to confuse customers about the source of the products," citing Official Airline Guides, 6 F.3d at 1391 and a number of additional cases, referring to the 8-factor test for likelihood of confusion that is sometimes referred to as the "Sleek Craft factors," based on the leading case of the same name which is found at 599 F.2d at 348-49. (174 F.3d at 1054)

The plaintiff entertainment information provider requested a preliminary injunction to enjoin the defendant video rental store from using its "movieBuff" trademark in metatags and "buried code," although footnote 23 points out that the plaintiff Brookfield never explained what it meant by "buried code." A leading text, 3 McCarthy on Trademarks and Unfair Competition, §25:69 (4th Ed. 1998), explains that the phrase is just another term for the HTML code that is used by search engines but is not visible to users. The defendant's web site was at "moviebuff.com" since it had earlier registration on "The Movie Buff's Movie Store."

Justice O'Scannlain makes the initial point that at first blush the issue would seem to be clear since all eight likelihood of confusion factors (with the possible exception of purchaser care) apply as they did in the analysis of the use of the domain name. However, in the context of metatags, there is a smaller chance of resulting confusion. When the user inputs the phrase in question into an Internet search engine, web sites will be found. If the web site initially produced is your own or that of your client, then there's no chance of initial confusion with the competitor. However, the use of your protected mark by a competitor in its metatag list can result in "initial interest confusion" in that a customer may simply choose to use the competitor's web site (and product) if it pops up on his or her screen first. Thus your competitor is using your mark to divert people to its web site, and thereby improperly benefiting from the good will that you or your clients have developed in its mark. "Recently…we explicitly recognized that the use of another's trademark in a manner calculated 'to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may still be an infringement'." Dr. Seuss, 109 F.3d at 1405 (citing Mobile Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 257-58 (2nd Cir., 1987). (174 F.3d at 1062)

"Using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store. Suppose West Coast's competitor (let's call it "Blockbuster") puts up a billboard on a highway reading -- "West Coast Video: 2 miles ahead at Exit 7" -- where West Coast is really located at Exit 8, but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill. See Blockbuster, 869 F.Supp. at 513 (finding trademark infringement where the defendant, a video rental store, attracted customers' initial interest by using a sign confusingly to its competitors even though confusion would end long before the point of sale or rental); see also Dr. Seuss, 109 F.3d at 1405; Mobile Oil, 818 F.2d at 260; Green Prods., 992 F.Supp. at 1076." (174 F.3d at 1064)

Brookfield refers to the few cases that have considered whether the use of another's trademark in one's metatags constitutes trademark infringement, citing in support of its decision Playboy Enters. v. Asia Focus Int'l, Inc. #CIV.A.97-734-A, 1998 WL 724000 at *3, *6-*7 (E.D. Va Apr. 10, 1998); Playboy Enters. v. Calvin Designer Label 985 F.Supp. 1220, 1221 (N.D. Cal. 1997); Brookfield also refers to "a metatags case with an interesting twist," a district court in Massachusetts which enjoined the use of metatags in a manner that resulted in initial interest confusion. The defendant in that case did not simply use the plaintiff competitor's trademark in its metatags, but rather directly copied the plaintiff competitor's web site's metatags and HTML code, so that whenever a search performed on an Internet engine listed the plaintiff's web site, it also listed the defendant's site. The decision was not founded on the concept of initial consumer confusion, but the court made it clear that its preliminary injunction was based on the fact that the defendant was purposefully diverting people looking for its competitor to its own web site.

The court makes a point of drawing a distinction between its holding and that of Holiday Inns, (86 F.3d at 622 (holding that the use of "1-800-405-4329" - which is the equivalent to "1-800-H[o]LIDAY" - did not infringe Holiday Inns' trademark, "1-800-HOLIDAY") wherein the Sixth Circuit held that there was no trademark infringement simply because an alleged infringer took advantage of a situation in which confusion was likely to exist, and did not affirmatively act to create that consumer confusion. In Brookfield, the defendant was not merely a passive figure but rather had acted affirmatively in placing Brookfield's trademark in the metatags of its web site, thereby creating the initial interest confusion.

