Trademark Law as Applied to the Internet

To understand the possible implications that pop-up advertisements   have on trademark law, one must first examine the legal impact of such intellectual property issues on related Internet advertisement schemes using "metatags" and "trigger ads."

Metatags

Websites are created and designed by using Hypertext Markup Language ("HTML"), which is the principal programming language used to create websites for display by an Internet browser. This code instructs a web browser, such as Microsoft Internet Explorer or Netscape Navigator, how to display the graphics or words that appear on a particular website.  In a general sense, metatags are a special HTML word or code that provides information about a Web page.  Metatags are not visible to a computer user viewing the website.  They are inserted in the HTML source code for the sole purpose of being detected by Internet search engines.

The escalating amount of information on the Internet has given rise to a reliance on search engines as an important information retrieval tool.  Search engines use a web site’s metatags as the primary means of identifying and associating the site to the keywords of a web surfer’s search.  Internet webpage designers are aware of this relationship and attempt to bury various words, including trademarked items, in a website’s metatags to lure possible customers to its Internet site.

Recently, federal courts have held that a website owner’s use of a competitor’s trademark as a metatag constituted trademark infringement. Perhaps the most well-known decision prohibiting a competitor’s use of a trademark as a metatag came in Brookfield Communications, Inc. v. West Coast Enter. Corp., 174 F.3d 1036 (9th Cir. 1999).  In Brookfield, the Federal Court of Appeals for the Ninth Circuit concluded that the defendant’s use of terms confusingly similar to the plaintiff’s trademarked term “MovieBuff,” in metatags placed in the defendant’s website, would result in what it phrased “initial interest confusion."

What is Initial Interest Confusion?

Trigger Ads

Triggering occurs when a search engine sells keywords to an advertiser, and in the event that a web surfer enters those particular keywords in a search engine, advertising banners or pop-up advertisements appear along with the list of search results.  Trademark issues arise, however, when a search engine sells a competitor’s trademark as a banner or pop-up advertisement.  In Playboy Enter., Inc. v. Netscape Communications Corp., 55 F. Supp. 2d 1070 (9th Cir. 1999), the Ninth Circuit was the first court to combat such an issue. In Playboy, Playboy argued that Netscape infringed its registered marks “Playboy®” and “Playmate®” by marketing and selling the words “playboy” and “playmate” to advertisers.  Netscape argued that although Playboy may own these registered marks, Netscape did not actually ‘use’ the trademarks qua trademarks.  The Ninth Circuit concluded that since Netscape had used the generic form of “playboy” and “playmate” to program its search algorithm, the court found that Netscape had not “used” Playboy’s marks in commerce.  In addition, the court concluded that the trademarks involved were also generic terms in the English language.  Thus, the court hinted that if the keywords were solely a famous trademark, the outcome may have been different.  Further, Playboy only sued the search engines rather than the firms that were using the trademarks to trigger their own advertising

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