11th Circ. Court Bans Trademarked Search Engine Metatags
The 11th Circuit Court of Georgia ruled using another's trademarks in meta tags infringes the Lanham Trademark Act, in the case North American Medical Corp. v. Axiom Worldwide, Inc., decided on April 7, 2008. The case was an appeal that reached the same conclusion and concerned “physiotherapeutic spinal devices,” which North American Medical Corp. (“NAM”) and Axiom both market. These are traction devices, typically used to treat such injuries as lower back pain. The lawsuit alleged Axiom engaged in unfair competition by infringing trademarks and by issuing false advertisement. The case pivoted on whether using trademark terms owned by another were commercially “confusing.”
The trademark infringement claims result from Axiom using two registered trademarks: the terms “Accu-Spina” and “IDD Therapy.” These were used as terms on its website within metatags. Metatags are code-words in HTML language inserted into the header on a web page, right after the title. These tags are extremely important as they are the thing that search engines like Google or Yahoo find in an initial scan of the Net on any topic entered. For example, if a business was selling auto parts on its website, it would put in such metatags as “car parts,”, “gas engine,” “auto repair,” “Ford,” etc. Metatags are an extremely important part of website promotions and have a decisive impact upon the amount of traffic generated to any given site.
The Court found that Axiom included terms on its website within meta tags of items it did not have trademark rights for. While Axiom's website never displayed such trademarked terms to visitors and never mentioned these products, these terms were still hidden within its meta tags to influence Internet search engines.
In deciding for NAM, the Court cited the Lanham Act regarding trademark infringement, saying the following section of 15 U.S.C. § 1114(1)(a) (2006) was applicable:
(1) Any person who shall, without the consent of the registrant –
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . .shall be liable in a civil action by the registrant for the remedies hereinafter provided.
According to the Act, to prevail on a claim of trademark infringement in this case, plaintiffs must establish:
(1) that they possess a valid mark, (2) that the defendants used the mark, (3) that the defendants’ use of the mark occurred “in commerce,” (4) that the defendants used the mark “in connection with the sale . . . or advertising of any goods,” and (5) that the defendants used the mark in a
manner likely to confuse consumers.
In its ruling, the Court examined Axiom's reliance upon the holding of the Second Circuit’s 1-800 Contacts v. WhenU. In this similar case the Second Circuit emphasized that the defendant did not use plaintiff’s trademark, but instead its website address, which it ruled differed slightly from the mark. Specifically, the Court ruled these cases different because, “ Even more crucial to the Second Circuit’s holding, the court emphasized repeatedly the fact that the defendant never caused plaintiff’s trademarks to be displayed to a consumer.”
The Court was concerned with the issue of confusion over trademark, when a company that cannot sell a product still lists the product in its metatags, thereby implying that it does sell these items. The Court listed Seven factors that are relevant when determining whether a likelihood of confusion exists:
(1) the strength of the plaintiff’s mark; (2) the similarity between the plaintiff’s mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant’s intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff’s established mark; and (7) actual confusion. (Alliance Metals, Inc., of Atlanta v. Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir. 2000).)
The Court found that Axiom’s brief on appeal refused to broadly challenge the district court’s implied findings with respect to these seven factors.
In it's holding, the Court ruled against Axiom's confusing employment of NAM's trademarked terms, saying, “In sum, we affirm the district court’s findings with respect to the likelihood of success on the merits of the trademark claims and the false advertising claims.”
As to the impact of this ruling, it is difficult to say, because according to some experts, this holding is in contradiction with other circuit court decisions on topic. Marketing tech law blogger Eric Goldman says., “Oh man, what a bizarre and frustrating ruling from the 11th Circuit on metatags. ”
Goldman goes on at length about the ruling: “Predicated on its poorly articulated and possibly erroneous assumptions about Axiom's role in appearing in the search results, the court has little difficulty slamming down Axiom. On the use in commerce question, the court concludes that, pursuant to the "plain meaning" of the statute, metatags are clearly a use in commerce in connection with goods or services because they support advertising objectives. I don't think the statutory language is the least bit clear, especially if search engines ignore keyword metatags and thus the trademark references have no chance of being perceived.”
There is no doubt this issue will continue to be tested in court, and this ruling could easily be overturned.