February 03, 2006
Metatags as Per Se Trademark Infringement--Tdata v. Aircraft Technical Publishers
By Eric Goldman
Good grief. Lawsuits over metatag usage are so 1999. Yet, we continue to get a steady stream of cases that treat inclusion of a competitor's trademark in a metatag as a per se trademark infringement. I've explained the many reasons why this is simply wrong in my Deregulating Relevancy article. I'll spare you the rants here.
The latest metatag-freakout case is Tdata Inc. v. Aircraft Technical Publishers, 2006 WL 181991 (S.D. Ohio Jan. 23, 2006). Parties are competitors (also embroiled in patent litigation). Tdata put the terms "ATP," "ATP Navigator," and "ATP Maintenance Director" into the metatags and title tags. ATP sues.
Most of us would say "big deal," especially after the recent 6th Circuit Gibson Guitar case appeared to scale back the initial interest confusion doctrine in that circuit. Instead, dredging up antiquated arguments from Brookfield and McCarthy, the court happily concludes that "use of the company's mark in metatags constitutes infringing use of the mark to pull consumers to Tdata's website and the products it features, even if the consumers later realize the confusion."
The court then says that metatag usage (1) supports a finding of bad intent ("the hidden-from-public-eye use of the mark lends itself to an inference disfavoring Tdata"), (2) is inconsistent with fair use ("Tdata's use of ATP's mark in metatags is...in a bad faith, bait-and-switch, create-initial-confusion sense"), and (3) is evidence of improper trading on goodwill ("use of "ATP" as a metatag suggests that Tdata's actions were, in the words of the Sixth Circuit, "nefarious").
As a result, based solely on the metatag usage, the trademark owner gets summary judgment on the trademark claims. (Admittedly, there may have been some spillover effects from the patent litigation, but I'm just looking at the facts cited by the court). Yes, this is a 2006 case. So, if anyone tries to claim that metatag usage is irrelevant for trademark purposes (which, from a policy standpoint, would be a good argument!), here's a hot-off-the-presses case showing that some courts never got the memo.
Posted by Eric at February 3, 2006 07:12 AM | Trademark
Where is the case that reverses the older meta-tag cases? Gibson certainly doesn't, since it distinguished the earlier cases (particularly the domain name cases, which come under 15 USC 1125(d)), and as noted in the earlier post the Gibson plaintiff had other, more appropriate means to protect their rights. Use in a meta tag alone is not protected by 15 USC 1125(c)(4)(A) since the mark is not being used to identify goods of a competitor.
It may be that initial interest confusion is a poorly constructed doctrine, but that does not necessarily mean that there should be no rule forbidding bad-faith use of the trade-marks of another to draw traffic where that use falls outside the protections of 14 USC 1125(c)(4)
Posted by: Troy Rollo at February 5, 2006 04:03 PM
Fair points. To be clear, I agree that there has not been a single dispositive case that has rejects metatags as a proper basis for trademark infringement claims. However...
* plenty of courts have done so (see my list here (http://www.ericgoldman.org/Resources/iiccasesummary.htm)
* cases like the Second Circuit 1-800 Contacts v. WhenU case have implicitly rejected that a behind-the-scenes use of trademarks constitutes an actionable trademark use (regardless of consumer confusion)
* evolved search engine practices have all but mooted the consequences of keyword metatag use. Including a third party trademark in the title tag or description metatag still may make a difference, but these uses often will be displayed to the user (i.e., they are not surreptitious). Because of these changed practices, I remain skeptical that there is such a thing as a bad faith use of a keyword metatag--if for no other reason than I doubt that the keyword metatag has any meaningful traffic-drawing power.
Posted by: Eric at February 5, 2006 05:02 PM
This is a silly decision. What was particularly troubling was the inference of intent to confuse, which then bootstrapped into evidence of actual confusion. All the while, the court seemed to miss the key question (as courts often do in these initial interest cases): confusion as to *what*?
If I were the plaintiff's lawyer, the best I would have expected from the court is circumstantial evidence that the products are similar.