Trademark Cases Arise from Meta-Tags, Frames: Disputes Involve Search-Engine Indexes, Web Sites within Web Sites, as well as Hyperlinking

1. INDIRA GANDHI DELHI TECHNICAL UNIVERSITY
FOR WOMEN
Subject - Cyber Laws & Rights
M. tech. 3rd Sem., ISM.
 By: Prashant Kr. Vats,
 M.tech., Ph.D.

2. Trademark Cases Arise from Meta-
Tags, Frames: Disputes Involve
Search-Engine Indexes,
Web Sites within Web Sites, as well
as Hyperlinking.

3. • ON THE INTERNET, vigilance and quick response are vital. A
trademark owner who neglects to monitor the Internet for
infringement and dilution runs the risk of allowing an
infringer to build up rights over a period of months or
years, making the infringement more difficult to cure.1
• In addition, as courts increasingly apply state statutes of
limitations of false advertising claims under Sec. 43(a) of
the Lanham Act, a business that is on notice of a Web site
containing false or deceptive advertising may be barred
from proceeding if it fails to exercise due diligence to find
and challenge the offending activity.2
• Some trademark and unfair competition issues are
completely new to the Internet and result from specific
technological attributes of the medium. In addition to
"domain name" disputes, which began to result in court
rulings in early 1996,3unfair competition activities now may
also include linking, framing and meta-tagging.

4. Linking Issues
• On the World Wide Web, it is not only possible, but quite common and
generally encouraged, for operators of Web sites to create "hypertext links"-so
named because they are links to hypertext somewhere else on the Web,
which is constructed in a computer language called hypertext markup
language, or HTML. These typically appear as blue underlined text, but also in
other colors and as graphics images. These links are sometimes referred to by
the shorter-and less text specific-name "hyperlinks" or simply "links."
• When the viewer clicks the left mouse button while the screen cursor is over
one of these text or graphic links, his or her screen will change to a view of
another Web site (or a different part of the same one). The ability to hyperlink
sites in this way creates a "web" of sites and is the reason that this graphical,
linkable part of the Internet is called the World Wide Web. Some argue that
because links are such an inherent part of the Web, anyone choosing to
operate a Web site has given an "implied license" for others to link to it,
unless, perhaps, a disclaimer of such a license appears on the site.4
• The owners of the Shetland Times, a newspaper in the United Kingdom,
apparently disagree. When a second newspaper, the Shetland News, began
linking headlines on its Web site to articles on the Shetland Times Web site,
the Times decried this as "parasitic activity" and filed suit.
• (A "live" demonstration of the types of links which were being made appears
at http://www .shetlandtimes.co.nk/st/legalink. htm).

5. • The Scotland Court of Sessions (at least preliminarily) agreed Oct. 24, 1996, and issued
an "interim edict," similar to a U.S. preliminary injunction, prohibiting the News from
making such links.5
• The case is still pending with respect to permanent injunctive relief. While based
primarily on copyright law principles, the case could have been cast as an unfair
competition law claim under U.S. law.
• A second hyperlinking case-in the United States-has been cast under an unfair
competition theory. In April, Ticketmaster Corp., a purveyor of tickets to concerts and
other events, sued Microsoft Corp. over Microsoft's use of "unauthorized" hyperlinks
that connect Web users directly from Microsoft's "Seattle Sidewalks" city-guide Web
site to the ticket sales portions of Ticketmaster's site, bypassing the Ticketmaster home
page and its associated advertising.6
• Ticketmaster alleges claims of unfair and deceptive trade practices and dilution of
Ticketmaster's trademarks. Ticketmaster also alleges in its amended complaint that
negotiations had occurred (and failed) between Microsoft and Ticketmaster prior to the
lawsuit for an agreement allowing Microsoft to "profit from linkage to and association
with Ticketmaster's name, marks, and Web site," and that Microsoft is now "feathering
its own nest at Ticketmaster's expense."7
• Microsoft responded in its answer that "any business, such as Ticketmaster,
participating in the Internet and the World Wide Web invites other participants to use
the business' Internet addresses and URLs to contact it," and has counterclaimed for a
declaratory judgment that "Microsoft has lawfully used hypertext links," stating that
such an order is necessary to "remove any chill from the free workings of the
Internet." 8The case is still pending.

6. • Arguably, the use of "deep links"-links that take the viewer to
portions of a Web site below the identifying information on
the home page-are more misleading than "surface links,"
which link to the home page of the Web site. It appears that
both the Shetland and Ticketmaster disputes involved deep
links, and it remains to be seen whether a case involving
surface links will be treated differently.
• In addition to linking to another's site without authorization or
in a misleading way, it is possible to use hyperlinks in other
ways that can legitimately be labeled unfair competition.
Suppose, for example, that Smith Company makes a reference
to Jones Company on Smith's Web site, and that the "Jones
Company" text is a hyperlink leading one to a picture of circus
clowns (on the Smith site or elsewhere). If Jones is in a
business not involving circus clowns, this may be construed as
a disparagement, which most would agree is actionable. The
same would likely be true if the linked site were a Web site set
up by Smith to look like a Jones site but reflecting poorly on
Jones.

