The recently released Federal Court decision Red Label Vacations Inc v 411 Travel Buys Limited2015 FC 19 contains one of the first detailed considerations by a Canadian Court of the issues of copyright and trademark infringement via the use of meta tags. The Court held that the Plaintiff’s meta tags were not subject to copyright protection and therefore there could be no copyright infringement. The Court further held that use of the Plaintiff’s trade name and similar words in the Defendant’s meta tags was not passing off or trademark infringement since it would not likely lead to consumer confusion.

A. Background

A meta tag is a word or small phrase that is included in the source code of a website, but does not appear on the visible webpage. Internet search engines may use meta tags, along with other types of metadata, as a means of identifying relevant webpages and ranking the websites which are displayed in the search results.

Search engine optimization is an integral part of marketing online, and meta tags are a common tool used to ensure the best possible search rankings for a company’s website.

B. The parties and causes of action

In this case, the Plaintiff, Red Label Vacations Inc., operated a travel information and booking service via its website http://www.redtag.ca/, which had been in operation since 2004. The Plaintiff also owned registrations in Canada for the trademarks “redtag.ca”, “redtag.ca vacations” and “Shop. Compare. Payless!! Guaranteed” which it used in promoting its business.

The Defendant, 411 Travel Buys Limited, was a competing travel booking provider that launched in 2009. When the Defendant’s website first appeared online, a number of its webpages included metadata which was identical or very similar to the Plaintiff’s, including the meta tags “red tag vacations” and “shop, compare & payless”. These meta tag terms were not visible to customers visiting the Defendant’s website, but were included in the website’s metadata. In terms of what was visible to the consumer, the Defendant’s website did not depict any of the Plaintiff’s trademarks and instead depicted the Defendant’s own trademarks which were not alleged to be confusing.

It was not disputed that some copying of the Plaintiff’s source code by the Defendant took place, as misspellings of certain meta tags in the Plaintiff’s source code were also included in the Defendant’s source code.

The Plaintiff alleged, among other things, copyright infringement, trademark infringement and passing off in view of the Defendant’s use of these meta tags. The Plaintiff asserted that as a result of the Defendant’s use of these meta tags, Internet traffic to the Plaintiff’s website had declined in favour of the Defendant’s website, which had resulted in damage to the Plaintiff by way of lost revenue.

  1. Copyright infringement

Under the Copyright Act, in order for there to be a finding of copyright infringement, copyright must subsist in the work asserted by the plaintiff and the defendant must have reproduced the work or a substantial part thereof. For copyright to subsist in a work, the work must be “original”, in that its creation involved at least a minimal degree of skill and judgment.

On the issue of whether meta tags can be the subject of copyright, Justice Manson canvassed the limited prior Canadian jurisprudence, which suggested that meta tags acted as targets for search engine algorithms, thus serving more of a practical function rather than being the expression of an idea which could be the subject of copyright. Similarly, in this case Justice Manson concluded that the meta tags in issue were not the subject of copyright, stating as follows at paragraph 101:

In this case there is little evidence of any sufficient degree of skill and judgment in creating these meta tags, as is required by the test set out by the Supreme Court of Canada in CCH, above, or for the originality required in compiling data or other compilations, as discussed by the Federal Court of Appeal in Tele-Direct.

With respect to the above, the Plaintiff’s meta tags in this case were substantially derived from a list of Google key words and then incorporated into short phrases descriptive of travel services, locations, discounts and deals. However, Justice Manson notably left open the possibility that copyright could subsist in meta tags in different circumstances:

While in some cases there may be sufficient originality in meta tags to attract copyright protection when viewed as a whole, the substance of the meta tags asserted by the Plaintiff in this case does not meet the threshold required to acquire copyright protection in Canada.

In addition, Justice Manson held that even if copyright did subsist in the Plaintiff’s meta tags, based on the facts of this case there had not been a substantial copying with respect to the Plaintiff’s website as a whole. While the analysis of whether a “substantial part” of the work has been reproduced is a qualitative rather than quantitative analysis, Justice Manson noted that the Defendant only copied meta tags on 48 pages of approximately 180,000 pages of source code used to create the Plaintiff’s website.

Consequently, no copyright infringement on the part of the Defendant was found.

  1. Passing off and trademark infringement

With respect to both passing off and trademark infringement, the central issue was whether the Defendant’s use of the Plaintiff’s trade name and other similar words as meta tags was likely to cause confusion among consumers as to the source of the respective parties’ services.

It was not disputed that the inclusion of these meta tags in the Defendant’s source code caused the Defendant’s website to be listed among the search results when consumers conducted an Internet search for the Plaintiff. However, there was no actual display of the Plaintiff’s trade name or trademarks on the Defendant’s website, as the latter was clearly labeled with the Defendant’s own trademarks.

Justice Manson acknowledged that some Courts in the United States have held that use of meta tags can cause “initial interest confusion”, where confusion is caused before a consumer actually purchases a product, because they are lead to a competitor’s website. However, Justice Manson did not find this principle applicable to the present case, because the presence of the Plaintiff’s meta tags did not lead consumers directly to the Defendant’s website, but merely included the Defendant’s website in a list of search results which would then be reviewed and chosen by the consumer:

The use of meta tags in a search engine merely gives the consumer a choice of independent and distinct links that he or she may choose from at will, rather than directing a consumer to a particular competitor. Rankings may affect the choice to be made, but nevertheless, such a choice exists.

Justice Manson then concluded:

... use of a competitor’s trademark or trade name in meta tags does not, by itself, constitute a basis for a likelihood of confusion, because the consumer is still free to choose and purchase the goods or services from the website he or she initially searched for.

Consequently, it was held that there was no trademark infringement or passing off by reason of the Defendant’s use of the meta tags.

The above findings are arguably more narrow than the law that has developed in the United States and Europe. In this regard, several US courts have held that in appropriate circumstances, using competitor’s trademarks in meta tags can result in trademark infringement based on the theory of initial interest confusion. In Europe, courts in Germany, Belgium, Denmark and Austria have found trademark infringement for the use of third party trademarks in meta tags, while courts in Holland have dismissed similar claims. Courts in France have decided the matter on a case-by-case basis with some claims being dismissed and others resulting in a finding of infringement. Furthermore, the Court of Justice of the European Union confirmed in 2013 that use of meta tags can constitute “advertising” within the meaning of the EU Directives, and is therefore subject to the rules relating to misleading advertising.

C. Conclusions

This decision constitutes the most direct and detailed consideration by a Canadian Court to date of the issue of copyright and trademark infringement via the use of meta tags. While not foreclosing entirely the possibility that the use of meta tags could constitute copyright or trademark infringement in certain circumstances, subject to a successful appeal, this decision suggests that it may be difficult to establish copyright and trademark infringement in Canada based on the use of meta tags alone. We note that the Plaintiff in this case has appealed the decision.