METATAGS & HYPERLINKS: THE INVISIBLE TRADEMARK INFRINGERS
Trademark infringement in the virtual world has gained a lot of attention in recent times. The unwarranted use of domain names and embedding code words in metatags of various websites are termed illegal by different competent courts across the world. The legal journey embarked by most of the infringers have been proved futile owing to the rationale of concept of “use and misuse” emphasised by the Courts across the world. The present article discusses the consequences of using another company’s trademark as a meta-tag for one’s website or its several web pages in particular, the trademark owner’s possible causes of action against the infringer, including claims for trade mark infringement, passing off and misleading conduct.
What are Metatags?
Metatags being special lines of code are embedded in web-pages and are often used by search engines in deciding the relevant websites to show in a search result. When designing a Web site, the designer will utilize a computer language known as HTML. Within the HTML code, there are different “tags” which the designer uses to label groups of information. A metatag allows the designer to label his website by choosing the descriptors or keywords that identify and describe the subject matter of the Web site, imbedding such information within the tag.
In short, metatags are basically keywords. When a person types a particular keyword on a search engine, the search engine matches the keyword entered by the person with the metatags of various web-pages and accordingly displays the most relevant results. With certain permutation and combination of keywords, it is not very difficult to manipulate search engine results and lure visitors to one’s website or a particular web-page
Although there have been many cases of misuse of well-known trademarks as embedded code, keywords and metatags worldwide to divert internet traffic to one’s website and improve one’s ranking in the Google’s search results, in India, two most important cases which came under the lense of judicial scrutiny and caught the attention of everyone was related to use of metatags for matrimonial websites and the board game Scrabble.
Position in India
In India Section 9(3) of the Trademarks Act, 1999 deals with the aspect of confusion between trademarks. The first case on this issue was Mattel, Inc. and Others vs. Jayant Agarwalla and Others concerning infringement of trademark and copyright of Mattel, Inc. (“Plaintiff”) in the board game ‘SCRABBLE’ by use of metatags and hyperlinks. The Plaintiffs were leading manufacturers of toys, games and consumer products. One of the well-known products of the Plaintiffs was the board game marketed and popularized by the name ‘SCRABBLE’. The Plaintiffs alleged that defendants launched an online version of their board game under the mark SCRABULOUS, as an application available through the popular networking website Facebook. In addition to making claims for unlawful adoption of deceptive and confusingly similar mark for the online version of their game, the Plaintiffs also contended that the defendants infringed their mark by using metatags like, scrabble online, play scrabble online, free scrabble online, play scrabulous live etc. which clearly amounted to infringement and passing off, as the defendants, by using such metatags, diverted internet traffic away from the plaintiffs’ websites and misled the public that their (defendants’) products are associated with the plaintiffs. Moreover, the Defendants also used hyperlinks to the plaintiffs’ websites and rules for the scrabble game. Some of the hyperlinks used were- download scrabble free, play scrabble free, free online scrabble etc. The Plaintiffs contended that the text of the hyperlinks, independent of the content of the websites, is sufficient to constitute infringement.
The defendants denied such allegations contending that they were lawfully operating their websites and there was no attempt to misappropriate any traffic. Their argument was that the metatags used were in relation to their product ‘Scrabulous’, and not ‘Scrabble’ and using the word ‘scrabble’ in coding was a method of describing their game and therefore the same was not intended to indicate any brand. Also, they averred that since the Plaintiffs did not have any version of their game online, there was no question of diverting Internet traffic. The precise question in issue was whether use of metatags and hyperlinks amounted to trademark infringement.
The Delhi High Court in the instant case thus restrained the defendants from using the name SCRABULOUS, or any other mark deceptively or confusingly similar to SCRABBLE, in any manner, including by using it as part of domain name, or other use such as hyperlinking, metatagging, advertisement, or any other such form of use. The Court observed that unless appropriately restrained, the defendants would continue these acts of infringement, and divert internet traffic to their websites, causing considerable commercial loss to the Plaintiffs.
