The Eleventh Circuit recently decided that use of a competitor’s trademark in meta-tags is use in commerce for purposes of trademark infringement. North American Med. Corp. v. Axiom Worldwide, Inc., 522 F. 3d 1211 (11th Cir., 2008). The court found it was a use in commerce because, although the trademarks were not viewable by website visitors, they still influenced search engine listings.
Meta-tags are words and phrases embedded within a webpage’s computer code that provide information about the webpage, such as who created the webpage, when it was updated, and which keywords best describe page content. A typical website visitor does not see the metatag data, but the information is used by some search engines to find, describe, or sort relevant websites. It is common for companies to list competitor names or products in their meta-tags in order to influence search hits for their website.
Axiom Worldwide (Axiom) did just that, inserting two of North American Medical’s (NAM) trademarks, ACCUSPINA and IDD THERAPY, in its webpage meta-tags. A Google search using either of NAM’s trademarks listed NAM as the most relevant website, but also listed Axiom as the second most relevant website. Google’s search results also displayed a short description of Axiom’s website pulled from the meta-tags, which included NAM’s trademarks. NAM sued Axiom for trademark infringement and other related claims. The District Court for the Northern District of Georgia enjoined Axiom from various behaviors, including use of NAM’s trademarks in metatags, and Axiom appealed.
Axiom, analogizing this case to the 1-800 Contacts case, argued that use of a competitor’s trademarks in meta-tags is not use in commerce because a consumer never sees the marks. 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005). In 1-800 Contacts, the defendant reproduced the plaintiff’s website address, which was similar but not identical to the plaintiff’s trademarks, in a place inaccessible to consumers. The defendant did not reproduce or display plaintiff’s actual trademarks at all, nor did it cause the trademarks to be displayed to consumers. Accordingly, the Second Circuit decided that defendant’s “invisible” use of the plaintiff’s website address was not “use” in commerce of a trademark for purposes of trademark infringement. The Second Circuit reasoned that internal utilization of another’s trademark in a way that does not communicate it to the public does not violate trademark law, because trademark law is intended to prevent consumer confusion; if a consumer does not see the use of the mark, the consumer cannot be confused.
In Axiom, the Eleventh Circuit, critical of the reasoning in 1-800 Contacts, noted that, unlike in 1-800 Contacts, Axiom actually used NAM’s trademarks and caused them to be seen by consumers in the search result description of Axiom’s website. The court found that Axiom was listed second in search results for NAM’s trademarks because those trademarks were listed in meta-tags and therefore had a causal relationship with search results. This use of NAM’s trademarks by Axiom was part of an effort to promote and advertise its own competing products on the Internet, and therefore it constituted “use” in commerce for the purpose of trademark infringement.
Importantly, the court explained that the fact Axiom did not visibly display NAM’s trademarks on the webpages was not relevant in deciding whether there was use of the trademarks in commerce, although that fact would be relevant for other elements of trademark infringement, such as likelihood of confusion. The court expressly noted that its holding was narrow and specific to the facts in this case and conceded that a defendant may have a legitimate reason to use another’s trademarks in metatags, such as explicit comparative advertising.
Ultimately, the Eleventh Circuit reversed the preliminary injunction granted by the district court and remanded for a review of whether NAM would suffer irreparable harm without the removal of the meta-tags. It is unclear whether other courts will follow the Eleventh Circuit’s ruling, but until then, website owners might want to check for and reconsider the use of trademarks owned by others in meta-tags.