Dave Doobay Nicholas Johnson CLS98

Cybertags: The Policing of

"Invisible" Trademark Infringement

by Davenan K. Doobay

Davenan K. Doobay is a second year law student at the University of Iowa College of Law in Iowa City, Iowa. Copyright ( 1998.

I . INTRODUCTION

Imagine this scenario: suppose that you are President and CEO of a Fortune 500 corporation. And suppose that the company designs and manufactures a variety of innovative products.

In order to remain competitive, you have convinced the board of directors to create and employ a corporate "think tank"1 with the best and brightest minds money can buy. Although the think tank substantially reduces the company's profit margin, corporate shareholders have been assured that it will provide innovative ideas for new and improved products. New and improved products will ensure continued market share success.

The "Widget"2 is the think tank's prize innovation. A prototype was introduced to the board of directors and immediately approved for manufacture.

Subsequent to the investment of millions of dollars designing and manufacturing the Widget, corporate counsel made application and received federally applicable copyright,3 patent,4 and trademark5 protection.

In an effort to promote the goodwill of both the company as well as the Widget, the board of directors approved a costly promotional campaign. The promotional campaign included newspaper, magazine, radio, and television advertisements. In addition, the board of directors agreed with marketing strategists to go forward with the development of a corporate Web page to promote their prize product.

Needless to say, the investment was well worth the risk as the Widget exploded onto the market place.

Months later, you began to receive a number of alarming customer complaint letters. Because customers could not remember the company's Internet address,6 they entered the federally registered trademark "Widget" into their respective Internet search engines. When the search was complete, customers were confused by all of the sites retrieved. Both your corporate Web page as well as the Web pages of all your corporate competitors were retrieved.

Without authorization, your corporate competitors placed the federally registered trademark "Widget" in the hypertext mark-up language (HTML)7 of their respective Web pages.

Was there trademark infringement? This question will soon be addressed by our courts.

A . What is the Purpose of this Exercise?

For the purpose of this exercise, I will address a unique issue regarding unauthorized third party use of federally registered trademarks8 in the form of metatags9 on the Internet. I propose that unauthorized third party use of federally registered marks10 is arguably unlawful and constitutes trademark infringement.11

Substantively, Part II provides an overview of the Internet and its exponential growth. Part III defines and provides a brief analysis of intellectual property12 and trademark law. Part IV provides a brief analysis of trademark applicability on the Internet. Part V concludes that unauthorized third party use of federally registered trademarks as metatags will extend the boundaries of trademark infringement.

II . THE INTERNET "EXPLOSION"!

The Internet is a global interconnected network of individual, educational, corporate, and governmental computer networks initially established in the late 1960's under sponsorship of the United States Government.13 The United States Department of Defense "wanted to establish a decentralized computer system that would not only be able to survive in case of military attack, but would also allow faster data transfer between the various branches of the military and other government bodies."14 It was not until the 1970's that other various computer networks began to utilize the Internet.15

Today, the Internet has great utility both in personal as well as professional life. Whether it be intracontinental or intercontinental data transfer, the Internet can be used as a medium to both acquire as well as communicate information. Hence, as one might expect, the Internet has been commercialized on a global scale.

The Internet has essentially leveled the corporate playing field. Although it formerly may have been viewed as trendy to have a Web site, it is now well recognized that the Internet can provide economically limitless exposure to ones goods and services. With a nominal fee, both large as well as small corporations can post a Web page and reach potential customers throughout the world.

The commercial utility of the Internet has created numerous intellectual property issues - particularly trademark infringement. While many of the issues that arise may be analyzed and resolved with traditional notions of trademark law, others must be addressed cognizant of what trademark law is designed to protect.16

III . WHAT IS INTELLECTUAL PROPERTY?

Intellectual property is defined as "[c]ertain creations of the human mind that are given the legal aspects of a property right."17 However, "creations of the human mind" is vague.

Intellectual property is distinguishable from real or personal property. While real or personal property is tangible property,18 intellectual property is essentially intangible property.19 Stocks, bonds, and mutual funds can be viewed as intangible property.20

Intellectual property can be valuable.21 Similar to the aforementioned hypothetical, corporations invest a substantial amount of money designing and manufacturing products. After applicable copyright, patent, and trademark protection is secured, it should not be surprising that companies closely monitor unauthorized third party use to protect their investment.22

The law of property is rooted in a set of legal principles defining individual rights in an interest, including the exclusive right of the owner to use, divest, or destroy the interest.23 Intellectual property, however, is limited in terms of the amount of time the interest is protected. For example, copyright protection generally lasts the lifetime of the author plus fifty (50) years,24 patent protection generally lasts twenty (20) years from the filing of the patent application,25 and trademark protection generally "continue[s] indefinitely as long as you neither abandon the mark nor permit it to lose its trademark significance by becoming a generic term."26 Thus, "eventually the rights lapse and the subject matter of the rights, book, invention and so on, is said to be 'in the public domain' . . . ."27 Once in the public domain, "anyone may copy it or make it, or otherwise exercise the rights which formerly were exclusive to the owner."28

A . Why Did Congress Create Laws to Protect Marks?

