Designer Skin LLC v. S & L Vitamins, Inc., et al.
Meta Tags - Internet Library of Law and Court Decisions - Updated November 3, 2008
This section of the Internet Law Library contains court decisions addressing the legality of using, in meta tags on your site, trademarks of, or other references to, your competitors.
29 F. Supp. 2d 1161 (C.D.Cal., Nov. 23, 1998)
In Bally, the court awarded defendant summary judgment, dismissing claims of trademark infringement and dilution brought by plaintiff as a result of defendant's operation of a web site titled "Bally sucks", at which defendant airs criticism of plaintiff's health club operations. The site opens with the image of plaintiff's federally registered trademark "Bally", across which appears the word "sucks." The site states it is unauthorized, and no products are sold or offered for sale on the site. Plaintiff's trademark infringement claims failed because plaintiff could not establish that consumers were likely to be confused by this use of the "Bally" mark as to the source of the "Bally sucks" website. Quite the contrary, the court concluded that the average consumer would assume that plaintiff Bally neither approved nor sponsored the site. Plaintiff's dilution claim failed, in part, because defendant's use of the mark was not commercial, an essential element of a dilution claim. The court also held that a dilution by tarnishment claim could not be sustained as a result of the placement of a link on a website that, without authorization, contains a parties' trademark, which link took the user to another site which allegedly contained offensive materials, but not the trademark at issue. Of note, the court determined that a party has the right to use an entity's trademark in meta tags to promote a non-commercial site critical of the entity that owns the mark.
2000 U.S. Dist. Lexis 14180, 119 F. Supp. 2d 309 (S.D.N.Y., September 28, 2000)
Court refuses to enjoin defendants from operating web sites critical of plaintiffs' business, or from utilizing plaintiffs' common-law service mark in meta tags on those sites to attract visitors seeking information about plaintiffs. The court also refused to enjoin defendants from continuing to publish allegedly libelous statements about plaintiffs on their web sites.
332 F.Supp.2d 722, Civ. No. 00-5157 (WHW) (D.N.J., August 26, 2004)
Court holds that competitor's use of plaintiff's trademark in content and meta tags of a web site on which replacement parts for plaintiff's products are sold neither infringes nor dilutes plaintiff's mark in violation of the Lanham Act. Defendant is allowed to use plaintiff's mark in this fashion both to promote the sale of replacement parts manufactured by plaintiff, as well as those manufactured for use in plaintiff's products by third parties. The Court accordingly granted defendant's motion for summary judgment and dismissed the trademark infringement, unfair competition and dilution claims plaintiff advanced against defendant in this action.
174 F.3d 1036 (9th Cir. April 22, 1999)
Ninth Circuit, reversing the district court, enjoined defendant from using plaintiff's "moviebuff" trademark in either a domain name or meta tags found on defendant's web site.
The court rejected defendant's contention that it had superior rights to the mark by virtue of the fact that it commenced use of the mark before plaintiff. While defendant had used the mark in a domain name registered with NSI before plaintiff commenced its use of the mark on the Internet, defendant did not commence operation of a site at that domain name until well after plaintiff commenced use of the mark. Defendant's only use of the mark that arguably predated plaintiff's was in "limited e-mail correspondence." Such use was held insufficient to make defendant the senior user of the mark. "Registration with Network Solutions ... does not in itself constitute "use" for purposes of acquiring trademark priority." What is required is actual use in commerce in connection with the sale of products or, at a minimum, "use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark."
The court held that West Coast's activities were likely to constitute trademark infringement because they were likely to confuse the public about the source or sponsorship of West Coast's "moviebuff.com" web site. In reaching this conclusion, the court relied on the fact that the marks at issue were identical, and were both using the Internet to marketed related products. Significantly, the court held that the addition of ".com" to the phrase "moviebuff" was of no significance in comparing the identity of the marks used. "Because many companies use domain names comprised of ".com" as the top-level domain with their corporate name or trademark as the second-level domain, the addition of ".com" is of diminished importance in distinguishing the mark." The court accordingly enjoined defendant from operating a web site at "moviebuff.com."
