Protection For Trademark Owners: The Ultimate System Of Regulating Search
Engine Results
James A. Rossi
42 Santa Clara Law
Review 295
I. INTRODUCTION
In recent years, claiming a spot on the Internet to sell goods and
services has become an integral part of the cost of business. Judge Guido
Calabresi of the Court of Appeals for the Second Circuit noted,
Over the last few years, the commercial side of the Internet has grown
rapidly. Web pages are now used by companies to provide information about
their products ... . Moreover, many consumers and businesses now order
goods and services directly from company web pages. Given that Internet
sales are paperless and have lower transaction costs than other types of
retail sales, the commercial potential for this technology is vast.
Once a business stakes out a spot on the Internet, marketing the site
becomes essential. Companies commonly submit sites to search engines in
hopes of obtaining high rankings for certain keywords. Businesses fight
over the top ranks of the search engines, for if such ranks can be
obtained, there is money to be made. Unfortunately, sometimes businesses
are so interested in obtaining high rankings that they infringe the
trademarks of others.
To illustrate the problem, suppose that you are in the market to purchase
a new car. You are interested in the Ford Mustang and have heard that it
is affordable. To find out more about the Mustang, you decide to use a
search engine such as
http://www.excite.com. You submit the keywords "Ford Mustang" to the
search engine and the search engine returns the top ten results. The first
result returned links you to the Ford Motor Company's Web site. The second
result links you to Ford Motor Company's Mustang Web site. The fifth
result links you to a page from Mighty Car's Web site, [*298]
one of Ford's competitors.
As you look at the results of your search, you notice that the description
of Mighty Car's site does not mention the words "Ford" or "Mustang."
Instead, it discusses an inexpensive model that the company has just
released. Wondering why it came up in the rankings for the keywords "Ford
Mustang," you click on the link to Mighty Car's Web site to look for the
keywords. You read every word on the site, but still cannot find the
keywords "Ford" or "Mustang." Finally, if savvy enough, you check pieces
of code in the Web page that contain keywords relevant to the site, called
metatags.
Once again, "Ford" and "Mustang" are
absent.
If the words "Ford" and "Mustang" are not in the search engine
description, visible text of the Web page, or metatags, then why does the
search engine return Mighty Car's Web site as the fifth most relevant site
for the keywords "Ford Mustang?" The answer is because Web designers
employ many techniques to achieve high rankings in search engine results.
Additionally, just because one cannot see the keywords, does not mean they
are not there, or at least, were not there at one time.
Thus, knowing where these keywords are
found can help a lawyer persuasively argue a trademark infringement or
dilution case with regard to search engine results.
This article will accomplish two goals. First, it will inform lawyers of
the ways search engines rank Web pages and some of the tricks site
designers use to achieve high rankings. The lawyer who has such an
understanding will be able to teach the courts about how site designers
hide trademark violations.
The second goal of this article is to inform lawmakers that now is the
time to consider whether a standardized system of regulating search engine
results should be implemented. [*299]
If a standardized system is not implemented, market forces will determine
the fate of regulation, which may lead to divergent systems and ultimately
to difficulties as the search engines evolve. To assist in the
determination, some alternatives will be presented, including the
introduction of a standardized system of regulating search engine results.
The model standardized system would require the creation of ".tm" as a new
top-level domain name ("TLD") and a "Trademarks" metatag. Most
importantly, the system demonstrates how a new .tm TLD could be utilized.
If adopted, the proposed model standardized system would deter a site
owner from using a competitor's trademark in order to achieve high
rankings in search engines for searches involving a competitor's
trademark. In addition, a standardized system of regulation would require
very little monitoring, and the bulk of the issues dealing with trademark
infringement and dilution in search engine results would be avoided.
Further, market forces could likely handle issues not addressed by the
implementation of a standardized system. Finally, a new TLD and
"Trademarks" metatag would create a regulatory system that balances the
interests of trademark owners, their competitors, the consumer, the search
engine owners, and the courts.
II. ARTICLE SUMMARY
Comprised of five sections, the first part of this article will discuss
the history of the Internet, the statistics regarding its growth, as well
as information regarding top-level and second-level domain names. The
second section will provide a brief introduction to building and
publishing a Web site, followed by an introduction to the Web site
programming language HyperText Markup Language ("HTML"). The third section
will explain the differences between search engines and directories and
will discuss many of the tactics that Web site designers currently use to
achieve high rankings for keywords. This section, coupled with the
introduction to HTML, will allow a lawyer to understand the many ways that
a site designer can infringe another's trademark. The fourth section will
discuss trademark infringement, trademark dilution, and the fair-use
defense in the context of search engines. Included will be an analysis of
the two landmark cases dealing with search engine results. Finally, the
article will discuss [*300]
some of the solutions that have been recently proposed towards ending the
troubling issue of trademark protection in search engine results. It will
then introduce a standardized system of regulation that will deter site
owners from attempting to achieve high rankings for searches involving a
competitor's trademark.
III. WHAT IS THE INTERNET AND WHERE DID IT COME FROM?
The Internet "is a global network of interconnected computers which allows
individuals and organizations around the world to communicate and share
information with one another."
It is the "world's largest computer
network, connecting other computer networks and users."
The Internet was conceived in 1966 when the director of the computer
research program at the U.S. Department of Defense's Advanced Research
Project Agency linked computers together so that defense research
facilities could pool their resources.
"The Internet began in 1969 as a network
of four computers located at the University of California at Los Angeles,
the University of California at Santa Barbara, the University of Utah, and
the Stanford Research Institute."
The information presented on a Web site
is stored on servers and can be accessed by anyone with Internet access
and a Web browser such as Netscape Navigator or Internet Explorer. "Every
Web browser interprets HTML tags a little differently. Tables, forms,
graphic position and alignment tags will work a little differently in each
brand or version of Web browser."
IV. WHAT IS A DOMAIN NAME?
Every Web page has a corresponding domain address, which is an identifier
somewhat analogous to a telephone number or street address.
[*301]
Domain names consist of second-level domain - simply a term or series of
terms (e.g., [bestlecterns]) - followed by a top-level domain, many of
which describe the nature of the enterprise. Some examples of top-level
domains include ".com" (commercial), ".edu" (educational), ".org"
(non-profit and miscellaneous organizations), ".gov" (government), ".net"
(networking provider), and ".mil" (military).
Additionally, each country has its own top-level domain name.
V. BUILDING AN PUBLISHING A WEB SITE FOR THE INTERNET
Most Web pages on the Internet are designed using HTML. An HTML file
consists of text, which is displayed to the reader of an HTML document,
and tags, which tell the browser how to format that text.
The HTML coding is also known as the
source code of a page.
Although people can be intimidated by HTML upon first impression, the
truth of the matter is that one does not even need to know HTML to make a
Web page. Numerous programs will create the HTML for you. Microsoft
Frontpage 2000 is a perfect example of such a program. The program allows
the designer to make a Web page with as little effort as is required to
make a document on WordPerfect or Microsoft Word. The program allows the
designer to view and edit the page by manipulating the HTML directly, or
by using another interface that basically works like a word processor. For
example, a designer could simply type the text where they wanted it on the
page and hit "enter" to create new paragraphs. To bold, italicize,
underline, or center text, one would highlight the text or object and then
click on the icon specifying the command. The program automates the Web [*302]
design process.
After the page has been created, it still must be published on the Web.
Publishing on the Web means that the files of the Web site are transferred
to a server.
Commonly, such files are transferred by
File Transfer Protocol ("FTP") Programs. An FTP program allows the
publisher to upload all of the files of the Web page to a specific
directory on the server that will host the site.
The most common files are the ".html"
files, ".htm" files, images, and sound files.
To do this, the domain name must be directed to the server on which the
files will be stored. If the domain name is not directed to the server,
the Web pages will not be accessible. Thus, when a Web surfer accesses the
Web site, an error message will be displayed stating that no server was
found. If directed to the server, the domain name is entered into a
browser, which will connect with the server and download all of the files
necessary for proper viewing of the Web page.
VI. A BRIEF INTRODUCTION TO HTML
Because search engines generally rank Web sites according to the content
of the HTML, an attorney must have a basic understanding of HTML to
persuasively argue a trademark violation with regard to search engine
rankings.
Like a Web site designer, a lawyer does
not need to be able to write HTML. However, a lawyer must be able to
understand the HTML of a Web page in order to detect the sections of the [*303]
code that may contain trademark violations.
To provide an introduction to HTML, the following will break down the HTML
presented in the Appendix. Before reading this section, it is recommended
that you look at the Appendix (HTML of a simple Web page) and notice a few
items. First, notice that whenever you see a tag such as <html>, there
must be a tag such as </html>. The former is an opening tag (without the
forward slash); the latter is a closing tag (with the forward slash).
Second, notice that the tags <head> and </head> and the tags <body> and
</body> contain a good deal of text in between them.
The <html> and </html> tags are the opening and closing of the Web page
source code. All sections go between these tags. The first section in the
<html> and </html> tags is the head of the page. These tags, <head> and
</head>, contain information that is not visible to the Web surfer when
viewing a Web page. On most computers, the surfer can access the source
code for a Web page by highlighting the "view" command and then clicking
on "source" or "page source."
The example of source code from the
Appendix has the following head section:
<head>
<title>Lecterns-Podiums for very reasonable prices!</title>
<meta name="description" content="Lecterns-Podiums for meeting rooms,
schools, restaurants. Lecterns and podiums don't get better than this!">
<meta name="keywords" content="lecterns, podiums, Convention Centers,
Restaurants, Colleges, Sound Systems, University, Meeting Rooms, Hotel,
audio">
</head>
The head section contains the page title and the metatags. "Metatags are
HTML code intended to describe the contents of the Web site. There are
different types of metatags."
The metatag with the meta name
"description" [*304]
describes the content of the site.
The metatag with the meta name
"keywords" should, at least in theory, contain keywords reflecting the
contents of the Web site.
Search engine "spiders," software that
analyzes Web pages and adds them to an index, use keywords to categorize
sites.
Following the head section is the body of the page. The first paragraph in
the body is as follows:
<p align="center"><img src="Lecterns-Podiums-Logo.jpg" alt="Lecterns and
Podiums for prices worth bragging about. Check out our beautiful solid
wood lecterns and podiums now!" width="530" height="133"></p>
The paragraph is one image and some alternate text. Alternate text gives
the Web surfer information about the image that will be displayed, and is
displayed until an image downloads.
Some browsers, like Internet Explorer
5.50, allow a user to view alternate text at anytime by hovering the
pointer over the image. The paragraph is centered as can be seen from the
opening paragraph tag. The image source (img src) is the name of the
image. As can be seen from the name of the image, the image is the logo.
The alternate text appearing after alt= is only visible prior to an image
downloading. Once the logo downloads, the alternate text disappears.
Finally, the width and height designations determine the size of the image
to be displayed.
Under the first paragraph is a heading. Headings and new paragraphs are
separated in a manner equivalent to hitting return on your computer. The
heading is as follows:
<h2 align="center"><u>< font color="#FFFFFF">Lecterns and Podiums of the
Highest Quality.</font></u></h2>
This heading is centered, underlined, and white in color, [*305]
with a size of h2. Headings come in six sizes, h1 through h6, with h1
being the largest.
The second paragraph has three images and is as follows:
<p align="center">;
<img border="0" src="left-lectern.jpg" alt="Lecterns and Table Top Podiums
for the professional speaker." width="92" height="152">;
<img border="0" src="middle-podium.jpg" alt="A picture of perfection. Our
beautiful table top podiums will look good on any table top." width="173"
height="143">;
<img border="0" src="right-lectern.jpg" alt="Top quality lecterns and
podiums. Want an I shaped lectern? We have them! Well priced lecterns and
podiums suited for meeting rooms, convention centers, universities,
churches and more!" width="105" height="158">;
</p>
First, notice that each image says <img border="0," yet the image in the
first paragraph did not say border. This is because the second paragraph
has three images in a row. The absence of a border means that the images
will be right next to each other, rather than having space between them.
Additionally, each image has alternate text. Further, each image also has
a specified width and height.
The next tag of the source code at the Appendix is a comment tag. The
comment tag is as follows:
<! - Lecterns, podiums, and sound systems supplied to convention centers
and hotels. - >
Comment tags allow the designer to leave messages for future Web work, and
can include any sort of text.
The Web surfer does not see them,
unless the surfer accesses the source code.
Many designers use these tags to give
themselves reminders of the work that needs to be done, ideas to look
into, or simply to signify the point where they left off.
Some designers use comment tags for
other purposes, such as adding keywords to the HTML coding.
The comment tag at [*306]
the Appendix represents such an example.
Following the comment tag is the third paragraph. The third paragraph is
some text and reads as follows:
<p align="center"><font color="#FFFFFF">Well priced lecterns and podiums
suited for meeting rooms, convention centers, hotels, restaurants,
universities and much more!</font></p>
The fourth paragraph is as follows:
<p align="center"><a href="lecterns.htm"><img alt="Enter our site here!
Your lectern awaits you." src="lecterns-1.gif" WIDTH="164"
HEIGHT="62"></a></p>
The fourth paragraph is an image, but notice that it says "a href=lecterns.htm."
That means that the image is linked to another Web page in the same Web
site. To demonstrate, assume you are at the homepage of
www.bestlecterns.com. The homepage is generally named either
index.html or default.htm,
thus the address in the Web browser
appears as
http://www.bestlecterns.com/index.html. Because the image has a link
directing the Web surfer to lecterns.htm, clicking on such an image will
send the Web surfer to a different page in the same site, namely
http://www.bestlecterns.com/lecterns.htm. Suppose the designer wanted
the link to go to another Web site, such as Disney's site. The source code
of the Web page would read "a href=http://www.Disney.com."
