Searching for Trademarks:

Website’s use of competitor’s trademark in Meta Tags to
boost search engine hits ruled legal
By Jeffrey A. Cohen, Esq. & Jonathan Starre, J.D. candidate

Website operators may use their competitor’s trademarks within hidden codes to attract the roving eyes of search engines, a New York federal court ruled this May. The court dismissed a lawsuit for trademark violations where the defendant had included the plaintiff’s trademark in hidden “metadata,” making it possible for its website to appear in the search results for queries relating to the plaintiff’s trademark. The defendant had also purchased a sponsored link on Yahoo! that appeared whenever a user conducted a search for the competitor’s trademark.

The District Court for the Eastern District of New York determined the extent of permissible trademark usage allowed in web design and advertisement in Site Pro-1, Inc. v. Better Metal, LLC, 2007 U.S. Dist. LEXIS 34107. The controversy began when Site Pro-1, Inc. sued Better Metal, LLC for trademark violations under the Lanham Act. Better Metal included Site Pro’s trademark in its website’s metadata tags that enabled Better Metal to appear as a search result whenever a search engine user entered the Site Pro trademark into the search field. Better Metal also purchased a sponsored advertisement on Yahoo! and included the Site Pro trademark in its search algorithm, causing the Better Metal advertisement to appear whenever a user searched for Site Pro. Better Metal argued that using the trademark in this fashion was not a commercial use of the type that would be banned by the Lanham Act.

The Court agreed. Use of another’s trademark in commerce by placing the mark on goods, displays, containers, or advertisements, or by using it in any way that indicates a false source or origin is a trademark infringement. The Court reasoned that since Better Metal did not actually display the Site Pro trademark to consumers on the website, Better Metal did not engage in an illegal commercial use. The decision reflects existing law in the Second Circuit of the United States Court of Appeals, which includes New York, Connecticut, and Vermont.

Other federal courts are more expansive in their definition of commercial use. The Ninth and Tenth Circuits, covering California, Alaska, Hawaii, Washington, Oregon, Nevada, Arizona, Idaho, Montana, Utah, Wyoming, Colorado, New Mexico, Kansas, and Oklahoma, as well as individual district courts in Pennsylvania, New Jersey, Minnesota, and Virginia interpret the Lanham Act more broadly. Most courts proscribe the use of another’s trademark in metadata tags and in search algorithms for sponsored links. In these jurisdictions, a website’s use of another’s trademark can be misleading to consumers even when the website does not actually display it, but uses it in this manner. The split in jurisdictions will likely remain until the United States Supreme Court reviews the issue and makes a final determination of the proper interpretation of the Lanham Act.

Interpretation of trademark law varies depending upon the jurisdiction applicable to your website. Your website may be subject to the more than one jurisdiction. Therefore, consultation with legal counsel familiar with Internet and Internet marketing law is imperative to determining legal compliance and risk avoidance for Website operators.

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Jeffrey A. Cohen is a partner at Chapman, Glucksman, & Dean where he leads the Internet and Technology practice group. He is also the founder of InternetLitigators, an organization that provides legal and business strategy consultation services to Internet related companies. To contact Mr. Cohen please call (310) 207-7722 or visit www.cgdlaw.com. Jonathan Starre is a summer associate at Chapman, Glucksman, & Dean.