Another case on this issue which gathered more media attention was Consim Info Pvt. Ltd. Vs. Google India Pvt. Ltd. & Ors. In this case, the appellant was a private limited company providing online matrimonial services. In the course of its business, it had adopted several trademarks including, inter alia, Bharatmatrimony, Tamilmatrimony, Telugumatrimony, Assamesematrimony, etc. and registered several domain names with these word marks. The respondents (Google India and its parent company) (“Google”) were in the business of offering an advertisement programme, called, AdWords which generates ‘Sponsored Links’ on the right hand side of any organic search results produced by Google, closely corresponding to the term searched for. Google allow the Key Word to appear as a part of the advertisement as well. Therefore, the more the term is searched for, the more chances are that it is a heavily demanded Key Word. The competitors would thus bid for the Key Words of the other players in their business to catch the attention of the user and thereby divert the business meant for such other players.
The appellant filed a suit for permanent injunction restraining Google from infringing their trademarks by using them in the AdWord Program and Key Word suggestion Tool and also to restrict Google from passing off their services using the appellant’s trademarks and their closely resembling variants. The issue in question was whether such use of appellant’s trademark by Google’s Ad program amounted to trademark infringement.
Madras High Court in this case, thus concluded that the appellant had made a prima facie case and the balance of convenience lied in its favour and thus eventually granted an injunction.
Similarly in Samsung Electronics Company Limited & Anr. vs. Kapil Wadhwa & Ors., the plaintiff alleged that by way of meta tagging, deep hyperlinking and using the plaintiff’s trademark ‘SAMSUNG’ for the purpose of advertisement, the defendants infringed their trademark. They contended that the use of their trademark ‘SAMSUNG’ by the defendants must be treated as ‘use’ for the purposes of infringement as per Section 29(1) read with Section 29 (6) of the Trademarks Act, 1999 (“Act”). Arguing for the plaintiff, Mr. Praveen averred that that such acts of the defendants amounted to projecting themselves to be associated with the plaintiff by offering for sale the products of the plaintiff in the online advertisements for sale of the said products which is an infringement within the meaning of Section 29(8) of the Act.
The defendant contended by saying that they are selling the products which are genuine products of the plaintiffs and thus they are entitled to promote themselves as the ones selling the plaintiff’s products and the same is covered as ‘fair use’, not amounting to infringement under Section 29 of the Act. Justice Manmohan Singh, in this case observed-
“The said contention also becomes unmeritorious as the act of importing the products without being a registered proprietor or permitted user is impermissible, consequently, the promotion of the same on website in order to take advantage over and above the market of the plaintiffs which the plaintiffs can control cannot in any manner categorized as fair use. Once, the plaintiffs object to the said use of the mark SAMSUNG and other trade description on internet, the same cannot be said to be fair use in order to promote infringing act.”
Though referred many a times, it was only on July 7th, 2014, a single-judge Bench of Bombay High Court defined the term ‘metatags’ for the first time in People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & Ors. in the following words-
“Meta tags are special lines of code embedded in web pages. All HTML (hyper text markup language), used in coding web pages, uses tags. Meta tags are a special type of tag. They do not affect page display. Instead, they provide additional information: the author of the web page, the frequency of updation, a general description of the contents, keywords, copyright notices and so on. They provide structured data (actually, meta-data) about the web page in question. Meta tags are always used in a web-pages ‘<head>… </head>’ section, before the display section that begins with the tag ‘<body>… … </body>’.”
“Meta-tags are routinely used by the search engines and search engine robots to assess webpage contents and other relevant material relating to a webpage in the building of search engine indices. This is where an illicit use of meta tags can be severely damaging.”