The court also enjoined defendant from using the "moviebuff" mark in meta tags on its site. In reaching this conclusion, the court found that use of the "moviebuff" mark in meta tags would cause prohibited "initial interest confusion." "Web surfers looking for Brookfield's "MovieBuff" products who are taken by a search engine to "westcoastvideo.com" [as a result of the use of "moviebuff" in the site's meta tags] will find a database similar enough to "MovieBuff" such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead. Although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using "moviebuff.com" or "moviebuff" to divert people looking for "MovieBuff" to its web site, West Coast improperly benefits from the goodwill that Brookfield developed in its mark." Such use of plaintiff's mark, concluded the court, is indeed actionable.
As a result, the court enjoined West Coast from using the Mark "MovieBuff" in its meta tags. The court did hold that West Coast could use the descriptive phrase "Movie Buff" in its meta tags, provided it included a space between the two words.
No. CV 05-3699-PHX-JAT (D. Arizona, May 19, 2008)
Court holds that unauthorized internet reseller of plaintiff’s tanning products is not guilty of trademark infringement as a result of its use of plaintiff’s trademarks in the meta tags of a website at which such products are sold, and as search engine keywords triggering the display of a link to such a website. In reaching this result, the Court rejected plaintiff’s claim that such use of its marks causes actionable ‘initial interest confusion’ by directing those searching for plaintiff’s site to that of the defendant. To sustain such a claim, holds the court, defendant’s conduct must be deceptive. Plaintiff failed to meet this burden because defendant’s site does indeed offer plaintiff’s products for sale, and thus, its use of plaintiff’s mark in the site’s meta tags is not deceptive, but rather accurately describes the contents of defendant’s site. This was true, held the Court, notwithstanding the fact that S & L offered plaintiff’s competitors products for sale on its site as well.
The Court also dismissed trademark dilution claims arising out of defendant’s use of plaintiff’s marks. The Court held that, under the circumstances, defendant’s use of plaintiff’s marks in the meta tags of its site, and as search engine key words, constituted a permissible nominative fair use of those marks. To establish that a use of a trademark qualifies as a permissible nominative fair use, the defendant must ‘do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.’ Notably, the Court reached this result because plaintiff failed to submit adequate evidence as to the impact this use of its marks had on the listing of defendant’s site in search results for plaintiff’s mark. The Court left open the possibility that such a use of plaintiff’s mark may not qualify as a nominative fair use if in fact it caused defendant’s site to appear at or near the top of search engine results for plaintiff’s mark, and thereby suggested that plaintiff sponsored or endorsed defendant’s site.
The Court denied so much of defendant’s motion for summary judgment which sought dismissal of copyright infringement claims arising out of its use of electronic renderings of plaintiff’s products to promote the sale of such products on its web site. Issues of facts as to whether defendant copied such images from plaintiff’s web site, or created its own, precluded an award of summary judgment. In allowing this claim to proceed to trial, the Court rejected defendant’s argument that its alleged use of plaintiff’s images was protected as a fair use. Notwithstanding the fact that defendant’s use did not effect the potential market for plaintiff’s images – which plaintiff does not offer for sale – the Court rejected defendant’s fair use argument, pointing to the fact that its use was commercial, and copied plaintiff’s image, which was a creative work, in its entirety.
Finally, the Court rejected plaintiff’s claim for intentional interference with contractual relations, which arose out of prohibitions contained in contracts with plaintiff’s distributors precluding their resale of plaintiff’s products to Internet resellers such as defendant. Defendant obtained plaintiff’s products from tanning salons, to whom the distributors were permitted to sell such products. Because there was no evidence either that such tanning salons were acting as defendant’s agent in purchasing goods from plaintiff’s distributors, or that defendant directly purchased such goods from the distributors in breach of the prohibitions contained in their agreements, this claim failed.