7. Framing Cases
• It is also possible on the Internet to set up a Web site so that the viewer will
click on a hyperlink and find a second Web site displayed within a "frame"
which is on the first Web site. This technique can also be used in ways that
could be construed as unfair competition by the courts.
• In the United States, for example, the TotalNews Web site used framing
technology in such a way that the content from various newspaper sites
(along with their logos) was displayed within a frame on the TotalNews site.9
• The advertisements seen by the viewer at the bottom of the screen, however,
were still the advertisements placed on the TotalNews site.
• In a lawsuit filed Feb. 20, The Washington Post and several other news
providers whose content had been "framed" by TotalNews claimed that
TotalNews Inc. had "designed a parasite website that republishes the news
and editorial content of others' websites in order to attract both advertisers
and users."10
• The plaintiffs stated claims for misappropriation, trademark dilution and
infringement, false and deceptive advertising, unfair trade practices, copyright
infringement, and tortious interference with advertising contracts.11
• The case settled June 6 with an agreement under which TotalNews may
continue to link to the news organizations' sites, but may not do so in such a
way that the content of the news organizations' sites appears on the user's
browser in a frame within the TotalNews site display.11

8. Meta-Tag Disputes
• The most current version of unfair competition disputes on the Internet is the "meta-
tag" dispute. Viewers may not realize that the text and graphics on a Web site are
written in HTML and that the HTML version of the document contains not only what
the viewer sees, but also a number of tags and markers that are not seen.
• Some of these tags, called meta-tags, may be used to designate words that are
identifiable to search engines, such as the AltaVista search engine at (http://
altavista.digital.com). In the absence of any other information, AltaVista will index
certain selected words appearing in a Web site HTML document and use the first few
words of the document as a short abstract. However, the operator of the site can use
meta-tags to control the indexing of the site by the search engine, specifying both
additional keywords to index, and a short description.
• It has become a popular practice for, say, Brand-X company to bury the trademarks of
a better known competitor (such as Brand-Y) in these meta-tags, so that a viewer
searching for Brand-Y by name will find Brand-X as well. Because the mark does not
appear on the visible part of the page, this is sometimes referred to as "invisible
trademark infringement," but it is probably more accurate to call it a deceptive trade
practice or unfair competition.
• One way to find out if a competitor is using meta-tags to harm a client is to enter the
client's trademark as a search term (as is typically done to detect an infringement)
and then to note the Web sites upon which the mark does not visibly appear. One
can then view the HTML version of those pages (this can be done in the Netscape
Navigator browser by clicking on "view" and then "document source"). This will
reveal the terms included in the meta-tag.

9. • Several meta-tag disputes have been taken to court. One of these, Nat'l
Envirotech Group L.L.C., Institution Technologies Inc. v. Nat'l Envirotech
Group L.L.C. 13 settled Aug. 27.14
• The final consent judgment directs the defendants to delete the
plaintiff's federally registered trademarks and service marks from the
meta-tag keyword sections of the html code in the defendants' Web
site.15
• In a second case, Playboy Enterprises Inc. v. Calvin Designer Label,16 an
order was issued Sept. 8 which appears to be the first to grant
injunctive relief from the use of meta-tags. The order preliminarily
enjoins the defendants from, among other things "using in any manner
the PLAYMATE or PLAYBOY trademarks...in buried code of meta-tags on
their home page or Web pages...."17
• Specifically, the Playboy order states that "PEI is likely to succeed on
the merits in proving inter alia trademark infringement, unfair
competition, including a false designation of origin and false
representation, in...repeated use of the PLAYBOY trademark in machine
readable code in Defendants' Internet Web pages, so that the PLAYBOY
trademark is accessible to individuals or Internet search engines which
attempt to access Plaintiff under Plaintiff's PLAYBOY registered
trademark."18

10. • Because the defendants' activity, however, was combined with the
use of the trademarks in domain names and in the visible content
on defendants' Web site, it remains to be seen whether other
courts will find that the use of meta-tags alone will support a cause
of action.
• It will be interesting to track the progress of another pending
case19 filed in a Colorado district court by the New York law firm of
Oppedahl & Larson (on its own behalf) against several Internet
businesses, alleging unfair competition and trademark infringement
and dilution arising from the use of the firm's name in meta-tags.20
• In this case, unlike the Playboy suit, the use of meta-tags does not
appear to have been combined with domain name or other uses of
the firm name.
• The newest and fastest-growing medium for commerce-the
Internet-is, perhaps not surprisingly, rapidly incubating new forms
of unfair competition, as well as repackaged versions of old tricks.
Businesses should be vigilant for these tactics (and cautious about
their own practices) to avoid becoming a victim or a defendant.

11. Thank you