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.