177 F. Supp. 2d 661, 2001 U.S. Dist. Lexis 21302 (E.D. Michigan, December 20, 2001)
Court denies Ford Motor Company's motion for a preliminary injunction seeking to enjoin defendants from continuing to automatically redirect users from a web site defendants operate at www.fuckgeneralmotors.com to the web site operated by Ford at www.ford.com. Defendants achieve this redirection via a link embedded in the programming code of defendants' web site, which link utilizes Ford's mark. The court held that Ford could not succeed on the merits of its federal trademark dilution claim, because defendants were not using plaintiff's mark in commerce. The court further held that Ford could not succeed on its trademark infringement and unfair competition claims, because defendants were not using plaintiff's mark in connection with the sale, or advertising for sale, of any goods or services. Finding that plaintiff would not succeed on the merits of its claims, the court denied plaintiff's motion.
328 F.3d 1108 (9th Cir. May 9, 2003), amended and superseded by Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 67 U.S.P.Q.2d 1532, 3 Cal. Daily Op. Serv. 6649, 2003 Daily Journal D.A.R. 8380 (9th Cir.(Cal.) Jul 29, 2003) (NO. 01-56733, 02-55142) , Petition for Certiorari Filed, 72 USLW 3393 (Nov 20, 2003)(NO. 03-773)
The Ninth Circuit affirmed so much of the District Court's decision which held that defendant infringed plaintiff's trademark by his "pervasive" use of plaintiff's mark in both the metatags and text of his websites, on which he sold a competing product. The Ninth Circuit also affirmed so much of the District Court's decision which awarded plaintiff substantial attorneys' fees for this infringement, agreeing with the lower court's determination that this was an "exceptional" case justifying such an award in light of defendant's willful use of the mark.
The Ninth Circuit reversed and remanded so much of the District Court's decision that held that defendant's conduct diluted plaintiff's mark, in light of the Supreme Court's recent decision in Moseley v. V. Secret Catalogue, Inc, which mandated proof of actual dilution to sustain a trademark dilution claim.
46 F. Supp. 2d 722 (N.D. Ohio, April 14, 1999)
Court holds defendants in contempt of court for violating injunction prohibiting defendants from continuing to use plaintiff's name in meta tags found on defendant IWI's web site, "in connection with the advertising or promotion of [defendant IWI's] goods, services or web site" or in such a way that might lead consumers to believe that defendant's services were authorized, sponsored or connected with plaintiff.
Defendant IWI, a competitor of plaintiff, placed plaintiff's name "Nettis" in meta tags on its web site. IWI also registered its web site with over 500 search engines. As part of this process, IWI provided the search engines with the terms "Nettis" and "Nettis Environmental" as "search engine" key words.
Promptly upon the court's issuance of an injunction, defendant had the term "Nettis" removed from the meta tags on its site. Defendants did not, however, take any additional steps to remove "Nettis" from the list of key words associated with its web site by search engines. Instead, defendants relied on the advice of their computer consultant that such key words would automatically be delisted when the search engines updated their listing of the IWI site, and discovered that those terms were no longer found in IWI's meta tags. This, defendants were advised, would occur within days of their removal as meta tags.
When defendant's site came up on searches for the term "Nettis" plaintiff moved to hold defendant in contempt of court. Upon receipt of this motion, defendant immediately pulled its site from the Internet, and instructed the search engines to deregister it.
The court held that defendants' belated efforts to instruct the search engines to deregister the site, in reliance on the advice of its computer consultant that this would occur automatically, was not sufficient to avoid the entry of a contempt finding. According to the court, defendant should have "check[ed] whether the search engines had automatically been updated [so as to delist the IWI site and] also ... taken affirmative action to "undo" the registrations."
As a sanction, the court awarded plaintiff the attorney's fees expended in making its motion for contempt. The court also directed defendant to keep the IWI web site inaccessible from the URL listed with the search engines during the pendency of the lawsuit. Defendants were granted permission to operate its web site at a different URL.
27 F. Supp. 2d 102 (D. Mass., November 18, 1998)
(Court issues "preliminary injunction subject to modification" enjoining defendant from continuing to place meta tag descriptions on its website which falsely state that defendant's site is "the home page of [plaintiff]..." and thereby mislead consumers as to the affiliation between plaintiff and defendant, and divert users from plaintiff's site to that of the defendant).
