What are the legal implications of using specific keywords with search engines?
Meta-tags are computer codes used by search engines to identify websites as "hits" in response to an Internet search. The meta-tag is included in the computer code used to make up the web page and is invisible to the Internet user. When someone searching the Internet uses the key word or meta-tag the website will come up as a hit. Meta-tags are unobjectionable if properly used but problems arise where the meta-tags incorporate the trade marks of third parties and are used to lure customers to the third party website. The issue is whether the unauthorised use of a trademark (registered or unregistered) can be prevented through the Courts on the basis of trademark infringement and/or passing off.
Inevitably, the issue was first litigated in the US in a number of cases including Niton Corp. -v- Radiation Monitoring Devices Inc. (1988), Playboy Enterprises, Inc. -v- Calvin Designer Label (1997), Brookfield Communications, Inc. -v- West Coast Entertainment Corp. (1999) and Playboy Enterprises, Inc. -v- Welles (1998). In the first two cases the Courts granted injunctions. The Brookfield Communications decision is important because it was the first Court of Appeals decision to address the meta-tag issue and supported the view that meta-tagging could involve actionable misappropriation of goodwill. The Playboy/Welles decision is important because it shows that there can be limitations placed upon objections to meta-tagging in circumstances where the defendant has a legitimate reason to use the meta-tag even in circumstances where it may give rise to misappropriation of goodwill. In the latter case the defendant was a former Playboy "playmate" and was considered to have used the meta-tag in good faith. The issue has recently been considered for the first time by the English Courts in Road Tech Computer Systems Limited -v- Mandata. Road Tech supplies computer software to the road haulage industry and a competitor, Mandata,used Road Tech's registered trade marks in its own meta-tags and also elsewhere in hidden text in its website. When Road Tech complained Mandata removed some, but not all, of the offending meta-tags and refused to provide an undertaking not to do so in the future. Road Tech sought judgment on admissions in relation to trademark infringement and summary judgment in respect of passing off and succeeded under both heads. The claim under passing off, and in particular as to whether the necessary elements of reputation/goodwill, misrepresentation and consequent likelihood of damage, was not seriously challenged by Mandata. The Court awarded GBP 15,000 costs in recognition of the fact that Mandata had "taken a ride" on the back of Road Tech's successful website and also made an award of costs. It would be surprising if the Court had come to any other view.
Although the Road Tech decision is not binding upon other Courts, there can be little doubt that under English law, the unauthorised use of registered and unregistered trade marks or trading names will be actionable in circumstances where the Court consider that they are being used unfairly to lure searchers from the proprietor's website to another website. However, where the defendant has a legitimate reason for using the meta-tag, even though it may have the same consequences, it is unclear as to whether the Court would intercede. It is also unclear as to whether any action would lie against an Internet Service Provider in circumstances where the Internet Service Provider was not put on notice as to meta-tagging.
It is invariably the case that websites are designed by IT specialists rather than those in management responsible for them. It must be incumbent upon those in management to have sufficient awareness of their website design to ensure that they do not open themselves up for liability in this respect.
For further details on meta-tags please contact commercial partner, John Armstrong at john.armstrong@cms-cmck.com or on Tel +44 (0)20 7367 2701.
