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Introduction:
For most of our questions, we rely on the internet for answers. While the debate on the reliability of information received on the internet continues, an equally enthralling race of which website will be the first to grab a searching consumer’s attention has begun. With companies and organizations willing to pay a leg and an arm to ensure maximum footfalls on their websites, it is not surprising that such organizations are searching for loopholes to find ways to manipulate the search results on search engines. Website owners attract unwarranted attention to their website by making dubious use of Meta-tagging, framing, linking, deep linking. This article aims to introduce the concept of meta-tagging and provide an overview of the legal jurisprudence pertaining to unfair use of meta-tags with respect to Trade Marks.
What is a meta-tag?
Webpage are written in mark up languages, usually HTML (Hyper Text Markup Language). HTML uses syntax of tags and mark ups to display data and to send signals across to the web operators to ensure correct outputs. While most tags have visual and aesthetic functions, a tag category named meta-tags allow hidden commenting with regard to the description of the said website, enabling the search engines to pull out relevant websites in reference to the key words searched by the end user.
With an option to doctor the HTML source code in such a manner that it will result in favorable SEO (Search Engine Optimization), any web designer may insert the trademarks or misleading meta-tag descriptions that are similar or deceptively identical to that of his/her competitor so as to enable the search engine to pop out his/her website as well when an unaware user searches for the competitor. In 1997[1], for the first time, under the Lanham Act [U.S. Trademark Act], a law firm dealing with domain name disputes sued a defendant whose meta-tags contained the terms ‘oppedahl’ and ‘larson’, the registered trademark of the law firm, so as to divert traffic that would gain them domain name registrations and web hosting clients. The Court restrained them from using the said terms without authorization as it resulted to unfair use under the Lanham Act.
Though the Indian law does not explicitly define ‘meta-tags’ in any statute so far, in 2014[2], a Single Judge Bench at the Bombay High Court, while addressing a domain name infringement of the plaintiff’s domain name “Shadi.com” by the defendants’ “ShadiHiShadi.com”, used meta-tags to identify malafide intention. The Hon’ble Court found that the defendant was using “Shadi.com”, which was the Plaintiff’s domain name, in their meta-tags to divert traffic and for the first time defined meta-tags as follows:
“11. … Meta tags are special lines of code embedded in web pages. All HTML (hyper text markup language), used in coding web pages, uses tags. Meta tags are a special type of tag. They do not affect page display. Instead, they provide additional information: the author of the web page, the frequency of updation, a general description of the contents, keywords, copyright notices and so on. They provide structured data (actually, meta-data) about the web page in question. Meta tags are always used in web-pages ‘<head>…</head>’ section, before the display section that begins with the tag ‘<body>…</body>’.”
Liability of misleading meta-tags
The question of whether ignorance of facts claimed by the defendants alleging cluelessness with regard to the insertion of such misleading meta-tags can be used as a defense has not yet surfaced in the Indian jurisprudence, the Belgian Courts, however, have taken a strong stand and made precedents indicating that the owner of the websites is to take the sole responsibility for the content on the website and the source code of the websites. In a Belgian case[3], it was held that the Defendant alleged that since the meta-tags and its contents are deliverables of the web designer to the defendant, the defendant was not the appropriate authority to decide the contents of the meta-tags; the Belgian Courts firmly held that even so, the website owner is the sole proprietor of the website and besides, the contract executed between the website owner and the web designer exempted the latter from any liability related to the contents of such meta-tags.
In another Belgian case[4], further reiterating and reaffirming the previous judgment, the Court held that it the sole responsibility of the website owner to verify the contents of the source code and not of the administrator of the search engine, thus negating the Defendant’s contention that the administration of the search engine had not updated his database, thus resulting in misleading meta-tags.
Doctrine of Initial Interest Confusion
On the premise of meta-tagging creating confusion in the minds of the unaware consumer, when a consumer searches for a product or service online, it is an undisputed fact that the trademark laws that must guard unaware consumers from being duped by competitor websites who use misleading meta-tagging.
The doctrine of Initial Interest Confusion allows the plaintiff to be granted remedies for infringement even if the alleged infringement causes temporary confusion in the minds of the consumer, even if it is prior to any purchase of such goods or service. This doctrine was first applied in the case of Grotrian v Steinway & Sons[5], where the Court believed that the advertisements in the name of “Steinway” would mislead the consumer into “an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian-Steinweg is at least as good, if not better, than a Steinway” but perhaps considering the consumer demographic of piano purchaser who may be more careful with their purchases thus, not resulting in any major financial losses for the plaintiff. Re-applying the principle of Initial Interest Confusion, Judge L. F. MacMahon, in the case of Mobil Oil Corporation, v. Pegasus Petroleum Corporation[6] where Mobil was the registered holder of the mark “Pegasis” and the logo mark of the Greek God Pegasis while Pegasis Petroleum’s logo did not resemble Mobil’s logo mark or word mark in any way, however, the Court concluded that Pegasis Petroleum was misleading potential customer in initial interest and hence, constitutes sufficient trademark injury.
