Internet Newsletter for Lawyers
July/August 2004, by Delia Venables

Meta Tags & "Adwords": Trade Marks by another name?
by Michael Coyle and Jason Lysandrides

This article explains Meta Tags and Adwords and their effect upon trade mark rights owners within the Internet environment.

Introduction

The digital market place is a growing and competitive forum in which many new and existing companies are vying for recognition. Initially, businesses had few opportunities to market themselves over the Internet but now the search engine Google is seen as the preferred choice for businesses laying out their wares and for consumers looking for particular products. However, even though search engines filter out most of the unwanted results by concentrating on the search terms entered, by virtue of the numbers of websites globally, there may still remain many thousands of results spread over many pages. Therefore businesses have had to learn how to improve their rankings so that they appear on the first few pages of results. Such strategies may involve legitimate or sometimes objectionable methods.

E-Commerce Strategies

Sponsored links are one of the legitimate strategies that are employed to promote a business prominently on a search engine’s first page of results. Sponsored links that have now been branded by the various search engines, include Google’s Adwords and Yahoo’s Overture. These marketing tools are designed to allow a company to be guaranteed a place of their choice on the results page of a search engine. Such positioning may include appearing above the list of un-sponsored search results or in the margin of the search results page. There are various packages that may be purchased but essentially they appear by virtue of certain keywords that are used by the search traffic when they enter their search term criteria. These "trigger terms" then activate the sponsored link to appear as a result, in an effort to be distinguishable from the other search results and encourage search traffic to click onto the link allowing potential consumers to view the website.

Meta tagging is another method employed to promote e-Commerce. This is an optional hypertext format (an electronic language allowing publication and distribution of electronic information) that contains information about a particular website. Within the meta tag, various styles (or meta data) are incorporated in order to be caught by the different software programs used by search engines to collect their results. Examples include meta tag descriptions (which reflect sections of text published on the website that may contain terms used as search criteria) and meta tag keywords (which are used to highlight the primary terms employed on the website). Keywords may also comprise domain name addresses (URLs) so that when the keywords are used as a search term, they act as a trigger to encourage the search engine’s program to locate the site.

However both meta tagging and sponsored links are subject to abuse, especially where the successful implementation of a search engine strategy boosts the site’s ranking to the first few pages of results. After all who has the time and patience to look through hundreds of thousands of search results? With so many businesses and websites available, being able to leap frog into a search engine’s "top ten" is a very attractive proposition.

Legal View

Notable cases in both the US and the UK have dealt with meta tag abuse in respect of trade mark infringement:

In the same vein, Google’s Adwords have now been involved in several similar claims with the American Blind and Wallpaper Factory, Pets Warehouse (US companies) and Axa, Luteciel and Viaticum (French companies) as has Netscape who settled its dispute with Playboy Enterprises recently. As a result of these Adword complaints and claims, Google has now put in place a trade mark policy which addresses such abuse in an effort to remove itself from liability and emphasising that responsibility lies with the Adword advertisers directly.

The reported abuses occur when the content of the meta tags or sponsored links infringes the registered trade mark rights of another. Simply put, in order to assist with the frequency and better ranking of a website resulting from a search, companies use the brand names of others, which are more likely to be more commonly used as search term criteria. The rights’ owners will complain that this is an unauthorised use of their registered marks, which indirectly affects their business. However, it should be noted that under the Trade Marks Act 1994, there are contained fair use provisions. The main fair use provision is found in s.10 (6) of the Act which states:

"Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee. But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark." (emphasis added).

However a UK High Court decision has now been recently overturned in the Court of Appeal, which has cast doubt on a trade mark owner’s ability to claim infringement through meta tag (and presumably keywords used in sponsored links) abuse. The case of Reed Executive plc v. Reed Business Information Ltd [2004] EWCA (Civ) 159 was brought before the Court of Appeal and commented on the use of keywords either used in sponsored links, meta tags or "pop up" advertisements ("pop-ups").