No. 07-11574 (11th Cir., April 7, 2008)
Eleventh Circuit holds that defendant’s unauthorized use of a competitor’s trademarks in meta tags of its website, which use caused those trademarked terms to appear in search result descriptions of defendant’s website, is likely to infringe plaintiff’s marks. The Court held such use was likely to falsely lead consumers to believe defendant’s site was affiliated with plaintiff or sold plaintiff’s products. Importantly, other than in meta tags, plaintiff’s trademarks appeared nowhere on defendant’s website. In reaching this result, the Eleventh Circuit found that such use of plaintiff’s trademarks constituted a use of such marks in commerce.
Nonetheless, the Eleventh Circuit vacated the preliminary injunction issued by the District Court, which barred defendant from further use of plaintiff’s trademarks in its site’s meta tags. In reaching this result, the Court called into question the traditional presumption of irreparable injury available to trademark holders who have demonstrated a likelihood of success on the merits of their trademark infringement claim. Demonstration of such irreparable injury is a prerequisite to injunctive relief. In light of the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 US 388 (2006), the Eleventh Circuit remanded the case to the District Court with instructions to determine whether plaintiff had sufficiently demonstrated irreparable injury as a result of defendant’s infringing use of its trademarks in its site’s meta tags to warrant the issuing of injunctive relief. The Court did not, however, decide whether the traditional presumption of irreparable injury in such circumstances survived eBay.
The Eleventh Circuit further upheld the District Court’s ruling that plaintiff was likely to prevail on its claims that defendant engaged in false advertising in violation of the Lanham Act. The Eleventh Circuit held that defendant’s claims of an affiliation between NASA and either Axiom or one of its products, the DRX 9000, or that that product was FDA ‘approved,’ were literally false, and likely to be material in consumers’ purchasing decisions.
Nonetheless, the Eleventh Circuit vacated the preliminary injunction issued by the District Court, prohibiting further use of such advertisements, and remanded for further consideration as to whether plaintiff had adequately demonstrated that it would sustain irreparable injury in the absence of such relief. The Eleventh Circuit held that no presumption of irreparable injury exists in such circumstances, as the claims were not made in the context of comparative advertising about the parties’ respective products. As the District Court had presumed irreparable injury, the matter was remanded to it for further consideration.
115 F. Supp. 2d 772 (E.D. Mich., August 25, 2000), aff'd. in part, vacated in part and remanded, 319 F.3d 243 (6th Cir. 2003)
In this trademark infringement suit, the court enjoined defendant, a truck listing service, from using plaintiff's registered federal trademarks in either the domain name, meta tags, site title or wallpaper of web sites that inform consumers of entities offering plaintiff's trucks for sale.
7 F. Supp. 2d 1098 (S.D. Ca., February 27, 1998), aff'd. in part, reversed in part, 162 F.3d 1169 (9th Cir., Feb. 1, 2002)
Defendant, a former "Playmate of the Month" and "Playmate of the Year," was permitted to use those trademarks on her website, and to use the marks "Playboy" and "Playmate" in meta tags, despite plaintiff Playboy's objections. Such was a permissible fair use of plaintiff's marks because such marks described who defendant was.
279 F3d 796 (9th Cir., February 1, 2002)
The Ninth Circuit Court of Appeals holds that defendant Terri Welles' use of plaintiff's trademarks "Playboy" and "Playboy Playmate of the Year" in the meta tags, masthead and various banner advertisements appearing on her web site neither infringe nor dilute those marks. These uses of plaintiff's marks by defendant, a model named by plaintiff as "Playmate of the Year" in 1981, are permissible nominative uses necessary to allow Ms. Welles to accurately describe herself and the content of her site. Such nominative uses of a mark are permissible when (1) the product being described is not readily identifiable without use of the trademark; (2) only so much of the mark is used as is reasonably necessary to identify the product; and (3) the user of the mark does nothing that suggests sponsorship by the owner of the mark. Plaintiff's trademark dilution claims failed because a nominative use is exempt from anti-dilution laws, as such a use refers to plaintiff's own product and therefore does not create an improper association between plaintiff's mark and the product of another. In reaching these determinations, the Ninth Circuit affirmed the decision of the district court below.