The final portion of the source code in the Appendix is merely one more
paragraph of text, the closing tag of the body, and the closing tag of the
Web page.
It is as follows:
<p align="center"><font color="#FFFFFF">Order a lectern or table top
podium today!</font></p>
</body>
</html>
As has been demonstrated, HTML is not difficult, but as legal issues
emerge with the new technology, trademark attorneys must have a general
understanding of HTML basics. This is especially true in litigation
involving search engine [*307]
results.
VII. WHAT ARE DIRECTORIES AND SEARCH ENGINES?
Search engines and directories create many options for the consumer. The
court in Brookfield Communications, Inc. v. West Coast Entertainment Corp.
noted, "Sometimes, however, a web surfer will not know the domain name of
the site he is looking for, whereupon he has two principal options: trying
to guess the domain name or seeking the assistance of an Internet search
engine."
Thus, without engines and directories,
people would only be able to access the sites they were familiar with, or
sites in which they could guess the domain name. Thus, search engines and
directories are the vehicles to having many options over the Web, just as
cars and airplanes are the vehicles to many options over land.
Unfortunately, one must be able to drive the engines and directories to
make use of the advantage, just as one must know how to drive a car.
The terms search engine and directory are often used interchangeably;
however, they are quite different. For example, one court stated that an
example of a "search engine" is "Yahoo!."
It is understandable why one would
think Yahoo! is the model example of a search engine because it does have
mechanical search engine capabilities. However, Yahoo! is not a true
search engine.
Yahoo! is really an example of a
directory.
A directory is "a catalogue or index of
web pages organized by subject."
Upon entering, the user is presented
with links to general categories.
The user will click on the desired
general category. The directory then displays a menu [*308]
of choices pertaining to the chosen category. The user must then narrow
the choices once again and repeat this process until he reaches the
desired topic.
A search engine is a software program that searches its own collection of
Web pages.
Search engines can be individual
programs, which include AltaVista at
http://www.altavista.com, Excite at
http://www.excite.com, and Hotbot at
http://www.hotbot.com. Search engines also can operate as multiple
program interfaces like Dogpile at
http://www.dogpile.com. The multiple program interfaces send a single
query to several individual search engines at once.Although multiple
program interfaces provide results from a number of different search
engine catalogs, they are only good for very simple searches. They
recompose the search query in the lowest common denominator of terms to
access each engine simultaneously. Consequently, a user loses the benefit
of a more sophisticated search equipped with Boolean operators.
Search engines operate when a user enters text descriptive of her desired
target search into a search field. "When a keyword is entered, the search
engine processes it through a self-created index of web sites to generate
a (sometimes long) list relating to the entered keyword."
"No one search engine has identified
and classified all the available web pages because the web is too big and
its contents change too quickly."
Also, when a user "conducts a web
search, the search engine typically ranks and displays the pages it finds
according to its statistical formula for determining relevancy."
Thus, "the list of web sites that any
particular set of keywords will bring up may differ depending on the
search engine used."
Human involvement constitutes the key difference between directories and
search engines. For instance, Yahoo! and Open Directory both are
"directories" that depend on humans to compile their listings.
Adding sites to directories [*309]
requires a human to submit and classify the site, whereas search engines
add sites to the index by way of computer tools known as spiders. Thus,
directories tend to be categorized better, but contain less current
information than search engines.
If the user wants the option of using
mechanical search capabilities, most directories have this function
available as well.
VIII. THE PROCESS OF A SITE BEING INDEXED WITH SEARCH ENGINES VERSUS
DIRECTORIES
As previously discussed, search engines and directories are different in
several important respects. The key difference between them is how they
add sites to their catalogs. A spider determines whether a site is indexed
with a search engine. In contrast, a human determines whether a site will
be indexed with a directory. Because humans enter a site into the
directory, trademark violations are much less likely to occur in
directories than search engines.
To make this clear, the following
section will first explain how a site is indexed with search engines and
then discuss how a site is indexed with directories.
A. Indexing Sites with Search Engines
Companies such as Excite, Hotbot, Lycos, and Webcrawler provide true
search engines.
"Though most search engines today also
offer small directories to interested users, their primary function is to
provide a mechanical index on the web."
To register a site with a search engine, the site designer [*310]
goes to the "add a link" or "submit a link" page of the search engine. For
example, to submit a site to Hotbot, one would click on the "submit web
site" link located at
http://www.hotbot.com. This will send the submitter to a form at
http://hotbot.lycos.com/addurl.asp, where he will fill in the Web page
address being submitted and the return email address. Once submitted, the
page will be queued for addition to the search engine's index.
Search engines have "massive computer
databases" that "continually search and read as many web pages as they can
manage."
Simply submitting a request for
addition to the index does not mean the site will be entered into the
index.
The search engine indexing programs are known as "spiders," "robots," and
"crawlers."
"Each search engine uses its own
algorithm to arrange indexed materials in sequence."
"Search engines look for keywords in
places such as domain names, actual text on the web page, and metatags."
"The more often a term appears in the
metatags and in the text of the web page, the more likely it is that the
web page will be "hit' in a search for that keyword and the higher on the
list of "hits' the web page will appear."
When a Web surfer enters a keyword phrase into a search engine, the
database simply returns all indexed pages in which the keyword phrase
appeared at any relevant place in the code or text of the indexed Web
page. In contrast to directories like Yahoo!,
these mechanical search engines produce a massive number of results. For
example, a query for lecterns on the directory Yahoo! retrieved seventeen
matches, while a query on the search engine Hotbot received 29,100
matches.
For search engines, "the crucial factor
therefore [*311]
becomes search engine ranking."
How do sites come up high in the rankings on certain keywords other than
by paying a fee? The keywords are placed in the HTML code that the spider
for the particular engine is programmed to consider relevant.
Unlike directories, "human editors do
not review the individual results harvested by their spiders."
There are many factors that may be used by the spider to determine
relevancy. First, some spiders use the number of keywords in the page as a
whole.
Second, some look into specific tags,
such as the metatags.
Third, some spiders are programmed to
consider the content of comment tags.
Fourth, some search engines consider
text at the top of the page, text at the bottom of the page, or in the
alternate text for images.
Fifth, a search engine may consider
keywords in the name of an image. Sixth, a spider will look at the number
of sites linked to the given page. Finally, some search engines consider
keywords in the domain name to be relevant.
Because each spider follows a different
algorithm program and other factors may be controlling, different search
engines will produce different results.
B. Indexing Sites with Directories
Directories differ from search engines in one major respect. "Addition of
sites to a directory, requires "a human to [*312]
submit' and "classify the site,' whereas search engines add sites to the
index by way of computer robots, also known as spiders."
For example, "everyday, the editors of Yahoo" receive requests and "search
the web for new sites to add to their directory, reviewing each site to
evaluate content and quality and to determine whether and where a new site
belongs in their directory structure."
To register a site with a directory such as Yahoo!, the site designer must
go to the site of the directory and find a category that the designer
believes best describes the site. Thus, a commercial site selling
presentation furniture such as lecterns would fall into the general
category of business. The designer would click on that link and then the
site would present a new list of choices. The designer would be required
to pick the best category of the more specific areas under the general
category of business. The site designer would be required to narrow the
classification until the list of categories could no longer be broken
down. The designer must then submit the site and hope that the Yahoo!
personnel agree that the site is worthy of being indexed by Yahoo! and the
chosen category is the correct one.
Because of human intervention, it is less likely that a site designer can
deceive the index and achieve high rankings for keywords that are
irrelevant to the site, or keywords that would violate trademark law. In
directories, a search is limited to the descriptions of a page, whereas
search engines utilize many areas of a page.
Such differences between search engines
and directories may mean that directories should be liable for trademark
violations, since the human involvement in directories such as Yahoo!
foreseeably creates the expectation that illegal practices will be
detected.
[*313]
IX. TACTICS WEB DESIGNERS USE TO ACHIEVE HIGH RANKINGS IN SEARCH ENGINES
For Web site operators, the secret to making money from search engines is
reaching the top ranks and being found by customers. An advertising
promotion recently claimed that "[a] top 30 ranking in a major search
engine such as Excite, Lycos or AltaVista often will generate more
targeted traffic than an expensive banner advertising campaign."
A ranking outside the top thirty is not likely to be helpful. For example,
although a rank of 93 out of 25,100 matches seems good, in reality, a rank
of 93 is not likely to be found by search engine users because most Web
surfers find what they are looking for in the top thirty results. If they
don't find it in the first thirty results, they are likely to start fresh
with a different search engine. Thus, there are only a few good positions
for the numerous competitors with regard to certain keyword searches.
To obtain the high ranks of search engine results for certain keywords,
site designers will manipulate the HTML coding. Often, these schemes will
be used to get high rankings for words that are relevant to the site.
However, a problem is created when Web designers obtain high ranks for
keyword searches by using a competitor's trademark. Regulation of this
practice is the basis of this article.
In order for trademark owners to be sufficiently protected, it is
essential to understand the ways that site designers can achieve high
rankings for keyword searches of another's legally protected trademark.
Such an understanding is invaluable in two ways. First, it allows a lawyer
to competently and persuasively argue trademark violations with regard to
search engine results. Second, it allows judges to understand how search
engines really operate, enabling well-established precedents to be
established. By use of simple examples, this section will explore the
numerous tactics that designers use to beat the competition, or in some
cases, steal from the competition. Although the examples will use the
keywords "lecterns" and "podiums" as demonstrations, it is important to
realize that a site designer instead could use keywords that are the trade
names of others.
[*314]
Most of the tactics that Web site designers use involve manipulation of
the HTML coding, also known as source code.
The opening tag of the html of a Web
page is <html> and the closing tag is </html>. All sections belong between
these tags. The goal of the Web site designer is to insert keywords into
as many areas between the two tags without violating the rules the
indexing spider follows.
Many of the ways designers achieve this
goal will be described using the source code at the Appendix.
A. Placing Keywords in the Title Tag
The first section inside of the HTML tags is the head section.
The opening tag of the head section is
<head> and the closing tag is </head>.
The title tag is inside of the head
tags. Many search engine spiders are
programmed to value keywords in the title tags as being relevant.
The title tag at the Appendix is
"<title>Lecterns-Podiums for very reasonable prices!</title>."
Notice that the first word the spider will read in the title tag at the
Appendix is the word "lecterns," and the second word is "podiums." Looking
solely at the title tag, since the word "lecterns" comes first, it will be
considered as more relevant than the word "podiums." Also, notice that the
length of the title is only six words. The shorter the title tag, the more
relevant the words will be when ranked by the spider since the word
constitutes a higher percentage of the tag.
Because many spiders are programmed to look at title tags for keywords,
site designers often will repeat keywords in the title tag.
For example, if the keywords the site
designer [*315]
seeks to have considered relevant are "lecterns" and "podiums," the
following title tag may be used: <title>Lecterns-Podiums and
Lecterns-Podiums and Lecterns-Podiums, etc</title>. This would make the
relevancy of "lecterns" and "podiums" very high, but may distort the
search engine results if the spider were to rank this site higher than
other sites that are in fact more relevant to the topic. Some spiders will
not allow this practice and will constitute it as spamming even if the
site really is the most relevant.
It is important to note that when a Web page is viewed, the content in the
title tag is usually found in the title bar at the top of the screen.
Thus, the title tag may be visible to the Web surfer while viewing the Web
page. Additionally, some search engines use the content of the title tag
when displaying search results.
Thus, title tags can be a very
important factor in causing two sites to be confusingly similar to the Web
surfer upon first impression.
B. The Keyword and Description Metatags
Another trick in achieving successful engine rankings is to effectively
use metatags.
However, "meta tags are what many web
designers mistakenly assume are the "secret' to propelling their web pages
to the top of the rankings."
But many search engines - such as
AltaVista, Excite, FAST, Google, Lycos, and Nlight - don't even consider
metatags in determining content relevancy.
Additionally, search engines "that do
read meta tags may choose to weight them differently. Overall, meta tags
can be part of the ranking recipe, but they are not necessarily the secret
ingredient."
[*316]
Like the title tags, metatags are in the head section of the HTML coding.
There are two key metatags. The first
is the description metatag.
The description metatag at the Appendix
is <meta name="description" content="Lecterns-Podiums for meeting rooms,
schools, restaurants. Lecterns and podiums don't get better than this!">.
This tag includes the words "lecterns" and "podiums" twice. Although one
could duplicate the words "lecterns" and "podiums" another fifty times in
the tag, such use of the keywords will most likely get caught by the
search engine spider, which will throw the page to the bottom of the
results, or exclude it from the index altogether.
It is important to note that the description tag is usually not hidden to
the Web surfer, even though it is in the head section.
Many search engines use the description
metatag as the description in the search engine results.
Thus, if one were to place trade names
in the description tag, the element of confusion is more likely to exist
because the trade name may not be visible on the actual Web page.
The second important metatag for achieving high rankings is the keywords
metatag.
The site designer will include the
keywords that are supposedly relevant to the site in the keyword tag. The
example from the Appendix is "<meta name="keywords" content="lecterns,
podiums, Convention Centers, Restaurants, Colleges, Sound Systems,
University, Meeting Rooms, Hotel, audio">."
Notice that the tag only contains a few keywords and none of them are
duplicated. This causes the spider to believe that the keywords are
relevant. Some site designers will include the same keyword numerous times
in the keyword metatag. Often, the spider will detect this and consider it
[*317]
spamming.
Additionally, all keywords are
represented somewhere in the body of the Web page. However, some designers
place keywords in the metatags, which cannot be found in the body of the
Web page. A spider detecting such a practice will penalize the Web page
lacking those keywords in its body.
