Federal Court takes on metatags

Canada

In Red Label Vacations Inc v 411 Travel Buys Limited (2015 FC 19), the Federal Court has addressed the issue of copyright and trademark protection in metatags. The case represents one of the first detailed reviews of these issues by a Canadian Court. 

The plaintiff, Red Label, and the defendant, 411 Travel Buys, were competitors in the online travel business. The plaintiff offered its travel services through its website, 'redtag.ca', and also owned three registered trademarks: REDTAG.CA, REDTAG.CA VACATIONS and SHOP. COMPARE. PAYLESS!! GUARANTEED. When the defendant’s website went live in January 2009, several of its pages contained identical or very similar content to the plaintiff’s website within the metadata, including metatags that incorporated the dominant words of the plaintiff’s trade name and trademarks.

As outlined by the court, a metatag is “a word or small phrase that’s embedded in the source code of a website”. These elements provide information about the web page, which can be used by search engines to categorise and rank websites. Notably, none of the allegedly infringing metatags were actually visible on the defendant’s website.

When the plaintiff alerted the defendant to the issue in March 2009, the defendant’s website was taken down and the allegedly infringing content removed; however, the plaintiff proceeded with an action for copyright and trademark infringement, passing off and depreciation of goodwill. The plaintiff alleged, among other things, that the defendant’s use of the metatags caused it to experience a lull in web traffic resulting in lost revenue.  Ultimately, the plaintiff was unsuccessful on all of the grounds.

With respect to copyright, there was no dispute that the defendant had copied the plaintiff’s metatags. In several instances, even spelling errors in these metatags had been reproduced. Nevertheless, the court was not satisfied that copyright existed in the metatags and thus did not find infringement.

The court noted that the metatags were “substantially derived” from a list of Google keywords that were incorporated into short phrases descriptive of travel services. On that basis, the court concluded that the creation of the metatags did not involve a sufficient degree of skill and judgment so as to invite copyright protection. Notably, however, Justice Manson did not entirely foreclose on the possibility of copyright subsisting in metatags, stating:

"While in some cases there may be sufficient originality in metatags to attract copyright protection when viewed as a whole, the substance of the metatags asserted by the plaintiff in this case does not meet the threshold required to acquire copyright protection in Canada."

The court went on to find that, even if the metatags were protected by copyright, there had not been substantial copying as the defendant had only copied the metatags from 48 of 180,000 pages of the plaintiff’s website.  Furthermore, the court held that the copying was inadvertent and would have constituted innocent infringement in the circumstances of the case.

Turning then to the trademark dispute, the court noted that the defendant used the dominant elements of the plaintiff’s trade name and registered trademarks in the metatags but was ultimately satisfied that such use did not constitute passing off, infringement or depreciation of goodwill. 

To succeed in a passing off action, the plaintiff must establish the existence of goodwill, the likelihood of deception of the public due to a misrepresentation and actual or potential damage to the plaintiff.

The court was satisfied that goodwill had been established in the plaintiff’s trade name and in several of its trademarks, but found that the defendant’s use of these marks as metatag identifiers did not create a likelihood of deception. In passing, the court noted that some US courts have relied on the concept of initial interest confusion to address situations like this, but found that the concept “ha[d] not... gained a foothold in Canada”. More to the point, the court noted that the use of metatags in a search engine merely gives consumers a choice of links that they may opt to follow. While metatags may affect this choice by impacting the ranking of these websites, they do not direct a consumer to a particular competitor’s website. The court concluded:

"... use of a competitor’s trademark or trade name in metatags does not, by itself, constitute a basis for a likelihood of confusion, because the consumer is still free to choose and purchase the goods or services from the website he or she initially searched for."

Should a consumer have arrived at the defendant’s website, there were no indicia that would link the website to the plaintiff since the plaintiff’s marks were not actually visible on the site. The court found that the website was clearly identified as that of the defendant and thus that there was no likelihood of deception as to the source of the services.

For similar reasons, the use of the plaintiff’s registered trademarks in the metatags did not constitute trademark infringement. The court also rejected the allegation of depreciation of goodwill based on its findings that the plaintiff’s trademarks were not used as registered and that there was no connection between the online services of the defendant and those of the plaintiff since the marks were not visible on the website.

The Federal Court’s decision is one of the few decisions in Canada to deal with copyright and trademark protection in metatags head on. The case will likely pose a significant hurdle for parties seeking to lodge copyright or trademark complaints in future based on the use of metatags alone.

Notably, the decision has been appealed. 

Robert MacDonald and Nicole Zeit, Gowlings, Ottawa and Toronto

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