Martin J. Elgison and James M. Jordan III a
Special to the National Law Journal
Reprinted with permission from the October 20, 1997 issue of The
National Law Journal.
© 1998 The New York Law Publishing Company. All rights reserved.
ON THE INTERNET, vigilance and quick response are vital. A trademark owner who neglects to monitor the Internet for infringement and dilution runs the risk of allowing an infringer to build up rights over a period of months or years, making the infringement more difficult to cure.1
In addition, as courts increasingly apply state statutes of limitations of false advertising claims under Sec. 43(a) of the Lanham Act, a business that is on notice of a Web site containing false or deceptive advertising may be barred from proceeding if it fails to exercise due diligence to find and challenge the offending activity.2
Some trademark and unfair competition issues are completely new to the
Internet and result from specific technological attributes of the medium.
In addition to "domain name" disputes, which began to result in court rulings
in early 1996,3unfair competition
activities now may also include linking, framing and meta-tagging.
On the World Wide Web, it is not only possible, but quite common and
generally encouraged, for operators of Web sites to create "hypertext links"-so
named because they are links to hypertext somewhere else on the Web, which
is constructed in a computer language called hypertext markup language,
or HTML. These typically appear as blue underlined text, but also in other
colors and as graphics images. These links are sometimes referred to by
the shorter-and less text specific-name
"hyperlinks" or simply "links."
When the viewer clicks the left mouse button while the screen cursor
is over one of these text or graphic links, his or her screen will change
to a view of another Web site (or a different part of the same one). The
ability to hyperlink sites in this way creates a "web" of sites and is
the reason that this graphical, linkable part of the Internet is called
the World Wide Web. Some argue that because links are such an inherent
part of the Web, anyone choosing to operate a Web site has given an "implied
others to link to it, unless, perhaps, a disclaimer of such a license appears on the site.4
The owners of the Shetland Times, a newspaper in the United Kingdom,
apparently disagree. When a second newspaper, the Shetland News, began
linking headlines on its Web site to articles on the Shetland Times Web
site, the Times decried this as "parasitic activity" and filed suit. (A
"live" demonstration of the types of links which were being made appears
at http://www .
The Scotland Court of Sessions (at least preliminarily) agreed Oct. 24, 1996, and issued an "interim edict," similar to a U.S. preliminary injunction, prohibiting the News from making such links.5
The case is still pending with respect to permanent injunctive relief. While based primarily on copyright law principles, the case could have been cast as an unfair competition law claim under U.S. law.
A second hyperlinking case-in the United States-has been cast under an unfair competition theory. In April, Ticketmaster Corp., a purveyor of tickets to concerts and other events, sued Microsoft Corp. over Microsoft's use of "unauthorized" hyperlinks that connect Web users directly from Microsoft's "Seattle Sidewalks" city-guide Web site to the ticket sales portions of Ticketmaster's site, bypassing the Ticketmaster home page and its associated advertising.6
Ticketmaster alleges claims of unfair and deceptive trade practices and dilution of Ticketmaster's trademarks. Ticketmaster also alleges in its amended complaint that negotiations had occurred (and failed) between Microsoft and Ticketmaster prior to the lawsuit for an agreement allowing Microsoft to "profit from linkage to and association with Ticketmaster's name, marks, and Web site," and that Microsoft is now "feathering its own nest at Ticketmaster's expense."7
Microsoft responded in its answer that "any business, such as Ticketmaster, participating in the Internet and the World Wide Web invites other participants to use the business' Internet addresses and URLs to contact it," and has counterclaimed for a declaratory judgment that "Microsoft has lawfully used hypertext links," stating that such an order is necessary to "remove any chill from the free workings of the Internet." 8The case is still pending.
Arguably, the use of "deep links"-links that take the viewer to portions of a Web site below the identifying information on the home page-are more misleading than "surface links," which link to the home page of the Web site. It appears that both the Shetland and Ticketmaster disputes involved deep links, and it remains to be seen whether a case involving surface links will be treated differently.
In addition to linking to another's site without authorization or in
a misleading way, it is possible to use hyperlinks in other ways that can
legitimately be labeled unfair competition. Suppose, for example, that
Smith Company makes a reference to Jones Company on Smith's Web site, and
that the "Jones Company" text is a hyperlink leading one to a picture of
circus clowns (on the Smith site or elsewhere). If Jones is in a business
not involving circus clowns, this may be construed as a disparagement,
which most would agree is actionable. The same would likely be true if
the linked site were a Web site set up by Smith to look like a Jones site
but reflecting poorly on Jones.
It is also possible on the Internet to set up a Web site so that the viewer will click on a hyperlink and find a second Web site displayed within a "frame" which is on the first Web site. This technique can also be used in ways that could be construed as unfair competition by the courts.
In the United States, for example, the TotalNews Web site used framing technology in such a way that the content from various newspaper sites (along with their logos) was displayed within a frame on the TotalNews site.9
The advertisements seen by the viewer at the bottom of the screen, however, were still the advertisements placed on the TotalNews site.
In a lawsuit filed Feb. 20, The Washington Post and several other news providers whose content had been "framed" by TotalNews claimed that TotalNews Inc. had "designed a parasite website that republishes the news and editorial content of others' websites in order to attract both advertisers and users."10
The plaintiffs stated claims for misappropriation, trademark dilution and infringement, false and deceptive advertising, unfair trade practices, copyright infringement, and tortious interference with advertising contracts.11
The case settled June 6 with an agreement under which TotalNews may
continue to link to the news organizations' sites, but may not do so in
such a way that the content of the news organizations' sites appears on
the user's browser in a frame within the TotalNews site display.11
The most current version of unfair competition disputes on the Internet is the "meta-tag" dispute. Viewers may not realize that the text and graphics on a Web site are written in HTML and that the HTML version of the document contains not only what the viewer sees, but also a number of tags and markers that are not seen.
