(A) Use of Trademarks as Meta Tags

128 A ‘meta tag’ or ‘meta data’ is a keyword or phrase embedded in a website’s HTML (hypertext markup language) code as a means for Internet search engines to identify and categorize the contents of the website. ²⁰⁰ Meta tags are not visible to normal users on the website itself (although they can be made visible together with the source code of the page), however, a search engine seeking particular keywords will find and list that particular site. The more often a keyword appears in the hidden code, the higher a search engine will rank the site in its search results. In various jurisdictions, trademark owners have challenged the unauthorized use of their trademark as a meta tag.²⁰¹

129 However, a trademark employed as a meta tag, because it is used in a way that is invisible to the average viewer, is not used primarily to distinguish particular goods or services, a finding that is generally necessary to establish trademark infringement. In some jurisdictions, the courts have nevertheless found that companies’ use of competitors’ names as meta tags constitutes unfair competition,²⁰² including the Indian case of Tata Sons Limited v. Bodacious Tatas,²⁰³ and the Italian case of Genertel SpA v. Crowe Italia Srl.²⁰⁴ In the United States of America, in the case of Brookfield Communications Inc. v. West Coast Entertainment Corp,²⁰⁵ the Court regarded the practice of meta tagging as potential trademark infringement, stating that such use might suggest sponsorship or authorization by the trademark owner, or that consumers looking for the products of the trademark owner might be misdirected and diverted to a competitor’s website and be at least initially confused in their search for the trademarked goods.²⁰⁶

130 However, while as a general rule the unauthorized use of a trademark as a meta tag is considered unlawful, this approach is not universal. A number of cases brought by Playboy Magazine illustrate the complexity of the law in this area, and the diversity of outcomes even within one legal jurisdiction. In the American cases of Playboy Enterprises Inc. v. Calvin Designer Label,²⁰⁷ and Playboy Enterprises, Inc. v. AsiaFocus International, Inc.,²⁰⁸ the Courts prevented the defendants from using the marks ‘Playboy’ and ‘Playmate’ as meta tags on their websites, as well as in related domain names. In the case of Playboy Enterprises Inc. v. Welles, it was held that use as a meta tag of the Playmate trademark by a former Playmate of the year, to enable consumers to locate her website, was a fair use. ²⁰⁹ Similarly, in Playboy Enterprises v. Netscape Communications,²¹⁰ the Court found that the use of trademarks as meta tags by the defendant’s search engines, which linked adult entertainment advertisements to the trademarked terms, was in fair use.

131 It is becoming clear that the courts may allow the use of trademarks as meta tags where such use is not misleading or unfair. In the case of Numtec Interstahl, the Austrian Supreme Court held that it was legitimate for the defendant to use the plaintiff’s trademark as a meta tag on its website, because such use enabled the public to be informed about products the plaintiff produced under patent, and because the average user would not be confused as to the ownership of the trademark.²¹¹ Similarly, the Regional Trial Court in the Philippines, in Philippine Long Distance Telephone Company, Inc. v. Philippine League for Democratic Telecommunications, Inc. and Gerardo B. Kaimo, found that the defendant’s use of meta tags on a parody site clearly used to criticize the plaintiff’s business schemes and raise public awareness of political issues, was not likely to confuse or mislead users and therefore did not amount to trademark infringement.²¹² In the American case of Bihari v. Gross, the use of a meta tag was found to be in fair use when the two parties are not competitors, and the tag was used by the defendant on a site critical of the plaintiff’s business and therefore unlikely to cause confusion.²¹³ Similarly, in the case of Promatek Industries Ltd. v. Equitrac Corp., the U.S. Court of Appeals modified an earlier opinion to clarify that use of another’s trademark as a meta tag may be permissible if it is not deceptive, stating: “It is not the case that trademarks can never appear in meta tags, but that they may only do so where a legitimate use of a trademark is being made.”²¹⁴