Volume III Issue III

“META TAGS AS A BASIS FOR TRADEMARKS INFRINGEMENT | Volume III Issue III | Author Kislay Tarun |

May 22, 2021

ABSTRACT

This Research Paper work is an attempt to carry out an analytical study of the role of Meta Tags in trademarks infringement. In the modern years, there has been a drastic expansion in technology. This has also modified the usage of internet which is now not just restricted to gather information, or check mails for interaction, but has moved out of the box. The internet users make use of various search engines to find out the site of their interest and get an accurate result for their query. Every search engine on the internet uses special kind software to display the results from various web pages. These soft-wares are generally called spider or crawler. Then comes in picture, the Meta Tags, along with Hyperlinks and frames. These tools help a search engine to set results most preferred in accordance to the question of the web user.

Meta Tags are nothing but small blocks of text which are generally attached to a web page and they act as a code to provide information about that web page. These tags can also represent trademarks in business and every person has the liberty to exercise this right where he can use trademark in Meta Tags in the website owned by him. A serious problem arises only when a person applies for another party’s trademark without his permission. And the basis involved here are the Meta Tags.

The aim of this Research Paper is to explore trademarks infringement with reference to the concept of Meta Tags taking it as a basis of trademarks infringement. It establishes the points of Meta Tags and links them with the legal terms of trademarks laws.

TABLE OF CONTENTS

CONTENTS PAGE NO.

Chapter – 1
- Introduction ——————————————————————- 4
- Research Problem ———————————————————— 5
- Objectives ——————————————————————— 5
- Research Questions———————————————————– 5
- Hypothesis——————————————————————— 5
- Literature Review ————————————————————- 5

Chapter -2
- META TAG: AN INTRODUCTION—————– 6 to 7
- LIABILITY OF MISLEADING META TAGS ————————— 7
- DOCTRINE OF INITIAL INTEREST CONFUSION ——————- 8 to 9
- FAIR USE IN META TAGS————————————————- 9 to 10

Chapter- 3

LOCATING INFRINGING META TAGS———————- 10
ISP AND SEARCH ENGINE CONTRACTS AS TOOLS AGAINST INFRINGING ACTIVITY———- 10 to 11
DILUTION AND UNFAIR COMPETITION ————- 11
A PRACTICAL APPROACH TO USING WEB PAGE DESIGN CONTRACTS —— 12 to 14

Chapter- 4

4.1 CONCLUSION & SUGGESION————————————————- 15

4.2 BIBLIGRAPHY—————————————————————— 16 to 17

CHAPTER- 1
- INTRODUCTION

In the present era of an online world where each and every activity can be carried out online, business are not excluded. Even the businesses and trading companies have been actively participating online due to which we are able to carry out online shopping. In an online trade, the owner builds up a website to sell his products over the internet. Now, a technology has become much advanced today, the websites use certain tools and soft wares to display the desired and expected results. Every website selling goods online consists of a Meta Tag which is a combination of blocks of text where the owner uses his trademark. These tags are used as HTML codes over the website upon which the owner can apply to display their trademarks.

A Trademark can be defined as any slogan, name, word or design which is used in commerce which helps to identify a product and distinguish it from other. It is an essential IPR as it helps to identify a particular product of a specific company which indicates its source of origin. A trademark can be registered or unregistered, where obviously a registered trademark would provide a stronger protection of IP. When a company is trading offline, it is a simple procedure where it displays its trademarks in its outlets and all the other physical areas which is required for its identification over other companies. But, when the same company operates online, the procedure becomes a bit complex. This is because over the internet, in the company’s website where it sells its products, the webpage uses codes called Meta Tags which is used to display that company’s trademark on that website. Misconduct or wrong use of these tags to display trademarks leads to trademarks infringement.

RESEARCH PROBLEM

The company’s owner while carrying out online business and selling their products online through their website display their trademarks in the webpage with the help of Meta Tags. When a trademark is infringed over the internet, can Meta Tags be held as a basis of those trademarks infringement? This paper aims to bring a solution to this problem through analysis of the current topic.

OBJECTIVES

To analyze the concept of Meta Tags and their role in online commerce.

To evaluate the core reason for trademark infringement over the internet.

