Intellectual Property Law

Use of Competitor's Marks in MetaTags Per Se Infringement . . . Almost

By Tim Feathers

In a recent case, Venture Tape Corp. v. McGills Glass Warehouse, the U.S. Court of Appeals for the First Circuit held that hiding the competitor's trademarks on a website for the purpose of increasing search engine ranking constitutes trademark infringement.  The court subsequently affirmed the award of attorney's fee, costs, and profits for the period of infringement.

McGills sells adhesive tapes and foils through its Internet website in direct competition with Venture.  From 2000 to 2003, McGills' website hosted web pages with the embedded marks "Venture Tape" and "Venture Foil." Both marks were federally registered and owned by Venture.  The marks were placed in the website's meta tags and also in white lettering on a white background screen for the purpose of improving its ranking with Internet search engines.  Since the infringing content was invisible to persons viewing the webpage, the Court did not rely on the "likelihood of confusion" doctrine but based its decision on the "initial interest confusion" theory.  The Court noted that evidence of actual consumer confusion is difficult to gather and, thus, not required.  Finally, the Court affirmed the infringement determination of the district court by analyzing factors including the similarity of marks, similarity of goods, channels of trade, the classes of purchasers, the strength of the marks, and the intent in using the marks.

The "initial interest confusion" analogy was first applied to a meta tag case in 1999 by the Ninth Circuit in Brookfield Communications Inc. v. West Coast Entertainment Corp.  The Ninth Circuit reasoned that

Full post as published by The TechKnowledgy Blog on September 16, 2008 (boomark / email).