Justice O'Scannlain then discussed the "fair use doctrine" but demonstrates a sophisticated knowledge of web use by pointing out that there is a critical difference between the term "movie buff," commonly used in the English language to describe a movie devotee, versus "moviebuff," which is not in the dictionary and has not been used in any published federal or state court opinion, but rather is employed in that context (with no space between the two words), only by the plaintiff to refer to its products and services. The defendant would be allowed to use the term "moviebuff," as long as it is legitimately used to describe the plaintiff's product, as in a price or quality comparison.

There are of course various types of trademarks, the most common being the federally-registered trademark, but there are also state-registered trademarks and common law trademarks (a mark that is used but not necessarily registered). It should be noted that the Lanham Act also prohibits "common-law unfair competition," or "palming off," a false designation of origin which often overlaps with infringement of a registered trademark.

"Trademark" is defined at 15 USC §1127 as "any word, name, symbol, or device, or any combination thereof" adopted and used by a manufacturer or merchant to identify his or her goods and distinguish them from those manufactured or sold by others. For a word, name, symbol or device to serve as a mark used on commerce, it must somehow be placed on the goods, containers or displays associated with the goods, or on some labels or tags affixed to the goods. Therefore, the use of the word, name, symbol or device in literature or advertising, or some other writing not directly connected or associated with the goods does not constitute a trademark under the Lanham Act.

A "certification mark" is a mark used upon, or in connect with, the products or services of one or more persons, other than the owner of the mark, to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of the goods or services or to certify that the work or labor on the goods or services was performed by members of a union or other organization - basically a "seal of approval."

Early in the development of intellectual property law, a distinction was made between fanciful or arbitrary trademarks as opposed to those that are descriptive of the goods. The former might be the trademark "Kodak," which is a word that has no meaning other than to serve as a trademark. It does not describe anything in any language, and such a mark is entitled to the maximum protection under the law. An arbitrary trademark, on the other hand, is a word that is in normal usage but is used in an unrelated sense, such as "apple" to describe a computer. In a developing area of the law, the owner of such an exclusive right for a computer might not be able to block the use of the mark for goods of a type that are not typically associated with computers, such as T-shirts. Therefore, in theory at least, different trademark owners can use the same or similar trademarks in connect with very different products. We are seeing a tendency now, however, for companies with trademarks to go into very different but clearly connected and cross-advertised items, such as the Eddie Bauer clothing line advertising automobiles and visa versa. And virtually every product and/or service appears on baseball caps and T-shirts, generating sometimes startling amounts of revenue.

The PTO web site gives a good bit of information about establishing trademark rights, the filing procedure itself, fees, searching for conflicting marks and points out that anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not in fact turn out to be valid. The registration symbol, ® may only be used when the mark is in fact registered with the PTO.

The California state registration of trademarks and service marks is addressed at California Business and Professions Code §14200 et seq., but is also discussed on the state's web site (http:\\www.ss.ca.gov\business\ts\ts.htm) which mentions that California is the busiest state registration office in the country and has the largest number of registrations of any state, consisting of over 80,000 active marks. Forms are provided with minimum filing requirements and a number of basic questions are answered at that web site. Federal registration not only pre-empts state registration but obviously is national in scope, and thus many companies don't even bother with state registration.