RESEARCH QUESTIONS

What are the key points which state that Meta Tags are the core basis for a Trademark Infringement?

Does the HTML codes of a webpage reveal the Meta Tags used in the website and the owner’s company’s trademark?

HYPOTHESIS

The point which is clear is that the Meta Tags are the core base for any trademark infringement over the internet. This is to be noted that as the commerce is carried out online the only option to display the trademarks over there is through the Meta Tags.

REVIEW OF LITERATURE

This research paper provides an in depth study of Meta Tags and an analytical overview of its impacts on the Trademark Infringements. Article on “Meta Tags” by Stetson University is a major source, “A Simple Guide to SEO Meta Tags: A non-technical tutorial for business people” by David Howlett also provides guidance and conceptual clarity, “Meta Tags Optimizing Your Website for Internet Search Engines” is a book that provides the core purposes of meta tags, “Law of Trademarks & Designs by S.R. Myeni is a very essential reading, “Trademark Infringement Remedies” by Brian E. Banner is a source which provides full information of legalities in a Trademark Infringement.

CHAPTER- 2

Meta Tag: An Introduction

In this era of internet, everything has become online including business in the form buying and selling of goods and services. Such things are carried out after designing of a webpage on the internet. There are various web pages available which serve different purposes such as online shopping. Any particular webpage is written in the language of mark up usually in Hyper Text Markup Language (HTML). The tags of syntax and mark ups are used by HTML for fulfilling the purpose of sending signals and displaying data to all the web operators so that correct outputs are ensured. Usually these tags have functions relating to visual and aesthetic, but there is a category of tags called Meta Tags and it gives allowance to hidden commenting about the description of the website. This enables the search engines to attract the relevant websites by making reference to the keywords used by the end user in his/her search.

There is a chance that any web designer is able to insert a misleading meta-tag or trademarks descriptions that are identical or similar to that of hi/her competitor so that whenever a user searches with the relating keywords, the search engine pops out his/her website and the user is unaware of searching for his competitor. This is made possible because there is an option to command the source code of HTML and modify it in such a manner that it gives result in favorable SEO. In the initial years of foreign intellectual property law in the U.S. Lanham Act regulated the Trademark Law. This incident took place in the year 1997 and for the first time the Lanham Act (U.S. Trademark Act) when a law firm which was dealing in disputes relating to the domain name filed a suit against the defendant on the ground that the meta-tags used by the defendant made use of and contained the terms ‘oppedahl’ and ‘larson’, and they were the registered trademark of the law firm. This was done with an intention to divert and distract the internet traffic which could have gained them with the registrations of domain names and web hosting clients. The court in its decision restrained the defendants from using those terms said by the plaintiff without any authorization. The court gave the reasoning that such act results in unfair use under the Lanham Act.[1]

Under the Indian law, there is no statute which defines the term ‘Meta Tags.’ Another case relating to domain name infringement was filed in the year 2014 which was held by a Single Judge Bench at the High Court of Bombay. Here, court identified the malafide intention while addressing the case where the domain name of the plaintiff “Shadi.com” was infringed by the defendants by using “ShadiHiShadi.com.” It was identified by the court that the defendants very cleverly were using the plaintiff’s domain name “Shadi.com” in their meta-tags with an intention to divert the traffic and gain advantage. This was for the first time a court defined “Meta Tags.” The definition given by the court is as follows:

“Meta tags are special lines of the code embedded in web pages. All HTML (hyper text markup language), used in coding web pages uses tags. Meta tags are a special type of tag. They do not affect page display. Instead, they provide additional information: the author of the web page, the frequency of updation, a general description of the contents, keywords, copyright notices, and so on. They provide structured data (actually meta-data) about web page in question. Meta tags are always used in web-pages ‘<head>…</head>’ section before the display section that begins with the tag ‘<body>…</body>’.”

Liability of Misleading Meta-Tags

The Indian jurisprudence has not yet clarified that whether the facts claimed by the defendants can undergo ignorance relating to the clueless insertion of misleading meta-tags can be used as a defense. But are precedents established by the courts of Belgian and they have taken a very strong stand on this issue. These courts say that the owner of the website is solely responsible for the source codes used and the contents displayed in the website. In a Belgian case, it was held by the court where the defendants stated that the content and the meta-tags of the website are delivered to them by the web designer so they cannot consider themselves as an appropriate authority to take decision regarding the contents of the meta-tags.[2] Here, the Belgian courts held that as the website owner is the sole proprietor of the website, the execution of contract between the website owner and the web designer escapes the web designer from any liability relating to the contents of those meta-tags.