Lawyers should remember that many search engines do not consider keywords
in metatags as relevant, and those that do may only give slight relevance
to metatags.
Therefore, a site that appears in the
top rankings for another's trade name is likely to have the competitor's
trade name in some portion of the Web page besides the metatags.
C. Keywords Placed at the Top of the Body Section
The body is the other main section in the HTML coding of a Web page.
Spiders read the text in the body of a
Web page to determine content relevancy,
thus placing keywords in the text of
the Web page can be very effective. There are many ways that text can be
placed in the body of the Web page to demonstrate to the spiders that the
site is rich in content of a particular keyword. First, "search engines
will ... check to see if the keywords appear near the top of a Web page,
such as in the headline or in the first few paragraphs of text. They
assume that any page relevant to the topic will mention those words right
from the beginning."
Further, the fact that the site
designer is willing to place the keywords at the top of the page where
everyone can see them indicates that the keywords are relevant to the Web
page.
Because the text at the top of the page may be considered very relevant,
placing a logo or some other image at the top of the page is not usually
done unless there are keywords in the alternate text tags.
[*318]
D. Keywords in the Alternate Text Tags
If the designer wants to place a logo at the top of the page, yet still
have keywords at the top of the page, alternate text can accomplish this
goal.
An example of such use of alternate
text can be seen in the source code at the Appendix, which displays an
image at the top of the page. The image coding is "<p align="center"><img
src="Lecterns-Podiums-Logo.jpg" alt="Lecterns and Podiums for prices worth
bragging about. Check out our beautiful solid wood lecterns and podiums
now!" width="530" height="133"></p>.&c dq;
Note the portion of the tag that reads "alt." That is the alternate text
portion of the tag, which includes the text a user sees prior to an image
loading. Because some search engines consider alternate text relevant,
such tags are additional tools for site designers to boost their rankings.
An interesting issue with regard to
alternate tags involves their use at the top of the page, which is one of
the most important areas to have keywords. Since the alternate text is
visible when no image is displayed, a site designer may be deterred from
inappropriate keyword inclusion. However, Web designers may still use
inappropriate keywords in the alternate text if a fast loading image
quickly covers the text. But even quick loading images will not mask the
inappropriate text when the Web page is viewed by a browser that has its
image viewing capability turned off.
Some site designers may copy the keywords in the keyword metatag, then
paste such text in the alternate text of images.
By placing the keywords in the
metatags and in the body, the designer creates the illusion that these
keywords are in fact relevant. However, "at least one search engine has
added indexing logic to consider the exact duplication of substantial
portions of a keyword list in this fashion as spamming, and entries will
be removed within a week of their addition."
As spiders become more advanced, more
designers copying and pasting the keywords metatag into other areas of the
page such as the ALT text will be caught. However, to get around such
hurdles, the site designer can simply scramble the keywords such that the
spider does not recognize [*319]
the text as being an exact duplication of the keywords in the metatag.
E. Using Keywords as the Names of Images
Another technique used by site designers is to place keywords in the names
of the images. Using the example in the Appendix, "<p align="center"><img
src="Lecterns-Podiums-Logo.jpg" alt="Lecterns and Podiums for prices worth
bragging about. Check out our beautiful solid wood lecterns and podiums
now!" width="530" height="133"></p>," the name of the image is
"Lecterns-Podiums-Logo.jpg." Although naming images with keywords may be
effective, currently there is no evidence to suggest that such a technique
is a key determinant in search engines rankings.
F. Keywords in the Comment Tags
Another way site designers can insert keywords into the body of the Web
page is through comment tags. The comment tag in the Appendix is "<! -
Lecterns, podiums, and sound systems supplied to convention centers and
hotels. - >." Some search engines, such as AltaVista, consider keywords in
comment tags when determining content relevancy.
It is important to note that comment tags are located in the body of the
text, yet they are invisible to the Web surfer unless the actual source
code is viewed.
Because comment tags are invisible
like metatags, they also provide an example of less visible infringement.
G. Keywords in the Domain Name
Web site designers often obtain domain names that contain the keywords
that the Web site will target. Some search engines value the keyword in
the domain name.
This makes perfect sense, since many
domain names reflect the name of the business, the form of the business,
or a description of what the Web site sells. Because the search engine
results display the domain names of the sites that are returned, [*320]
they are not hidden from the Web surfer.
H. Keywords in Hidden Text
Some Web site designers try to "spam search engines by repeating keywords
in a tiny font or in the same color as the background color to make the
text invisible to browsers."
However, "search engines are catching
on to these and other tricks."
In response, a savvy designer might
use an image as a background rather than a simple color. Search engines
cannot read images on a Web page.
By using an image, the search engine
spider might not be capable of determining the color of the background. In
this case, a background with a blue image, for example, could have a
similar shade of blue text on the page without detection by the engines.
If this strategy is successful, Web designers can insert infringing
language into their sites without visible detection. However, there are
ways to reveal the invisible text if a designer uses this strategy. First,
one can look at the HTML and view the text source. Second, one can simply
highlight the entire Web page. All text that is placed on the same color
background will become visible when highlighted.
I. Keywords Located in Other Pages of the Site
"Most search engines will index the other pages from [a] web site by
following links from a page ... submitted to them."
This practice allows an engine to
determine relevancy by looking to other pages within the same site. If the
additional pages are relevant to a particular keyword as well, the site
has a better chance of obtaining a high ranking with the engines. The
"most descriptive, relevant pages are often inside pages rather than the
home page."
This is important because a search
engine will often display the homepage in its results rather than the
internal pages of a site. Thus, one must look to the pages linked to the
homepage for potentially infringing keywords.
[*321]
J. Doorway Pages - Bait and Switch Techniques
A doorway page is a generic page that is rich in content of certain
keywords or phrases.
They are designed primarily for search
engines.
Doorway pages often will have a logo,
a few words and a "enter" image, which will take the Web surfer to the
real page that the site owner wants the surfer to visit.
The designer will make and submit many
of these pages, differing only in the keywords or phrases placed into the
HTML.
A problem for designers is that doorway pages are very easy to copy.
Thus, a competitor of a certain
keyword can view the source code of the doorway page, copy the code, then
submit the doorway page as his own.
To avoid such a problem, some
designers create certain doorway pages that work well with a specific
search engine.
They submit a doorway page to the
engine and the spider indexes the site, achieving a high ranking.
Next, they will replace the doorway
page with the real page they want the surfer to view.
This practice keeps the competitors
from taking the fruits of the designer's research.
After some time, the spider will
revisit the page and the new page will not rank as high.
The designer will then resubmit the
doorway page, achieve a high ranking, and replace the doorway page once
again.
This practice of submitting and removing doorway pages creates an avenue
for site designers to achieve high rankings by using another's trademark.
The designer can submit the doorway page that is relevant to another's
trademark and once the ranking is achieved, replace the page with one that
does not even mention the trademark. This deceptive practice is difficult
to detect because the trademark is not located in the HTML or domain name
of any page in the site. Thus, infringement will be easier to detect if
one accesses the site [*322]
while the site designer is attempting to obtain the high rankings.
X. THE LANHAM ACT - TRADEMARK INFRINGEMENT, TRADEMARK DILUTION, AND THE
FAIR-USE DEFENSE APPLIED IN THE CONTEXT OF SEARCH ENGINE RESULTS
The Lanham Act protects the rights of those who register trademarks.
The Supreme Court has articulated the fundamentals of Trademark law by
stating that its objective is to "prevent others from copying a
source-identifying mark, [which] "reduces the customer's costs of shopping
and making purchasing decisions,' for [this process] quickly and easily
assures a potential customer that this item - the item with this mark - is
made by the same producer as other similarly marked items that he or she
liked (or disliked) in the past. At the same time, the law helps assure a
producer that it (and not an imitating competitor) will reap the
financial, reputation-related rewards associated with a desirable
product."
Besides protecting consumers, trademark law is intended to prevent one
from reaping the benefits of another's goodwill.
Many companies invest large amounts of
money into advertising their products and services, assuring quality, and
convincing the consumer that any product with their trademark can be
trusted.
Trademark infringement law protects
those who use trademarks, and anti-dilution laws provide extra protection
for those who maintain well-known trademarks.
A federally registered trademark is "a mark that provides the registrant
with its exclusive use in commerce or in connection with goods or services
specified in the registration."
Under the Lanham Act,
[*323]
the term "trademark" includes any word, name, symbol, or device, or any
combination thereof - (1) used by a person, or (2) which a person has a
bona fide intention to use in commerce and applies to register on the
principal register established by this chapter, to identify and
distinguish his or her own goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods,
even if that source is unknown.
Using the landmark cases of Brookfield Communications, Inc. v. West Coast
Video Corp.
and Playboy Enterprises, Inc. v. Terri
Welles,
the following will discuss trademark
infringement, trademark dilution, and the fair-use defense in the context
of search engine results.
A. Trademark Infringement
The most common course of action that a trademark holder will take to
prohibit unauthorized use of its trademark in the United States is to
pursue a "federal trademark infringement claim."
Such a claim can be made by a
trademark owner against any person who, without the consent of the
trademark owner, "uses in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the sale,
offering for sale, distribution, or advertising of any goods or services
on or in connection with which such use is likely to cause confusion, or
cause mistake, or to deceive."
Thus, to succeed on a federal trademark infringement claim, the trademark
owner must prove that "1) [he] has a valid, protectable trademark; 2) the
infringer used the mark in commerce; and most importantly, 3) the
infringed use creates a likelihood of customer confusion as to the source
of the goods or services."
In 1999, the Ninth Circuit addressed the question of whether use of
another's trademark in the metatags of HTML [*324]
constitutes trademark infringement.
1. The Facts of Brookfield Communications, Inc. v. West Coast
Entertainment Corp.
Brookfield Communications, Inc. ("Brookfield"), a software company that
maintains a "searchable database containing entertainment-industry related
information," alleged that West Coast Video Entertainment Corp. ("West
Coast"), "one of the nation's largest video rental chains," infringed its
registered trademark "Moviebuff" by using the domain name "moviebuff.com"
and including the name "in buried code or metatags on their home page."
Brookfield brought the action once it
learned that West Coast "intended to launch a web site at "moviebuff.com'
containing, inter alia, a searchable entertainment database similar to "Moviebuff.'"
2. The Findings of the Court Regarding the Use of the "Moviebuff"
Trademark
After ruling in favor of Brookfield on the domain name issue, the court
stressed, "The question in the metatags context is quite different.
Here, we must determine whether West
Coast can use "MovieBuff' or "moviebuff.com' in the metatags of its web
site at "westcoastvideo.com' or at any other domain address other than "moviebuff.com'
(which we have determined that West Coast may not use)."
The key distinction between use of a trademark in a domain name versus use
in metatags is that the use is visible to the consumer when used in domain
names, but invisible when used in certain metatags. Therefore, confusion
is likely to be significantly reduced in the context of using another's
mark in metatags. Additionally, that court stated,
When the user inputs "MovieBuff" into an Internet search engine, the list
produced by the search engine is likely to include both West Coast's and
Brookfield's web sites. Thus, in scanning such list, the Web user will
often be able to find the particular web site he is seeking. Moreover,
even if the Web user chooses the web site belonging [*325]
to West Coast, he will see that the domain name of the web site he
selected is "westcoastvideo.com." Since there is no confusion resulting
from the domain address, and since West Coast's initial web page
prominently displays its own name, it is difficult to say that a consumer
is likely to be confused about whose site he has reached or to think that
Brookfield somehow sponsors West Coast's web site.
Although consumer confusion is much less likely in the context of metatags
than domain names, the court held that West Coast's use of "moviebuff.com"
in metatags was unlawful.
To accomplish this result, the court
used the initial interest confusion test:
West Coast's use of "moviebuff.com" in metatags will still result in what
is known as initial interest confusion. Web surfers looking for
Brookfield's "MovieBuff" products who are taken by a search engine to "westcoastvideo.com"
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
visiting 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.
3. The Court's Attempt to Analogize Trademark Use in Metatags to the
Traditional Business Setting
After finding that the "Moviebuff" trademark was infringed when used in
West Coast's metatags, the court then proceeded to analogize such use to a
traditional business setting. The court stated,
Using another's trademark in one's metatags is much like posting a sign
with another's trademark in front of one's store. Suppose West Coast's
competitor (let's call it "Blockbuster") puts up a billboard on a highway
reading - "West Coast Video: 2 miles ahead at Exit 7" - where West [*326]
Coast is really located at Exit 8 but Blockbuster is located at Exit 7.
Customers looking for West Coast's store will pull off at Exit 7 and drive
around looking for it. Unable to locate West Coast, but seeing the
Blockbuster store right by the highway entrance, they may simply rent
there. Even consumers who prefer West Coast may find it not worth the
trouble to continue searching for West Coast since there is a Blockbuster
right there. Customers are not confused in the narrow sense: they are
fully aware that they are purchasing from Blockbuster and they have no
reason to believe that Blockbuster is related to, or in any way sponsored
by, West Coast.
Although the court was aware that customers were not confused about the
origin of the goods, it still concluded that initial interest confusion
was present and that using another's trademark in metatags enables the
misappropriation of another's acquired goodwill.
4. Ruling in Favor of Brookfield - A Sound Decision?
Although the court's reasoning has been criticized, the court correctly
decided to bar the use of a competitor's trademark in metatags absent fair
use. The court's reasoning has generated criticism due to its reliance on
the initial interest confusion standard and the analogy it applied.
For example, Shannon King argues that
initial interest confusion was inappropriately applied because of the
unique expectations of Internet consumers.
