April 24, 2001, 9:02 AM — TRADEMARK INFRINGEMENT, thanks to the Internet, isn't always as easy to identify as it used to be. Invisible uses of a competitor's service or trademarks in the metatags of another company's Web site can form the basis of trademark infringement claims, says Michael Bevilacqua, a senior partner and co-chair of the technology transactions and licensing group with the law firm Hale and Dorr, in Boston. "Many Web site operators have assumed that by avoiding use of a trademark in the text of a Web site, they are avoiding liability for trademark infringement," Bevilacqua says. "That's not a safe assumption anymore."
Web sites add and change trademark use
Historically, trademark infringement was based on the visual use of a service mark or trademark, Bevilacqua says. If a competitor used a company's mark in a manner likely to confuse customers and divert business away from the company and to the competitor, the company would take action to protect its trademark. In most instances, the corporate attorney would send a strongly worded "cease-and-desist" letter to the competitor wrongfully using the mark. If the competitor continued to use the mark, the company would then file a lawsuit.
The "invisibility" of metatags put a new wrinkle in determining trademark infringement, Bevilacqua says. Using a trademark in a metatag (the HTML code that lays out for display a site's content) is an invisible use of the mark. "Most Internet search engines hit the metatag field when conducting searches. A Web site may therefore attract hits by placing terms within its metatags, even if such terms are not used in or relevant to the Web site content," Bevilacqua says.
"Use of trademarks in metatags is interesting because you don't see the mark. The federal district courts haven't arrived at the same conclusion on this issue," Bevilacqua says.
Trademark infringement finding in the Prozac metatag case
Pharmaceutical developer Eli Lilly & Company manufactures and markets the drug Prozac and also owns the trademark in the United States. Naples, Fla.-based Natural Answers marketed "Herbrozac," a mood-enhancing herbal supplement, through the Internet.
"In addition to its use of 'Herbrozac' as a brand name, Natural Answers also used the term Prozac in its Web site metatags, although the word did not appear on the [Natural Answers] Web site," Bevilacqua says. Nevertheless, Eli Lilly frowned on the use of the mention of Prozac in Natural Answers' Web site metatags. The pharmaceutical company filed a lawsuit in 1999 in the Seventh Circuit federal district court against Natural Answers for trademark infringement, trademark dilution, and violations of state unfair competition laws.
Although Natural Answers was not successful in setting itself apart from the hundreds of sites a Prozac Web search brings, the appeals court still found in favor of Eli Lilly on the metatag question (No. 00-1375, 7th. Cir. 11/21/2000). Using Prozac in metatags on Natural Answers' Web site, said the appeals court, is like Natural Answers putting up a sign in front of its store with another company's trademark on it.
Trademark basics apply on the Internet
Trademarks, experts say, protect the public interest. Through branding and the use of recognizable trademarks, consumers are able to accurately identify the source of goods and services.
Trademarks also protect a company's name and goodwill, whether in traditional markets or on the Internet."The rules for trademark infringement in Web sites are really no different from other media. Whether it's print or electronic, you can't use other companies' trademarks," Bevilacqua says.
Confusion is important factor in infringement
