Meta Tags and Customer Confusion

From the Nolo eCommerce Center

Improper use of someone else’s trademark in your meta tags can land you in legal hot water. Here’s what you need to know.

A meta tag is programming code used in the creation of a website. Meta tags are powerful tools because they have a direct effect on the frequency with which search engines will find a website. Even though an Internet user never sees this code, meta tags have been the subject of trademark lawsuits because companies have used them to divert or confuse consumers. For example, Company A inserts the trademark name of a rival business, Company B, into its meta tag. A customer using a search engine to find Company B may be diverted to Company A instead. Or, John gets fired from Company C, creates a website to spread false rumors about Company C and inserts Company C’s trademark into his site’s meta tags. Customers searching for Company C are directed to John’s false statements.

The deceptive use of another company’s trademark in these or similar ways can result in a successful trademark infringement lawsuit, leading to an award of financial damages and in some cases, attorney fees. But there are some instances when the use of another company’s trademark is permitted in a meta tag. (See Permissible Uses, below.)

How Meta Tags Work

Meta tags do not affect the appearance of a website and are not visible when you look at a Web page, but they provide information regarding the content of the site. While you are using Netscape Navigator or Internet Explorer you can actually view the meta tags on any Web page by clicking on “View,” then “Source.” The tags always start with the word “meta.” For example, the meta tags for a website offering handmade watches may appear as follows:

<META NAME =”Handmade Watches” CONTENT=”Handmade, watches, time pieces, clocks, wristwatches”>

Meta tags are used primarily by search engines that wade through the programming code and text of each page. When a search engine finds a search term in a meta tag, it indexes the Web page and displays it in the search results. In the early days of Internet search engines, Web page programmers learned to influence Internet searches by “spiking” the meta tags with the same word over and over to increase the likelihood of the page being “hit”. Most search engines have since been trained to largely ignore these repetitions.

Using Meta Tags to Divert Web Surfers

Some websites use meta tags in a deceptive manner to lure Web surfers. Instead of using terms that properly describe the site, some programmers substitute the names of competing companies. For example, a rival shoe manufacturer may bury the meta tag “Nike” in its Web page to lure web surfers searching for Nike products. In the case of the website selling handmade watches, the meta tag might include “Rolex, Swatch, Bulova, Cartier.” One company went so far as to copy and use all of the meta tags at a rival site. This kind of deceptive use of another company’s trademark in a meta tag is a form of trademark infringement when it confuses consumers. One judge described the practice as similar to a shop owner posting a sign with another company’s trademark in front of its shop. (Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999)).

EXAMPLE: sells mainframe computers over the Internet. Bigcomputers does not sell IBM mainframes, but nevertheless inserts “IBM, mainframe” into its meta tags. John is looking for an IBM mainframe and his search engine lists Bigcomputers as a “hit.” John visits and is initially confused; he can’t find any IBM products. He emails the site and Bigcomputers responds that it doesn’t sell IBMs, but it has many equivalent machines at discounted prices.

To curb this type of trademark infringement, the trademark owner must first request that the offending website stop the deceptive use. If the use continues and the two companies cannot reach an agreement, the trademark owner may file a lawsuit in federal district court. If it prevails, the court may order the offending website to pay money damages, and in some cases, the trademark owner’s attorney fees as well. In egregious cases of intentional deception, the monetary award may amount to several hundred thousand dollars.

Dilution and Unfair Competition

In addition to claims of trademark infringement, deceptive uses of meta tags may result in claims of unfair competition or trademark dilution. Unfair competition is a legal principle that, among other things, prohibits one company from falsely claiming a connection with or endorsement from another. For example, the use of “Playboy” or “Playboylive” in a meta tag by an X-rated site may falsely imply that it is endorsed by Playboy Enterprises. On that basis, as well as infringement and dilution, Playboy Enterprises has successfully pursued several websites using deceptive meta tags.

Dilution occurs when a famous trademark is blurred or tarnished by someone else’s commercial use of the mark. Tarnishment occurs when a famous mark is damaged by an unpleasant or unwholesome use of a similar mark. Blurring is a “whittling away” or weakening of the mark’s distinction. For example, if “Gucci” was placed in the meta tag for a website selling shoddily-made leather goods, that would dilute the Gucci trademark.

Permissible Uses of Trademarks in Meta Tags

Not every meta tag use of another company’s trademark is illegal. When the trademark is used only to describe the goods or services of a company, or their geographic origin, this is permitted under trademark law as a “fair use.”

For example, if a site called distributes literature and music from the Amazon region, it may use the word “amazon” in its meta tags. This use would not infringe the trademark because the term “amazon” is being accurately used to describe the goods offered at Tropicalarts.

In one actual case, former Playmate Terri Welles established and used Playboy and Playmate in her site’s meta tags. This use of Playboy’s trademarks was permitted because Ms. Welles was using the terms to describe herself and to properly index the pages. In addition, the court in this case was influenced by the fact that most of the free Web pages at the site included a disclaimer at the bottom: “This site is neither endorsed, nor sponsored by, nor affiliated with Playboy Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR and PLAYMATE OF THE MONTH are registered trademarks of Playboy Enterprises, Inc.” (Playboy Enterprises, Inc. v. Welles, 7 F. Supp. 2d 1098 (Cal. S.D. 1998).)

Although a trademark can be used in a good faith descriptive manner, the only means of resolving a fair use issue is often through the expense and hassle of a lawsuit. Unfortunately, there is no clear test for proving trademark fair use and, regardless of the rights at stake, a descriptive use of a trademark in a meta tag may trigger a lawsuit.

Commonsense Use of Trademarks in Meta Tags

You should avoid deceptive uses of another company’s trademark in your website unless the company has consented to the use. Such consent might be granted, for example, if you are a distributor for the trademarked brands in the meta tags. Not only is it unethical and illegal to use trademarks deceptively, but it’s a bad business decision. The potential financial and legal consequences vastly outweigh the increased traffic. Deceptive trademark meta tags can be easily uncovered and many well-known trademark owners regularly troll the Net searching for such violations. In short, when in doubt about using a trademark in your meta tag, leave it out.

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