She states that previous
"interpretations of initial interest confusion have relied upon the
standard expectations of consumers in the physical world."
She believes that consumers expect to
have some results returned that are irrelevant to the terms inputted into
the search engine, thus confusion is minimal.
Additionally, she maintains that the
court's analogy over-emphasizes the costs involved in getting off at the
wrong "cyber-exit" compared with a real highway exit. "It just takes a few
mouse clicks and a [*327]
couple of seconds to "go back' on the Internet."
Although the criticisms may be justified, the Brookfield decision is still
exceptional. By relying on initial interest confusion, the court found a
reasonable means of supporting the finding that use of a competitor's
trademark in metatags is infringement, absent fair use. This decision is
important because it protects trademark owners in a new advertising medium
that to date has not been properly regulated. As technology advances, the
improper use of another's trademark will likely be a moot issue such that
traditional legal principles will sufficiently protect trademark owners.
For example, the system of regulation proposed by this article
demonstrates a way of enabling search engines to provide sufficient
protection to trademark owners. Therefore, despite the criticisms that the
Brookfield decision has generated, the court must be applauded for the
result achieved.
B. Trademark Dilution Through Improper Use in Metatags and Other Portions
of the HTML
In order to make a federal trademark dilution claim, the complainant has
the burden of proving that 1) it owns a famous mark, rather than simply
holding a registered trademark; and that 2) the infringer's mark dilutes
the famous mark. The term "dilution" means "the lessening of the capacity
of a famous mark to identify and distinguish goods or services, regardless
of the presence or absence of - (1) competition between the owner of the
famous mark and the other parties, or (2) likelihood of confusion, mistake
or deception."
Courts have defined dilution as "either the blurring of a mark's product
identification or the tarnishment of the affirmative associations a mark
has come to convey."
Dilution by blurring "is where the
infringer diminishes the distinguishing and identifying power of a famous
mark by misappropriating the mark."
Dilution by tarnishment occurs "when
inferior or unwholesome goods or services are linked to a famous mark, and
the linking may cause a negative association [*328]
with the famous mark."
Trademark dilution, under
15 U.S.C. section 1125(c), therefore, aims to preserve the value of a
famous mark in its representation of the owner's goods or services, and
the ability of the mark to serve as a unique symbol of the source of the
goods or services to customers, regardless of competition and customer
confusion.
When another's famous mark is placed into the metatags and other portions
of the HTML, both blurring and tarnishment are possible dangers.
"Intuitively, dilution by tarnishment would seem to be the ideal claim if,
for example, a pornographic site used Walt Disney Co.'s trademarks in its
metatags."
However, "a plaintiff may have
difficulty proving the negative association required for dilution by
tarnishment."
"The user never sees the metatags and
knows of the inadequacies of search engines, making it unlikely that any
association is triggered between the mark and the offending site so as to
tarnish the mark's or its owner's images."
On the other hand, blurring can result because the use of the famous mark,
"within another company's metatags dilutes its effectiveness in promoting
and marketing the owner's own products. The unauthorized use of the mark
in meta-tags for the specific purpose of drawing the famous mark's
audience to an unsponsored site dilutes the mark's distinctiveness and its
overall effectiveness."
C. Fair Use as a Defense
A defense to both infringement and dilution claims is that the party
fairly used the trademark or famous mark of another.
The assertion "by an alleged infringer
that it is only using the contested term, mark, or designation at issue in
a non-trademark, descriptive sense has become known as [*329]
the "fair use' doctrine or defense."
A defendant must establish three
elements to establish the defense: "1. Defendant's use of the term is not
as a trademark or service mark. 2. Defendant uses the term "fairly and in
good faith.' 3. Defendant uses the term "only to describe' its goods or
services."
Shortly after Brookfield was decided, the Southern District of California
was presented with Playboy Enterprises, Inc. v. Terri Welles, Inc., the
second most important case addressing trademark infringement and dilution
with regard to search engines.
Unlike Brookfield, the fair use
defense played a major role in the decision of the court in Playboy
Enterprises.
1. The Facts of Playboy Enterprises, Inc. v. Terri Welles, Inc.
Playboy Enterprises, Inc. ("PEI"), the famous international publishing and
entertainment company, "owned federally registered trademarks for the
terms Playboy, Playmate, Playmate of the Month, and Playmate of the Year."
"PEI did not have a federally
registered trademark in the abbreviation "PMOY,' although PEI argued that
"PMOY' [was] worthy of trademark protection because it [was] a well-known
abbreviation for the trademark Playmate of the Year."
According to PEI, "its free Website,
http://www.playboy.com, has become one of the most popular sites on
the Web and is used to promote its magazine, goods, and services."
"Terri Welles [was] a self-employed model and spokesperson, who began her
modeling career with Playboy magazine in 1980."
In December of 1980, Ms. Welles was
featured as "Playmate of the Month."
In June of 1981, Ms. Welles received
the "Playmate of the Year" award.
She also appeared in thirteen issues
of Playboy magazine and eighteen of [*330]
PEI's newsstand specials.
According to Ms. Welles, "since 1980
she always referred to herself as a "Playmate' or "Playmate of the Year'
with the knowledge of PEI."
On June 29, 1997, Ms. Welles opened a Web site at
http://www.terriwelles.com, which included photographs of herself and
others, as well as other features that competed with the Playboy site.
PEI's protected trademarks appeared in
many portions of the visible portions of her site. At the top of her
site's pages was an image stating, "Terri Welles - Playmate of the Year
1981."
Each page of her site used "PMOY "81"
as a repeating watermark in the background. Additionally, there were two
advertising banners placed on the pages that were available for visitors
to cut and paste onto their own sites. Such banners were intended to bring
additional traffic to her site. Both banners contained a seminude picture
of Terri Welles and the title of her Web site.
One banner displayed the title as
"Terri Welles Playboy Playmate of the Year '81," and the other displayed
the title as "Playboy Playmate of the Year 1981 Terri Welles."
Both images contained Terri Welles'
name in a bigger text and a different color than the phrase that included
PEI's protected trademarks.
Finally, almost all of the pages of
her site included the following disclaimer at the bottom of the page:
"This site is neither endorsed, nor sponsored by, nor affiliated with
Playboy Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR and PLAYMATE OF
THE MONTH are registered trademarks of Playboy Enterprises, Inc."
Additionally, PEI's protected trademarks appeared in the invisible
portions of the HTML in Terri Welles' Web site.
The keywords metatag contained the
following words: "terri, welles, playmate, playboy, model, models,
semi-nudity, naked, breast, breasts, tit, tits, nipple, nipples, ass,
butt."
The description metatag was as
follows: "Playboy Playmate of the [*331]
Year 1981 Terri Welles Website featuring erotic nude photos, semi-nude
photos, softcore and exclusive Members Club."
There was a link to "www.playboy.com."
Finally, the title tag read "Terri
Welles Erotica."
2. Analyzing the Content of the Welles Web Site to Determine Keyword
Content Relevancy
The only visible use of PEI's trademarks that search engines spiders would
detect was the text disclaiming that the site is not associated with PEI.
The disclaimer alone contains the word
"Playboy" three times and the word "Playmate" twice. As for the banners,
image heading at the top of the page, and repeating watermark background,
search engine spiders would not have been able to read the text displayed
in them. Spiders can only read the text that it sees in the actual HTML of
a Web page.
Text displayed in images does not show
up in the HTML and thus is not considered when the spider determines
content relevancy of a Web page.
Next, it is necessary to look at the use of PEI's trademarks in the
portions of the HTML that are not visible when viewing the Web page.
Although most search engines do not consider metatags when determining
content relevancy, some do.
The keywords metatag contained the
words "Playmate" and "Playboy" as the third and fourth keywords,
respectively.
Because they are listed so close to
the beginning, [*332]
they are more likely to be considered relevant to the site. Additionally,
there are only sixteen keywords in the keywords metatag,
thus making them even more relevant.
In the description tag, the first two words are "Playboy Playmate,"
thus spiders may consider them
relevant. Finally, the link to
http://www.playboy.com includes the word "Playboy" and may increase
relevancy towards the keyword "Playboy."
This site would have a small chance, if any, of gaining a high relevancy
ranking in those search engines that consider metatags. The words are in
both metatags as well as in the visible text of the page. Keywords in
metatags that are not also in the text of the page are usually not
considered relevant.
With respect to those engines that do
not consider metatags, the disclaimer being placed at the bottom of the
page will likely hurt the chances of high rankings. Keywords at the bottom
of the page are usually not as relevant as when presented at the top of
the page.
Because the words "Playboy" and
"Playmate" are very competitive keywords, it is unlikely that the site
would have much success with the search engine rankings.
3. The Findings of the Court Regarding the Visible Use of PEI's Trademarks
The court focused on whether Terri Welles fairly used PEI's protected
trademarks "Playboy," "Playmate," and "PMOY." To determine if the doctrine
of fair use applied, the court looked at the visible use of the
trademarks, then looked at the invisible use of such trademarks.
Although this article is mainly
concerned with initial interest confusion with regard to search engine
results and thus the invisible use of another's trademarks, the court's
analysis of the visible use of PEI's trademarks is also included because
the case demonstrates the relationship between the invisible and visible
use of another's trademark.
In applying the fair use doctrine, the court first looked to see if Terri
Welles used PEI's trademarks only to describe the [*333]
goods or service that she offered.
In making its determination, the court
stated,
It is undisputed that the "Playmate" title of a Playmate model is a
designation that either has, or is intended to have public recognition.
... It is equally indisputable that the title has become part of Ms.
Welles' identity to the public, in much the same way as her name
identifies her to others ... . Given that Ms. Welles is the "Playmate of
the Year 1981," there is no other way that Ms. Welles can identify or
describe herself and her services ... . Accordingly, the court finds that
the use of the terms "Playmate of the Year 1981," "Playboy Playmate of the
Year 1981" and "PMOY "81" in the visible portions of Defendant Welles'
Website is descriptive of Ms. Welles; it is her services and goods being
described, and the public identifies her by the titles bestowed upon her
by PEI.
Next the court looked at whether Terri Welles used PEI's trademarks fairly
and in good faith.
The court stated,
[PEI] failed to identify any conduct of Ms. Welles that is sufficiently
blameworthy.
... Ms. Welles provides uncontroverted evidence that she sought to take
precautions to ensure that her use of PEI's trademarked terms in her
Website was permitted by PEI... . Ms. Welles ... made changes to her
website consisting of: (1) adding disclaimers to the bottom of most pages
of her website; (2) including a hyperlink from her website to
www.playboy.com; (3) substituting the visual title of "Playboy
Playmate of the Year 1981" to "Terri Welles, Playboy Playmate of the Year
1981;" (4) removing the images of three playboy covers; (5) removing any
image which PEI contended was a PEI-copyrighted image... . Finally, the
unavailability of other phrases to accurately describe Ms. Welles and her
business bolsters the court's finding of good faith... . Therefore, the
court finds that Ms. Welles has established sufficient evidence to show
... PEI's trademarked terms in her visible Website are used fairly and in
good faith only to describe her goods and services.
[*334]
Finally, the court determined whether Terri Welles used PEI's protected
trademarks in a way other than as marks. In the Ninth Circuit, "in order
to constitute a nontrademark, "fair use,' the use cannot amount to
trademark infringement or unfair competition," and the dispositive issue
in making such a determination "is the likelihood of confusion."
To determine if there was a likelihood
of confusion the court applied the Sleekcraft test.
The court found that the "totality of the Sleekcraft factors does not
compel a finding of a likelihood of confusion. Plaintiff's mark is strong,
the goods are related (online erotica), and the market channels converge
... . The fact that Plaintiff and Defendant Welles are in competition is
not disputed."
Additionally, the degree of care one
would expect the consumers to have was considered low.
On the other hand, the court held that
similarity in appearance of the marks weighed heavily in favor of Terri
Welles. "Ms. Welles does not use the PEI bunny logo, the PEI bunny theme,
PEI trademark fonts, PEI trademark dress, or PEI trademark colors."
Additionally, Ms. Welles' and PEI's
uses differed in meaning. Ms. Welles used the contested terms in a
non-trademark manner to describe herself and not to identify PEI as the
source of the goods.
Further, there was no evidence of
actual confusion presented by PEI.
As for the intent of Terri Welles, the
court held she had no bad intent based on the same reasons that her use of
the trademarks was in good [*335]
faith.
After applying the Sleekcraft factors, the court then applied a few
additional factors. First, the fact that her site contained the trademarks
at the top of the page, which was a commercial setting, didn't strengthen
PEI's case, since the use was a non-trademark use.
Next, the court looked at stylization
and lettering. The court found the use of a different font was evidence of
a lack of intent to trick or mislead customers. Additionally, because the
images displayed her name in a much bigger font that overlapped the
trademark, the court supported a finding of non-trademark use.
The court then looked at the
repetition of the trademarks and the commercial theme. Again the court
held that Terri Welles used the trademarks fairly, for the "terms describe
her and her goods and services, and they are not used to identify her
goods with PEI or to identify PEI as the source."
The court ultimately held that Terri
Welles fairly used the trademarks in the visible portions of her Web site
because she had no other way of expressing her title as a Playboy
Playmate.
4. The Findings of the Court Regarding the Use of PEI's Trademarks in the
Metatags
The court proceeded to examine the use of PEI's trademarks in the metatags.
The keywords metatag contained the following keywords: "terri, welles,
playmate, playboy, model, models, semi-nudity, naked, breast, breasts,
tit, tits, nipple, nipples, ass, butt."
The description metatag was as
follows: "Playboy Playmate of the Year 1981 Terri Welles website featuring
erotic nude photos, semi-nude photos, softcore and exclusive members
club."
