Use of Trademarks Within Keywords and Metatags: An Emerging Area of the Law

Can competitors use your trademark as a keyword or metatag?  Is there a difference between purchasing a trademark as a keyword and simply using the trademark of a competitor in a metatag to divert searchers to your site?  These are the million dollar questions in internet law these days, and trademark holders are looking for answers.  A recent filing by Hearts on Fire contends that purchasing keywords for the purposes of directing consumers to a competitor's website is trademark infringement.

Hearts on Fire recently filed suit against Blue Nile in federal district court in Massachusetts, alleging that Blue Nile purchased the HEARTS ON FIRE keyword through the search engine webcrawler.com to trigger sponsored links to bluenile.com.  Both Blue Nile and Hearts on Fire compete in the diamonds and jewelry market, but Hearts on Fire distributes branded diamonds while Blue Nile operates a retail diamond store.  Hearts on Fire is a widely known source of popular and sought-after diamonds, so diamond seekers are likely to input their trademark into search engines.

The law surrounding the use of trademarks in keywords and metatags is fairly uncertain.  Some courts have ruled that the use of trademarks in meta tags creates an initial interest confusion because a user that types a trademark into a search engine is deceived or confused when a website that utilizes meta tags, but is not directly associated with or sponsored by the mark holder, appears within the search results.  Other courts have found infringement where a competitor of the mark holder used meta tags to divert consumers from the mark holder's site.  Those that have used trademarks in metatags simply to describe the contents or the products listed on their site have been seen as not infringing.  Some courts have held that purchasing a competitor's trademark within a search engine is trademark infringement, while others have held it to be a nominative fair use.

Courts seem to be taking two approaches to this issue.  The first is questioning whether there has been a “trademark use” of a term.  Where a mark is not used in a trademark sense, that is, where a mark has not been used to designate the origin of goods or services, courts have been hesitant to find infringement.  This often happens where the trademark is used behind the scenes in search engine algorithms.  Alternatively, other courts have looked at whether the use of the trademark in a meta tag or purchased search engine keyword is used in bad faith to disrupt or divert traffic from a competitor.  Where this has been the case, courts have been more willing to find infringement. 

Since this area of the law is emerging and is extremely fact-based, it is extremely important to hire a competent trademark and internet law attorney to analyze your factual situation and provide you with a reasoned recommendation. 

UPDATE:

Intellectual Property Today has a great summary of the case law that was mentioned above, as well as some interesting questions that you should ask yourself when considering whether your use of a trademark in metatags or search keywords is infringing:

In evaluating how to circumnavigate the series of potential obstacles created by the different approaches taken to the treatment of Internet advertising cases under the Lanham Act, the following questions may provide helpful guidance:

• Did a competitor deliberately purchase a key word or was it automatically selected because of the algorithms used for generating sponsored links?

• Does the linked advertisement use the competitor’s mark or is it merely used to trigger the advertisement?

• Could the use be characterized as a nominative fair use or lawful comparative advertising in those jurisdictions where actionable?

• Can conflicts be avoided by purchasing negative or excluded key words to affirmatively prevent unintended purchases of competitor’s marks?

One thing that wasn't mentioned in our previous post, but was brought up by Intellectual Property Today, is that even if a court finds a trademark use, a plaintiff must still show likelihood of confusion with or dilution of its mark.  As IPToday recognized, the difficulty of proving likelihood of confusion differs with each jurisdiction.  Even where initial interest confusion is present based on the use of a trademark within a domain name, if the purpose of the website is parody, criticism, or otherwise noncommercial no likelihood of confusion under the Polaroid factors will be found in some jurisdictions.  Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005).  Other circuits have held that there is no likelihood of confusion when metatags are used to trigger non-paid search engine results:

At no point are potential consumers "taken by a search engine" to defendant's website due to defendant's use of plaintiff's marks in meta tags. Rather, as in the present case, a link to defendant's website appears on the search results page as one of many choices for the potential consumer to investigate. As stated above, the links to defendant's website always appear as independent and distinct links on the search result pages regardless of whether they are generated through Google's AdWords program or search of the keyword meta tags of defendant's website. Further, plaintiff does not allege that defendant's advertisements and links incorporate plaintiff's marks in any way discernable to internet users and potential customers.  J.G. Wentworth, S.S.C. Ltd. Partnership v. Settlement Funding LLC, 85 U.S.P.Q.2d 1780,  1786 (E.D.Pa.2007).

As you can see, this area of the law is extremely fact-based.  It is important to hire an attorney familiar with the law in all circuits to make the arguments beneficial to your case.