Is Your Website Violating Trademark Law?

by Laurie Sayevich Horz

With the recent proliferation of the use of the Internet, many website owners are learning that it takes more than just catchy graphics and icons to get and keep users logged onto their websites. In order to get more users onto their websites, the use of metatags has flourished. And, once the site attracts users, the use of links and deep linking can make a difference as to the volume of traffic on a particular site. Owners of websites are learning quickly, however, that these valuable tools must be used cautiously in order to avoid liability for trademark infringement. This newsletter provides an overview of the proper use of metatags and links, and the type of behavior found to constitute an infringement of another's trademark by use of such tools.

Metatags

Metatags are words implanted into a website that will call up the website in an Internet search for a matching word. The metatags are invisible to the user, but are used by a search engine to retrieve relevant sites. For example, a website selling compact discs may have metatags such as "CDs", "compact disc" or "music". The issue becomes whether such a site can also use metatags such as "cdnow", "amazon" or other competitors' names so to enable users to find the website.

Trademark owners have begun to challenge the unauthorized use of their trademark by others as a metatag. Playboy, for example, sued two adult entertainment websites because they used "Playboy" and "Playmate" (Playboy's registered marks) as metatags on their sites. In Playboy Enterprises v. Calvin Designer Label, a California court ruled that the use of Playboy's marks by the competing websites as metatags constituted trademark infringement, because it would likely cause confusion, falsely represented the origin and contents of the sites, and diluted Playboy's marks. As a result, the court enjoined the competitors' use of the marks.

On the other hand, if the use of the metatag constitutes a fair use of another's trademark, then the use may be upheld as non-infringement. This issue is sure to be addressed by courts in the near future. Website owners should check with their website designer or "webmaster" to be sure that their metatags are not infringing other marks. Likewise, trademark owners should perform searches containing their mark on different search engines to see whether another site is infringing on its registered trademark.

Links

A "link" or "hyperlink" is a web address coded on a website that permits a user to click on an object or underlined word to call up another website on the computer.

Links are valuable to the website providing the link because the link allows the site user to obtain information from a different source without the website provider exposing itself to copyright infringement (i.e., linking to the information as opposed to copying it and posting it on the site).

However, another form of linking, called "deep linking" can expose a website provider to liability. Deep linking involves linking to the content of another website, but instead of linking to the second site's homepage, the link is to an "interior" page of the second site. The theory underlying deep linking is that the user will view the information on the second site and then return to the first site. The issue that has arisen from this scenario is that it arguably takes advantage of the other site, since the user cannot explore the second site, but only the interior page to which it is linked. Indeed, Ticketmaster has filed a lawsuit contending that this scenario constitutes illegal copying of the content of its site, copyright infringement, unfair competition, false advertising and unfair business practices.

In any event, in order to minimize potential liability, a website provider should not imply that the linked content is its own. If there is a likelihood of confusion, there may be liability.

Conclusion

A website owner should be aware of the potential liability that attaches to the misuse of metatags and links on its website. In questionable situations, a website provider should consult with an attorney to determine whether the use is legal, or whether such use could expose the website owner to liability.