Meta Tags: The Case of the Invisible Infringer
Meeka Jun
WITH MORE AND MORE companies establishing a Web presence, the Internet is at the very least spawning an ever-expanding body of cases that will keep practitioners and their clients wondering what new twists the litigation will take and how to avoid getting entangled in it.
In an unusual case of "invisible infringement," a well-known trademark owner tagged a less well-known Web site publisher in a dispute involving the use of "meta tags" on the Internet. Meta tags are invisible codes embedded in the hypertext markup language (HTML) used to create Web sites.
In the case at hand, Playboy Enterprises Inc. v. Calvin Designer Label, Civ. No. C-97-3204 (N.D. Cal., Sept. 8, 1997), the defendants were preliminarily enjoined from using the plaintiff's marks as part of their domain names and within the Internet Web pages offered at their Web sites.
The plaintiff Playboy Enterprises alleged that the defendants, Calvin Designer Label, Calvin Fuller and Calvin Merit, were using Playboy's federally registered marks "PLAYBOY" and "PLAYMATE" without Playboy's authorization. In particular, Playboy claimed that the defendants were using "PLAYBOY" and "PLAYMATE" as part of the defendants' domain names ("www.playboyxxx.com" and "www.playmatelive.com"), as part of the name of their Web site service ("Playmate Live Magazine") and as part of their advertising slogan ("Get it all here @ Playboy").
Even more interesting, Playboy also alleged that the defendants had violated its trademark rights by employing meta tags. More specifically, Playboy claimed that the defendants had repeatedly used the mark "PLAYBOY" in machine- readable code by embedding it within the defendants' Internet Web pages in a way that is invisible to the Internet user but is nevertheless detected by Internet search engines. Search engines are tools that assist Internet users in finding useful information on the Internet. In many cases, the "hits" identified by search engines reflect matches between the search terms entered by Internet users and the terms found in the text of particular HTML (hypertext markup language) pages.
However, search engines will also pick up HTML pages that contain code that, although not contained in the visible text of the HTML page, is embedded within the HTML page. Although these so-called "meta tags" often serve the useful purpose of describing the content of the HTML page, in many cases, they do not accurately reflect the content of the relevant HTML page. Rather, meta tags often contain popular search terms that have little or nothing to do with the content of the relevant HTML page but are nevertheless inserted merely for purposes of luring Internet users to a particular Web site.
Apparently, the defendants were using Playboy's frequently searched marks as part of their domain names, within the text of their Web pages and as meta tags for purposes of attracting Internet users to their Web sites.
In response, Playboy brought an action against the defendants alleging trademark infringement and unfair competition based on false designation of origin and false representation.
U.S. District Judge Charles A. Legge of San Francisco found that the plaintiff was likely to succeed in proving the merits of its claims and granted Playboy preliminary injunctive relief. The defendants were barred from using the "PLAYMATE" and "PLAYBOY" marks as part of their domain name, as part of the name of their Web site service, in meta tags on their home page or Web pages, or in connection with the advertising or promotion of their Web sites.
NOT SURPRISINGLY, Playboy is not the only trademark owner to have been confronted with meta tag infringement. In Insituform Technologies Inc. v. National Envirotech Group, L.L.C., Civ. No. 97-2064 (E.D. La., final consent judgment entered Aug. 27, 1997), the parties settled under terms that permanently enjoined the defendant from using the plaintiff's federally registered marks as meta tags in the defendant's Web site. In Oppendahl & Larson v. Advanced Concepts, Civ. No. 97-Z-1592 (D.C. Colo., complaint filed July 23, 1997), the plaintiff alleged that the defendants' use of the law firm's name as meta tags violated the Lanham Act.
These meta tag cases present yet another novel issue in the growing field of Internet litigation where new forms of technology must be evaluated under the more traditional principles of intellectual property law.
Meeka Jun is an associate in the high-technology and new media group of New York's Brown, Raysman, Millstein, Felder & Steiner LLP.