ALTHOUGH THE legal rules governing conduct on the Internet have been developing for only the past few years, disputes concerning trademarks have played an important role.  Within the past few months, however, an entirely new type of trademark infringement claim has arisen that stretches the fabric of trademark law to new lengths.

   When the commercial use of the Internet was first developing in the mid-1990s, disputes arose over whether the use of a party's trademark as a domain name, or Internet address, was an infringement on that trademark.  Later in 1996 and 1997, disputes arose over the unauthorized "linking" of web sites.

   But this new form of infringement is entirely invisible to the naked eye. The potential claim arises when one party (the "site designer") uses a trademark owned by another party (the "trademark owner") in the site designer's "metatag."

Looks Like a 'Match'

   Although the trademark itself will not be visible to an Internet user, the use of the trademark in the metatag will cause the site designer's site to appear as a "match" if an Internet user searches for the trademark with a search engine.

   To understand why this use of a trademark is important, it is necessary to understand the connection between metatags, search engines and the "war for eyeballs" that is driving the growth of Internet advertising so far.

   Much in the way the Nielsen ratings determine the price of television advertising, Internet advertising so far has been valued on the number of "hits" a web site receives.  The greater the number of hits, the greater the number of people viewing the site and the greater the value in advertising on that site.

   To generate hits, a web site needs to position itself so that it will be accessed by the greatest number of users.  One way to do this is to negotiate a link to the site designer's site from another famous site.  Many of the popular search engine sites, for example, have links posted on the home pages of famous sites, like MSNBC (www.msnbc.com) and CNN (www.cnn.com).  Obtaining rights to post these links, however, can be expensive, as the owners of the famous sites recognize the value in their own popularity.

Metatags

   The other way to generate hits is to create metatags that make the site likely to generate hits from Internet search engines.  An Internet search engine takes a search command from a user and scans the metatags of Internet sites to find metatags containing the search term.  Metatags are invisible fields in the web site withcertain key words or descriptors that pertain to the content of the site.  A car manufacturer's web site, for example, would probably have a metatag that included words such as cars, automobiles, driving, transportation, the manufacturer's name and so on.

   To generate additional hits, however, the site designer may add other words that are frequent search terms, even where those words have nothing to do with the site, such as sex, nude and pornography.

   To take the effort a step further, however, a site designer might even list a competitor's name in his or her own metatag.  Doing this would cause every search for the competitor's site to cause the designer's site to appear on the match list for the search engine.  It is this type of trademark use that triggers the latest claim of Internet trademark infringement.

   One of the few judicial decisions on the topic was delivered last year in Playboy v. Calvin Designer Label, 44 U.S.P.Q. 2d 1157 (N.D. Cal. Sept. 8, 1997). In that case, the defendant had developed an adult entertainment site and had used Playboy's famous marks, "playboy" and "playmate" in its metatag.  In a decision that may be the only of its kind to date, U.S. District Judge Charles Legge of the Northern District of California held that this use of Playboy's trademarks constituted infringement and dilution that justified an injunction. The court found that Playboy Enterprises Inc. (PEI) had demonstrated a likelihood of success on its trademark and unfair competition claims.  Under the injunction, the defendant was enjoined from using PEI's marks in any manner, including as Internet domain names and in metatags on its home page or web site. The court also ordered the defendant to cease using the domain names, and to request that Network Solutions Inc. cancel the domain name registrations and delegate control over the domain names to the court.

   In a similar claim Insituform Technologies Inc. sued National Envirotech Group, a competitor in the field of pipeline construction, when National Envirotech used Insituform's name in its metatag.  Insituform Technologies Inc. v. National Envirotech Corp., Civil Action No. 97-2064 (E.D. La., final consent judgment entered Aug. 27, 1997). National Envirotech settled the case and agreed not to use Insituform's' trademark in its metatag.

   A slightly different claim is presented in Oppendahl & Larson v. Advanced Concepts, (C.D. Colo., filed July 23, 1997).  The Colorado law firm of Oppendahl & Larson sued Advanced Concepts and other defendants for using the firm's name in a metatag.  The defendants have been ordered to remove the name from the metatags, leaving only the question of whether the past act of infringement justifies an award of damages.

Practical Implications

   What these cases mean is that the use of a trademark in a metatag is likely to be viewed as an infringement by the trademark owner.  As a practical matter, most business managers responsible for commercial web sites will want to take care to ensure that their metatags do not contain trademarks of other parties. Businesses that hire outside consultants or professional web site designers should negotiate appropriate provisions in their consulting agreements to ensure that consultants avoid pitfalls like these.

   From another point of view, however, trademark owners should occasionally peruse the Internet to look for possible infringers.  Such efforts should be part of any comprehensive trademark protection strategy.

   These new cases, however, raise even more unanswered questions than they resolve.  For example, it is an established principle in trademark law that a reference to a competitor's trademark in connection with legitimate comparative
advertising is a fair use of the trademark.  See G.D. Searle & Co. v. Hudson Pharmaceutical Corp., 715 F.2d 837, 841 (3d Cir. 1983). No case so far has treated a situation in which a site designer places a competitor's trademark in a metatag because the site contains legitimate comparative advertising.  In such a case, the site designer could make the argument that the use of the trademark in the metatag is not dilutory because the site itself describes the differences between the goods of the site owner and the goods of the competitor.

   The rapid growth of the Internet, in contrast to the slower pace of our legal system, means that we have only begun to scratch the surface in this area of the law.