Some of these tags, called meta-tags, may be used to designate words that are identifiable to search engines, such as the AltaVista search engine at (http:// altavista.digital.com). In the absence of any other information, AltaVista will index certain selected words appearing in a Web site HTML document and use the first few words of the document as a short abstract. However, the operator of the site can use meta-tags to control the indexing of the site by the search engine, specifying both additional keywords to index, and a short description.
It has become a popular practice for, say, Brand-X company to bury the trademarks of a better known competitor (such as Brand-Y) in these meta-tags, so that a viewer searching for Brand-Y by name will find Brand-X as well. Because the mark does not appear on the visible part of the page, this is sometimes referred to as "invisible trademark infringement," but it is probably more accurate to call it a deceptive trade practice or unfair competition.
One way to find out if a competitor is using meta-tags to harm a client is to enter the client's trademark as a search term (as is typically done to detect an infringement) and then to note the Web sites upon which the mark does not visibly appear. One can then view the HTML version of those pages (this can be done in the Netscape Navigator browser by clicking on "view" and then "document source"). This will reveal the terms included in the meta-tag.
Several meta-tag disputes have been taken to court. One of these, Nat'l Envirotech Group L.L.C., Institution Technologies Inc. v. Nat'l Envirotech Group L.L.C. 13 settled Aug. 27.14
The final consent judgment directs the defendants to delete the plaintiff's federally registered trademarks and service marks from the meta-tag keyword sections of the html code in the defendants' Web site.15
In a second case, Playboy Enterprises Inc. v. Calvin Designer Label,16 an order was issued Sept. 8 which appears to be the first to grant injunctive relief from the use of meta-tags. The order preliminarily enjoins the defendants from, among other things "using in any manner the PLAYMATE or PLAYBOY trademarks...in buried code of meta-tags on their home page or Web pages...."17
Specifically, the Playboy order states that "PEI is likely to succeed on the merits in proving inter alia trademark infringement, unfair competition, including a false designation of origin and false representation, in...repeated use of the PLAYBOY trademark in machine readable code in Defendants' Internet Web pages, so that the PLAYBOY trademark is accessible to individuals or Internet search engines which attempt to access Plaintiff under Plaintiff's PLAYBOY registered trademark."18
Because the defendants' activity, however, was combined with the use of the trademarks in domain names and in the visible content on defendants' Web site, it remains to be seen whether other courts will find that the use of meta-tags alone will support a cause of action.
It will be interesting to track the progress of another pending case19 filed in a Colorado district court by the New York law firm of Oppedahl & Larson (on its own behalf) against several Internet businesses, alleging unfair competition and trademark infringement and dilution arising from the use of the firm's name in meta-tags.20
In this case, unlike the Playboy suit, the use of meta-tags does not appear to have been combined with domain name or other uses of the firm name.
The newest and fastest-growing medium for commerce-the Internet-is,
perhaps not surprisingly, rapidly incubating new forms of unfair competition,
as well as repackaged versions of old tricks. Businesses should be vigilant
for these tactics (and cautious about their own practices) to avoid becoming
a victim or a defendant.
(a) Mr. Elgison is a partner and Mr. Jordan is a senior associate in the intellectual property
transactional group at Atlanta's Alston & Bird L.L.P.
(1) See, e.g., "Get on Your Marks,"
(2) See, e.g., S. Gilson & J. Samuels, Trademark Protection & Practice, Sec. 5.11 (Matthew
Bender, rel. 35, May 1996).
(3) The first injunction preventing use of a domain name on trademark dilution grounds was issued
in Hasbro Inc. v. Internet Entertainment Group Ltd., 1996 WL 84853 (W.D. Wash., Feb. 9,
1996) (TRO preventing use of candyland.com in connection with an adult-oriented Web site).
Previous disputes had arisen but had been resolved by settlement or arbitration or were pending in
court at the time of the Hasbro decision. See "What's In a Name?" (http://
www.georgetown.edu/lc/internic/domain1.html). The first injunction preventing use of a domain
name on trademark infringement grounds was issued in Comp. Examiner Agency Inc. v. Juris Inc.,
1996 WL 376600 (S.D. Cal., Apr. 23, 1996) (preliminary injunction prohibiting defendant from
using juris.com in connection with a website offering information and services for the legal
(4) See, e.g., (http://twobirds.com/library/Internet/online.htm).
(5) Shetland Times Ltd. v. Dr. Jonathan Willis and Zetnews Ltd., Scotland Court of Sessions
(Oct. 24, 1996).
(6) Ticketmaster Corp. v. Microsoft Corp., CV 97-3055 RAP (C.D. Cal., filed April 28, 1997);
see article and Amended Complaint at (http:// www.ljx.com/LJXfiles/ticketmaster).
(9) See "Been Framed?: Imposters Beware!" at (http:// www.ljx.com/internet.0620frame.html).
(10) The Washington Post Co., et al. v. TotalNews Inc., et al., 97 Civ. 1190 (S.D.N.Y., filed
Feb. 2, 1997); see complaint at (http:// www.ljx.com/internet.complain.html).
(13) Civil Action 97-2064 (E.D. La.).
(14) "New Legal Issue: Use of Meta-Tags," (http://www.ljse.com/internet/1997_ 09_02.html).
(16) 1997 U.S. Dist. Lexis 14345 (D. Cal. Sept. 8, 1997).
(19) Oppedahl & Larson v. Advanced Concepts, Civil Action 97-3-1592 (D. Colo. filed July 23,
(20) See (http://www.patent.com/ac) and "Firm Sues for Invisible Use of Its Trademark on the