PEI used the Brookfield case to argue that Terri Welles' use of the marks
caused likelihood of confusion.
While Brookfield held that the
presence of initial interest confusion may be actionable under the Lanham
Act, it did not hold that a showing of initial interest confusion is
tantamount to a finding of likelihood confusion. As such, the court
disagreed [*336]
with PEI, finding that Brookfield was inapposite to Ms. Welles' case.
The presence of fair use and the use
of trademarks in the metatags, the court explained, distinguished Ms.
Welles' case from Brookfield.
PEI's sole evidence regarding the initial interest confusion was some
circumstantial evidence that many people who plug PEI's trademark terms
into their Web browser search engine are probably looking for Playboy's
Web site - a point that experts on either side did not dispute.
The court stated, "This indicates that
there is at least a showing of some "initial interest confusion.'"
Despite this finding, the court held
that Brookfield in no way limited one's "right to use terms in a manner
that would constitute fair use under the Lanham Act."
PEI did not offer any facts to merit a consideration of other factors,
derived from cases other than Brookfield, that might have shown a
likelihood of confusion.
These factors included evidence of the
initial interest as being "damaging or wrongful;" evidence that confusion
between two products "will mistakenly lead the consumer to believe there
is some confusion between two and therefore develop an interest in the
[defendant's] line that it would otherwise not have"; and evidence that
the "situation offered an opportunity for sale not otherwise available by
enabling defendant to interest prospective customers by confusion with the
plaintiff's product."
Without much discussion, the court
concluded that PEI failed to present any facts satisfying the factors
above. Among other things, PEI was unable to prove that any part of Ms.
Welles' business derived from the confusion that led unaware users to her
Web site, or that a majority of users typing in one of PEI's marks was
searching for Playboy's official site.
The court was also influenced by the
lack of evidence of an intent of Ms. Welles to trade-in on PEI's goodwill.
5. The Court's Finding on the Issue of Trademark Dilution
In deciding whether Terri Welles' use of PEI's trademarks diluted the PEI
trademarks, the court made quick disposal of the issue. In concluding that
Terri Welles' use of PEI's trademarks did not constitute dilution as a
matter of law, the court stated that
Ms. Welles' use of the terms "Playboy Playmate of the Year 1981,"
"Playmate of the Year 1981," and "PMOY "81" in her website constitute
identification of herself: a nominative fair use. The use of those terms
in the visible portion of her website and the terms, "Playboy Playmate of
the Year 1981," "Playboy," and "Playmate," in the meta tags, allows web
surfers and potential customers correctly to identify her site and locate
her services. In cases where the trademarked term must be used to identify
the individual or a good, infringement and dilution laws do not apply.
The court continued by ruling that Terri Welles was also entitled to the
"fair use" defense.
6. Problematic Implications of the Court's Decision
Overall, the decision by the court is sound. Terri Welles earned the
distinction of having appeared in many issues of Playboy Magazine and
being named "Playmate of the Month," as well as "Playmate of the Year."
Judge Keep correctly ruled that Terri Welles earned the rights to be
addressed as such. Moreover, Terri Welles has no way of commercially
exploiting her achievements if she is not entitled to use the descriptions
bestowed upon her by PEI. There is no doubt that she should be entitled to
use the titles on her Web page.
Notwithstanding the above, some disturbing ramifications of the decision
need to be addressed. First, the decision practically places Terri Welles
in the same position as PEI with regard to the rights to obtain top search
engine rankings for the keywords "Playboy" and "Playmate." Terri Welles
comprises only a small piece of the success of PEI; therefore, one can
question the court granting Welles tremendous rights with regard to using
PEI's protected trademarks for search engine rankings.
[*338]
The court also seems to place undue emphasis on the fact that Welles' site
disclaimed that the site is not affiliated with PEI.
While correct in its belief that such
disclaimers alleviate consumer confusion, the court does not address three
particularly troubling issues regarding such disclaimers. First, the court
stated that there were disclaimers at the bottom of most of the pages.
However, the court did not pay
attention to the placement of the disclaimers. Certainly the effectiveness
of a disclaimer is greatly controlled by its location on the page. If the
disclaimer cannot be seen without scrolling, then its effectiveness is
decreased. Second, the court was not disturbed by the fact that the
disclaimer was not on all of the pages of Welles' site.
This is important with regard to
search engine rankings because sometimes a page other than the home page
achieves high rankings. Thus, if one of the pages without the disclaimer
were to achieve high rankings, such disclaimers may not be effective.
Although it is possible that a Web surfer will see the disclaimer on
another page, such a supposition places an element of chance into the
equation. Finally, and most importantly, the fact that a disclaimer shows
a lack of intent to confuse provides the savvy designer with a vehicle to
achieve high rankings in search engines while protecting himself. Many
search engines consider the text at the top of the page, as well as other
portions of the page, to be highly relevant for determining actual content
relevancy.
Thus, the addition of disclaimers can
be a double-edged sword against the trademark holder because their
inclusion can allow a court to infer good faith and allow the competitor
to achieve high rankings.
7. The Solution to the Troubling Disclaimer Issue
Suppose that a site designer purchased the rights to use photographs of a
former Playboy Playmate. In his Web site, he says that he has pictures of
the Playmate. At the top of each page he has the following disclaimer,
"This site is neither endorsed, nor sponsored by, nor affiliated with
Playboy Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR [*339]
and PLAYMATE OF THE MONTH are registered trademarks of Playboy
Enterprises, Inc." At the bottom of his site he has the same disclaimer
typed out once again. He does not have the word "Playboy Playmate" in his
metatags or any other portion of the HTML. Thus, the fact that he is using
the disclaimer provides the appearance that he is really not trying to
take advantage of Playboy's goodwill. However, it is possible that he is.
Because of the addition of the disclaimers, his site is more likely to
gain high relevancy rankings with search engines for the keywords
"Playboy" and "Playmate." Thus, if the disclaimers were removed, his site
would likely have very little or no success in the search engines.
Disclaimers should be allowed, but play no part in determining content
relevancy with regard to search engine results. Of course, disclaimers are
important to reduce the likelihood of confusion regarding affiliation with
a trademark owner.
However, saying one is not affiliated
with a trademark owner does not mean the site is relevant for searches
using the trademark owner's marks.
A solution to this problem is to require all disclaimers to be in the form
of images.
If a disclaimer is placed on an image,
the search engine spider will not be able to read such text.
This means that the text in the
disclaimer will not get credit when the search engine spider visits the
Web page to determine content relevancy.
XI. A SYSTEM OF REGULATING SEARCH ENGINE RESULTS THAT ADEQUATELY
BALANCES THE INTERESTS OF TRADEMARK OWNERS, THEIR COMPETITORS, CONSUMERS,
THE SEARCH ENGINES, AND THE COURTS
Because of the unique qualities of the Internet, sometimes the traditional
legal principles are not well suited to provide proper regulation.
Protecting trademark owners from
having their goodwill used against them with regard to search engine
rankings is a perfect example. However, a system of regulation can be
implemented that would balance the interests of the trademark owner, their
competitors, the search engines, the consumer, and the courts.
A. A Hypothetical That Demonstrates One of the Most Deceptive and
Undetectable Uses of a Competitor's Trademark to Achieve High Rankings in
Search Engines for Such Trademark
Suppose you work for a hotel and are responsible for purchasing recording
equipment, lecterns, podiums, tables, and other related items when needed.
The hotel has a large meeting scheduled that will require all of the
meeting rooms to be used concurrently. You notice that you need a couple
more lecterns because some of them are too beat up to use for the
meetings. You want to order them from San Diego Plastics, for they were
recommended to you as being the best in the business. You get online, open
your browser, and type in the address
http://www.sandiegoplastics.com, but there is no such site. Next, you
type in the address of your favorite search engine. In the search field,
you enter the keywords "San Diego Plastics," then submit the query. The
search engine displays the ten most relevant results for such keywords.
The first, third and fifth results are linked to various Web addresses in
which the description states "high quality lecterns for half the price."
The second result is linked to the Web site of a plastic surgeon located
in San Diego. The fourth [*341]
result is linked to a plastics manufacturer located in San Diego. Finally,
the sixth result is the San Diego Plastics Web site located at
http://www.san-diego-plastics.com.
Because you are curious as to why the other sites about lecterns are
coming up before the San Diego Plastics site, you visit the three sites.
After entering each of the three sites, you notice they all have a few
things in common. First, they all contain identical content and their only
difference is that they are linked to a different domain name address.
Second, you notice that they do not contain the keywords "San Diego
Plastics" anywhere in the content of the pages. Finally, you cannot find
the keywords "San Diego Plastics" in the metatags, title tag, comment
tags, or any other portion of the HTML coding.
If the keywords "San Diego Plastics" do not appear in any portion of the
HTML of the three Web sites, then how did they get ranked above the San
Diego Plastics Web site? One possibility is that they used the bait and
switch method of obtaining high search engine rankings discussed above.
Because the bait and switch method is
difficult to detect, it may be the most deceptive known practice of
obtaining high search engine rankings. Thus, it is important to consider
such a practice when making a determination of which system of regulation
is appropriate. A system of regulation that minimizes the dangers involved
with the bait and switch method may best suit the needs of trademark
holders.
B. An Analysis of Some of the Solutions Proposed in the Most Recent Law
Review Articles
The following presents solutions proposed in three of the most recent law
review articles regarding trademark protection in search engine results.
1. Search Engines, HTML, and Trademarks: What's the Meta For?
F. Gregory Lastowka takes the position that competitor use of trademarks
in metatags should be allowed.
Although there are probably some
people who would agree with him, such a position completely ignores the
tremendous value of [*342]
goodwill. In developing his position, Lastowka uses Adidas and Nike as an
example. Suppose that Adidas includes the trade name Nike in its metatags
such that a search for Nike also returned the Adidas Web site.
Lastowka states, "While this may at
first seem unethical, closer examination argues that this practice neither
harms the public, nor demonstrates bad intent on the part of Adidas."
In support of his position, Lastowka provides four reasons. First, in
terms of the public harm, there is little likelihood of confusion (or at
least little likelihood of any additional confusion) created by the mere
fact that a product produced by someone other than Nike, Inc. shows up in
a search for Nike ... the addition of the Adidas site to the Nike bin is
probably more helpful to the user who is searching for sneakers than are
most other sites listed ... . A person who would use a search engine to
look for Nike sneakers may appreciate the opportunity to comparison shop.
Although it seems clear that Lastowka is correct in stating that there is
little likelihood of confusion, it is not so clear that consumers are
going to be pleased to be presented with a group of Nike's competitors
when searching for Nike. For example, when someone types in "Nike shoes,"
he is likely to be looking for sites with Nike shoes, namely a page within
the Nike site or an authorized vendor of Nike shoes. In other words, he is
using the search engine analogously to the white pages. If someone were
interested in having many choices, he would use the search engine like he
uses the yellow pages and perform a general search for "athletic shoes."
Additionally, if competitors were allowed to use the trade name of
another, there would be no guarantee that Nike would even come up in the
top ten results of the search engines.
Second, Lastowka states, "There is no pagejacking or counterfeiting
concern, because the Adidas site can be easily identified by its product
label (title and description tags) as being affiliated with Adidas and not
Nike."
Although he is correct, this does
nothing more than support his argument [*343]
that there is little likelihood of confusion.
Third, Lastowka states that "First Amendment considerations support the
policy of allowing sites to use competitor meta tags since these sites
merely request that search engines index them under certain terms. Search
engines are free to ignore this request or give it slight value."
A reply to Lastowka is that First Amendment freedom is not absolute;
trademark law itself is a restriction of free speech. "Free speech rights
do not extend to labeling or other advertising products in a manner that
conflicts with trademark rights of others."
Additionally, the use of "another's
trademark is entitled to protection only when the mark is part of a
communicative message, not when it is used merely to identify the source
of a product."
Since most metatags, particularly the
keywords metatag, are only intended to be read by the search engines and
are invisible to web users, it is clear that their purpose is not
communicative. Thus banning unfair trademark use in metatags does not
restrict free speech. Such a ban merely strikes a balance between First
Amendment freedoms and trademark principles.
Finally, Lastowka states that, "allowing competitor use of meta tags
merely attempts to recreate some of the spatial realities of the
marketplace. In real space, consumers are often introduced to competing
goods when searching for a particular brand due to the fact that stores
typically place competing goods in spatial proximity. Competitor meta tag
use simply fosters competition through providing consumers with more
choices. "
Again, Lastowka does not give thought to the yellow/white pages analogy,
which is probably the best analogy for search engines and directories.
Simply because brick and mortar stores present similar products next to
each other does not mean that this model should be used regarding product
searches on the Internet. This model ignores the ability of search engines
to provide precise searches. In cyberspace, a consumer often searches for
a particular product. Thrusting a brick and mortar analogy on this
endeavor frustrates [*344]
the promise of the Internet. Why would one want to sift through competing
brands when he knows what he wants? Further, when one shops at K-Mart, it
is highly unlikely that the store will be in the same shopping center as
all of its competitors. He wants to go to K-Mart, so he drives there.
However, if he wants to shop at K-Mart on the Internet and types "K-Mart"
into a search engine, competitors' sites will come up if they are allowed
to use the trademarked name "K-Mart" in the metatags of their sites.
Although Lastowka is correct in stating that there is a small likelihood
of confusion, absence of such confusion does not mean that trademark
owners should risk having the goodwill of their trademark tarnished
through infringement in the context of search engine results. Therefore,
the option of regulating should be considered a viable option when not
doing so completely fails to account for the value of goodwill.