One final note: The Lanham Act §45 definition of a "trade name" (15 USC §1127 defines a "trade name" as follows: "Trade name; commercial name. The terms 'trade name' and 'commercial name' means any name used by a person to identify his or her business or vocation.") describes the term used only as a trade name, which is not registrable. The name of a company (or law firm) cannot be registered on the Principle Register (of the PTO) unless that name is also used in a trademark or service mark sense. In re Antenna Specialists Co., 408 F.2d 1052, 161 U.S.P.Q. 284, (C.C.P.A. 1969); In re Walker Process Equipment, Inc., 233 F.2d 329, 110 U.S.P.Q. 41 (C.C.P.A. 1956); Communications Satellite Corp. v. Comcet, Inc. 429 F.2d 1245, 166 U.S.P.Q. 353 (4th Cir. 1970), cert. denied, 400 U.S. 942, 27 L.Ed. 2d 245, 91 S.Ct. 240, 168 U.S.P.Q. 705 (1970). McCarthy, supra, §9:13. The reasoning seems to be that a trade name is usually adopted for the purpose of identifying the company and distinguishing it from other producers of the same product, as opposed to the trademark purpose of identify the goods and distinguishing them from other goods (or services) produced by other producers. In Re Walker Process Equipment, Inc. 233 F.2d 329, 110 U.S.P.Q. 41 (C.C.P.A. 1956). However, the Court of Customs and Patent Appeals (C.C.P.A.) has recognized that a corporate name may be used as a "trade name," a "trademark," or both, depending on the manner in which the name appears in connection with the goods. Use of company name in a trademark sense was upheld in: Ex parte Guy Gautier & Co., 111 U.S.P.Q. 345 (Comm'r Pat. 1956) GUY GAUTIER & CO. for brandy); In re Texaco, Inc. 143 U.S.P.Q. 364 (T.T.A.B. 1964) (THE TEXAS COMPANY used to identify and distinguish gasoline and related products). See Blanchard Importing & Distributing Co. v. Societe E. Blanchard et Fils, 169 U.S.P.Q. 615 (T.T.A.B. 1971). See also the discussion in McCarthy, supra, at 9:14.

This distinction can get tricky when the company name is claimed to also be a service mark, as in the case of CNA, the large group of insurance companies, particularly if it is used on stationery letterhead. If it is used in full form (including for example "Inc." or "Corp.") accompanied by an address, it is harder to establish a service mark usage. See In re Maguire, 122 U.S.P.Q. 398 (T.T.A.B. 1959); In re Perma-Life Mufflers, Inc., 123 U.S.P.Q. 584 (T.T.A.B. 1959); In re Signal Cos., 228 U.S.P.Q. 956 (T.T.A.B. 1986); In re Diamond Hill Farms, 32 U.S.P.Q. 2d 1383 (T.T.A.B. 1994); In re Amex Holding Corp., 163 U.S.P.Q. 558 (T.T.A.B. 1969); In re Gordon, 152 U.S.P.Q. 829 (T.T.A.B. 1967). If you are trying to establish your law firm name, or a portion of it (such as an abbreviation) as a mark, you might be well advised to so use that abbreviation in advertising in a way designed to create a commercial recognition separate from the name itself. This could be accomplished by using the desired mark not only separate from the address, but also printed in a different color or type of style. Again, the aim should be to do "more than merely convey information about a corporate relationship." In re Univar Corp., 20 U.S.P.Q. 2d 1865 (T.T.A.B. 1991) but see also In re Signal Cos., 228 U.S.P.Q. 956 (T.T.A.B. 1986).

An abbreviation of a law firm or company name can clearly be used as a trademark and when it is so used it is also registrable. Examples in the cases are CEB, which was derived from the corporate name Cowles Educational Books, Inc., which was held to be used in the trademark sense, as was AMCO, derived from the corporate name Alexander Manufacturing Company. Encyclopaedia Britannica, Inc. v. Cowles Educational Books, Inc., 155 U.S.P.Q. 737, (T.T.A.B. 1967); Alexander Mfg. Co. v. Independent Mfg. Co., 155 U.S.P.Q. 30, (T.T.A.B. 1967).

We have had success after finding a competitor's use of our client's registered mark by simply notifying the competitor of the practice and requesting a consent agreement in polite but firm language, since often the web site was designed by persons not knowledgeable in intellectual property law who thought it was "cool" to use a competitor's name in setting up the web site metatags. They knew exactly what they were doing and why they were doing it, but not the legal and ethical prohibitions. In view of the difficulty in proving damages from a metatag cybertheft, often simple stoppage and the "promise to sin no more" is sufficient, since a further violation after such a stipulation might well trigger punitive damages for a repeat of the practice. The Lanham Act does provide for attorney's fees, a fact we mention in our demand letter, which is usually sufficient to end the nefarious practice.