Use of competitor's mark in metatags is not infringing, court affirms

In Site Pro-1 Inc v Better Metal LLC, the US District Court for the Eastern District of New York has dismissed the plaintiff's claim of trademark infringement.

The plaintiff, SitePro1 Inc, owns a registration for the mark SITE PRO 1 for use with various electrical components to be used in the construction of wireless telecommunications towers. The defendant, Better Metal LLC, sells similar products to SitePro1's. Better Metal purchased a sponsored link from Yahoo! that caused Better Metal's site to be included among the results when users searched for some combinations of the keywords '1', 'pro' and 'site'. In order for Better Metal's site to be included in the results, Better Metal placed data in the metatags of its website that would cause the Yahoo! search engine to yield a link to Better Metal's website. SitePro1's lawsuit claimed that Better Metal's use of the SITE PRO 1 trademark in the metatags and its purchase of the sponsored link from Yahoo! constituted trademark infringement.

Better Metal moved to dismiss on the grounds that it did not use the SITE PRO 1 mark 'in commerce' as required by the Lanham Act. The New York federal district courts follow the decisions of the US Court of Appeals for the Second Circuit, their reviewing appellate court. Precedent in the Second Circuit holds that infringing 'use in commerce' of another's mark involves placing a trademark "on goods or services to indicate that the goods or services emanate from or are authorized by the owner of the mark". The Second Circuit's prior cases had found that purchasing a sponsored link or using software that triggers pop-up ads based on another's trademark is not the same as affirmatively using another's mark. Based on those cases, the Site Pro court framed the issue as:

"whether the defendant placed [the] plaintiff's trademark on any goods, displays, containers, or advertisements or used [the] plaintiff's trademark in any way that indicates source or origin."

No such use had been alleged by Site Pro. Moreover, the links to Better Metal's site and the surrounding text did not mention the SITE PRO 1 trademark, and the inclusion of the elements of the SITE PRO 1 mark in Better Metal's metadata was not displayed to consumers. Accordingly, there was no use of Site Pro's mark on any goods and the court therefore dismissed the complaint for failure to allege the type of use in commerce required to support an infringement claim.

The court acknowledged that "courts in other circuits have generally sustained such claims", citing cases from several circuit courts and trials courts in other circuits in which metadata and/or sponsored search use were held to be infringements. Those cases, however, were not binding on the court in the Site Pro Case, which instead followed the Second Circuit's binding precedent.

It remains to be seen whether the growing split in authority will some day be resolved by the Supreme Court.

Karin Segall, Darby & Darby PC, New York

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