A recent decision of the Federal Court of Canada has addressed issues that have received little judicial consideration in Canada, specifically whether use of a competitor's registered trademark in metatags constitutes infringement, and whether copyright subsists in metatags. The short answer to both questions is no.

Come Fly With Me

Red Label Vacations Inc v 411 Travel Buys Limited (2015 FC 19) involved competing travel businesses. The plaintiff carried on business as redtag.ca. It offered online travel information services and bookings through a website, mostly to the Canadian market. 411 Travel Buys is an online travel agency that offered information to customers through a website, and the availability of agents over the phone to create travel bookings. Red Label Vacations commenced business in 2004; 411 Travel Buys launched its website in 2009.

The 411 Travel Buys website was created by an employee/intern in early 2009. The website's metatags included the plaintiff's registered trademarks. The 411 Travel Buys website also copied the metatags from the redtag.ca website. These metatags included generic travel industry terms such as "cruises" and "group vacations".

A metatag is a word or small phrase that is embedded in the source code of a website. It is not visible on the actual page itself. Most search engines will use a number of factors in determining how to rank search results, including metatags. There is a view that the greater the number of times a term appears in metatags and in the text of the webpage itself, the greater the chance that a search engine will choose that website to be listed higher on the list of search results. Selection and use of metatags can be an important part of search engine optimization – i.e., increasing a web page's ranking in unpaid search results.

Where the Defendant is Subtle, Consumers are not Deceived

In Red Label Vacations, the defendant used the plaintiff's trademarks in metatags, but not on the pages of its web site that were visible to the consumer.

Some United States courts have embraced the doctrine of "initial interest confusion". This occurs when a business uses the trademark of a competitor to attract consumer interest. A hypothetical example from an American case was Blockbuster Video posing a sign that states "West Coast Video, exit 7", when in fact the Blockbuster location is at exit 7 and the West Coast location is at exit 8. In the example, it was presumed that some consumers who planned to go to a West Coast location would go to Blockbuster, rather than continue to drive around and look for the West Coast location – their intended destination. Although the consumer would not be confused at the time the rental was made, the transaction would only take place because of Blockbuster's use of the West Coast trademark. This approach has not been applied in Canada, and received no traction in the Red Label Vacations case.

The Court determined that the use of metatags in the hopes of improving rankings in search results merely gives the consumer a choice of distinct links to choose from, and does not direct the person doing the search to one particular competitor. While acknowledging that search engine rankings may influence the link that is selected, the consumer always has a choice. Even if a searcher who is looking for the website connected with a particular trademark clicks on a link to a competitor's site, that misdirection is not independently actionable. There must still be confusion as to the source of the goods or services. If there is no likelihood of confusion with respect to the source of the goods or services on the website, there is no trademark infringement. Since a consumer visiting the 411 Travel Buys website would not see any of the trademarks owned by Red Label Vacations, the Court found that there was no likelihood of deception and therefore no infringement.

No skill? No Judgment

The Court also considered whether Red Label Vacations' metatags could attract copyright protection. For a work to be "original" within the meaning of the Copyright Act, it must involve an exercise of skill and judgment. Skill means the use of one's knowledge, developed aptitude or practised ability in producing the work. Judgment means use of one's capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise will necessarily involve intellectual effort. It is settled law in Canada that the exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise.

On the facts of the case, there was little evidence that the creation of Red Label Vacations' metatags had the requisite degree of skill and judgment. The Court acknowledged that it is possible for metatags to attract copyright protection when viewed as a whole, but not in this instance where generic industry terms such as "cruises" and "group vacations" were used.

Since there was no copyright in the metatags, there could be no infringement. Even if copyright had subsisted in the metatags, what was taken by 411 Travel Buys did not constitute copying a "substantial part" of Red Label Vacations' site. The Court noted that the defendant only copied metatags on 48 of approximately 180,000 pages on the plaintiff’s website. Even though infringement should be considered from a qualitative not quantitative perspective, there was no substantial similarity between the websites as a whole.

What's in Front of the Curtain Matters

While descriptive words and trademarks used solely in metatags may not attract liability, URLs and website content that face the consumer will continue to be important factors in future cases. Where creative content or trademarks are appropriated, this will remain actionable.