September 1, 1999

Unauthorized Use of Trademarks In Web Site "Metatags" Constitutes Trademark Infringement

Holland & Knight Newsletter
Thomas M. Brownell

Internet advertisers who attempt to maximize the exposure of their Web sites by listing the trade names or trademarks of their competitors among the metatags for those sites can be sued for trademark infringement, according to a recent decision by the Ninth Circuit Court of Appeals. In Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the court (which has jurisdiction over federal courts in California and five other western states) ruled that unauthorized use of a registered trademark in the metatags for a Web site can constitute trademark infringement under the Lanham Act, 15 U.S.C. §1125(a), even though the consumer viewing the Web site never actually sees the metatags and even though the consumer is not actually confused by the results of the search that the search engine displays.

As most Internet users know, search engines such as Yahoo or Alta Vista can help locate a Web site, either by name or by subject matter. The search engine uses a proprietary algorithm (program) to search for sites responsive to a request by reviewing key words or site descriptions found in domain names, the text of the sites themselves, or in the metatags supplied by Web site designers. 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 found in a search for that keyword, and the higher on the list of "hits" the Web page will be.

Metatags are invisible or "buried" HTML (Hyper Text Marking Language) code, usually found at the beginning of a Web site. (In Windows 95 or 98, metatags can be viewed either by right-clicking on the Web site itself or by using the "view" pull-down menu and choosing "Page Source.") In theory, the metatags inserted by a Web site builder will help search engines find the appropriate site requested, either because the metatags provide a clear description of the contents of the site or because they contain key words relating to the contents of the site.

In practice, however, metatags have often been abused. Purveyors of "adult" Web sites quickly discovered, for example, that they could lure searchers to their sites by including the words "Playboy-TM"or "Playmate-TM" among the metatags that purported to describe their (usually) pornographic sites. A Web surfer looking for Playboy magazine's official Web site who types in "playboy" or "playmate" thus would find, along with the official Playboy site and articles legitimately discussing Playboy magazine or the company, hundreds of "adult-oriented" sites trading on the Playboy name and reputation. While the user could quickly conclude that the rogue sites were not in fact the Playboy site and that they were not sponsored by Playboy magazine, he also might never find the legitimate site, being distracted by dozens or even hundreds of other offerings along the way.

To fight this sort of infringement or dilution of its marks, Playboy Enterprises, Inc. has aggressively fought misappropriation of its marks among metatags on the Internet. In recent years Playboy has sought and obtained injunctive relief and damages against a number of "adult" Web site operators in a variety of federal courts around the country. Several of these lower court decisions have been reported (1). Now a federal appellate court, in a well-reasoned opinion dated April 22, 1999, has confirmed the rule established by the lower courts that unauthorized use of registered trademarks in metatags can constitute infringement under the Lanham Act.

In the Brookfield case, the plaintiff sold a searchable database containing facts on the entertainment industry, including motion pictures. For several years it marketed a series of products known as "MovieBuff" software and then obtained a federal registration for that mark in 1996.

The defendant, West Coast Video, operated a large chain of video rental stores that, from time to time, used the term "Movie Buff" to describe its services and its customers. It used the metatags "MovieBuff" and "" in connection with its Web site known as "" It then obtained a domain name registration for "" and made plans to launch a major Web site at that location.

When Brookfield sought to register its own Web site under the name "," it discovered that the name was already taken. It then learned that West Coast Video's existing Web site used the key words "MovieBuff" and "" in its metatags and brought suit to enjoin both uses.

The lower court rejected Brookfield's request for an injunction, holding that West Coast Video had first use of the mark and that, in any event, Brookfield had failed to establish a likelihood of confusion between the Brookfield mark and the West Coast Video site because the two companies are not direct competitors.

The Ninth Circuit reversed. After first ruling that Brookfield, not West Coast, was the senior user, and thus entitled to priority in the "MovieBuff" mark, it next ruled that, because Brookfield and West Coast are in related fields, West Coast's threatened use of the domain name "" produced a likelihood of confusion and thus infringed Brookfield's mark.

The court then turned to the issue of whether West Coast's existing use of "Movie Buff" and "" in the metatags for its "" Web site also infringed Brookfield's mark. Since "likelihood of confusion" is the key issue in a trademark infringement case, the court noted that infringement by use of a mark in metatags is a fundamentally different issue from use of the mark in a domain name. First, when a user inputs "MovieBuff" into an Internet search engine, the list produced by the search engine is likely to include both the West Coast Video and the Brookfield Web sites. In scanning the list, the Web user should have no difficulty in finding the site for which he was looking. Moreover, there is no confusion resulting from the domain name, since "" clearly displays the name of its owner and a consumer is not likely to be confused about whose site he has reached or to think that Brookfield somehow sponsored the West Coast site.

Nevertheless, the court ruled West Coast's use of "MovieBuff" in its metatags will still result in what it called "initial interest confusion." More specifically, Web surfers looking for Brookfield's "MovieBuff" products who are taken by a search engine to the "" site will find a database similar enough to the "MovieBuff" software so that a sizeable number of consumers will simply decide to use West Coast's offerings instead of Brookfield's. The court explained:

"Although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using "" or "MovieBuff" to divert people looking for "MovieBuff" to its Web site, West Coast improperly benefits from the goodwill that Brookfield developed in its mark."

The court held that "such initial confusion works a sufficient trademark injury" and enjoined further use of the metatags by West Coast Video.

The Brookfield decision marks no major departure from existing trademark law, but merely extends to another area of the Internet the rule that an advertiser cannot improperly trade on the registered marks of another. Nevertheless, because the law is now clear, owners and operators of Web sites should check their sites to make doubly sure that the domain names or trademarks of their competitors were not previously included in the metatags provided to identify the site for search engines. While damages resulting from this type of infringement are likely to be difficult to prove, a metatag infringer risks injunction suits and embarrassment should the subterfuge be exposed. By the same token, trademark owners can protect themselves from covert infringement by their competitors by regularly checking competitors' Web sites and reporting any violations to counsel for appropriate action.


1. E.g., Playboy Enterprises, Inc. v. Asiafocus International, Inc., 1998 WL 724000 (E.D. Va. 1998); Playboy Enterprises v. Calvin Designer Label, 985 F.Supp. 1220 (N.D. Cal. 1997); but see, Playboy Enterprises v. Welles, 7 F.Supp.2d 1098 (S.D. Cal. 1998) (fair use doctrine permitted a former Playboy "Playmate" to identify herself as such in metatags for her personal Web site).

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