By: A.M.

In 1999, the Ninth Circuit in Brookfield Communication v. West Coast Entertainment held that the intentional use of a company’s trademark as a metatag on a competitor’s website constituted trademark infringement. This landmark case relied upon the doctrine of initial interest confusion, as articulated by the Second Circuit in Mobile Oil Corporation v. Pegasus Petroleum Corporation more than a decade before. Numerous courts have since relied upon Brookfield, using the doctrine of initial interest confusion to sustain trademark infringement claims in the internet context.

In recent years, however, some courts have criticized the finding of trademark infringement based on a metatag, an invisible label applied to a website that is used by some search engines in generating results pages in response to a query. Last year in Fragrancenet.com, Inc. v. FragranceX.com, the Eastern District of New York held that metatags could not support a claim of trademark infringement because they did not constitute “use” of a trademark, a mandatory element of trademark infringement, as set out in the Lanham Act. The court focused on the invisible nature of the metatag, stating that as the trademark is never seen by the consumer, it is not being “used” as that term is meant by the Lanham Act. The court went on to liken the use of a metatag to an individual’s private thoughts on a trademark, which would never constitute infringement.

While the Eastern District grounded its objections to the Ninth Circuit’s reasoning in the use element of trademark infringement, the invisibility of a metatag is also relevant in terms of the likelihood of confusion that might result from an infringing metatag. Liability for trademark infringement hinges upon the use of a trademark in commerce in a way that is likely to confuse the consumer. While an individual might append a metatag to their website that is identical to a competitor’s mark, the average consumer will never see the tag. The mark will only be seen by a search engine that reads metatags. Consumers will simply see the results page generated by the search engine. Typically, a search results page will list the names of the websites called up by the search, and a brief description of each site. It is the names of the different websites and these brief descriptions that a consumer will see, not any metatags an individual may attach to their website. As a consumer will most likely be presented with a list of websites that includes the one they were originally searching for, it is unlikely they would be confused or diverted to a website with a different name and description because of an invisible label.

Critics have also focused on the practical inadequacies of the Brookfield ruling. Primary among these considerations are the realities of internet traffic. In Brookfield, the Ninth Circuit drew an analogy to the brick and mortar world, where a sign to a major video store off a highway would induce a customer to leave the road, only to find a different store when they got there. That customer, having already left the highway would be likely to remain at this other store and make a purchase, rather than leave again with nothing. However, this analogy does not take into account the simplicity of movement on the internet. There is no equivalent to driving off the highway. An individual led to a website by a metatag can simply hit the back button to return to where they were and continue searching for what they were originally looking for. The initial interest confusion doctrine exists to prevent the use of a mark to lead consumers towards one product when they are seeking another. Even if the consumer realizes that they have encountered a different product or service prior to making a purchase, they have expended considerable energy in reaching the product of the infringer, and may not wish to backtrack to obtain the originally sought-after product. While this reasoning is clearly applicable to the brick and mortar analogy drawn by the Brookfield court, it does not apply to cases on the internet. There is no overwhelming burden on the consumer to try and undo the damage caused by a confusing metatag. Any consumer looking for a specific product does not have to take great pains to rectify being lead to a competitor’s website.

Furthermore, current cases that rely on the Ninth Circuit’s holding in Brookfield ignore the changes that have taken place in search engine technology. In recent years, the majority of search engines have stopped using metatags as a relevant factor in the algorithms used to generate search results. Most search engines, including Google, have moved towards ranking sites on search results pages based on their popularity, or how many other websites link to that site. As metatags fall further into disuse, the likelihood that any consumer is going to be confused by the application of these invisible labels drastically decreases.

These criticisms of the Brookfield decision and its progeny correctly identify the flaws in allowing a metatag to support claims of trademark infringement. Courts should not afford trademarks such strong protection as to prevent their invisible use as a largely antiquated search engine tool. Lanham Act sections 1114 and 1125, under which metatag cases have been filed, were not intended to prevent this kind of use, but the public misappropriation of a mark in a way that was likely to confuse a consumer and result in a purchase, or an expenditure of energy so great that the consumer was unlikely to go back and seek out the product they originally desired. Legislative history, as reflected in Senate Report No. 1333, shows that the intentions of trademark law were to protect the consumer from relying on a mark and getting a different product. Metatags do not, however, pose such a risk, and as such, should not be seen as a basis for a trademark infringement claim.