Carolyn Anderson is a commercial solicitor at the Auckland Lawlink firm of Hesketh Henry. This article examines trade mark and fair trading laws as they might apply to your competitors and your Web site.
Surfing the Web is a bit like trying to catch that perfect wave. You may know what you want, but you don't always find it.
If you do not know the address for the Web site you are looking for, you have to use a search engine and type in key words to assist the search engine to locate the site. You would usually type the company name or trade marks to try and locate the site. For example if you were looking for a new car, you may key in "Ford", or for appliances or CDs, "The Warehouse". By typing these trade marks, you would hopefully locate the relevant Web sites. However, as litigation in the United States has revealed, you could also locate numerous other traders' Web sites, some of who may be competitors of the business you are trying to locate.
The reason why this can occur is if a trader uses their competitors' trade marks in the meta tags for their Web site. For those who don't know, a meta tag is a key word buried in the machine readable code of a Wweb page and is used by Wweb page designers to describe the content of a particular site. Although invisible to the Web surfer, most search engines such as Yahoo! and Alta Vista rely on meta tags to locate "hits" to match sites to a browser's query. If a search term is found in a page's meta tag, the Wweb page will usually be rated by the search engine as more relevant and thus the page will be displayed more prominently in the search results.
Although New Zealand courts have yet to consider this issue, the trend in several high profile US court decisions suggests that use of a trade mark as a meta tag for your site is a clear infringement of the trade mark owner's rights.
The US court decisions on this issue include:
- Playboy Enterprises, Inc. v Calvin Designer Label, 985 F.Supp. 2d 1220 (N.D. Cal. 1997) In this case the defendant had developed an adult entertainment site and had used Playboy's famous marks "playboy" and "playmate" in its meta tags. Under the injunction, the defendant was forbidden from using Playboy's marks in any manner, including as Iinternet domain names and in meta tags on its home page or Wweb site.
- Insituform Technologies Inc. v National Envirotech Group, L.L.C., Civ. No. 97-2064 (E.D. La., final consent judgment entered Aug 27, 1997) Insituform sued National Envirotech Group, a competitor in the field of pipeline construction, when National Envirotech used Insituform's name in its meta tag. National Envirotech settled the case and agreed not to use Insituform's trade mark in its meta tag.
- Oppendahl & Larson v Advanced Concepts, No. 97 Civ. Z-1592 (D.C. Colo. 1997) In this slightly different claim the Colorado law firm of Oppendahl & Larson sued Advanced Concepts and other defendants for using the firm's name in a meta tag on their Web page design company site. Carl Oppendahl, a partner of the law firm, had conducted a search for his firm's name to determine who was linking to its Web page. He was surprised to see the defendant's pages high on the list, especially because a visual inspection did not indicate any reference to Oppendahl & Larson, merely an advertisement for Web hosting and design services. Upon examining the HTML code, however, he noticed the reference to him and his firm Web site. The defendants were ordered to remove the name from the meta tags.
If such a case came before the New Zealand courts, the court could find that the trader who had surreptitiously included its competitor's trade marks in its Web site meta tags had infringed the rights in that trade mark under:
- the Trade Marks Act 1953 if the trade mark was registered; or
- if the trade mark was unregistered, the Fair Trading Act 1986 and/or the common law action of passing off.
The facts of each case would have to be carefully considered against the relevant legislation and case law before any legal action were taken, however, the potential for proceedings to be brought against the offending trader is there.
As a practical matter, most business managers responsible for commercial Wweb sites should take note of the following recommendations to reduce the risk of a competitor taking any legal action:
1. Ensure their meta tags do not contain any competitors' trade marks. Businesses that hire outside consultants or professional Web site designers should negotiate appropriate provisions in their consulting agreements to ensure that consultants avoid pitfalls such as these.
2. However even if companies take precautions there still may be instances where competitors' trade marks are accidentally included in the meta tags or content of their sites. The following measures may not provide a complete defence to an allegation of infringement but, if infringement is proved, they will go quite some way towards reducing or minimising any damages that might be payable:
- include a common disclaimer making it clear to the Web user that the Web site and the owner of the Wweb site are not affiliated with, sponsored by, or approved by any owners of the trade marks which may have been used on the Web site. Such a disclaimer can go far towards reducing the likelihood of confusion, as the argument can be made that the site makes it clear it has no relation with any of the trade mark owners;
- include a statement expressing the site owner's willingness to remove a meta tag immediately upon request by the trade mark owner. This method may prevent an upset trade mark owner from filing an injunction, instead requesting the removal of the meta tag if they find its use inappropriate.
3. Trade mark owners should occasionally peruse the Internet to look for possible infringements. Such efforts should be part of any comprehensive trade mark protection strategy.
Where a trade mark owner becomes aware that a competitor is using its trade marks in meta tags to lure customers to the competitor's site, such owners should seek legal advice on the appropriate course of action necessary to protect their trade marks.
It remains to be seen how this interesting new issue of meta tags will develop and to what extent those who programme meta tags incorporating the trade marks of others will be able to be policed in accordance with the established principles of trade mark and fair trading law.
Copyright The Lawlink Group Ltd 2001
Every effort has been made to ensure that this information is accurate. However, it is general introductory information only. It does not constitute legal advice and should not be relied on as such. Specialist legal advice should be sought in particular matters.
Carolyn Anderson is a Solicitor in the Lawlink firm of Hesketh Henry. She practises in the areas of Intellectual Property, Corporate Law, Consumer Protection legislation, and Securities Law.