Another case of Belgian took place which further reaffirmed the previous judgment. The court in its judgment stated that the website owner is solely responsible for the verification of the source code and the contents included in the meta-tag and there is no responsibility vested in the administrator of the search engine. This clarifies that it can result to misleading of meta-tags if the defendant’s contention is negated in regard to the search engine administrator not updated his database.

Doctrine of Initial Interest Confusion[3]

Any consumer making use of search engines to search their desirable websites is not so knowledgeable of the internet technicalities and legalities which make him/her unaware of the website and the meta-tags relating to trademarks while searching for his/her favorite products or services online. This makes it very easy to confuse the customers with the help of meta-tagging. The premise of meta-tagging creates confusion in the minds of these unaware consumers. There is a fact which is undisputed that the Trademark Laws are responsible to safeguard such unaware consumers from being confused and duped by the websites of the competitor who make use of misleading meta-tags.

One such legal doctrine which works to sort out this problem is “The Doctrine of Initial Interest Confusion.” This doctrine gives allowance to the plaintiff and grants them remedies for the infringement even if this alleged infringement is results to cause a temporary confusion in the minds of consumers which is prior to his/her online purchase of goods or services. Grotrian V. Steinway & Sons was the first ever case in which this doctrine was applied. In this case the court observed and believed that the advertisements made under the name of “Steinway” can mislead the consumers into “an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotian-Steinway is at least as good, if not better, than a Steinway.” It is said that the plaintiff may not incur major financial losses if for instance in consideration is a consumer demographic relating to a purchaser of piano and he/she can be more careful while making any purchases. Judge L.F. MacMahon re-applied the legal principle of Initial Interest Confusion in the case of Mobil Oil V. Pegasus Petroleum Corporation. In this case “Pegasis” was a registered mark held by Mobil and it held the logo mark of Greek God Pegasis. On the other hand, the logo used by Pegasis Petroleum Corporation did not match or resemble the word mark or logo mark of Mobil in any way. The court in its verdict said that Pegasis Petroleum was in constitute of sufficient trademark injury as it was misleading the potential customer in initial interest.

Initial Interest Doctrine was first applied in the meta-tags in the judgment of Brookfield Communications, Inc. V. West Coast Entertainment Corporation. In this case the plaintiff was a proprietor who was registered in “Moviebuff” and the defendant was using the same mark to display the description in their meta-tag. This resulted in the pop up of both plaintiff’s and defendant’s link in the search of a search engine. This created initial confusion in the minds of the consumers and they found themselves to be browsing through the defendant’s website which was actually a different and distinct from that of the plaintiff and this amounted to the infringement of trademark under this doctrine.

There is another case of the courts of the United States which is relating to a dismissed suit. The court accepted the contention of the Appellant for the Ninth Circuit. The contention said that it will still cause a trademark infringement under this doctrine if the consumers were aware that they were not purchasing the services from the Appellant’s services through their website, but the selling of banner ads with the use of Appellant’s trademarks “playmate” and “playboy.” This is because the Respondent still gets the advantage of feeding its consumers and increase their sales by using the Appellant’s goodwill.

As a conclusion, it can be said that a fair use is to commercial use trademark of others as a meta-tag seldom. It is often circumstantial and tricky to make a distinction between fair use and unfair use of the meta-tags. This commercial profit can be in either of the forms such as; footfalls, goodwill or actual sale with the help of using trademarks or similar trademarks in the ads or meta-tags and can still amount to an infringement. This fact was held in the case of People Interactive Pvt. Ltd. V. Gaurav Jerry & Ors.

Fair Use in Meta-Tags

As every legal doctrine brings along with it certain exceptions, the Doctrine of Initial Interest Confusion is no different. There is an exception to this doctrine which says that the use of descriptive trademarks of goods or services which is provided by the website owner will be a fair use of those words or terms which is for the purpose of meta-tag. This exception gets beautifully elaborated in the case of Playboy Enterprises Inc. V. Welles. In the mentioned case, Miss Welles, the defendant as was the former playmate used the terms such as “playboy”, “playmate of the month”, “playmate of the year”, which were included in the usage of other terms in her website. This did not amount to a trademark infringement with reference to meta-tags as because such use was permitted on the basis that the terms used were descriptive of the kind of goods or services her website provided along with describing herself.