The Ninth Circuit also held that defendant's repeated use of the alleged mark "PMOY '81" in the wallpaper of her site was not a permitted nominative use because it was not necessary to describe Ms. Welles in light of the court's determination that she can use the phrase "Playboy Playmate of the Year 1981" on her web site. As such, the court reversed so much of the decision of the district court which dismissed the trademark infringement and dilution claims plaintiff asserted as a result of this use, and remanded those claims to the district court for a determination as to whether "PMOY '81" is a mark entitled to trademark protection.
300 F.3d 808, No. 00-4276 (7th Cir., August 13, 2002)
The Seventh Circuit Court of Appeals holds that defendant is not allowed to use the trademark of its competitor in the meta tags of its web site, notwithstanding the fact that defendant services the product described by that mark. The Seventh Circuit accordingly affirms the decision of the court below, which both enjoined defendant's continued use of the mark in meta tags, and required defendant to post on its web site the URL of plaintiff Promatek's web site, as well as the following language: "If you were directed to this site through the term "Copitrak," that is in error as there is no affiliation between Equitrac and that term. The mark "Copitrak" is a registered trademark of Promatek Industries, Ltd., which can be found at www.promatek.com or www.copitrak.com."
51 F. Supp.2d 554 (E.D. Pa., June 9, 1999)
To fully understand this decision, the reader must also read the court's prior decision in this same matter, reported at 51 F. Supp.2d 542. Relevant portions of both decisions will be discussed below.
The Court held that defendants' use of plaintiffs' common law trademark in both the domain name "www.seawind.net" of their website and in meta tags found thereon infringed plaintiffs' mark. The Court accordingly enjoined defendants from continuing such use.
Plaintiffs SNA, Inc. and Silva Enterprises Ltd. (collectively "SNA") manufacture and market do-it-yourself kits which contain most of the parts (excluding the engine) necessary to construct an amphibious aircraft called the Seawind. Plaintiffs hold a federal trademark in the mark "Seawind and design" and a common law trademark in the mark "Seawind."
Defendant Paul Array owns defendant Horizon Unlimited. Together, these defendants publish a newsletter titled "The Seawind Builders Newsletter" which they send to Seawind customers and builders and publish on a website they operate at www.seawind.net. At this website, defendants publish copies of each Seawind Builder Newsletter, as well as other information and commentary about the Seawind, SNA and Silva. Much of this latter information is derogatory and highly critical of plaintiffs. Each issue of the newsletter contains a disclaimer that the newsletter is "not affiliated with any aircraft manufactures [sic], kit builders or marketers."
Notwithstanding its determination that defendants' use of the mark in the title of the newsletter did not infringe plaintiffs common law trademark, the court determined that defendants' use of the exact Seawind mark in the domain name of their site did. The court found that such use was likely to confuse the public as to the source of the materials on the website, even though a disclaimer was posted on the website, and the site's content were highly critical of the plaintiffs. Said the court "the relevant confusion that the domain name causes is drawing the web user to the site in the first place, and the disclaimer cannot fix that."
The Court further enjoined defendants from continuing to use the mark "Seawind" in the meta tags at their website. The court found that defendants used the mark in this fashion in an effort to confuse consumers and lure them to defendants' site in lieu of plaintiffs'. The Court rested this finding of trademark infringement on the defendants' repeated use of the Seawind mark in their meta tags, and their general intent to harm plaintiffs.
Case No. 06-C-843 (E.D. Wis., April 18, 2008)
Court holds that unauthorized reseller of plaintiff Standard Process Inc.’s products can use Standard Process’ trademark on its website, and in the website’s meta tags, to advertise the sale of such products. The Court held that consumers were not likely to be confused by such conduct, because defendant’s site featured a prominent disclaimer that advised consumers that defendant is “not an authorized seller” of plaintiff’s products, “purchases Standard Process supplements from authorized third parties for resale, and is in no way affiliated with, authorized, sponsored or related to Standard Process Inc.” In reaching this result, the Court rejected plaintiff’s argument that the use of its marks in the meta tags of defendant’s site was barred by application of the “initial interest confusion” doctrine, because the consumer who came to defendant’s site was presented with an opportunity to purchase actual Standard Process products.