Web site: Hesketh Henry
Email carolyn.anderson@heskethhenry.co.nz
July 2001
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Surfing the Web is a bit like trying to catch that perfect wave. You may know what you want, but you don't always find it.
If you do not know the address for the Web site you are looking for, you have to use a search engine and type in key words to assist the search engine to locate the site. You would usually type the company name or trade marks to try and locate the site. For example if you were looking for a new car, you may key in "Ford", or for appliances or CDs, "The Warehouse". By typing these trade marks, you would hopefully locate the relevant Web sites. However, as litigation in the United States has revealed, you could also locate numerous other traders' Web sites, some of who may be competitors of the business you are trying to locate.
The reason why this can occur is if a trader uses their competitors' trade marks in the meta tags for their Web site. For those who don't know, a meta tag is a key word buried in the machine readable code of a Wweb page and is used by Wweb page designers to describe the content of a particular site. Although invisible to the Web surfer, most search engines such as Yahoo! and Alta Vista rely on meta tags to locate "hits" to match sites to a browser's query. If a search term is found in a page's meta tag, the Wweb page will usually be rated by the search engine as more relevant and thus the page will be displayed more prominently in the search results.
Although New Zealand courts have yet to consider this issue, the trend in several high profile US court decisions suggests that use of a trade mark as a meta tag for your site is a clear infringement of the trade mark owner's rights.
The US court decisions on this issue include:
- Playboy Enterprises, Inc. v Calvin Designer Label, 985 F.Supp. 2d 1220 (N.D. Cal. 1997) In this case the defendant had developed an adult entertainment site and had used Playboy's famous marks "playboy" and "playmate" in its meta tags. Under the injunction, the defendant was forbidden from using Playboy's marks in any manner, including as Iinternet domain names and in meta tags on its home page or Wweb site.
- Insituform Technologies Inc. v National Envirotech Group, L.L.C., Civ. No. 97-2064 (E.D. La., final consent judgment entered Aug 27, 1997) Insituform sued National Envirotech Group, a competitor in the field of pipeline construction, when National Envirotech used Insituform's name in its meta tag. National Envirotech settled the case and agreed not to use Insituform's trade mark in its meta tag.
- Oppendahl & Larson v Advanced Concepts, No. 97 Civ. Z-1592 (D.C. Colo. 1997) In this slightly different claim the Colorado law firm of Oppendahl & Larson sued Advanced Concepts and other defendants for using the firm's name in a meta tag on their Web page design company site. Carl Oppendahl, a partner of the law firm, had conducted a search for his firm's name to determine who was linking to its Web page. He was surprised to see the defendant's pages high on the list, especially because a visual inspection did not indicate any reference to Oppendahl & Larson, merely an advertisement for Web hosting and design services. Upon examining the HTML code, however, he noticed the reference to him and his firm Web site. The defendants were ordered to remove the name from the meta tags.
If such a case came before the New Zealand courts, the court could find that the trader who had surreptitiously included its competitor's trade marks in its Web site meta tags had infringed the rights in that trade mark under:
- the Trade Marks Act 1953 if the trade mark was registered; or
- if the trade mark was unregistered, the Fair Trading Act 1986 and/or the common law action of passing off.
The facts of each case would have to be carefully considered against the relevant legislation and case law before any legal action were taken, however, the potential for proceedings to be brought against the offending trader is there.
As a practical matter, most business managers responsible for commercial Wweb sites should take note of the following recommendations to reduce the risk of a competitor taking any legal action:
1. Ensure their meta tags do not contain any competitors' trade marks. Businesses that hire outside consultants or professional Web site designers should negotiate appropriate provisions in their consulting agreements to ensure that consultants avoid pitfalls such as these.
2. However even if companies take precautions there still may be instances where competitors' trade marks are accidentally included in the meta tags or content of their sites. The following measures may not provide a complete defence to an allegation of infringement but, if infringement is proved, they will go quite some way towards reducing or minimising any damages that might be payable:
- include a common disclaimer making it clear to the Web user that the Web site and the owner of the Wweb site are not affiliated with, sponsored by, or approved by any owners of the trade marks which may have been used on the Web site. Such a disclaimer can go far towards reducing the likelihood of confusion, as the argument can be made that the site makes it clear it has no relation with any of the trade mark owners;
- include a statement expressing the site owner's willingness to remove a meta tag immediately upon request by the trade mark owner. This method may prevent an upset trade mark owner from filing an injunction, instead requesting the removal of the meta tag if they find its use inappropriate.
3. Trade mark owners should occasionally peruse the Internet to look for possible infringements. Such efforts should be part of any comprehensive trade mark protection strategy.
Where a trade mark owner becomes aware that a competitor is using its trade marks in meta tags to lure customers to the competitor's site, such owners should seek legal advice on the appropriate course of action necessary to protect their trade marks.
It remains to be seen how this interesting new issue of meta tags will develop and to what extent those who programme meta tags incorporating the trade marks of others will be able to be policed in accordance with the established principles of trade mark and fair trading law.
Copyright The Lawlink Group Ltd 2001
Every effort has been made to ensure that this information is accurate. However, it is general introductory information only. It does not constitute legal advice and should not be relied on as such. Specialist legal advice should be sought in particular matters.
Carolyn Anderson is a Solicitor in the Lawlink firm of Hesketh Henry. She practises in the areas of Intellectual Property, Corporate Law, Consumer Protection legislation, and Securities Law.
Web site: Hesketh Henry
Email carolyn.anderson@heskethhenry.co.nz
July 2001
">October, 2001
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