The second exception of the doctrine talks about the trademarks use in the meta-tags with a intention to attract the consumers to view the opinion of a particular service or product as expressed. This exception got the power of a precedent from the case of Bally Total Fitness V. Faber. In the mentioned case, the defendant used to maintain a sub-domain known as “Bally Sucks.” The defendant justified this use of the term “Bally” as the criticism of consumer acknowledging the use of trademark which is registered to attract the consumers so that they search for the term “Bally” on the search engine. This will result in the popping up of the website of both the plaintiff and the defendant and the customer can complete information about “Bally” which also includes the opinions of others. The defendant added that removing these meta-tags will abstain the customers from obtaining the complete information regarding the mark of “Bally.” This case gave a final verdict which stated that the meta-tags consisting of the comparative statements will also be considered as a fair use of trademarks in meta-tags.

The summary of fair use of trademarks in meta-tags states that this is just for a pure description of goods or services of a particular website. This also ensures the opinions and compare the competitive brands, these all are allowed under the fair use. However, it is also made clear that such use is strictly circumstantial in nature and largely depends on the facts of the case.

CHAPTER- 3

Locating Infringing Meta-Tags

Meta-tags are the form of information which can be understood by a machine. This information is for the World Wide Web (www) which can be used by the search engines when a user tries to search for or locate website pages. The core function of meta-tags is to provide assistance to the search engines in classifying the web pages.

What the web page designers do is that they embed the meta-tags into the source code of the web pages. This is done to identify the contents of that particular website. The term “meta-tag” does not relate to the text available in a webpage rather it is related to the contents of a particular website.

By carrying out a scan of the texts of the web pages, the meta-tags of the web pages, or both of them, the search engines locate the websites. When the texts of a particular website, is not sufficient the meta-tags of that webpage is very useful. This is because each and every search engine has their own different method of scanning the content of the website and these results in different search results in different search engines with the same search input.

ISP and Search Engine Contracts as Tools Against Infringing Activity

The meta-tags are included in the pages used in the website which is hosted by the Internet Service Providers (ISP). The use of these meta-tags is controlled and is under the authority of a contract made between the user and the ISP. On a similar note, as the meta-tags are used by the search engines, their use is prescribed by the contract of the search engine. The trademark holder gains powerful tools from these contracts which are confronted use of meta-tag which is infringement and to stop such infringing activities and seek appropriate damages for the losses incurred from such activities.

The terms under which the ISP subscriber can use the ISP to transmit or view certain information over the internet is dictated by the ISP contracts. Majority of the ISP contracts have terms of “acceptable use” which provide that the ISP may merge and cooperate itself with the third parties and legal authorities in order to investigate any illegal use of the ISP for the transmission of materials unintentionally or intentionally that violates the law of any local state, either national or international law, or any regulations or rules promulgated there under.

If the ISP finds or observes that a civil or criminal wrong has been perpetrated, then it may terminate or suspend the account of the subscriber, and also file a lawsuit against that subscriber to avoid any future violations and to seek the damages incurred from the past or previous violations.

On the other hand, the contracts of the search engines lay down the terms under which an Internet search query gets response as a webpage. These contracts relating to search engines generally consist of certain provisions which purposely prohibits search engine usage for illegal acts such as trademark infringement ore copyright infringement. As soon as the search engine is notified of an infringement, it reserves the right to remove or disable the access to the material which has been claimed to be a subject of the infringing activity. This is done by putting a ban on the website from search engine indices.