In order to understand the law of trademarks, one must have a working knowledge of why federal trademark protection was created by Congress and is routinely extended by the courts.29 While copyrights and patents derive their protection from the Copyright Clause,30 trademark protection is rooted in the Commerce Clause.31 Thus, it can be deduced that trademark protection has little to do with promoting the "Progress of Science and useful Arts" and much to do with capitalizing on a thriving free market.

The Lanham Act32 defines the term "trademark" as follows:
[t]he term "trademark" includes any word, name, symbol, or device, or any combination thereof - (1) used by any person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from being manufactured or sold by others and to indicate the source of the good, even if that source in unknown.33

Although statute has extended protection to certification marks,34 collective marks,35 and service marks,36 a mark37 must be in connection with commerce.38

The purpose of a trademark is to: (1) "foster competition" by "protect[ing] the ability of consumers to distinguish among competing producers;"39 (2) avoid consumer confusion as to the sources of goods and services;40 (3) encourage "the maintenance of quality by securing to the producer the benefits of good reputation;"41 and (4) discourage questionable practices in the free market by making unfair competition a federal tort.42

B . Trademark Infringement Liability

The elements of a prima facie trademark infringement claim are well established. In short, trademark infringement liability arises when a subsequent user, without authority from the trademark owner, uses a mark (or a colorable imitation thereof) in such a way as to cause a likelihood of confusion that: (1) the subsequent user's goods/services are produced, sponsored, or approved by the trademark owner; or (2) the trademark owner's goods/services are produced, sponsored, or approved by the subsequent user.43

Likelihood of confusion is generally assessed by the use of a multi-factor standard that considers a variety of specified "market factors," and defendant's intent. The multi-factor standard includes mark "strength," mark similarity, similarity of products/services, alleged infringer's intent to pass off its goods as those of the trademark owner, actual confusion, and degree of purchaser care.44

IV . TRADEMARKS AND THE INTERNET

One of the new and most challenging issues confronted by owners of registered trademarks is the policing of unauthorized third party use of their marks on the Internet.45 The detection of unauthorized use has become a daunting task due to the numerous possibilities of real infringement.46

When a trademark owner fails to monitor unauthorized third party use of their federally registered mark for trademark infringement, they assume the risk of allowing an infringer to build ownership in the mark.47 That is, they may be barred from exercising their right in a mark if they fail to exercise due diligence in policing the mark.48

Domain name disputes aside,49 a unique trademark infringement issue may arise through the unauthorized third party use of federally registered marks in the form of metatags. Although a Web user may not see a trademarked metatag, the unauthorized use may very well affect retrieved Web sites. The use of "invisible trademarks" or "metatags" have been utilized by third parties allegedly to mislead consumers into believing retrieved Web sites are associated with particular trademark owners.

A metatag is a key word or description embedded in the hypertext mark-up language (HTML)50 used to create Web sites. An example of a Web page and corresponding HTML is set forth in the Appendix.51 Due to the fact that a metatag is part of a Web page's HTML, it is not visible on the actual Web page. The use of metatags in HTML enables Internet search engines, such as Yahoo or Alta Vista, to generate search results and retrieve documents by categorizing the content of the Web site without regard to actual substance. When metatags are not used, "coders for a particular search engine must either read, and manually enter the Web site content (rarely done now), or use an automated (or robot) system to scan a certain amount of text (usually the first 200 characters)."52

While the use of metatags are not required for a Web site to function properly, more and more Web page creators are using them to not only list the author, or make claim of copyright, but to designate "key words" for searches.53 Because Web sites can demand advertising monies based on the number of times the site is retrieved, there are financial incentives for Web site operators to use metatags.54 Thus, because the number of key words a metatag can contain is limitless,55 metatags often consist of terms that may or may not be relevant to the particular Web site but are nevertheless included to lure Internet users to the Web site.56

Unauthorized third party use of embedded trademarked metatags may breach trademark laws because it arguably misleads consumers into believing that the Web sites they retrieve are associated with the actual trademark owner.57 However, there are only three cases to look to for guidance.

