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 META tags for a web site can constitute trademark infringement.
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.
Trademarks owned by others often are inserted in the META tags 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.
In Brookfield Communications, Inc. v. West Coast Entertainment, (CV-98-09074-CRM) the Ninth Circuit recently issued a decision holding that use of another's trademark in a web site's META tags can cause "initial interest confusion" resulting in trademark infringement. The basis of the court's decision--"initial interest confusion"--is noteworthy because trademark infringement usually is based on the use in interstate commerce of a "word, term, name, symbol or device, or any combination thereof, ... which ... is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin, sponsorship or approval ..." 15 U.S.C. §1125(a).
The Brookfield court held that Brookfield Communications, a trademark owner and provider of entertainment information and news, was entitled to a preliminary injunction against West Coast Video, a national video rental chain that was using Brookfield's trademark "MovieBuff" as a META tag on its web site at "westcoastvideo.com." The court noted that when the term "MovieBuff" is included in an internet search, the search engine is likely to identify web sites that include both West Coast and Brookfield's web sites. Because the West Coast web page prominently displays its own name, the court concluded that "it is difficult to say that a consumer is likely to be confused about whose site he has reached or to think that Brookfield somehow sponsors West Coast's web site." Therefore, while there was no "source confusion" because consumers knew they were patronizing West Coast rather than Brookfield, there nevertheless was "initial interest confusion" because West Coast was diverting people looking for "MovieBuff" to its own web site, thereby improperly benefiting from the good will that Brookfield developed in its mark.
The court compared West Coast's conduct to a West Coast competitor putting a bill board on a highway reading, "West Coast Video: 2 miles ahead at Exit7" when West Coast is really located at Exit8 and a competitor is located at Exit7. Customers looking for a West Coast store will pull off at Exit7. Unable to locate West Coast, but seeing the competitor right by the highway, customers may simply rent there. Even customers who prefer West Coast may not find it worth the trouble to continue searching for West Coast because the competitor with similar services is right there. The court noted that the fact that there is only initial confusion does not alter the fact that the competitor is misappropriating West Coast's acquired good will.
If you would like more information concerning this case or other intellectual property issues, please contact JaneC. Schlicht at (414) 227-1291 or schlicht@cf-law.com.