Meta-Tags, Hidden Text, and Initial Interest Confusion: A new wave of trademark infringement cases that owners and operators of websites should know about

Mark A. Wright
Director and Chair, Intellectual Property Practice Group
October 1, 1999

Many businesses realize that the trick to making money on the Web is to ensure that their site attracts as many “hits” as possible. Some businesses believe that it doesn’t matter whether visitors come to the site because they want to or because they have been lured under false pretense. In fact, tricking a search engine into sending “hits” your way can be very profitable. And that’s where the problems begin.

The problem arises out of the language (HTML) that is used to create websites. HTML incorporates tags that search engines use to index each site. The tags that define the title and headings on each web page do not need to indicate the contents of the web page; in fact, they can indicate anything that the designer chooses. There also are meta-tags hidden within HTML that search engines such as Yahoo and Excite use to index web pages. These meta-tags aren’t even visible on the web page. Meta-tags should contain information regarding key words or site summaries that describe the web page’s content for the viewer, but that’s not the way it works. Rather, meta-tags often include key words having nothing to do with actual web page content, including popular trademarks or other words and phrases that will attract many “hits.”

Originally, these schemes didn’t pose much of a problem, because people searched the Web by typing in specific addresses. Now everyone uses search engines, and consequently meta-tags and hidden text are commonly used to solicit “hits.” While courts are quick to acknowledge that use of another party’s trademark or name may not necessarily result in confusion as to the source or sponsorship of a product or service, courts are now holding that trademark infringement can occur by simply using another’s mark or name in a meta-tag to create “initial interest” or lure people to a particular website.

In a recent case, the Ninth Circuit Court of Appeals held that a defendant’s use of the domain name and its use of MovieBuff in meta-tags infringed the plaintiff’s rights in its registered mark MovieBuff. Brookfield Communications Inc. v. West Coast Ent. Corp., 50 U.S.P.Q.2d 1545 (9th Cir. Apr. 22, 1999). This case is the first appellate decision to hold that the use of another’s trademark in a meta-tag constitutes trademark infringement. The court considered carefully the way meta-tags are used and concluded that such use raised little risk of ultimate source confusion. But, the court held, using another’s trademark as a meta-tag could cause initial interest confusion, which is also actionable under the Federal Trademark Act.

If you are operating a website, don’t use anyone else’s mark to attract visitors. Rely on your marks and a variety of appropriate generic terms as meta-tags, taking care to avoid third party marks all together. If you really want to use someone else’s trademark on your site, and you feel that the use is appropriate, you may be able to obtain the consent of the trademark owner. In the end, the safest and easiest way to make certain your website shows up near the top of the search engine results is to imbed your mark, your name, and your related generic key words as HTML text in the title page, the meta-tags, and the headlines in the top section of your website.

What You Should Do When Running A Website

  • Don’t use other parties’ logos, symbols, or trademarks without consent.
  • Imbed your mark, name and key words as HTML text on the title page, meta-tags and headlines of your web page.
  • Contact the search engines and let them know who you are and what you’re advertising.
  • Monitor your site to ensure that no one is using your trademarks or logos
  • Obtain the consent to use third party logos, symbols or trademarks on the linked site and display an acknowledgment of third-party rights