The Case of the Invisible Ink

Tim Jackson

Financial Times, Monday, September 22, 1997

Unless you are a US trademark lawyer, the chances are that the names Oppedahl and Larson will mean nothing to you.  But this law firm, based in Frisco, Colorado, has initiated a court case that has caused panic to thousands of owners of web sites.

The background to the lawsuit is that many people who are looking for information on the internet start by consulting a search engine a service, usually free, that offers a database of millions of web pages. By typing in a string of words, users can see a list of pages that contain some or all of those words.

The trouble is that the mere presence of a set of words in the page text is not enough to guarantee that a page listed as a 'hit' by the search engine will be one that the user wants to see.

This is partly because most users pick their search requests carelessly, but also because search engine technology is in its infancy. Indexing natural-language text is a subtle business: often the word that best describes what a set of text is about may not appear in the text itself.

In response to these difficulties, most search engines allow web site owners to specify a set of "keywords" describing what each web page is really about. The keywords are embedded in the web page as "meta-tags" which do not show up on the screen when the page is viewed, but which the search engines can use for indexing purposes.

Human nature being what it is, many site owners use keywords as a form of advertising. Instead of simply offering a dry topic list in the keyword meta-tag, site owners often stuff the tag with strings of words of dubious relevance which will simply attract passing traffic.

One extreme example is of pornographers who have used the word 'Mir' in their meta-tags because they know that millions of internet users have been searching for pages on the Russian space station.

But there are also legitimate publishers who want to maximise the chances of their web site appearing in the first page of search engine hits, and who play around with meta-tags to do so.

And so to the Oppedahl and Larson case. Two months ago, this Colorado law firm sued a handful of web site owners, who had inserted its name into their meta-tags. Although none of the site owners were competing law firms, the plaintiff complained that this use of its name as a keyword constituted unfair competition, dilution and trademark infringement.

The case is made complex by the fact that Texas, where some of the defendant site owners are based, does not recognise the names of law firms as trademarks. It is also tempting to view the lawsuit partly as a publicity stunt, because the plaintiff has a strong interest in being involved in a landmark case that touches on exactly its area of expertise.

Initial reactions to the case have been favourable to the plaintiff. In an article in the Wall Street Journal that described meta-tags as "invisible ink" and the act of manipulating them as a "lure", a professor from the University of California at San Francisco was quoted as describing the practice as "like putting up a big sign on the freeway that says Exxon, but that's not what you find once you get there".

The case has also blazed the trail for other plaintiffs. Playboy Enterprises won an injunction earlier this month from a San Francisco judge against another web site that used the words "playboy" and "playmate" in meta-tags.

But the nub of the issue is straight forward. Oppedahl and Larson claims that the use of its name in keywords is "misleading", "likely to cause confusion and mistake, and to deceive the public into believing falsely that defendants' web pages are connected with and/or sponsored or authorised by" the firm.

It also asserts that the defendants are "misleading the public into believing that their services are connected with" the law firm's business.

To anyone who uses search engines regularly, all these assertions may seem somewhat fanciful. When you type a string of words into AltaVista, Lycos, Yahoo! or Excite, you expect to see many pages listed that have no relevance to the subject that interests you. Merely appearing on a list does no more to create the impression of an association or business connection than appearing on the same page in the telephone directory.

Of course, web site owners could get themselves into hot water if they gave their pages misleading titles that would encourage surfers looking for someone else's trademark to choose them from the list. Still more dubious would be the use of a domain name similar to the trademark of a competitor.

But the idea that keywords alone can create a false belief of connection, and can thus open up a claim for trademark dilution or unfair competition is arguable. The claim that it is misleading may be hard to sustain given that the casual surfer never even sees the offending words. If and when any of these cases get to trial, the plaintiffs may therefore find it hard to prove their point.

In any case, the internet moves faster than the legal system. The search engines are continually improving their software, and the crude use of multiple keywords is unlikely to win site owners a high place in the relevance rankings.

What is more, the internet offers plaintiffs a better remedy than the courts. By complaining of their competitors' meta-tag manipulation to the search engines, they can ensure that the offending pages are struck off the database altogether -- a penalty that no judge would have the authority to impose.