In this case, the plaintiff averred that the defendant was trying to pass off his website as that of the plaintiff’s by using the plaintiff’s trademark shaadi.com as meta-tags in his domain name ShaadiHiShaadi.com. Bombay High Court found that the plaintiff’s online property had gained significant reputation and goodwill and that its domain was well-known among the subscribers and in the public. The Court found that the defendant was using the tagline ‘World’s Biggest Matrimonial Service’ on his website ShaadiHiShaadi.com which was almost identical to the tagline ‘World’s Largest Matrimonial Service’ that was being used by the plaintiff on Shaadi.com. The Court held that the defendant’s tagline was deceptively similar to that of the plaintiff’s. Further, the Court found that the defendant had diverted as much as 10.33% of the internet traffic away from shaadi.com to his own domain name. Terming the defendant’s conduct in this regard as ‘online piracy’, the Bombay High Court held that – “There could be no better evidence of passing off, confusion and deception. This is, plainly, hijacking the Plaintiffs’ reputation and goodwill and riding piggyback on the Plaintiffs’ valuable intellectual property.” Accordingly, the Court granted interim injunction in favour of the plaintiff.
Metatags and Trademark Infringement: Cases Worldwide
The concept of trademark infringement is not new. However, the medium used to infringe trademarks is seldom given prominence. The infringement of a trademark via internet has been discussed and condemned through many cases in the foreign Courts, one of the most famous cases in this regard is Playboy Enterprises, Inc. v. Calvin Designer Label. In this case the defendant, Calvin Designer Label, started two web sites, “playboyxxx.com” and “playmatelive.com” both of which featured adult content located in black type on the black background, the terms “playboy” and “playboy magazine” appeared on each web site and these same terms were also used as meta tags. As the plaintiff, playboy enterprises, inc. (“PEI“), which owns the trademarks ‘playboy’ and ‘playmate’, did not authorise the defendant’s use of its trademarks. PEI filed suit alleging trademark infringement, dilution and unfair competition. PEI sought a preliminary injunction to block the continued use of its trademarks. On September 8, 1997, after the defendants failed to oppose that motion, the Court precluded further use of the “playboyxxx.com” and “playmatelive.com” domain names by the defendants and further ordered that the defendants immediately cancel the domain name registrations with Network Solutions Inc. (NSI).
In another case concerning the same plaintiff, Playboy Enterprises, Inc. v. Asia Focus International, Inc., two Hong Kong agencies, Asia Focus and Internet Promotions, used both the PLAYMATE® and PLAYBOY® trademarks and placed them both in their metatags and in the domain names. The court entered a default judgment of $3 million against the defendants. This was a landmark case that awarded a monetary damage for dilution of trademarks due to meta-tagging of a web site.
Fair Use OR Misuse?
The courts have made a clear observation on what constitutes a fair use and what can be termed as misuse. For instance, in the case Bijur Lubricating Corp. v. Devco Corporation, the Court held that competitor’s use of plaintiff’s trademark in content and metatags of a web site on which replacement parts for plaintiff’s products are sold neither infringes nor dilutes plaintiff’s mark in violation of the Lanham (Trademark) Act1946. Defendant is allowed to use plaintiff’s mark in this manner both to promote the sale of replacement parts manufactured by plaintiff, as well as those manufactured for use in plaintiff’s products by third parties. The Court accordingly granted defendant’s motion for summary judgment and dismissed the trademark infringement, unfair competition and dilution claims plaintiff advanced against defendant in this action.
In yet another case related to Playboy, Playboy Enters Inc. vs. Welles, the Court held that internet searchers would have a much more difficult time locating relevant websites if they could do so only by correctly guessing the long phrases necessary to substitute for trademarks. Similarly, someone searching for critiques of Playboy on the internet would have a difficult time if internet sites could not list the object of their critique in their metatags. Hence an act in good faith while using the mark in the metatags in order to index the legitimate content of its website can be regarded as permissible fair use.
In another case titled Niton Corporation, Plaintiff, v. Radiation Monitoring Devices, Inc., the plaintiff Niton and defendant Radiation Monitoring Devices, Inc. (“RMD”) were competitors as they both used to sell x-ray fluorescence (“XFR”) instruments which detect lead in paint. Both use the Internet to aid their marketing efforts. Plaintiff alleged that the defendant improperly used false statements about both defendant’s own products as well as those of plaintiff in its marketing. While this action was pending, plaintiff discovered that the metatag descriptions of various pages of defendant RMD’s website falsely stated that they were “The Home Page of Niton Corporation (plaintiff), makers of the finest lead, radon and multi-element detectors.” This description appeared in various search engine results that linked to defendant’s website. Understandably, this description would lead individuals using search engines to locate plaintiff Niton to defendant’s site instead. This description would also mislead users about the relationship between the parties. Immediately upon discovering this use of meta tag descriptions, plaintiff sought injunctive relief. The court awarded plaintiff a “preliminary injunction subject to modification” which prohibited defendant from using such key words in the metatags of their websites. The present case also examined the ingredients required to term the act as a ‘misuse’ of trademark.
