Invisible Trademarks?

Let's say you want to buy a Chevrolet. Looking for information, you go to your favorite search engine and type in "Chevrolet." If Websites for other car brands popped to the top of your search results, you might wonder how that happened. The answer would probably be "metatags."

"Metatags" are words in a Web site that are hidden to the casual Web surfer. You don't see the metatags because they're embedded in the hypertext markup language (HTML) code. ("HTML" is technospeak for the programming language used to create a website.) You can see the metatags if you choose "view" and then "source" from your browser's menu when you're at a Web site.

Until the law is clearer, I recommend against using your competitors trademarks in your metatags. It's just begging for a problem.

Metatags often include generic categories like "books," "computers," "legal services," or "doctor," but they can also include trademarked terms like "Addidas," "Quicken," "Xerox," or "Dell." Although you may not see the metatags, many search engines do and they use them to help the search engine rank results.

This means that if a website for another car brand includes the word "Chevrolet" in its metatags, when you search the word "Chevrolet," the Web site for this other brand will be included in the results generated by your search. Now if you're "Chevrolet," you might be less than pleased to find out that when people search for your brand, they get information about your competitors.

Clearly, you can't open a Ford dealership, put up a sign that says "Chevrolet," and then when a potential customer walks in trying to buy a Chevy, sell her a Ford. You don't need to go to law school to know that a "Chevrolet" sign in front of a Ford dealership is a trademark infringement.

Likewise, this hypothetical Ford dealer can't use the domain name "ChevroletInformation.com" to lure you to their site about Ford cars.

Again, common sense tells you that this would be over-the-line conduct and that this Ford dealer is going to end up on the wrong end of a Federal court lawsuit.

What both of these scenarios have in common is that the eyes of the most casual observer can see the word "Chevrolet" being used to sell Ford cars. What makes the metatag issue cute is that with metatags, the casual observer can't see that the Ford dealer's Web site is using the word "Chevrolet" to lure you to a Ford dealer's Web site.

So, can you infringe a trademark if the infringement is invisible? The question seems simple enough, but as with so many questions in Internet law, the answer isn't completely clear. The issue is just too new for our legal system to have formulated unambiguous answers.

What is clear is that this can be a treacherous area. The one thing that legal uncertainty generates is litigation as businesses look to courts to provide answers to confusing scenarios. Legal scholars and courts are grappling with this issue.

While traditional tests used to determine whether the particular use of trademarked terms is an infringement don't seem to perfectly fit the hidden metatag issue, I suspect that we'll see a trend where courts will be imaginative in stretching traditional doctrine to demonize metatags that use trademarks owned by others to draw traffic to a website.

After all, law should be about good public policy. From the consumer's perspective, it's a form of bait and switch to ask for information about Chevy and get Ford information instead.

Viewed another way--if the law is unclear, do you want to be the test case, which helps clarify the law for the benefit of others? Think about the potential number of zeros on the number when you consider a damage award against you if you lose and the attorney's fees involved as you test the limits of the law.

If you hire an independent contractor Web site developer, I also recommend that you take control of the metatags. Most developers take the initiative with metatag creation and that's fine. In a way, part of what you're buying from them is their creativity in creating metatags for you. Still, there may be legal consequences arising from the choice of metatags and you really should run the choice by your tech lawyer before your site goes live.

Now, there is a flip side to this too. Run your trademarks through all the search engines. You may just find that your competitors have used your trademarks to draw traffic to their site. If you discover that they have done this, I think that a cease and desist letter from your lawyer may be in order. If they won't back down, you have to evaluate whether you want to use your only sledgehammer--a lawsuit.

While expensive and a test case, I'd rather take this side of this test case because I think that most courts will see that good public policy requires the protection of trademarks even if the infringement is invisible to the casual eye.