Confusion still reigns over metatag use

The US Court of Appeals for the Seventh Circuit has issued a revised opinion in Promatek Industries Ltd v Equitrac Corp. Although it held that the defendant's metatag use was infringing because it was "calculated to deceive customers", it failed to articulate useful criteria for what distinguishes legitimate from infringing use. Consequently, the correct legal treatment of metatags will continue to be controversial.

Equitrac advertised on its website that it would repair and maintain its competitor's COPITRAK branded product. Promatek did not contest this use of the COPITRAK mark, and the Seventh Circuit confirmed that such use was fair (see New Kids on the Block v New America Publishing Inc discussing 'nominative fair use' in detail). Promatek complained, however, that Equitrac's use of the mark in metatags constituted trademark infringement.

A metatag is hidden text that normally is not visible on a website. Many internet search engines prioritize their results, at least in part, depending on the frequency of a search term's appearance in a site's metatags.

The Seventh Circuit affirmed the district court's decision to enjoin the metatag use but failed to articulate useful criteria for what distinguishes legitimate from infringing metatag use. In its revised opinion, the court acknowledged in a footnote that "[i]t is not the case that trademarks can never appear in metatags, but that they may only do so where a legitimate use of the trademark is being made." The court said:

"The problem is not that Equitrac, which repairs Promatek's product, used Promatek's trademark in its metatag, but that it used that trademark in a way calculated to deceive consumers into thinking that Equitrac was Promatek."

It failed to explain, however, how the defendant's use was "calculated to deceive". While it indicated that trademark use in the visible advertising on the website was acceptable, it did not indicate why analogous metatag use was considered illegitimate or with a bad intent.

Promatek fails to address or apply the analysis employed by the Ninth Circuit in Playboy Enterprises Inc v Terri Welles where the court held that use of marks in metatags is non-infringing to the extent that the metatag use reflects and is proportional to otherwise fair uses of the mark in the visible text on a web page. Under the Welles approach, if Equitrac were to use the COPITRAK mark in the visible pages of its website to indicate that it repaired COPITRAK branded products, it would be entitled to make proportional use of the mark in metatags.

The correct legal treatment of metatags certainly will continue to be controversial. To the extent that the Seventh Circuit applied meaningful criteria in finding infringement, its analysis remains unstated. As a result, the case will provide little guidance in assessing the legality of use of trademarks in metatags.

John C Nishi, Wilson Sonsini Goodrich & Rosati, Palo Alto

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