2. Brookfield Communications, Inc. v. West Coast Entertainment Corp.
Shannon N. King takes a similar position to that of Lastowka. She believes
that, "Unauthorized use of trademarks in metatags may seem wrong, but it
should not be actionable under the Lanham Act. A better solution exists -
allowing market forces to pressure search engines to change searching and
ranking algorithms. Market theory suggests that search engine providers
would be wise to exclude metatags from being included in ranking
algorithms in order to provide the most relevant hits to the consumer. "
Although King in essence agrees with Lastowka, her view does not
completely ignore the value of goodwill. Instead, she believes that the
burden of regulating search engine results should be placed solely on the
search engines.
In support of her view, she states "of
the big eight search engine providers - Yahoo!, Excite, WebCrawler (owned
by Excite), InfoSeek, Lycos, HotBot (owned by Lycos), and AltaVista - only
InfoSeek and Lycos (and therefore HotBot) allow metatags to boost
ranking."
Further, she states Yahoo "does not
employ spiders to catalog information and thus does not use metatag [*345]
information."
Finally, she states "self-regulation
by the Internet community is plausible, possible, and preferable to
judicial solutions given both the speed at which potentially infringing
technology changes and the notable lack of speed at which an overloaded
federal judiciary is able to hear and decide cases."
While King makes several astute observations, it may not be wise to place
all of the responsibility on the search engines. In support of her
position, King argues that, due to importance of metatags, some of the
major search engines have stopped using metatags and others have "switched
in response to coders embedding multiple instances of keywords."
It is clear that the quest for more
accurate results and making customers happy has led many search engines to
take such actions. However, it is not so clear that the search engines did
so as a response to combat trademark violations specifically, nor does
King cite any evidence that would support such a proposition. The more
likely reason that search engines are making such changes is simply
accuracy of results in general, which incidentally includes trademarks.
To demonstrate, suppose that one performed a search for the keyword
"lecterns" in hopes of obtaining a lectern manufacturer. Instead of
getting the top ten most relevant Web sites for lecterns, two of the top
ten sites may be completely irrelevant other than the fact that they
include the word "lecterns" in their metatags. The problem is that it is
easy to add irrelevant words to metatags, particularly the keywords
metatag, since the user does not see them. Thus, adding many irrelevant
words to the "keywords" metatag results in no harm. Rather, it may bring a
customer who was looking for something else to their site.
Although the absence of metatags may enhance the accuracy of search
results, trademark violations are still easy to commit. The site designer
will simply place the competitor's trademarks in the area that the search
engine does check. Further, the bait and switch method is still just as
easy as before to employ. Eliminating metatags may provide some trademark
protection in that it may force violations to become more visible.
However, more steps than simply eliminating [*346]
metatags must be taken to sufficiently protect owners.
Moreover, although search engines are interested in making their engines
more accurate, they may not have enough pressure on them or incentive to
make the necessary changes with regard to trademark violations. The
infringer, rather than the search engine, employs the deceptive practices
to steal a competitor's trademark. Hence, the trademark owner pursues a
claim against the infringer, and not the search engine. Additionally. it
is important to realize that there are more than one thousand search
engines to which companies submit their Web sites, making it difficult to
ensure that many of the search engines will take the necessary steps to
prevent trademark violations.
3. A Partial Solution to the Troubling Use of Trademarks as Metatags
Dan McCuaig proposes a very interesting solution to the problem of
competitor use of trademarks in metatags. He believes that the
"utilization of a "Trademarks' metatag to complement the established
"Keywords' metatag would allow the source-identification purpose of
trademarks as metatags to be separated from their functional descriptive
purpose."
For example, suppose a Web surfer used the search term "Playboy" to find
the official site and another Web surfer used the same term to find images
of nude women.
Adding a "Trademarks" metatag to complement the "Keywords" metatag would
allow both sets of web surfers to find their intended sites. For example,
after entering "Playboy" into her favorite search engine, the surfer would
then have the option of checking the search engine's "Trademarks Only" box
before submitting her query request, and thus being fairly certain that
[her] results list would contain only links to PEI's official site(s), or
leaving the box unchecked and thus availing herself to a much larger
results list that would contain non-PEI sites that wished to be considered
by surfers who searched for "Playboy" not as a trademark, but as a
descriptor.
As a means for encouraging compliance with this new standard, either
Congress could create a cause of action for any company whose trademarked
terms are used as "Trademarks" metatags in sites whose owners do not also
[*347]
hold rights in those terms, or courts could evaluate the actions of
alleged trademark misusers in light of whether the appropriated terms were
listed as "Keywords" metatags or "Trademarks" metatags, with a much
harsher test presented to defendants who listed others' trademarked terms
in their "Trademarks" section.
Additionally, McCuaig states that the trademark owner would be the only
one who could use the trademark tag, thus the trademark owner would not be
permitted to license the use of its trademark.
Finally, he proposes that "the placing
of a term in the "Trademarks' metatags section of the web site would
present dispositive evidence that that the site owner meant to use the
term as a trademark."
McCuaig's proposed solution provides some innovative suggestions. However,
it still requires regulation. One must detect the unfair use of the
"Trademarks" metatag; thus, the system requires constant regulation.
Additionally, the solution remains susceptible to the bait and switch
technique. For example, suppose the trademarks of another are used in the
"Trademarks" metatag. Once the search engine indexes the page, the
trademark can be removed from the "Trademarks" metatag and detection would
be all but impossible. Further, the fact that there are so many different
top-level domain names makes the system very difficult to regulate.
C. Defining the Ultimate System of Regulation - Balancing the Interests of
the Trademark Owners, Their Competitors, the Search Engines, the Consumer,
and the Courts
This section will discuss three systems of regulating search engine
results that could be used to provide trademark owners with sufficient
protection in search engine results. First, it will involve a discussion
regarding the benefits of adding a new top-level domain name exclusively
for trademarks. Second, it will discuss the addition of a "Trademarks"
metatag. Finally, the section will discuss how the combination of a new
top-level domain name and a "Trademarks" metatag create a superior system
of regulation.
1. The Benefits of a New Top-Level Domain Name for Trademark Owners
The time for a new TLD has come. A standardized system of regulating
trademarks in search engine results could prove to be necessary, and a new
TLD can help a great deal. As new TLDs are created, the difficulties for
search engines increase. For example, the search engines must account for
trademarks in numerous TLDs such as .com, .org, .net, .tv, .cc, .ws, as
well as many others. Search engines would have a difficult task in
developing a system of regulation that could protect the goodwill of
trademark owners. However, if a new TLD such as .tm were issued, the
difficulties for the search engines to develop such a system would be
sufficiently minimized.
Suppose there was a standardized way to guarantee that when a Web surfer
performs a search in a search engine using a trademark as the search term,
the trademark owner's Web site was the first result returned. Would this
be enough trademark protection such that it would be acceptable for a
competitor of the trademark holder to be the second result listed? The
addition of a .tm TLD in itself could provide such protection. It would
work by providing all trademark owners with the rights to the .tm for such
trademark.
For example, Playboy Enterprises, Inc. ("PEI"), would have the rights to
http://www.playboy.tm,
http://www.playboy-playmates.tm,
http://www.pei.tm,
http://www.playmate-of-the-year.tm,
http://www.playmate-of-the-month.tm. The relevance of having the
rights to the .tm, would be that whenever a search is performed in the
search engines for a trademark, the .tm would be the first result
returned. To illustrate, if someone typed in the words "Playboy Playmates"
into the search field, the search engine would first look through its .tm
pages for a match.
Because Playboy Playmate is a match
with one of Playboy's trademarks, the site located at
http://www.playboy-playmates.tm would be the first result presented by
the search engine. Suppose someone typed the trademark "Playmate of the
Month" into the search field. The search engine would look through the .tm
pages. It [*349]
would find the address
www.playmate-of-the-month.tm and present the site as the number one
result. Next, suppose that the search terms were "Playboy Playmates and
nude women." The search engine would search for the .tm that matched the
terms and once it didn't find an exact match, the results would be listed
without the preference for any .tm pages. Finally, suppose the search term
was a generic term such as "lecterns." The search engine could search for
the .tm that matched the term and if it didn't find an exact match, the
results would again be listed without the preference for any .tm pages.
Thus, one would not be able to establish a monopoly over a generic term.
The benefit is that the .tm TLD allows trademark owners to receive top
priority when a Web surfer searches for their trademark. No other site
could achieve a higher ranking when the trademark is used as a search
term. Moreover, it would require no effort to guarantee that the trademark
holder's site is the number one result for he is the only one with the .tm
for that trademark. Also, the bait and switch technique of achieving high
rankings would never allow the baiter to achieve the top result. Although
the addition of the .tm TLD could allow for standardized prioritization
with regards to the top result, it is important to consider whether that
is enough protection. The answer to this question is determined by how the
search engine is defined. For example, if it is defined as being analogous
to a store, then a guarantee of obtaining the top result will be enough,
especially in light of the fact that the trademark owner could also submit
its other sites to the search engines. Thus, if it is sufficient to have a
system of regulation that enables the trademark holder to always achieve
the top spot when its trademark is used as a search term, then
implementing a new .tm TLD would end the matter. Finally, it is important
to realize that a .tm TLD could also be implemented simply to provide the
search engines with a great tool that enables them to develop their own
system of regulating search engine results. It would be very easy to
design a system of regulation based on keywords in a domain name if
engines could search through a single list of only trademarks.
2. The Benefits of a "Trademarks" Metatag
Another option would be to require the addition of a "Trademarks" metatag
as proposed by Dan McQuaig.
The addition of the "Trademarks"
metatag would allow a trademark owner to list all of his trademarks in the
"Trademarks" metatag. Additionally, the search engine would contain a box
that when checked by the Web surfer indicates to the search engine spider
that the Web surfer is interested in all of a particular trademark owner's
marks.
To illustrate, suppose that a Web surfer is interested in seeing nude
playmates, and types in "Playboy Playmates." He is not interested in all
of the PEI Web sites. Instead he only wants to see Playboy Playmates,
whether from a site sponsored by PEI, or a site sponsored by someone else
such as Terri Welles. He would not check the search engine's trademark
box, consequently the PEI trademarks would not dominate the search engine
results. If he wanted all of PEI's sites listed at the top of the search
results, he would simply check the box.
Although the "Trademarks" metatag, as proposed by Dan McQuaig, is a useful
idea, it alone cannot sufficiently protect trademark owners' rights.
First, anyone could still use the "Trademarks" metatag in hopes of not
getting caught. Including another's trademark in the "Trademarks" metatag
could lead to a cause of action, and such use would be dispositive
evidence that the site owner meant to use the term as a trademark. Courts
would likely have to spend valuable time in enforcing the rights of
trademark owners. Second, the "Trademarks" metatag does not protect
trademark holders from the deceptive bait and switch technique. One could
use the "Trademarks" metatag to achieve high rankings and then remove the
"Trademarks" metatag once the site achieves high rankings for such
trademark. Although imperfect, the "Trademarks" metatag does provide
options. In fact, when combined with a .tm TLD, a very impressive system
of self-regulation can be achieved.
3. The Ultimate System of Regulation
The ultimate system of regulating search engine results would accomplish a
number of important goals. First, it [*351]
would deter the use of a competitor's trademark to achieve high rankings
for such trademark. Second, it would require very little monitoring.
Finally, it would balance the interests of trademark owners, their
competitors, the consumer, the search engines, and the courts. The
following will carefully explain how the implementation of a .tm TLD
coupled with a "Trademarks" metatag creates a system of regulation that
could accomplish such goals.
Assume that a new TLD, .tm, as well as a new metatag called the
"Trademarks" metatag were both implemented. Additionally, assume that the
search engines placed a box next to the search field that when checked,
told the search engine spider that the user wants a listing of the
trademark owner's sites.
All trademark owners would be given the right to use the .tm for any of
their trademarks; however, they would not be able to assign the rights to
use them. For example, Playboy Enterprises, Inc. ("PEI"), would have the
rights to
www.playboy.tm,
www.playboy-playmates.tm,
www.pei.tm,
www.playmate-of-the-year.tm,
www.playmate-of-the-month.tm. Additionally, because PEI is a trademark
owner, PEI would have the right to use a "Trademarks" metatag. For
example, PEI could place the following "Trademarks" metatag on their .tm
Web sites:
<meta name="Trademarks" content="PEI,Playboy,Playmates, Playboy
Playmates,Playmate of the Year,Playmate of the Month,etc.">
Search engines would only recognize the "Trademarks" metatag when the
metatag was placed on a .tm site. So, if Playboy included the "Trademarks"
metatag on the pages within their site at
http://www.playboy.com, the search engine spider would not even see
the "Trademarks" metatag. The spider would see the metatag only on those
pages within their .tm sites. This is a very important part of the system
of regulation, for without this aspect, a trademark owner could place a
competitor's trademark in their "Trademarks" metatag and achieve high
rankings for searches using his competitor's trademark.
So how would it work? If all of a trademark owner's marks were placed into
the "Trademarks" metatag, then a search for one of the trademarks would
return all of the trademarks in the "Trademarks" metatag when the box is [*352]
checked.
The search engine would only have to
look through the .tm TLD for matches rather than having to look for
matches in the many other TLD's such as .com, .tv, .net, .org, .ws or
.biz. Additionally, the regulation would require the site owner to
actually own the trademark. When the box is checked, and a site owner does
not own the trademark, the site will not come up in the results for a
search using such trademark.