The court was not convinced that the public would be confused or misled by such pop-ups and that it was generally accepted that search results were not treated as accurate or reliable. Therefore even where an individual clicked onto the link in pursuit of further information, they would instantly know upon seeing the website that it was not that which they had anticipated. Therefore no confusion would exist and no trade mark infringement would be present. However, exception to this would of course arise should the content of that website seek to mislead and confuse that individual into thinking that it did provide the product from the source that they desired. Therefore it is the website content not the pop-up or sponsored link that could potentially confuse.

The court also considered a party’s (alleged) intentional dishonest practice in achieving a higher search engine result ranking by using meta data that incorporated another’s trade mark. On the point of confusion the court remained consistent with its approach above. It said, ‘…causing a site to appear in a search result, without more, does not suggest any connection with anyone else.’

When examining the issue of identical trade mark infringement through sponsored links and pop-ups the court expressed the following concerns. Whilst the issue of confusion would not require assessment, it would be necessary to examine the issue of whether the mark was ‘used in the course of trade’. The court in this case unhelpfully reserved its decision, although it did surmise as to the fact that such use could not be caught by the Act as the computer software does not read letters but assesses patterns of binary code, which does not convey any meaning and so no ‘sign’ exists.

In respect of meta data, the court again relied upon the fact that it was not people that "read" this data but computer software. As such data does not convey any message to anyone, it cannot act as an indicator of origin and so fails as to trade mark use. This is compounded by the fact that meta data is not primarily viewed and only accessed via additional functions to assist with reading the source code of the website. It is unlikely that individuals will seek to view the source code in addition to the website that is apparent before them. Yet if the website in addition to using another’s trade mark as its meta tag keyword and is a competitor who also supplies similar or identical products, does this not compound such meta tag use as abusive and emphasise the very purpose of trade mark protection under Section 10 (1) of the Act?

Conclusion

Another well used method of covertly promoting a website is to add to the website text whose font colour matches the website background. Such "chameleon advertising" will comprise famous trade marks that are often unconnected with the website’s content. It would seem that the Reed decision as applied to chameleon advertising would also render this method as "non-use".

This new ruling has therefore left some doubt as to whether trade mark infringement can exist through its use as keywords in sponsored links and meta data. What seems more important is the website content itself and whether it can be argued any dishonest practice, misrepresentation and /or direct identical trade mark infringement. Whether website content can extend to chameleon trade mark use is also unclear. To be sure of infringement the Court of Appeal has again reiterated the importance of trade origin and source and where this is abused and misleading, is likely to assist in assessing the extent of infringement.

It is important that e-Businesses regularly monitor for possible meta tag abuse and unauthorised use of their trade mark(s) and ensure that commercial activity is not being unlawfully diverted from their websites. Traders should also ensure that their trade mark(s) are registered, to facilitate any action that they may wish to take against others infringing their rights via meta data and keyword abuse.

This area of intellectual property law remains to be settled and it is likely that further issues will arise in an attempt to create a more stable platform on which e-Commerce is able to fairly operate.

Michael Coyle & Jason Lysandrides are lawyers at Lawdit Solicitors, www.lawdit.co.uk.

Michael Coyle, Lawdit’s Principal, is responsible for many "IP" portfolios that comprise both international and high street brands as well as the lone inventor and designer. With a Masters of Law in Intellectual Property Michael’s publications range from the academic in 'E-Commerce & Law' to the commercial in the Lawyer. He has now brought together a cosmopolitan team in Lawdit to deliver IP legal services, both for private and commercial clients.
email michael.coyle@lawdit.co.uk>.

Jason Lysandrides is a trainee solicitor at Lawdit with extensive commercial background in the construction industry. Jason looks forward to graduating from his Masters of Law degree later this year, which included researching copyright and competition law within the EU.
email jason.lysandrides@lawdit.co.uk.

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