Applying the principle of initial interest doctrine for the first time in meta-tags in the case of Brookfield Communications, Inc. v. West Coast Entertainment Corporation[7], the plaintiff, a registered proprietor of “Moviebuff” and defendant who used the same mark as description in their meta-tag, thus deceptively resulting both the plaintiff’s and the defendant’s links to popped up in the search result, creating initial confusion in the minds of the consumers only for them to find themselves browsing through the defendant’s websites which was distinctively different from that of the plaintiff, amounted to trademark infringement under this doctrine.
In another interesting case[8], in an appeal for a dismissed suit, the United States Court of Appeal for the Ninth Circuit (the Ninth Circuit) accepted the appellant’s contention that even though the consumers were aware that they were not buying services from the appellant’s services, selling banner ads with appellant’s trademarks “playboy” and “playmate” still amounted to trademark infringement under this doctrine as the respondent was still feeding on the appellant’s good will to increase their sales.
Thus, it can be concluded that commercially using another’s trademark as a meta-tag seldom amounts to fair use. While the distinction between fair use and unfair use of meta-tags is often circumstantial and tricky, it is can be safely deduced that commercial gain, whether in the form of footfalls, good will or actual sale by the use of trademarks or deceptively similar trademarks in meta-tags or ads, as in the case of People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & ors[9], still amounts to infringement.
Fair use in meta-tags
An Exception to the doctrine of initial interest confusion is the use of trademarks that may actually be descriptive of the service or goods provided by the website owner, which will amount to fair use of such terms or words for the purpose of a meta-tag. In the case of Playboy Enterprises, Inc. v. Welles[10], the defendant, Miss Welles, was a former playmate and hence use of the terms “playboy”, “playmate of the year” and “playmate of the month” among other terms in the meta-tags of her website did not amount to infringement as such use was permitted on the ground that the terms were descriptive of the kind of service her website provided and for describing herself.
Another exception to the doctrine is the use of trademarks in meta-tags so as to attract customers to view the opinion of a certain product or service so expressed. This exception was precedented in the case of Bally Total Fitness v. Faber[11] where the defendant maintained a sub-domain called “Bally Sucks” and justified this use of the trademark “Bally” as a consumer criticism acknowledging the use of the registered trademark to attract customers so that one searches for the term ‘Bally’ on the search engine, both the plaintiff and defendant’s site would be pop up and an average user shall have the option to obtain complete information about ‘Bally’ including the opinion of others on ‘Bally’ and removing the said meta-tags would alienate the user from complete and total information regarding the mark “Bally”. Comparative statements in meta-tags also categorizes as fair use of trademarks in meta-tags[12]
Thus, summarizing, use of trademarks in meta-tags purely for describing goods or services of the said website or as ensuring opinions have been reached or even as to compare competitive brands may be allowed under fair use, however, such use is strictly circumstantial and depends largely on the facts of the case.
Conclusion
The use and misuse of intellectual property on the internet is still a new terrain that needs to be discovered for our legal system. To add to this, while our nation neither recognizes net neutrality as an unfettered right nor complete and absolute intellectual property rights, thus, leading misleading meta-tags to be a huge grey area where every verdict will be based on circumstances than concrete laws and predetermined principles. India has long started recognizing the malpractices in the use of meta-tags and search engines that amount to malicious corruption of search results for the end user but we, as a nation, do not have any concrete laws in place to regulate the use of such tags except a few precedents[13] to formulate basic rules to be abided. The need for statutory laws to address cyber security for intellectual property is being felt now more than ever with the government preferring e-commerce over off-line retail and the netizens have no choice now but to wait and watch for some provisions to be made.
Amruta Mahuli, Legal Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at mumbai@khuranaandkhurana.com
[1] Oppedahl & Larson v. Advanced Concepts, Civ. No. 97-Z-1592 (D.C. Colo., July 23, 1997)
[2] People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & ors., NMS (L) NO. 1504 of 2014 in SUIT (L) NO. 622 OF 2014
[3] Belgacom v. Intouch, 15 October 1999, (translation in) Computerrecht, 2000, Nr. 5, 245-247
[4] NV Resiplast v. BVBA Resin, 4 February 2002
[5] Grotrian v Steinway & Sons, 365 F. Supp. 707 (1973)
[6] Mobil Oil Corporation, v. Pegasus Petroleum Corporation, 818 F.2d 254 (2d Cir. 1987)
[7] Brookfield Communications, Inc. v. West Coast Entertainment Corporation 174 F.3d 1036 (9th Cir. 1999)
[8] Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)
[9] Ibid. 2
[10] Playboy Enterprises, Inc. v. Welles , 7 F.Supp.2d 1098 (S.D. Cal. 1998)
[11] Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998)
[12] FS 2434/97, Hillerod fodgeret, November 17, 1997.
[13] Mattel, Inc. and Others vs. Jayant Agarwalla and Others, 2008 (38) PTC 416; Consim Info Pvt. Ltd. Vs. Google India Pvt. Ltd. & Ors, 2013(54)PTC578(Mad); Samsung Electronics Company Limited & Anr. vs. Kapil Wadhwa & Ors., C.S. (OS). No.1155/2011