Reprinted with permission from the September 8, 1997 issue of The National Law Journal.
© 1998 The New York Law Publishing Company. All rights reserved.

EXPECT THE UNEXPECTED, especially on the Internet. Type "Disney" into the AltaVista search engine, and the first two sites listed in the search results are for travel agencies. These companies placed the word "Disney"-and "Mickey Mouse" and "Magic Kingdom"-in invisible codes, called meta-tags, which the search engine reads as regular text.

So far, trademark-sensitive Disney hasn't sued. But in a similar meta-tag situation, the New York law firm of Oppedahl & Larson has. In a Colorado district court it sued several Internet businesses, alleging unfair competition, dilution and trademark infringement. The defendants' answers are due by Sept. 8.

"I'd be reluctant to say that putting someone else's name or trademark in your meta-tag is wrong," said Jeffrey R. Kuester, an intellectual property partner at Atlanta's Thomas, Kayden, Horstemeyer & Risley L.L.P., who sprinkled the word "patent" on the meta-tags of his Web site. "Much depends on the intent of the user and the substance of the pages [retrieved]."

A critical point is whether an Internet user would think there is some association between the law firm and the Internet businesses whose sites are retrieved when the firm's name is entered. But the Internet is so new-meta- tags are only about a year old-that the user's perspective is hard to gauge. Says Mr. Kuester, "What is the reasonable person going to think? That the firm is a source or sponsor" of the unrelated Web businesses? When other businesses appear on the page of search results, does that have a "diluting or disparaging effect" on the firm, he asked.

No cease-and-desist letter was sent before the complaint was filed. Several of the defendants interviewed said that they removed the firm name from their meta-tags. A search for "Oppedahl & Larson" now retrieves only the law firm's site and articles written by its attorneys.

"They are seeking to make a name for themselves with this lawsuit and are stomping all over my client to do it," said Larry E. Glazner, a sole practitioner in Levelland, Texas, who represents defendant Web site developer Robert A. Welch. "My client lost a contract because of this suit-a significant amount of money."

Mr. Oppedahl, in the firm's Frisco, Colo., office, said that if he had sent warning letters, the defendants might have sought a declaratory judgment. He would then have had to fight in their home courts. Four of the defendants are in Texas, which does not consider law firm names to be trademarks.

Another defendant, George W. Williams, president of Code Team-LBK Inc., in Lubbock, Texas, is a writer of "shareware," or free software. He said he never intended to benefit from another's work. Recently, he said, he decided to develop Web sites and obtained permission from defendant Advanced Concepts to download an order form from their site.

"That's where the meta-tags reside," he said. "I didn't pay much attention to them."

As a result of the suit, he said, he has left the Web site development business. "These things impede the development of...the Internet. I'm more concerned with the overall impact of this than with the specifics of the lawsuit."

But Mr. Oppedahl said he is persisting because this is not the first time this type of thing has happened to him. He guesses the defendants were trying to profit from his firm's domain name registration services. When someone seeks to register a domain name, or Internet address, they are establishing a Web site, said Mr. Oppedahl, and the Web designers' names are displayed along with his firm. "They are using our good name to get visitors to their site," he said. "It is wrong."

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