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Prepared By: Melissa C. Marsh, Los Angeles Business Attorney
Written: December 2000

The Internet revolution has changed the way companies do business. Advertising, marketing and branding are becoming more important. A product search that might have taken many hours just a few years ago can now be accomplished in minutes. So what does that mean for companies? It means that trademark protection is more important than ever.

One real threat to a company's trademarks is the infringing use of "meta tags." Meta Tags are "hidden" links between an Internet web site and a search engine like Yahoo! or Alta Vista which describe and identify web sites. This can be problematic because search engines provide search results (or hits) based on its survey of web site meta tags. When an Internet user enters a term into a search engine query, the search engine attempts to match the search term with web sites containing the same terms in their meta tags. So if a competitor is using your trademark in its Meta Tags, consumers looking for your web site may be directed to the competitor's web site. One court that recently examined this practice concluded that the use of another's trademarks in web site meta tags is actionable trademark infringement under the Lanham Act 15 U.S.C. §§ 1115 et seq.

The Lanham Act provides federal protection from trademark infringement and unfair competition, which extends both to registered and unregistered marks. A plaintiff alleging trademark infringement must establish that it is the owner of the mark and that the defendant's unauthorized use of its mark is: (1) likely to cause consumer confusion, (2) deceptive or (3) likely to cause a consumer mistake. Under the Lanham Act, a successful plaintiff can receive injunctive relief and damages - including the defendant's profits from the infringement. In exceptional cases where the infringement is willful, deliberate or malicious the plaintiff can also recover its attorneys fees.

The Ninth Circuits recent decision in Brookfield v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) represents one court's willingness to find liability for the infringing use of Meta Tags. In Brookfield, the court concluded that defendant's use of Brookfield's registered trademark "MovieBuff" in defendant's web site Meta Tags was actionable because when consumers entered the term "MovieBuff" into a search engine, the search results would likely include the defendant's web site. The court further reasoned that because many consumers who originally looked for Brookfield's product will simply use West Coast's products instead, the diversion was damaging to Brookfield. Although no sale occurred, the Ninth Circuit court ordered the district court to enter a preliminary injunction against the defendant.

In conclusion, if a competitor is using your trademark in its Meta Tags, the Lanham Act may provide a cause of action to force your competitor to stop. Since the Lanham Act can be employed quickly to enjoin infringing activity, it may provide effective protection against metatag trademark infringement. Of course, each case must be evaluated on its particular facts, and other courts may address this issue differently than the Ninth Circuit.

© 2000 Melissa C. Marsh. All Rights Reserved.