It is noticed that most contracts of search engines provide that the search engines are for personal use and a commercial use cannot be carried out as it is strictly prohibited without permission. This is the core reason that the search engines reserve the rights to ban from the index of search engine any particular website which is found to be engaged in activities such as; “spamming” or “cloaking” a webpage. The spamming or cloaking of a website takes place when a designer of a webpage alters that webpage by increasing the number or amount of the meta-tags placed in the source code of that web page. This results in the search engine picking up that website more frequently in its searches which increases the ranking of that website and the overall chances of the user viewing that website as a search result. [4]

3.3 Dilution and Unfair Competition[5]

Along with the claims of trademark infringement, the deceptive use of meta-tags may also cause people to claim for unfair competition or trademark dilution. Unfair Competition is a legal principle that prohibits a particular company from claiming an endorsement or a connection from another company in a false manner. As an example; a shopping website uses the terms “Shoppingmania” or “Shoppingcraze” in a meta tag by an X-rated website can falsely imply that it has been endorsed by Playboy Enterprises. This basis states that an infringement and dilution where Playboy Enterprise has successfully pursued numerous websites using deceptive meta-tags. A Dilution is said to take place when a famous trademark is tarnished or blurred by someone else’s commercial use of mark. When a famous trademark is damaged by a wholesome or an unpleasant use of similar work, it is termed as Tarnishment. Blurring means weakening or “whitting away” of the distinction of a mark. Example; if “Gucci” has been placed in the meta-tag of a website selling shoddily-made goods of leather, this can dilute the trademark of “Gucci.”

A Practical Approach to Using Web Page Design Contracts

An example explanation will be suitable for the application of contracts governing the webpage design and the use of search engine.

Example: Today’s world in a fictional world which consists of Internet Hot Dog Retailers. Considering this there are two cut-throat competitors namely; Hot Dog Haven and Donny’s Dogs. “Donny’s Dogs” is a trademark registered federally and among the consumers, the website of “Donny’s Dogs” is highly favored. Hot Dog Haven got aware of this success and that Donny’s Dogs is exceeding in the sales of hot dog over the internet, what the web master of Hot Dog Haven decided and executed is that he added the term “Donny’s Dogs” to the source code of his webpage called Hot Dog Haven. The intention behind this was to attract the internet traffic from Donny’s Dog to Hot Dog Heaven. But even after this action, when a customer types and searches “Donny’s Dogs” in a search engine, the website to appear on the search engine is the Donny’s Dogs website and the website of Hot Dog Havens fails to appear anywhere in the first 250 hits. This is because of the two major reasons.

The first reason is that there are numerous web pages those are rich in the text containing the term “Donny’s Dogs” is very high due to a widespread Internet advertising campaign. The second reason is that the web master of the Hot Dog Haven had embedded only a single instance of the trademark of “Donny’s Dogs” as a meta-tag into his web page. Surely if I would have spammed the webpage and use it as full of the “Donny’s Dogs” trademark, there would have been high chances that the website of Hot Dog Haven appeared at the top results in the search engine even after the high percentage of the websites rich in the text using the term “Donny’s Dogs.” This webmaster was aware of the spamming activity and that it is prohibited and as a result the website could get terminated. But the webmaster was not aware of the legal theories of the infringement of trademark through the use of meta-tags.

The businessman running Donny’s Dog was a savvy one and he completely realizes that as there is a widespread fair use of his trademark over the internet, the Hot Dog Haven could not effectively trade on the Donny’s Dog’s internet traffic with the help of just a single meta-tag. However, Mr. Donny puts objection over the infringing of trademark by Hot Dog Havens and wants it to stop. For this, he hires a lawyer named I.P. Maven to stop his trademark from being infringed and seek damages for the same. Ms. Maven composes desist and cease letter which is to be sent to Hot Dog Haven after a brief meeting with Donny.

The purpose of a cease and desist letter is to demand and immediate stoppage or halt over all the uses of infringing of a trademark and to account all the profits gained from such infringing use. There have been certain cases which provide guidance on meta-tags infringement. They are namely; Niton Corp. V. Radiation Minitoring Devices, Inc. and Roberts-Gordon, LLC V. Superior Radiant Products, Ltd.

In the judgment of Niton Corp. V. Radiation Monitoring Devices, Inc., the Massachusetts District Court had granted a preliminary injunction to the plaintiff based on the fact that the defendant was making a misleading use of the website of plaintiff in the source code of his web page. The defendant simply copied and pasted the source code from the plaintiff’s website to his webpage. Thus, the preliminary injunction granted by the court prohibits the defendant from attracting customers to his website by using the contents of the plaintiff’s website.