In the only case which has resulted in a judicial opinion, Playboy Enterprises, Inc. (PEI), sued Calvin Designer Label, Calvin Fuller, and Calvin Merit for trademark infringement, false designation of origin, unfair competition, and dilution.58 PEI learned that the defendants adult Web sites were retrieved after users searched for the federally registered marks "Playboy," "Playmate Magazine," and "Playmate" with Internet search engines.59 PEI alleged, in part, that the defendants unlawful third party use of their federally registered marks in the form of metatags mislead consumers.60

United States District Court Judge Charles A. Legge of the Northern District of California held that PEI was likely to succeed on the merits of its trademark infringement and unfair competition claims against the defendants. Thus, PEI was entitled, in part, to a preliminary injunction against the defendants ordering them to stop making references to Playboy magazine through the use of buried code or metatags on their adult home pages and Web sites.61

The PEI decision, however, did not provide clear answers regarding the use of federally registered trademarks in the form of metatags. Here, the defendants activity was combined with the unauthorized use of PEI's marks in domain names. Is there a cause of action for the use of a federally protected mark only in the form of a metatag?

In Insituform Technologies, Inc. v. National Envirotech Group, L.L.C.62, the plaintiff alleged, in part, that the defendant's use of the federally registered trademarks "Insitupipe" and "Insituform" as metatags was not authorized.63 However, following a settlement agreement, the defendant consented to the entry of a permanent injunction by the United States District Court for the Eastern District of Louisiana. The final consent judgment directed the defendant, in part, to remove all references to the plaintiff at its Web site. Thus, because a settlement was reached without litigation, disputed trademark issues were never addressed by the court.

Similar to PEI, the alleged misconduct was not limited to unauthorized third party use of federally registered trademarks. In fact, the defendant, a direct competitor in the business of pipeline reconstruction, allegedly had images and text on its Web site expropriated wholesale from the plaintiff's marketing materials.64

In a case still pending before the Federal District Court for the District of Colorado, many questions may be answered.65 A Colorado law firm is suing several Web site operators solely for the alleged unlawful third party use of their firm's name, Oppedahl & Larson, as metatags.66 Oppedahl & Larson argue that the defendants unlawful use of "Oppedahl" and "Larson" as metatags misleads the public into believing their services are associated with the firm's business.67 The firm is alleging state and federal trademark infringement, unfair competition, and dilution.68

V . CONCLUSION

Unauthorized third party use of federally registered trademarks as metatags will extend the boundaries of trademark infringement. There are legitimate uses for metatags on the Internet. Metatags in HTML enable Internet search engines efficiently to categorize the content of Web sites. However, unauthorized third party use of federally registered trademarks as metatags in HTML will lead to potential trademark infringement liability.

ENDNOTES

1 See Random House Webster's College Dictionary 1387 (1992) ("a research organization employed to analyze problems and plan future developments, as in military, political, or social areas.").

2 See Random House Webster's College Dictionary 1523 (1992) ("something considered typical or representative, as of a manufacturer's products.").

3 For additional information, see 17 U.S.C. section 101 et seq.

4 For additional information, see 35 U.S.C. section 101 et seq.

5 For additional information, see 15 U.S.C. section 1051 et seq.

6 A uniform resource locator (URL) is often referred to as a web page's Internet address.

7 See infra note 48.

8 See 15 U.S.C. section 1051 et seq.

9 See infra p. 7-11.

10 See 15 U.S.C. section 1127

The term "mark" includes any trademark, service mark, collective mark, or certification mark.

11 See 15 U.S.C. section 1114(1)

(1) Any person who shall, without the consent of the registrant -

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy or colorably imitate a registered mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

As used in this subsection, the term "any person" includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.

12 See infra note 20.

13 Gary W. Hamilton, Trademarks on the Internet: Confusion, Collusion or Dilution?,
<http://www.utexas.edu/law/journals/tiplj/vol4iss1/hamilton.htm>.

14 Id.

15 Id.

16 Sally M. Abel & Marilyn Tiki Dare, Trademark Issues in Cyberspace, <http://www.ljx.com/internet/0997inba-tm.html>.

17 J. Thomas McCarthy, McCarthy's Desk Encyclopedia of Intellectual Property 219 (2d ed. 1995).

18 Tangible property may include the creative expression fixed in a book, movie, etc. (not the copy of the book itself).

19 Intangible property may include the inventive ideas embodied in a device, method, etc. (not the device itself).

20 Paul Marett, Marett: Intellectual Property Law 1 (1996).

21 Id.

22 Id.

23 Donald A. Gregory et al., Introduction to Intellectual Property Law section 1.1, at 1 (1994).

24 Jane C. Ginsburg et al., Trademark and Unfair Competition Law: Cases and Materials 48 (2d ed. 1996).

25 Id. at 51.

26 Id. at 46.

27 Marett, supra note 21, at 2.

28 Id.

29 See generally Jay Dratler, Jr., Intellectual Property Law: Commercial, Creative, and Industrial Property, section 9.02[1] (1991).

30 See U.S. Const. art. I, section 8, cl. 8

The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings an Discoveries.

