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 th
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