Hence the use of keywords itself does not constitute an infringement under the Trademark law, but the use of such words coupled with the ingredients of misuse of the trademark attracts huge penalties from the owner of the same.
Initial Interest Confusion
In order to sustain an action for infringement, the plaintiff must show that a likelihood of confusion exists about the source, sponsorship, affiliation, or approval of the offending mark In the case of Brookfield Communications Inc. v. West Coast Entertainment Corp the Court clearly examined the theory of initial interest confusion caused by use of certain key words in meta tags of other websites. In this case, the Plaintiff, Brookfield Communications Inc. was in the business of selling information about the entertainment industry. In 1993, Brookfield began marketing software under the mark “MovieBuff” which provided users with a database of entertainment-industry related information. Brookfield began marketing its “MovieBuff” software on an Internet site, as well as offering online access to a searchable database which also contained entertainment-industry related information. However, West Coast, the defendant, had used Brookfield’s trademark in the metatags of their website.
Brookfield sought to enjoin defendant both from operating a site at “moviebuff.com”, and from using the phrase “moviebuff” in meta tags contained on its site. The district court denied Brookfield’s application. The Ninth Circuit reversed, and awarded Brookfield the requested injunctive relief. The court also enjoined defendant from using the “moviebuff” mark in meta tags on its site. In reaching this conclusion, the court found that use of the “moviebuff” mark in meta tags would cause “initial interest confusion.” The court observed that the use of the “moviebuff” mark in a meta tag would cause West Coast’s site to join that of Brookfield on a list of search results produced by search engines. As a result, surfers originally seeking Brookfield by inputting “moviebuff” in a search engine might instead find West Coast’s site. Once there, that surfer might make a purchase. While the surfer would not be confused as to the source of the product at the time of its purchase (West Coast’s site plainly indicates that the site is operated by West Coast), the “initial interest confusion” which led the surfer to the site is nonetheless actionable. Therefore, it was held that by capturing the consumer’s attention from use of plaintiff’s mark, defendant was improperly benefitting from the goodwill associated with the plaintiff’s mark.
In the case Nissan Motor Co., et al. v. Nissan Computer Corp., applying the “initial interest confusion” doctrine, the Ninth Circuit held that defendant Nissan Computer’s display of advertisements promoting the sale of automobiles on its Nissan.com website infringed the trademark held by plaintiff Nissan Motors in its federally registered “Nissan” trademark, and accordingly affirmed the District Court’s decision enjoining defendants from continuing such activities. Therefore, initial confusion may raise a presumption of infringement but conclusive inference can be drawn only when “sufficient likelihood of confusion” is established.
Trademarks conventionally function as an identifier rather than as property. They aim at protecting consumers against any likelihood of confusion and decrease users’ search costs. Over the years, however, trademark holders have pushed for an increase of the scope of protection of their rights, and tried to extend their exclusive rights to any attempt made by third parties to capitalize upon the goodwill attached to their brand, thus seeking to protect their trademarks as such, without any consideration for the type of conduct involved. Though in the Indian context the use of meta tags in trademark infringement is rarely brought into light and punished, on a global scenario, this act has been widely condemned and penalised. Hence, there is a need to set a binding precedent in this regard by the Apex court which can regulate trademark infringements in cyberspace and also amend laws to ensure strict and strong regulatory regime to prevent unauthorised use of one’s intellectual Property as metatags and hyperlinks.
Author(s): Sushmita Ravi & Vivek Verma
Image from here
 ” Mark Everett Chancey” Metatags And Hypertext Deep Linking: How The Essential Components Of Web authoring And Internet Guidance Are Strengthening Intellectual Property Rights On The World Wide Web
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