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In an attempt to lure Internet traffic away from competitors, a Coral Gables, Fla., biopharmaceutical company allegedly embedded trademarked names of five other biopharmaceutical companies in the coding of its Web site, a South Carolina company alleges in a suit filed in Miami. Blood Diagnostics Inc., one of the five companies, claims that Health Coalition Inc. used Blood Diagnostics’ trademarked name “BDI Blood Diagnostics” as a metatag, a form of text code, on its Web site, www.healthcoalition.com, in a calculated effort to harm the company’s business. Besides HCI, the suit names company president Walter Shikany, as a defendant. The complaint alleges trademark infringement and unfair competition. Metatags are encoded in Web sites and are invisible to viewers. They serve as hooks for some common search engines, such as Yahoo! and Lycos. When certain search engines scan the Web looking for a word, they sift through metatags to index matches. Metatags’ relevance in Web searches has declined in use in recent years, with the advent of the Google search engine, which does not use metatags. Since metatag trademark infringement first surfaced in the civil suits in the late 1990s, the courts have relied on the intent behind placing the keywords in Web sites to determine the legitimacy of metatag usage. Metatags intended to mislead or misdirect Web searchers have been enjoined by the courts. Attorneys for Blood Diagnostics say their case is unique because of a decade of animosity between the founders of Blood Diagnostics and HCI. “You don’t see [litigation history] in any of the other cases. Here you have an absolute history of litigation between two parties. I think the intent [of the meta tags] is quite apparent on the face of it,” said Gary S. Betensky, a partner at Richman Greer Weil Brumbaugh Mirabito & Christensen in West Palm Beach. Michael J. Napoleone also represents the plaintiffs. The defendants’ attorney, Charles Kline, a partner at White & Case in Miami, could not be reached for comment. Shikany did not return a message left at his office seeking comment before deadline. The defendants have filed a response to Blood Diagnostics’ complaint, arguing that the court should dismiss the complaint as moot, because they have removed the metatags from their Web site. Samuel Lewis, an attorney with the Miami firm FeldmanGale who specializes in computer law, said that even in a situation where the metatag had been removed, it would still linger on the Web because the Internet archives its contents. Lewis is not involved in the case against Health Coalition. “I might take the offending text down, but it would still exist in search engines. Even if I stop and say, ‘I’m so very sorry, it was only there for 48 hours,’ I’m still going to have an impact beyond that 48 hours,” Lewis said. Blood Diagnostics founders Edward Steifel and Richard Gaton were fired from HCI in 1995, according a previous lawsuit filed against HCI. Steifel and Gaton, who had been salesmen for HCI, filed suit in Miami-Dade Circuit Court against their former employer, alleging breach of contract. They contended that HCI still owed them sales commissions. In its counterclaim, HCI contends that Steifel and Gaton stole trade secrets and violated the noncompete clause of their contracts. After a bench trial in June, Judge Barbara S. Levenson ruled in favor of the salesmen. A portion of the attorney fees awarded by Levenson are under appeal. As the litigation over Steifel and Gaton’s firing came to an end, the metatag issue arose. In June 2004, Blood Diagnostics ran a search of its own name in the www.msn.com search engine, which showed HCI’s Web site contained its name. Blood Diagnostics’ trademark did not appear on the body of the site. In July, Napoleone ran Blood Diagnostics’ trademark through a number of search engines, and with each search, HCI’s Web site turned up within the top 10 results. The plaintiffs then hired a forensic computer expert to examine HCI’s Web site to determine if “BDI Blood Diagnostics” appeared in any of the site’s hidden information. TRADEMARK FOUND IN CODING The expert found the Blood Diagnostics trademark as metatag in the HCI site’s coding, as well as the names of four other biopharmaceutical companies: Biomed, ASD, NSS and FFF Enterprises, according to the complaint. Blood Diagnostics alleges that HCI’s use of its trademark as a metatag has damaged its business and infringed on its trademark. It has asked the federal court to enjoin HCI from using its trademark, and is seeking compensatory and punitive damages against the company. In addition to arguing that Blood Diagnostics’ complaint was moot, HCI is also arguing that the five-month delay between the plaintiff’s discovery of the metatags and its request for an injunction undercut any sense of urgency in the matter, and therefore demonstrates that Blood Diagnostics would not suffer immediate, irreparable harm without a court order. Napoleone said that the plaintiffs waited to file the metatag suit because they wanted to finalize the judgment of the previous lawsuit before filing a second one. Betensky countered HCI’s claim that the issue was moot, noting that with no injunction HCI could resume its use of Blood Diagnostics trademark as a metatag. “It totally misses the mark. They say they have no intention of doing it again. I read that to mean, ‘We have no current intention of doing it again,’ We want an injunction to make sure they don’t do it again and we want discovery to see why they did it,” Betensky said. The defendants’ response provided no explanation of why HCI had placed other companies’ trademarks in its Web site. U.S. District Judge K. Michael Moore is expected to make a decision on whether to grant Blood Diagnostics’ request for an injunction or to dismiss the claim as moot. If the judge sides with Blood Diagnostics, determining damages could be complex. “One of the things you’d look at is what benefit they attained from using it. The [law] provides for disgorgement of profits, and you may end up getting into a very factual defense, looking at what the benefits for the use of the metatag are. You’d look at the profits for that time frame and possibly after,” Lewis said. Brookfield Communications Inc. v. West Coast Entertainment, a case in the 9th U.S. Circuit Court of Appeals, was the first appellate decision on metatag abuse as trademark infringement. The men’s magazine Playboy led the charge in enforcing its trademark online, filing suit against several pornographic Web sites that used Playboy as a metatag. One of Playboy’s cases, Playboy v. Terri Welles, set a precedent for the use of trademarked names in metatags in certain situations. A ruling in the Northern District of California in 1998 found that Welles, a former Playmate, had a legitimate reason to use Playboy’s trademark in her Web site and that she was not using the terms to mislead Web searchers into thinking they were going to the Playboy Web site. But the court ruled that West Coast’s use of Brookfield’s trademark as a metatag did cause initial confusion, and instructed the lower court to enjoin West Coast from using the trademark. After the 1997 decision, a number of cases relied on Brookfield to quash the use of their trademarked names. Lewis said that while metatag abuse still occurs on the Web, fewer lawsuits are cropping up, because many sites are using a new technique. Since search engines like Google search the actual text of sites, and not metatags, some Web site designers are relying on slipping others’ trademarks in the site by using the “white on white” technique, Lewis said. By writing a trademark in the same color text as the background, the text becomes invisible. However, search engines are colorblind and can still pick up the text. Lewis said he did not know of any trademark lawsuits involving “white on white” text. “I don’t believe anyone has actually been sued about this. I see people using it as a replacement for metatags,” he said.

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