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In light of developing case law and the methods by which information is located on the Internet, even the most cautious client may be overlooking potential liability for trademark infringement or widespread infringement of its own trademarks. It has become commonplace for a client to contact his or her lawyer before adopting and/or using a trademark, to request advice regarding the trademark’s availability. Often, the attorney’s analysis will include an opinion on whether the proposed trademark infringes any existing trademark. Such caution serves to decrease the likelihood that a client will, intentionally or unwittingly, infringe the trademark of another. Many clients also monitor the marketplace to ensure that their own trademarks are not being infringed. But both traditional clearance searches and trademark monitoring may not be enough to protect a client from infringing the trademarks of others, or from having its own trademarks infringed. The use of the trademarks of others as “metatags” associated with a client’s Web site can create liability for trademark infringement. Metatags are pieces of the programming code of a particular Web site. [FOOTNOTE 1]In fact, individuals creating the metatags may not even be aware that such use can constitute trademark infringement. Indeed, some commercial search engines suggest or encourage the use of particular third-party trademarks to drive traffic to a Web site. The selection of metatags for a client’s Web site typically is not the type of decision discussed with a lawyer until a client has been accused of trademark infringement. It should, however, be included in trademark-clearance questions to be addressed by counsel. A client’s enforcement of its own trademarks should also include the possibility that its trademarks are being used as metatags by an infringer. Often, a company’s technology department or a technical consultant hired by a small company or an individual, is concerned with obtaining as many “hits,” or visits, to a particular Web site as possible. Generally, potential purchasers locate information on the Internet in two distinct ways. [FOOTNOTE 2] For example, if a potential consumer is looking for Acme Tires, he or she can intuitively formulate a domain name, such as “acme.com,” and hope to reach the Web site of Acme Tires. This approach can be hit or miss if the exact domain name for Acme Tires’ Web site is not known. Alternatively, a potential purchaser can go to any one of a number of searchable indexes of the Internet, known as search engines, where a search term such as “tires” can be entered. Generally, search engines maintain self-created indexes of Web sites, the words which appear on them and the metatags associated with them. [FOOTNOTE 3] For example, the Acme Tire Web site may have the terms “tires,” “automotive” and “cars” embedded in its Web site as metatags. When a search engine receives an inquiry from a user, such as “tires,” it searches its index and returns to the user a list of all Web sites which contain the term “tires” in its metatags or on the Web site. The metatags are invisible to visitors to the Web site, but are included in the Web site’s profile, which is indexed by search engines. A business that wants to increase traffic to its Web site will create metatags that will be picked up by search engines as often as possible. Another method of ensuring that a search engine will find a Web site in a search is to include, on the actual Web site itself, words that are the same color as the background on the Web site and that are invisible to an individual viewing the site, but can be detected by a search engine. Such practices are considered here to be equivalent to the use of metatags. One way to maximize visits to a Web site is to use, as metatags, as many generic words as possible that describe the goods or services offered by a client. Another method of driving traffic to a Web site is to use a well-known trademark, or the trademark of a competitor in a Web site’s metatags. A Web site administrator may try to include in a Web site’s metatags all of the terms he or she can think of that potential purchasers may enter into search engines, including the trademarks of others. In other instances, a client itself may not plan to use the trademarks of another in the metatags of its Web site, but may be led to do so by a commercial search engine. While some search engines merely index the metatags included in various Web sites, others actually suggest terms to be used as metatags. Such suggested terms can include the trademarks of others. Some search engines are paid by Web site owners based on the number of visitors to their Web sites that result directly from a search conducted by the search engine. As a result, it is in the interest of the search engine to increase the likelihood that a particular Web site will be hit by a potential purchaser. Such activities have led to lawsuits against the search engines themselves. [FOOTNOTE 4]At least one district court has found no liability for trademark infringement on behalf of a search engine when the search engine did not suggest the metatags to be used, but merely accepted in its index those metatags created by the defendant. [FOOTNOTE 5]The court noted that the activities of the search engine did not constitute use of an infringing mark in commerce. [FOOTNOTE 6] METATAG MADNESS While the scope of liability of such search engines for trademark infringement is not yet clear, liability for trademark infringement by the owner of a Web site that actually employs an infringing mark as a metatag to divert traffic to its own site is becoming more clear. The 9th U.S. Circuit Court of Appeals, applying the doctrine of “initial interest confusion” has held that use of another’s trademarks as metatags can constitute trademark infringement. [FOOTNOTE 7]In that case, a video rental store chain used the trademark of an entertainment industry information provider in its Web site’s metatags. When an individual wishing to locate the plaintiff’s Web site entered the plaintiff’s trademark into a search engine, the resulting listing included both the plaintiff’s and defendant’s Web sites. [FOOTNOTE 8] The concept of “initial interest