The best part of this system of regulation is that it actually deters the
inclusion of another's trademark in the "Trademarks" metatag. When someone
types in a search and checks the box, the search engine spider will first
look to see if there is a match with the trademark that was used as a
search term. When the spider locates the trademark, it will read the
"trademarks" metatag on the site that matched the query. The results that
the spider would display would be all of the .tm sites that are listed in
the "Trademarks" metatag. The key is that the spider does not simply look
for any .tm site that contains the search term in their "Trademarks"
metatag. It only looks at the "Trademarks" metatag of the .tm site that
matched the query. Thus, inclusion of a competitor's trademark will do no
good, for the spider will never even see it when the competitor's
trademark is used as a search term.
How does this deter inclusion? Suppose that Penthouse Magazine owned six
trademarks having rights to six different .tm sites. If Penthouse put its
six protected trademarks in the "Trademarks" metatag of each of its .tm
sites, then a search for any of its trademarks when the box is checked
would result in all six of its .tm pages being displayed. Suppose that
Penthouse wanted to try to grab some of PEI's customers and so it included
the word "Playboy" in their [*353]
"Trademarks" metatag. As previously shown, the search engine, in a search
for "Playboy," would not even see the inclusion of Playboy in Penthouse's
"Trademarks" metatag, since the only "Trademarks" metatag that the search
engine will look at is the one located at
www.playboy.tm. However, the fact that Penthouse included the term
"Playboy" in its "Trademarks" metatag will bring up the site
www.playboy.tm whenever one of Penthouse's trademarks is used as a
search term. This occurs because the search engine spider will display all
.tm sites listed in the "Trademarks" metatag of the .tm site that matched
the query. To reiterate, if the Web surfer searched for "Penthouse" and
checked the box, the search engine spider would look for "Penthouse" in
its .tm directory and once it found
www.penthouse.tm, it would read the "Trademarks" metatag located at
www.penthouse.tm. The spider would not look at the "Trademarks"
metatag of any other site. Thus, the inclusion of "Playboy" in Penthouse's
"Trademarks" metatag would also list
www.playboy.tm in the search results for a query using the search term
"Penthouse."
Under this system a trademark owner who improperly includes another's
trademark in their "Trademarks" metatag does not receive any benefits from
such deception. Rather, the violator will be penalized. Inclusion of a
competitor's trademark in a "Trademarks" metatag will only help the
competitor, for now the competitor's site is displayed whenever the
violator's trademarks are used as search terms.
As previously mentioned, if both the "Trademarks" metatag and the new .tm
TLD were implemented, it would allow a system of regulation to exist that
balances the interests of trademark owners, their competitors, the
consumer, the search engines, and the courts. The interests of trademark
owners are served, for the system would not allow a competitor to reap the
benefits of the goodwill associated with such trademark. The interests of
the trademark owner's competitors are served because the Web surfer would
be given the option of checking the box to indicate that he wants the
trademark owner's sites. The competitor would be permitted to fairly use
the trademarks of another by way of comparisons or other fair uses. The
interests of the consumers are served because they will have the choice of
checking or not checking the box. Thus, they will obtain the results that
they are interested [*354]
in and the likelihood of confusion all but disappears. The interests of
the search engines are also served for they are provided with a .tm TLD
that enables them to easily regulate searches for trademarks.
Additionally, search engines will be more user-friendly and accurate from
the consumer's point of view. Finally, the interest of the courts is
served because the standardized system of regulation actually
self-regulates such that the inclusion of another's trademark in the
"Trademarks" metatag only penalizes the violator. Thus, the need for court
action will be minimal.
XII. CONCLUSION
Goodwill is one of the most valuable business assets. Thus, it is
essential that the proper steps be taken to protect trademark owners from
having their goodwill unfairly used in the context of search engine
rankings. The recent court decisions agree with such a conclusion;
however, the search engines are only in the beginning stages of creating a
system of regulating search engine results such that trademark owners are
sufficiently protected. Because there is currently no standardized system
of regulating the more than one thousand search engines in existence, a
great amount of monitoring is required to detect infringing uses of a
competitor's trademark. Thus, there is potential for a large amount of
litigation, or in the alternative, insufficient protection for trademark
owners. Additionally, as the number of sites on the Internet continues to
increase, the problem could worsen, since many new businesses will have
nothing to lose and everything to gain by using a competitor's trademark
in the HTML tags of their Web pages.
Market forces may play a role in prohibiting the use of a competitor's
trademark to achieve high rankings for such trademark. However, before
market forces are given complete control to deal with the matter, it is
recommended that lawmakers consider the available alternatives. In
considering the alternatives, it is very important to understand the
standardized system of regulation introduced in this article, namely the
implementation of a new .tm TLD name and a "Trademarks" metatag.
The benefits of implementing a .tm TLD and a "Trademarks" metatag are
numerous. First, their implementation would allow the existence of a
system of regulation that actually [*355]
deters the use of a competitor's trademark. Second, it would create a
system of regulation that requires very little monitoring and the bulk of
issues dealing with trademark infringement and dilution could be avoided.
Further, those issues that are not avoided by the their implementation,
could likely be handled by market forces. Finally, implementation of the
"Trademarks" metatag and the .tm TLD would allow a system of regulation to
exist that balances the interests of trademark owners, their competitors,
the consumer, the search engines, and the courts.
APPENDIX
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FOOTNOTES:
 n1.
Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489, 493 (2d Cir.
1999).
n2.
See, e.g.,
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036
(9th Cir. 1999) (granting a preliminary injunction where defendant
used plaintiff's trademark in its Web site name and in its embedded
software code).
n3.
"Metatags are HTML code intended to describe the contents of the web
site."
Id. at 1045.
n4.
For an informative and up-to-date source on the search engine industry,
created and maintained by Danny Sullivan, visit internet.com's Search
Engine Watch Web site,
www.searchenginewatch.com (visited Jan. 31, 2002). This site offers
on-line tips as well as subscription services for Seach Engine Watch
newsletters. For explanatory background on "hidden" keywords, see Danny
Sullivan, SearchEngineWatch.com, What is a Bridge or Doorway Page?, at
http://www.searchenginewatch.com/webmasters/bridge.html (updated June
2, 2001).
n5.
Brookfield Communications, 174 F.3d at 1044.
n6.
Ian C. Ballen, The Nuts and Bolts of E-Commerce, 53 Consumer Fin. L.Q.
Rep. 250, 250 (1999).
n7.
See id.
n8.
Leonard T. Nuara, Darren K. Rydberg & Howard P. Benard, What Lawyers Need
To Know About The Internet, 198 New Jersey Law. 9 (Aug. 1999).
n9.
Patrick J. Lynch & Sarah Horton, Web Style Guide: Basic Design Principles
for Creating Web Sites 78 (1999).
n10.
See The Internet Corporation for Assigned Names and Numbers (ICANN),
Frequently Asked Questions (FAQs), at
http://www.icann.org/general/faq1.htm (page updated June 18, 2001).
n11.
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1044 (9th Cir. 1999).
n12.
See ComputerUser.com Inc., ComputerUser.com High-Tech Dictionary (visited
Jan. 31, 2002), at
http://www.computeruser.com/resources/dictionary/domains.html (listing
the top level domain name for each country).
n13.
Chuck Musciano, Introduction to HTML, at
http://members.aol.com/htmlguru/about<uscore>html.html (last visited
Jan. 15, 2002).
n14.
"The source file for a web page is available on most computer terminals by
highlighting the "view' command and then clicking on "source' or "page
source.'"
Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834, 839 (S.D.
Ind. 2000).
n15.
"When information is made available, it is said to be "published' on the
Web, and because of the power of the Web, it can be linked without regard
to its status or physical location." Needham J. Boddie, II, Thomas C.
McThenia, Jr., Fred B. Amos, II & Douglas W. Kim, A Review of Copyright
and the Internet,
20 Campbell L. Rev. 193, 202 (1998).
n16.
"File Transfer Protocol ... allows an Internet user to move files from one
computer to another. It does not matter where the two computers are
located, how they are connected, or even whether or not they use the same
operating system. Files can be transferred by ftp, provided that both
computers have access to the Internet and can communicate in the ftp
protocol." Mark A. Kassel & Joanne Keane Kassel, Don't Get Caught in the
Net: An Intellectual Property Practitioner's Guide To Using the Internet,
13 J. Marshall J. Computer & Info. L. 373, 379 (1995).
n17.
"Pages with the search terms appearing in the HTML title tag are often
assumed to be more relevant than others to the topic." Danny Sullivan,
SearchEngineWatch.com, How Search Engines Rank Web Pages, at
http://www.searchenginewatch.com/webmasters/rank.html (updated June
26, 2001).
n18.
Parts VI and IX provide a basic understanding of how to read HTML.
n19.
Eli Lilly, 86 F. Supp. 2d at 839.
n20.
See infra Appendix.
n21.
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1045 (9th Cir. 1999).
n22.
Id.
n23.
Id.
n24.
See Danny Sullivan, SearchEngineWatch.com, How Search Engines Work,
SearchEngineWatch.com, at
http://www.searchenginewatch.com/webmasters/work.html (updated June 2,
2001).
n25.
See infra Appendix.
n26.
See Patrick Maroney, INTERNET The Wrong Tool for the Right Job: Are
Commercial Websites Places of Public Accommodation Under the Americans
with Disabilities Act of 1990?,
2 Vand. J. Ent. L. & Prac. 191, 203 (2000) (noting that tagging
graphics with alternate text is a common feature of HTML).
n27.
See infra Appendix.
n28.
See Larry Aronson, HTML Manual of Style 15 (1994).
n29.
Id
n30.
Id.
n31.
"As it turns out, some engines ignore content in comment blocks, but some
other search engines may process this content." Bruce Clay, LLC, Search
Engine Optimization Promotion Tools, at
http://www.bruceclay.com/web<uscore>rank.htm (last visited Jan. 23,
2002).
n32.
See Dave Taylor, Creating Cool Web Pages with HTML 30 (1995).
n33.
Id. at 36.
n34.
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1044 (9th Cir. 1999).
n35.
Engines and directories are simply Web sites on the Internet in which the
user must direct his browser. A browser is the software program used to
display Web pages. "Browser is commonly used in the phrase point your
browser, so that you can access a particular web page." Barbara Bintliff,
Why Is Web Searching So Unpredictable?, 7 Persps. 84 (1999).
n36.
Paccar, Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 2d 772, 775 (E.D.Mich.
2000).
n37.
See SearchEngineWatch.com, The Major Search Engines, at
http://searchenginewatch.com/facts/major.html (updated Jan. 22, 2002).
n38.
See id.
n39.
Bintliff, supra note 35, at 84.
n40.
For additional information pertaining to the organization of the Yahoo!
directory, see Yahoo!, How to Suggest Your Site, at
http://docs.yahoo.com/info/suggest/ (visited Jan. 22, 2002).
n41.
Id.
n42.
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1045 (9th Cir. 1999).
n43.
Bintliff, supra note 35, at 84.
n44.
Id.
n45.
Brookfield Communications, 174 F.3d at 1044.
n46.
See Danny Sullivan, SearchEngineWatch.com, Submitting to Directories:
Yahoo, LookSmart & The Open Directory, at
http://searchenginewatch.com/webmasters/directories.html (updated
Sept. 27, 2001). [help!] <PARA'0 pt'0 pt'0 pt'> .Brookfield
Communications, 174 F.3d at 1044.
n47.
John M. Mrsich & Meeka Jun, Terms You Need to Know: Search Engines,
Multimedia & Web Strategist, May 1997, at 2.
n48.
"In the web's early days ... a search engine either presented
crawler-based results or human-powered listings. Today it is extremely
common for both types of results to be presented." Sullivan, supra note
24.
n49.
Because a person has the chance to review a site before entering the site
into the directory, it is arguable that the directory should be liable for
allowing a site into the directory that has the trademark of another.
n50.
The key difference between search engines and directories is the
involvement of humans. Search engines are mechanical, where directories
depend on humans to compile their listings. SearchEngineWatch.com, supra
note 37.
n51.
F. Gregory Lastowka, Note, Search Engines, HTML, and Trademarks: What's
The Meta For?,
86 Va. L. Rev. 835, 848 (2000).
n52.
"Sometimes it can take a while for new pages or changes that the spider
finds to be added to the index." Sullivan, supra note 24.
n53.
Id.
n54.
Design tools such as JavaScript and Flash may cause crawler-based search
engines to miss a page. See Danny Sullivan, Surplus of Search Engine
Marketing Reports, The Search Engine Report (Oct. 2, 2001) at
http://www.searchenginewatch.com/sereport/01/10-surveys.html.
n55.
Lastowka, supra note 51, at 848.
n56.
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1045 (9th Cir. 1999).
n57.
Id.
n58.
Id.
n59.
See Sullivan, supra note 17.
n60.
On January 22, 2002, a search for the word "lectern" was done on the
Yahoo! directory located at
www.yahoo.com and the Hotbot search engine located at
www.hotbot.com.
n61.
Lastowka, supra note 51, at 848-49.
n62.
When searching for keywords, the search engines "follow a set of rules,
known as an algorithm. Exactly how a particular search engine's algorithm
works is a closely-kept trade secret." Sullivan, supra note 17.
n63.
Id.
n64.
Id.
n65.
"Metatags are HTML code intended to describe the contents of the web site.
There are different types of metatags."
Brookfield Communications, Inc., v. W. Coast Entm't Corp., 174 F.3d 1036,
1045 (9th Cir. 1999).
n66.
Bruce Clay, LLC, Alta Vista Search Engine, at
http://www.bruceclay.com/SEInformation/altavista.htm (last visited
Jan. 22, 2002).
n67.
"Search engines will also check to see if the search keywords appear near
the top of a web page, such as in the headline or in the first few
paragraphs of text. They assume that any page relevant to the topic will
mention those words right from the beginning." Sullivan, supra note 17.
