feature

In recent years some web owners haveabused the system by identifying keywords, including trademarks, that haveno or only abstract relevance to their ownsite as metatags. By doing this, they canincrease the numbers of visitors to theirsite considerably on the back of a morewell known site.

Until recently the main case law onmisuse of trademarks as metatags was lim-ited to the USA. However, a judgementhas recently been given in the UK on theapplication of trademark law to metatags.It is the first indication of how the courtsare likely to view this type of activity andalso raises questions about the type ofdamages that might be available.

Roadtech Computer Systems Roadtech sued a competitor, Mandata,after discovering its Roadrunner trade-mark in the metatags of Mandata’s web-site. It claimed that Mandata was usingthe trademark to attract potential cus-tomers away from its own website.Mandata removed all Roadrunner refer-ences from its site within two months ofthem being found. However, Roadtechclaimed for the loss caused during theshort period when its trademark was inuse on its competitor’s site.

At an interim hearing to resolve a cou-ple of key issues, Mandata admittedinfringement of the trademark and thejudge granted interim judgement inRoadtech’s favour on the grounds oftrademark infringement and passing off.

Mandata was held liable to pay damagesand costs amounting to approximately£80 000 based on its use of the trademarkon its site, albeit for a short period. Thejudge also ordered Mandata to make aninterim payment in respect of the costs.

Overview of the LegalRights in the CaseTrademarks

A trademark is any sign capable of beingrepresented graphically and which hasbeen registered under the provisions ofthe Trademarks Act 1994. The owner of atrademark has an exclusive right to usethe registered mark and can take actionagainst anyone who infringes it.

Primary acts of infringement amountto using the mark as a trademark —either by using an identical mark or someconfusingly similar sign.

Secondary acts of infringement requireknowledge and are intended to capturethe printers and manufacturers who actu-ally produce the marks in question.Trademark infringement is limited to thegoods for which the mark has been regis-tered unless the mark has a reputationthat would be damaged.

It is also possible to infringe by import-ing a reference to the registered proprietorof the goods — for example in a compar-ative advertisement although fair compar-ative advertising is allowed.

If the infringement is particularlyharmful to the trademark owner anddamages would not be an adequate

remedy, it is possible to obtain an injunc-tion to prevent use of the mark.Alternatively, it is possible to obtain com-pensation for the misuse.

Passing Off

Passing off provides a remedy for the pro-tection of unregistered trademarks. Theessential elements to prove passing off arethat goodwill exists for a particular mark,that the mark has been misrepresentedand that this has caused damage.

Usually there needs to be a commonfield of activity as goodwill only extendsto similar goods and there needs to bemore than mere confusion.

Implications for future UKjudgmentsIt appears from the Roadtech case thatUK law has followed the US line on thesubject of trademarks. The judge decid-ed that it would be an infringement of a trademark if these marks were used in metatags within a website —even if the use of the trademarks is notvisible.

Passing Off

In addition, it seems that this protectionis not simply open to registered trade-marks. If a claimant can prove the ele-ments required for passing off byshowing that a mark has goodwill andthat someone has used a confusinglysimilar/identical mark for similar goodsand services, this may open the door tothose who have not registered their particular mark.

Damages

The judge in the Roadtech case assesseddamages on the basis of the ‘user princi-ple’. In essence, Mandata had used Road-tech’s successful website to gain a com-mercial advantage. Even though this useonly extended over a two month periodand no figures were available to show howmuch traffic had been diverted by thetags, it was accepted that there had beensome use of the trademark. This is the

12

Metatags — the latestdevelopmentsPaul Graham

When a website is designed, it may include a number of key words in its code whichreflect the content of the website. These are known as metatags and they enable acompany’s site to be catalogued according to such matters as the title of the webpage, the company’s name, its trademarks, history, type of business and location.Metatags are used in particular by certain search engines to match key search wordsagainst the metatags available — inevitably the validity of the search will very muchdepend on the original use of the metatags on a website.

revise.qxd 9/25/00 3:40 PM Page 10

13

feature

type of use for which the user would nor-mally have to pay a license fee. As a result the judge awarded Roadtechthe sum of £15 000 based on the poten-tial royalty that Mandata would havehad to pay to use the trademark legitimately.