confusion” has been recognized as a form of consumer confusion actionable under the Lanham Trademark Act. The doctrine relates to the creation of consumer confusion when a potential consumer initially is drawn to the infringer’s goods, but then learns that the infringer is not associated with the trademark holder before a sale is consummated. [FOOTNOTE 9] One of the first cases to develop the initial interest confusion theory related to the use of confusingly similar trademarks on pianos. Due to the nature of the circumstances surrounding the purchase of a piano, potential purchasers usually became aware of the confusion before they purchased the defendant’s piano. [FOOTNOTE 10]The 2nd Circuit, however, noted that although a potential purchaser often will become aware that there is no connection between the parties or their pianos before a sale is consummated, the initial confusion gives the infringer a “foot in the door” during the early stages of the encounter, which can result in a sale by the infringer that it otherwise would not have made and which may have been made by the trademark owner. [FOOTNOTE 11] In applying the doctrine of initial interest confusion to the use of metatags, the 9th Circuit noted that using a third party’s trademark in one’s metatags is like “posting a sign with another’s trademark in front of one’s own store.” [FOOTNOTE 12]The 9th Circuit noted that while a user may become aware, after he or she selects the defendant’s Web site from a search engine’s results, that he or she is not at the plaintiff’s Web site, nevertheless the damage, in the form of initial interest confusion, already has been done. Initial interest confusion has been viewed as a variation of the practice of “bait and switch,” in which potential purchasers are lured away from a trademark owner by an infringer that initially passes off its goods as those of the trademark owner. [FOOTNOTE 13] The initial interest confusion test can fill in the gap in a traditional trademark infringement analysis because the use of metatags, which are invisible to the potential consumer, does not fit neatly into traditional concepts of trademark infringement. [FOOTNOTE 14] DIVERGING RESULTS Application of the initial interest doctrine to cases involving the use of metatags is not yet widespread, but disparate results already have emerged. Several courts have failed to find liability for trademark infringement when the use of another’s trademark as a metatag can be considered fair use. The U.S. District Court for the Southern District of New York found that the defendant’s inclusion of the plaintiff’s trademark into the metatags of a Web site that contained criticisms about the plaintiff constituted fair use under the Trademark Law. The district court found that the defendant’s use of the plaintiff’s trademark was not meant to hijack potential customers of the plaintiff to defendant’s Web site, but instead was to fairly describe the subject matter of its site. [FOOTNOTE 15] Similarly, the U.S. District Court for the Southern District of California found the user of the plaintiff’s Playboy and Playmate trademarks as metatags not liable for trademark infringement under the fair use doctrine, when the marks were used to describe the personal Web site of the defendant, a former Playboy Playmate. [FOOTNOTE 16]In contrast, two district courts have enjoined the use of the marks Playboy and Playmate as metatags for Web sites with sexually explicit content. [FOOTNOTE 17] Other courts have refused to apply the initial interest confusion doctrine to activities on the Internet in cases involving non-competitors, in which the Web addresses of the parties are not virtually identical, and the defendant’s use of the plaintiff’s marks in its metatags is not intentional or in bad faith. [FOOTNOTE 18] Other courts have avoided branding the use of another’s trademark as metatags as a separate type of trademark infringement and instead have considered such use to be one of the steps taken by a defendant to derive a benefit from the reputation of a plaintiff’s trademarks and, as such, evidence of wrongful intent in a traditional trademark infringement analysis. [FOOTNOTE 19] Clients should be informed of the potential for liability resulting from the use of metatags, and should review all metatags contemplated by a client before use. Clients should also be cautioned that the suggestion by a search engine of a third party’s trademark does not imply authorization by the trademark owner. Finally, clients should search their own trademarks from time to time in various search engines to determine whether others are using their trademarks as metatags. Such use may constitute trademark infringement. Donna A. Tobinis a partner at New York’s Cooper & Dunham, and a member of the firm’s Internet and New Media group. ::::FOOTNOTES:::: FN1 Brookfield Comm. v. West Coast Entertainment Corp., 174 F.2d 1036, 1044-1045 (9th Cir. 1999). FN2 Id. FN3 Id. FN4 See 800-JR Cigar Inc. v. Goto.com, No. 00-3179 (D.N.J. June 28, 2000). FN5 Playboy Enterprises v. Netscape Communications Corp., 55 F.2d 1070, 1078 (C.D. Cal. 1999). FN6 Id. FN7 Brookfield Comm., 174 F.2d at 1062. FN8 Id.at 1062. FN9 Mobil Oil v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987). FN10 Grotrian, Helfferich, Schultz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342-1342 (2d. Cir. 1975). FN11 Id. FN12 Brookfield Comm., 174 F.2d at 1062. FN13 Dorr-Oliver v. Fluid-Quip Inc.94 F.3d 376 (7th Cir. 1996). FN14 Brookfield Comm., 174 F.2d at 1062. FN15 Bihari v. Gross, 119 F. Supp. 2d 309, 322 (S.D.N.Y. 2000). FN16 Playboy Enterprises Inc. v. Welles, 7 F. Supp. 2d 1098 (S.D.N.Y. 1998). FN17 Playboy Enterprises Inc. v. Asiafocus Int’l Inc., Civ. No. 97-734-A, 1998 U.S. Dist Lexis 10459 (E.D. Va. April 10, 1998); Playboy Enterprises Inc. v. Calvin Designer Label, 985 F. Supp. 1220 (N.D. Cal. 1997). FN18 Big Star Entertainment Inc. v. Next Big Star Inc.105 F. Supp. 2d 185, 211 (S.D.N.Y 2000); Interstellar Starship Services v. Epix Inc., 2001 U.S. Dist. Lexis 100 (D. Ore. Jan. 3, 2001). FN19 PACCAR v. Telescan Technologies LLC, 115 F. Supp. 2d 772 (E.D. Mich. 2000); Eli Lilly & Co. v. Natural Answers Inc., 433 F.2d 456 (7th Cir. 2000).

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