Additionally, some search engines consider text in alternate text. See
Danny Sullivan, SearchEngineWatch.com, Search Engine Placement Tips, at
http://searchenginewatch.com/webmasters/tips.html (updated June 26,
2001) [hereinafter Sullivan, Placement Tips].
n68.
See
Brookfield Communications, 174 F.3d at 1044.
n69.
Mrsich & Jun, supra note 47, at 2.
n70.
Lastowka, supra note 51, at 847.
n71.
See Sullivan, supra note 24.
n72.
Advertisement, J. Strategies, at
http://www.search-engine-ranking.com (visited Jan. 22, 2002).
n73.
See
Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834, 839 (S.D.
Ind. 2000) (describing the source code of a web page).
n74.
For example, a search engine may penalize a site which excessively repeats
the same keyword in an attempt to make the site appear more relevant. See
Sullivan, supra note 24.
n75.
See Aronson, supra note 28, at 11.
n76.
Id.
n77.
Id.
n78.
See Sullivan, supra note 24.
n79.
"And try to keep the title and description fields as short as possible to
prevent you from diluting the keyword impact." Clay, supra note 31.
n80.
Seachenginewatch.com informs its users of the following:
Search engines may also penalize pages or exclude them from the index, if
they detect search engine spamming. An example is when a word is repeated
hundreds of times on a page, to increase the frequency and propel the page
higher in the listings. Search engines watch for common spamming methods
in a variety of ways, not the least by following up on complaints.
Sullivan, supra note 17.
n81.
Clay, supra note 31.
n82.
"The "title' tag allows the title of the Web page to appear in the title
bar of a browsing program, as well as to provide an additional source of
indexing." Ira S. Nathenson, Internet Infoglut and the Invisible Ink:
Spamdexing Search Engines with Meta Tags,
12 Harv. J.L. & Tech. 43, 62-63 (1998).
n83.
"Metatags are HTML code intended to describe the contents of the web site.
There are different types of metatags."
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1045 (9th Cir. 1999).
n84.
Sullivan, supra note 17.
n85.
SearchEngineWatch.com, Search Engine Features for Webmasters, at
http://searchenginewatch.com/webmasters/features.html (visited Jan.
22, 2002).
n86.
Sullivan, supra note 17.
n87.
"Meta tags, if any, will be included as "head' tags." John R. Warner,
Trademark Infringement Online: Appropriate Federal Relief from the Illicit
Use of Trademarked Material in Web Site Meta Tags,
22 T. Jefferson L. Rev. 133, 139 n.31 (2000).
n88.
The metatag with the meta name "description" is intended to describe the
content of the site. See
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1045 (9th Cir. 1999).
n89.
Clay, supra note 31.
n90.
See Sullivan, Placement Tips, supra note 67.
n91.
See id.
n92.
The metatag with the meta name "keywords" ideally contains keywords
relating to the Web site's contents. See
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F. 3d 1036,
1045 (9th Cir. 1999).
n93.
Clay, supra note 31.
n94.
See id.
n95.
"Most search engines use meta tags, but some do not because of the ease of
meta tag abuse." Nathenson, supra note 82, at 64.
n96.
"HTML files commonly are broken into two sections: the head ... and the
body." Taylor, supra note 32, at 41.
n97.
See Sullivan, supra note 17.
n98.
Id.
n99.
See id.
n100.
See Clay, supra note 31.
n101.
See id.
n102.
See id.
n103.
See id.
n104.
Id.
n105.
See id.
n106.
"You can place comments in an HTML document ... . Comments are completely
ignored by the browser." Aronson, supra note 28, at 15.
n107.
See id.
n108.
See
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036,
1045 (9th Cir. 1999).
n109.
Sullivan, Placement Tips, supra note 67.
n110.
Id.
n111.
See id.
n112.
Id.
n113.
Id.
n114.
See Sullivan, supra note 4.
n115.
See id.
n116.
Id.
n117.
Id.
n118.
Id.
n119.
Id.
n120.
See id.
n121.
Id.
n122.
Id.
n123.
Id.
n124.
Id.
n125.
Stanley U. Paylago, Search Engine Manipulation: Creative Use of Metatags
or Trademark Infringement?,
40 IDEA 451, 457 (2000) (quoting
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995),
quoting 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition 2.01 [2], at 2-3 (3d ed. 1994)) (alterations in original).
n126.
Id.
n127.
See David Yan, Note, Virtual Reality: Can We Ride Trademark Law to Surf
Cyberspace?, 10 Fordham Intell. Prop. Media & Ent. L.J. 773, 782
(1999-2000).
n128.
See
15 U.S.C. 1127 (2000).
n129.
Paylago, supra note 125, at 457.
n130.
15 U.S.C. 1127 (2000).
n131.
Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036
(9th Cir. 1999).
n132.
Playboy Enters., Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066 (S.D.
Cal. 1999).
n133.
Mark P. Wine et al., Protecting Your Corporate Client's Most Valuable
Intangible Asset: Its Name,
67 Def. Couns. J. 285, 287 (2000).
n134.
15 U.S.C. 1114(1)(a) (2000).
n135.
Paylago, supra note 125, at 458.
n136.
See
Brookfield Communications, 174 F.3d at 1036.
n137.
Id. at 1041-43.
n138.
Id. at 1042.
n139.
Id. at 1062.
n140.
Id.
n141.
Id.
n142.
See id.
n143.
Id.
n144.
See
id. at 1064.
n145.
See Lastowka, supra note 51, at 835; see also Dan McCuaig, Halve the Baby:
An Obvious Solution to the Troubling Use of Trademarks as Metatags,
18 J. Marshall J. Computer & Info L. 643 (1999-2000); Shannon King,
Brookfield Communications, Inc. v. West Coast Entertainment Corp.,
15 Berkeley Tech. L.J. 313 (2000).
n146.
King, supra note 145, at 325.
n147.
Id.
n148.
Id.
n149.
Id.
n150.
15 U.S.C. 1127 (2000).
n151.
Paylago, supra note 125, at 461 (quoting
Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., 875 F.2d 1026, 1031
(2d Cir. 1989), citing
Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625 (2d Cir. 1983)).
n152.
Id.
n153.
Id.
n154.
Id.
n155.
Maureen O' Rourke, Defining the Limits of Free-Riding in Cyberspace:
Trademark Liability for Metatagging,
33 Gonz. L. Rev. 277, 301 (1997-1998).
n156.
Id.
n157.
Id. at 301-02.
n158.
Rachel Jane Posner, Manipulative Metatagging, Search Engine Baiting, and
Initial Interest Confusion,
33 Colum. J.L. & Soc. Probs. 439, 501 (2000) (quoting Barbara Anna
McCoy, An Invisible Mark: A Meta-Tag Controversy,
2 J. Small & Emerging Bus. L. 377, 396 (1998)).
n159.
See
15 U.S.C. 1115(b)(4)(2000). See also
15 U.S.C. 1125(c)(4)(A)(2000).
n160.
Playboy Enters., Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066, 1073
(S.D. Cal. 1999).
n161.
Id. at 1074 (quoting 1 J. Thomas McCarthy, Trademarks and Unfair
Competition, 11.49 at 94.1 (1999)).
n162.
See id.
n163.
Id. at 1071.
n164.
Id.
n165.
Id.
n166.
Id.
n167.
Id.
n168.
Id.
n169.
See id.
n170.
Id.
n171.
See id.
n172.
See id.
n173.
See
id. at 1077.
n174.
See id.
n175.
See id.
n176.
Id. at 1072.
n177.
See
id. at 1091.
n178.
Id.
n179.
Id.
n180.
See
id. at 1080.
n181.
See
id. at 1091.
n182.
Although there was a link to the Playboy site, it is unclear whether this
link was an image or text. If a site displays, in text, the site "www.playboy.com"
and that text links to
http://www.playboy.com, then an engine spider counts the word
"Playboy" twice. But if an image is used to link to PEI's Web site, then
the spider only sees the word "Playboy" in the text of the HTML code. See
supra notes 109-11 and accompanying text. For purposes of this analysis,
only the HTML that links the text or image to
http://www.playboy.com will be counted.
n183.
"Sometimes sites present large section of copy via graphics. It looks
pretty, but search engines can't read those graphics." Sullivan, Placement
Tips, supra note 67.
n184.
Id.
n185.
See SearchEngineWatch.com, supra note 85 (noting that as of July 2, 2001,
Inktomi analyzed content in metatags to boost rankings while AltaVista,
Excite, FAST, Google and NLight did not).
n186.
Playboy Enters., Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066, 1091
(S.D. Cal. 1999).
n187.
Id.
n188.
Id.
n189.
"Each keyword in your META tags must also appear within your content to
avoid spamming penalties." Clay, supra note 31.
n190.
See Sullivan, supra note 17.
n191.
Playboy Enters., 78 F. Supp. 2d at 1076-91.
n192.
See
id. at 1078.
n193.
Id.
n194.
See id.
n195.
Id. at 1079-80 (quotation marks and citations omitted).
n196.
Id. at 1080-81.
n197.
Id. 1082-83. The Sleekcraft test, articulated by the Ninth Circuit in
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), includes
eight factors that may be considered in determining likelihood of
confusion: 1) the strength of the mark; 2) proximity or relatedness of the
goods; 3) similarity in appearance, sound and meaning of the marks; 4)
evidence of actual confusion; 5) degree to which the marketing channels
converge; type of good and degree of care customers are likely to exercise
in purchasing them; 7) evidence of the intention of defendant in selecting
and using the infringing name; 8) likelihood that the parties will expand
their product lines.
Playboy Enters., 78 F. Supp. 2d at 1074.
n198.
Playboy Enters., 78 F. Supp. 2d at 1082.
n199.
See id.
n200.
Id.
n201.
See
id. at 1082-83.
n202.
See
id. at 1083. The court mentions that no empirical evidence was
presented (either anecdotal or survey) to show that there is actual
confusion among consumers. Id. This suggests that it would be useful to
have surveys taken regarding such issues.
n203.
See
id. at 1085.
n204.
See id.
n205.
Id. at 1086.
n206.
See
id. at 1090.
n207.
Id. at 1091.
n208.
Id.
n209.
Id. at 1092.
n210.
Id.
n211.
Id.
n212.
Id. at 1094.
n213.
Id.
n214.
Id.
n215.
Id.
n216.
Id.
n217.
Id. at 1094-95 (alteration in original).
n218.
Id. at 1095.
n219.
Id. at 1096.
n220.
Id.
n221.
See
id. at 1080 (noting that Welles added "disclaimers to the bottom of
most pages of her website").
n222.
Id.
n223.
See id.
n224.
See Sullivan, supra note 17.
n225.
"Disclaimers are a favored way of alleviating consumer confusion as a
source of sponsorship."
Playboy Enterprises, 78 F. Supp. 2d at 1080 n.9 (quoting
Consumers Union of U.S. v. Gen. Signal Corp., 724 F.2d 1044, 1053 (2d Cir.
1983)).
n226.
It should be noted that the use of comparisons should not be held to the
same standard as disclaimers. Comparisons are quite useful and are often
the subject matter that the Web surfer is seeking. Truthful comparisons
would not likely run afoul of the Lanham Act since "when the mark is used
in a way that does not deceive the public [there is] no such sanctity in
the word as to prevent its being used to tell the truth. It is not taboo."
Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924). Thus,
comparisons should not be required to take the form of images.
n227.
See Sullivan, Placement Tips, supra note 67.
n228.
See Id.
n229.
See King, supra note 145, at 325, explaining that traditionally trademark
law has protected against consumer confusion by barring the use of visibly
infringing marks. This presents a problem when courts adapt trademark law
to protect trademarks in metatags because these trademarks are not visible
to the user. The Ninth Circuit attempted to avoid this problem by applying
the theory of initial interest confusion to metatag use, but that
application is not appropriate.
n230.
See supra Part IX.J.
n231.
Lastowka, supra note 51.
n232.
See id. at 876.
n233.
Id. at 876.
n234.
Id. at 876-77.
n235.
Id. at 877.
n236.
Id.
n237.
OBH v. Spotlight Magazine, 86 F. Supp. 2d 176, 198 (W.D.N.Y. 2000).
n238.
Id. at 197.
n239.
A fair use like accurate product comparison would not be banned. See supra
note 226 and accompanying text.
n240.
Lastowka, supra note 51, at 877.
n241.
King, supra note 145, at 327.
n242.
See id.
n243.
Id.
n244.
Id. at 328.
n245.
Id. at 329.
n246.
Id. at 327.
n247.
McCuaig, supra note 145, at 682.
n248.
Id. at 683 (footnote omitted).
n249.
Id. at 685.
n250.
Id. at 686.
n251.
The domain names would be the same as keywords such that all individual
words would be spaced with a dash. For example:
http://www.playboy-playmate.tm would include the keywords playboy and
playmate;
www.playboyplaymate.tm would be one keyword.
n252.
Note that if the .com domain name were used, generic terms could be used
as trademarks. The reason is that generic terms have been distributed and
are currently being used.
n253.
McCuaig, supra note 145, at 682.
n254.
An alternative to the box that indicates the desire for only sites from
the trademark owner would limit the "Trademarks" metatag to include only
three of a trademark owner's trademarks. Instead of giving the option for
trademark owners to dominate the results, it would allow the trademark
owner to have the first three or four results whenever a search is
conducted that matched one of their trademarks. For example, suppose that
someone typed in "PEI." The search engine would see that there is a
trademark that matches, thus the spider would read the "Trademarks"
metatag at
www.pei.tm. Included in the results would be up to three additional
.tm sites owned by PEI. This would allow PEI to pick from its numerous
trademarks and group three or four together that are similar and would
attract the same audience. It also provides the competitors with the
chance to obtain all the results after the top four.
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