31 See U.S. Const. art. I, section 8, cl. 3

The Congress shall have Power . . . To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.

32 Trademark Act of 1946 (Lanham Act), as amended through January 1996, 15 U.S.C. section 1051 et seq.

33 15 U.S.C. section 1127.

34 See Id.

The term "certification mark" means any word, name, symbol, or device, or any combination thereof -

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this Act, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

35 See Id.

The term "collective mark" mean a trademark or service mark -

(1) used by the members of a cooperative, an association, or other collective group or organization, or

(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, and includes marks indicating membership in a union, an association, or other organization.

36 See Id.

The term "service mark" means any work, name, symbol, or device, or any combination thereof -

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

37 See Id.

The term "mark" includes any trademark, service mark, collective mark, or certification mark.

38 See Id.

The word "commerce" means all commerce which may lawfully be regulated by Congress.

39 Park 'N Fly, Inc. v Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985); See also Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 873 (8th Cir. 1994).

40 See 15 U.S.C. section 1127

The term "trademark" includes any word, name, symbol, or device or any combination thereof -

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

See also Centaur Comms., Ltd. v A/S/M Comms., Inc., 830 F.2d 1217, 1220 (2d Cir. 1987); HMH Publishing Co. v. Brincat, 504 F.2d 713, 716 (9th Cir. 1974).

41 Park 'N Fly, 469 U.S. at 198.

42 See 15 U.S.C. section 1127

The term "trademark" includes any word, name, symbol, or device or any combination thereof -

(1) used by a person, or

See also, e.g., Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 207 (3d Cir.), cert. denied, 116 S.Ct. 54 (1995); Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1172 (2d Cir. 1976); Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 145 (3d Cir. 1953).

43 See 15 U.S.C. section 1114(1)

(1) Any person who shall, without the consent of the registrant -

See also AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).

44 See Squirtco v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980); See also Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989); Merchant & Evans, Inc. v. Roosevelt Bldg. Prods. Co., Inc., 963 F.2d 628 637 (3rd Cir. 1992); Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 320 (4th Cir.), cert. denied, 113 S.Ct. 206 (1992); Sno-Wizard Mfg., Inc. v. Eisermann Prods. Co., 791 F.2d 423, 428 (5th Cir. 1986); Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991); Smith Fiberglass Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992); Coherent, Inc. v. Coherent Technologies, Inc., 935 F.2d 1122, 1125 (10th Cir. 1991); Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir. 1989), cert. denied, 111 S.Ct. 369 (1990).

45 Steven M. Weinberg, Cyberjinks: Trademark Hijinks in Cyberspace through Hyperlinking and Metatags, 87 Trademark Rep. 576, 588 (1997).

46 Id.

47 James M. Jordan III, Get on Your Marks,
<http://www.ipmag.com/ajordan.html>.

48 S. Gilson & J. Samuels, Trademark Protection & Practice, section 5.11[2] (Mathew Bender, rel. 35, May 1996).

49 See generally <ftp://rs.internic.net/policy/internic/internic-domain-4.txt>.

50 HyperText Markup Language, <http://www.w3.org/MarkUp>
Hypertext mark-up language (HTML) is the lingua franca for publishing hypertext on the World Wide Web. It is a non-proprietary format, based upon SGML and can be created and processed in a wide range of tools from simple plain text editors to sophisticated wysiwyg authoring tools. HTML uses tags like <hl> and </hl> to structure text into headings, paragraphs, lists, hypertext links and more.

51 See infra p. 21-25.

52 Robert C. Scheinfeld & Parker H. Bagley, Emerging Issues on the
Internet, <http://www.ljx.com/internet/1126netissue.html>.

53 Id.

54 Id.

55 Id.

56 Meeka Jun, Meta Tags: The Case of the Invisible Infringer,
<http://www.ljx.com/internet/1024meta.html>.

57 Kathryn L. Barrett & Michael F. Clayton, Practicing Law Institute: Patents, Copyrights, Trademarks, and Literary Property Course Handbook Series, 497 PLI/Pat 589, 599 (1997).

58 <http://www.ljx.com/internet/playbcomplaint.html>.

59 Id.

60 Id.

61 Civ. No. C-97-3204 (N.D.CAL. Sept. 8, 1997).

62 Civ. No. 97-2064 (E.D. La., final consent judgment entered Aug. 27, 1997.

63 New Legal Issue: Use of Meta-Tags, <http://www.ljx.com/internet/1997_09_02.html>.

64 Ann Davis, "Web Weaves a Tangled Trademark Issue," The Wall Street Journal, Sept. 15, 1997, at B10.

65 Oppedahl & Larson v. Advanced Concepts, et al., Civ. No. 97-Z-1592 (D.C.Colo., complaint filed July 23, 1997).

66 Id.

67 Id.

68 Id.