In the case of Robert-Gordon, LLC V. Superior Radiant Products, Ltd., the main issue which arose was that whether the District Court in the Western District of New York had any sort of personal jurisdiction over the defendant here for the infringement of trademark which is committed outside the State of New York. In the judgment, the court held and declared that this District Court had a personal jurisdiction over Superior Radiant as because the defendant’s website had information which is directed to the potential customers all over North America, Including New York which was the principal place of business of the plaintiff. In its holding, the court also noted that the source code of the defendant’s web page had the plaintiff’s trademarks embedded in the form of meta-tags.

Here, before filing a suit, the plaintiff had sent a cease and desist letter to Superior Radiant demanding to remove the offending marks from the meta-tag and accounting of the profits earned from it. In reply, Superior Radiant said that those offending meta-tags had been removed and it was unable to provide any sales to its website advertising.

After carefully studying and examining these two cases, Ms. Maven decides that just a traditional cease and desist letter can be of no benefit to her client and so she will have to draft a different kind of cease and desist letter which will be based on the contracts of the Hot Dog Haven with its ISP and the available search engines which have been posted for customer use. She begins her investigation and first investigates the ISP which the Hot Dog Haven uses to host its website. She visits Network Solutions Whols Database and they provide her all the information relating to the URL (Uniform Resource Locator) of the Hot Dog Haven’s website address. She then visits this ISP website, and prints out a copy of their user contract which clearly states that, it has reserved rights to shut down offending websites and terminate their membership in case of any infringing activities.

Moving on with her investigation, she next visits the websites of various search engines where she found that all of them prohibited illegal activities such as spamming, cloaking or infringement of intellectual property rights. They have reserved rights to remove any offending webpage from their indices. Understanding that only one instance of infringement use of the trademark of “Donny’s Dog” cannot be declared as spamming but can for sure be declared as cloaking.

With the help and assistance of all these information, Ms. Maven drafted a cease and desist letter in which she provides a list of all the infringing activities which were based upon the using of meta-tags, cloaking and trademark infringement. This letter demanded an immediate stoppage on all the infringing activities and the infringing trademark to be removed immediately and that Hot Dog Haven shall pay a specified sum in the calculation of each day of infringement. To make sure and abide by the compliance, this letter threatens Hot Dog Haven in the following three manners:

To report the activities of infringement to the ISP of Hot Dog Haven by putting a request to permanently terminate the subscription agreement of Hot Dog Haven.
To report the activities of infringement to all the available and known search engines, and request them to permanently ban the URL of Hot Dog Haven.

To make sure that a legal action is instituted for the infringement of trademark (Robert-Gordon) and misleading use of the meta-tag (Nitron), if an agreement for damages is not made within the specified period of time and the trademark is not removed from the website’s source code of Hot Dog Haven.

4. CHAPTER- 4

Conclusion & Suggestion

As a verdict it can be said that the misuse of intellectual property over the internet is still a new phenomena or terrain which has a lot of scope of discovery which can be made by our legal system. The misleading meta-tag is a huge grey area in the field of IPR. Our nation needs to recognize this. For now, there are only and predetermined principles and no concrete law. It has been really long since India has started to identify the malpractice use of meta-tags and search engines which results in malicious corruption of the search results. But as a nation, we still do not have any concrete laws for the regulation of such tags. Rather, we only have a few precedents which can assist in formulating some basic rules which are to be abided.

As the government has started to prefer e-commerce over offline retail, it is high time to formulate strict legislations to keep a check and properly regulate the cyber crimes and provide cyber security relating to intellectual property as the statutory laws are the only option to protect the creative minds when it comes to online trading.

Bibliography

BOOKS

R. MYENI, LAW OF TRADEMARKS & DESIGNS (1 ed. New Era Law Publication 2019).
BRITTEN SESSIONS & MITESH PATEL TRADEMARK STRATEGIES FOR THE ENTRPRENEUR (LINCOLN LAW SCHOOL OF SAN JOSE INTELLECTUAL PROPERTY SERIES), (1^st Create Space Independent Publishing Platform 2016)
DAVID HOWLETT, A SIMPLE GUIDE TO SEO META TAGS: A NON-TECHNICAL TUTORIAL FOR BUSINESS PEOPLE, (4^th Search Marketing Services Ltd 2018)

CASES