Finally, the Court rejected plaintiff’s claim that defendant was improperly selling ‘gray market’ goods which were ‘materially different’ from those plaintiff intended for sale in this market. Plaintiff grounded this argument on the fact that authorized resellers are required to have a one-on-one consultation with the consumer before sale of the products, which consultation does not take place when the consumer purchases the product from defendant’s website. The Court rejected this argument, because the products being resold were in fact the same as those offered by Standard Process, and because consumers were not likely to be confused, as they knew they were not receiving a one-on-one consultation prior to purchase.
79 F.Supp. 2d 331 (S.D.N.Y., Dec. 2, 1999)
The court awarded $46,000 to compensate for the attorney's fees expended in stopping defendant's infringement of plaintiff's common law trademark, which defendant used in both its domain name and meta tags.
FragranceNet.com, Inc. v. FragranceX.com, et al.
No. 06-CV-2225 (JFB)(ART)(E.D.N.Y., June 12, 2007)
Following the lead of the Second Circuit in 1-800 Contacts, Inc. v. WhenU.com, 414 F.3rd 400 (2d Cir. 2005) and of other district courts in the Second Circuit, the Court holds that the use of plaintiff’s mark either as a keyword to prompt the appearance of sponsored links advertising defendant’s site in Google’s search engine, or in the metatags of defendant’s site to trigger higher search engine placement, does not constitute a use in commerce of plaintiff’s mark sufficient to give rise to trademark infringement or dilution claims, either under the Lanham Act or New York state law. Such use of plaintiff’s mark, reasoned the court, is the equivalent to store product placement, where the store places its own generic products on store shelves adjacent to more well-known brands to take advantage of the consumer’s attraction thereto. As such a use is permissible, so to is the use of plaintiff’s mark in keyword advertising.
The Court relied on decisions in Merck & Co., 425 F.Supp.2d 402, Rescuecom Corp. v. Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y., 2006) , and Site Pro-1 Inc. v. Better Metal LLC, No. 06-CV-6508 (ILG)(RER)(EDNY, May 9, 2007), each of which “held that the purchase of a trademark as a ‘Sponsored Link’ is not ‘use’ within the meaning of the Lanham Act.”
Said the Court:
As a result, the Court denied plaintiff’s motion to amend its complaint to assert, inter alia, claims of trademark infringement and dilution arising out of the use of its mark in keyword advertising and metatags. The Court held that such amendment would be futile, as the proposed claims could not withstand a motion to dismiss.
In should be noted that, according to the court, ‘courts in other circuits have generally sustained such claim.’ However, the Court elected to follow the precedent cited above and deny plaintiff’s motion to amend.
Chris Gregerson v. Vilana Financial Inc., et al.
2006 WL 3227762, Civil No. 06-1164 ADM/AJB (D. Minn., Nov. 7, 2006)
Court denies defendants’ motion for a preliminary injunction, which sought to enjoin plaintiff from using defendants’ registered service and trademarks in the meta tags and “subject lines” of his website. Plaintiff is a photographer who claimed that defendants, without authorization or payment, used a photograph in which he held copyright in an advertisement. Plaintiff commenced suit against defendants for copyright infringement. Plaintiff’s website described his view of defendants’ conduct, in a manner which disparaged, and according to defendants, defamed them. As the site existed at the time of the hearing, it contained a prominent disclaimer, announcing it “is a criticism of” defendants. Defendants’ counterclaim asserted claims of defamation and trademark infringement, and relied, in part, on the initial interest confusion created by plaintiff’s use of defendants’ marks.
The Court denied defendants’ motion for injunctive relief, holding defendants had not sufficiently established a likelihood of success on the merits. Said the Court: