Here is an interesting article that was passed on to me. Life sure gets
complicated when you get the danged lawyers involved.
Carl
April 30, 1999
By CARL S. KAPLAN
Court Lays Down the Law on Labels for Web
Sites
By CARL S. KAPLAN
For the past few years, courts, lawyers
and Web site owners have wrestled with some devilishly tricky legal
problems raised by "meta tags," the coded road signs on the World Wide Web.
But now that free-for-all may be at an end. In a recent decision
that has been hailed by some lawyers as a definitive ruling on the subject,
a federal appeals court in California has mapped out the dos and
don'ts of the meta tag art.
The court's decision in the case, Brookfield Communications Inc. v.
West Coast Entertainment Corp., was issued on April 22. It was
the first time a federal appeals court has extensively addressed the issue.
Meta tags are words embedded in the HTML code that forms Web pages.
Hidden from normal Web surfers but readable by search engines, they are
critically important in driving lost or searching consumers to particular
sites, and possibly generating e-commerce sales.
A central question in the debate is whether a Web site operator may
use the trademark of a competitor in a meta tag. For example, may a
pornographic site use the term "Playboy" in buried Web site code?
-------------------------- Some have argued
The court tried to that such labeling
grapple with the essence would be unfair
of the Internet. and a trademark
-------------------------- infringement
because it would divert potential customers of the trademark owner
to a competitor's site. Others have pointed out that trademark infringement
exists only if consumers are confused, and it is difficult to say that a
consumer is likely to be confused about whose site he has reached
after arriving there.
Attacking this puzzle, a panel of three judges from the United
States Court of Appeals for the Ninth Circuit in San Francisco said in its
recent decision that a type of consumer confusion does exist in the meta tag
game. It is a special breed of perplexity called "initial interest
confusion."
At issue in the case before the court was
whether a national video rental chain, West
Coast Video, could use in its site's meta tag
the term "MovieBuff," which the appeals court
had determined was the trademark property of
Brookfield Communications Inc., a
California-based provider of entertainment
news on the Internet and in computer
software.
In preliminarily barring the video company
from using the trademark term in its meta
tag, and sending the case back to federal
district court for further proceedings, the
court tried to grapple with the essence of
the Internet.
"Using another's trademark in one's meta tags
is much like posting a sign with another's trademark in front
of one's store," said Judge Diarmuid F. O'Scannlain, writing for the
panel.
Suppose Blockbuster Video put up a billboard on a highway reading
"West Coast Video: 2 miles ahead at Exit 7," he wrote. Suppose,
further, that Blockbuster Video is really located at Exit 7, and
another video store, say West Coast Video, is located at Exit 8.
"Customers looking for West Coast's store will pull off at
Exit 7 and drive around looking for it," Judge O'Scannlain wrote.
"Unable to locate West Coast, but seeing the Blockbuster store right by
the highway entrance, they may simply rent 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," he said. "Nevertheless, the fact that there is only
initial consumer confusion does not alter the fact that Blockbuster
would be misappropriating West Coast's acquired good will."
The court's ruling on the meta tag question was not absolute,
however. In a broadly worded section of the opinion, the panel declared that
not all uses of another's trademarks in a meta tag were taboo. For example,
if a Web site in its visual textual portion compared its goods or services
to a competitor's, the Web site operator could include in its meta tag the
competitor's trademark as a "fair use," the court said.
Similarly, the court ------------------
suggested that a Web site Related Article
owner could use another's
trademarks in a meta tag Former Playmate
to fairly and accurately Wins Round in
index the contents of the Fight Over Web
owner's Web page. In Site Labels
stating this point, the (November 13,
appeals court noted a 1998)
lower court's preliminary ------------------
ruling in the case of
Terri Welles. There, Playboy sought to enjoin Welles, a former
Playmate of the Year, from using the words "Playboy" or "Playmate" on her
Web site, which features pictures of her. The district court found that
Welles was not using the terms as trademarks, but rather as descriptive
terms because she was, indeed, a Playmate. In addition, the district court
found that Welles could include the magic words in her meta tags, which
fairly indexed the contents of her site. Playboy has said it plans to
contest the matter at a full-blown trial.
Neil A. Smith, a lawyer in San Francisco with Limbach & Limbach who
handles many Internet-related cases, said that there have been a few
previous meta tag rulings favoring trademark holders from federal district
courts. But the Brookfield case, he said, should help define the law in this
hot area. "With this strong ruling from the Ninth Circuit, I think there
will be less misdirected hijackings" of consumers in cyberspace, he said.
A. Michael Froomkin, a professor at the University of Miami Law
School who teaches courses in cyberlaw, also hailed the decision, in part
because he said it exhibited a sophisticated understanding of the workings
of the Internet. He also said the court got the conclusion right.
"I like this opinion," Froomkin said. "It makes clear that things
that look and feel like unfair competition are unfair competition. But the
court did not go overboard because it recognized perfectly legitimate uses
of trademarks," he added.
Other lawyers said the 41-page opinion represented a very good
attempt to deal head on with the critical differences between the Internet
and other media.
"The court here said because of the Web's interactivity, that Web
surfers are more likely to be confused in certain situations than patrons of
a brick-and-mortar store, which means that consumers are more susceptible to
deception while on the Net that they would be in the so-called real world,"
said Joshua Paul, an intellectual property lawyer at Cowan, Liebowitz &
Latman in New York. "I haven't see a case that addresses these issues as
thoughtfully and completely as the court did in Brookfield," he added.
In its decision, the Ninth Circuit also considered other issues of
importance to e-commerce Web sites, such as when an Internet domain name
that contains another's trademark may amount to trademark infringement. In
addition, the court considered whether the mere registration of a domain
name could constitute "use" in commerce, thus triggering certain trademark
protections for the registrant (Hint: mere registration cannot trump a
trademark holder's rights, even if the registration came first).
Jeffrey Lane, chief executive of Brookfield, said in an interview
that his case would continue. His company will seek control of the domain
name "moviebuff.com," which West Coast Video previously registered, he said.
His company will also seek a permanent injunction against West Coast's use
of the term "MovieBuff" in its meta tag.
Joe Buesgen, a spokesman for West Coast Entertainment Corp., which
owns or franchises about 450 West Coast Video stores in the United States,
said that the company is disappointed with the Ninth Circuit ruling.
Buesgen said that the video chain owned the trademark "moviebuff" because of
its prior use of a similar term and that in any case its domain name and
meta tags did not confuse consumers, given the different business markets in
which West Coast and Brookfield are engaged.
West Coast Video removed its "moviebuff.com" Web site and assorted
meta tags in February, following an initial court order. The company expects
to relaunch a movie site under a different domain name soon.
Ironically, that site may include in its meta tags the two-word
phrase "movie buff," which the court said is a fair use of a descriptive
term for a film devotee. But mind the space between the words, the court
warned.
A trial in the "MovieBuff" case before a federal district court in
California is scheduled for the third week in June.
CYBER LAW JOURNAL is published weekly, on Fridays. Click here for a
list of links to other columns in the series.
Copyright 1999 The New York Times Company
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