It appears, therefore from the Road-tech case that a court will award dam-ages where trademarks have beenmisused in metatags, even where theclaimant does not prove any specificloss. Where it can be shown that oneparty may have obtained a benefit fromthe use of another’s trademark and thatno license fee has been paid for that use,this may be enough to establish dam-ages.

Furthermore, it seems that a claimantmay be able to recover an interim pay-ment of any damages of as much as twothirds of the estimated total damages.This may serve as a warning to new busi-nesses who may be tempted to set up onthe back of an established trademark andface the cost consequences later. A sub-stantial sum, payable within 14 days maybe enough to dampen the spirits of somewould-be infringers.

Future developments?

Most of the US cases to date have beenstraightforward trademark infringementcases. In each of these cases the infringerattempted to increase traffic to its websiteby misusing a registered trademark — asin the recent UK case — and have result-ed in success for the owner of the trade-mark each time. There are, however, somewho seek to distinguish between thebreach of a trademark and where thetrademark might be used legitimately.These have actually resulted in victory forthe tagger rather than the owner of thetrademark.

Probably one of the clearest examplesof this was the case of PlayboyEnterprises v Welles. Miss Welles was aformer ‘Playmate of the Year’ and pro-duced a site in which she described herbackground. She included the abovephrase on her own commercial websiteand used it in the hidden metatag key-words. When sued by Playboy, MissWelles claimed fair use. She argued that‘Playmate of the year’ was an accuratestatement of her work history and couldnot therefore be a misuse of her formeremployer’s trademarks — even if it

incidentally meant that potential visitorsto the Playboy website were led to hersite by mistake.

The Court in this case held that trade-mark protection is not aimed to create aproperty interest in all marks used in acommercial context. In the case ofmetatag keywords, these act like an indexfor the content of a website and, as MissWelles could describe her background onthe site, she was entitled to summarize itas a keyword metatag.

The Playboy case was based on US lawand turned on the US defence of ‘fairuse’. However, similar provisions existwithin English trademark law. It is there-fore possible that similar cases would bedecided on this basis so that use will beclassified as fair ‘tagging’ unless it is con-fusing.

Should the law develop in this way, itwould bring the worlds closer togetherof registered trademarks and thosewhich only qualify for passing offclaims. Both types of claim wouldrequire a court to consider whether themarks could genuinely be confused by aweb user.

Information security specialists need toappreciate that they are not perceived tobe gurus or priests, that they are not wor-thy of any special respect. If workersthink about them at all, specialists areseen as a hindrance to getting the workdone on time and to budget. While pro-gressive organizations appreciate thestrategic and competitive importance ofinformation security, this is still theexception rather than the norm. Becauseworkers don’t seek out advice from infor-mation security specialists, they are notgoing to look at an information securitypolicy posted on the intranet, or if theorganization is a bit more traditional,examine a policy in paper handbookform.

Awareness programmes try to sensitizepeople to the fact that there are manyinformation security issues that they needto worry about. They try to get people to

An unappreciated reasonwhy information securitypolicies fail Charles Cresson Wood

I’ve had the questionable privilege of working in this field for over two decades nowand all that while there has existed an assumption that every information securityspecialist seems to make, an assumption that needs to be re-examined, an assump-tion that needs to be radically changed. This assumption is that workers are going tocome to the information security trough when they get hungry, when they wantsome information security sustenance. So many of us information security special-ists assume that rank-and-file workers are like horses or cows, that they will comeback to the source of expertise when they need guidance. To the contrary, time andtime again modern workers show themselves to be independent and quite capable ofmaking local decisions without involving information security specialists. In manycompanies, these independent workers have for instance set up web pages or evencommerce servers without consulting or even thinking about a central informationsecurity staff person.

revise.qxd 9/25/00 3:40 PM Page 11