Other problems - I NFRINGEMENTS OF TRADE MARKS ON THE I NTERNET

B. I NFRINGEMENTS OF TRADE MARKS ON THE I NTERNET

2. Other problems

Trade marks can be expressed on the Internet in various ways. Technologies such as spyware, adware, and metatags have been used for Internet experience of users. These programs are also channels for displaying trade marks and can create conflicts with

Dist.,2002.; Darrell J. BIRD v. Marshall PARSONS, Stephen Vincent, George DeCarlo, Dotster, Inc., and Afternic.com, Inc., United States Court of Appeals, Sixth Circuit. (Ohio).

169 It is perceived as a legitimate business. Numerous court decisions have approved the reselling of a domain name as a commercial activity. See General Machine Products Company, Inc. v. Prime Domain (a/k/a Telepathy, Inc.)NAF FA92531; Allocation Network GmbH v. Steve Gregory, WIPO D2000-0016;

John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO D2000-1403.

170 Domain Name Registration Related News' (2003), Active domain.com <http://www.active-domain.com/news/2003feb-3.htm> (8/12/2008).

171 ICANN’s IDN wiki < http://idn.icann.org/>(13/9/2010).

owners of trade marks in the brick and mortar world. These problems are referred to as web abuse of trade marks.¹⁷²

a. Metatag problem

Typing the right domain name address can be difficult since the memories of users are generally fallible. Users tend to randomly match trade marks with TLD for domain names and the match is not always right. Internet users, therefore, use a search engine to help find the exact location of domain names. However, there is no guarantee that the websites provided by a search engines will definitely associate with the entry terms; this is because the metatags used by search engines can be created without any rules or restrictions. Trade marks, trade names, or service marksare used as metatags to attract hits by users, normally without any authorization from the mark owners. The use of trade marks or other recognisable terms, as metatags, may be for: (1) the financial gain attributable to advertising revenues that are earned through the counting of the number of users accessing the website; and (2) a business motive to rank the website at the top of result pages, which then make the site more easily accessible to users.

Metatags infringe trade mark rights if they are used without an authorisation from the mark’s owner.¹⁷³ It constitutes unfair competition as a “free riding” of the third party on the reputation of the mark. This can also create the potential for consumer confusion as to whether the words used as entry terms and the websites shown on result pages share the same owner. Gradually, invisible metatags have become one of the most difficult issues concerning the violation of trade mark rights on the Internet.¹⁷⁴

Disputes involving metatags are normally filed in conjunction with other trade mark-domain name claims. The most common claim is that the defendant is using a competitor’s trade mark in both a domain name and a metatags with the hope of distracting Internet users to the defendant’s websites. One of the first metatag cases in the US was Playboy v. Calvin.¹⁷⁵ In that case the defendant registered the domain names playboyxxx.com and playmatelive.com using the plaintiff’s registered trade marks in the

172 Lisa E. Cristal, 'Web Abuse', Trade Mark Law & the Internet (International Trademark Association, New York 2001).

173 The US Code Title 15, Chapter 22, Subchapter III, Section 1114 (1).

174 U-Haul Int’l, Inc. v. WhenU.com, Inc.Easthern District of Verginia; Wells Fargo & Co v.

WhenU.com, 293 F. Supp. 2d 734 (E.D. Mich. Nov. 19, 2003); 1-800 Contacts, Inc. v. WhenU.com, West Law, Southern District of New York.

175 Playboy Enterprise, Inc. v. Calvin Designer Label Federal SupplementsUnited States District Court, Northern District of California

invisible background of websites and as metatags. The court found that the plaintiff had provided sufficient evidence that:

a) Using in any manner the PLAYMATE or PLAYBOY trade marks, and any other term or terms likely to cause confusion…; b) using in any manner the PLAYMATE or PLAYBOY trade marks in connection with the Defendants' goods or services… is likely to create the erroneous belief that said goods or services are authorized by, sponsored by, licensed by or are in some way associated with [the plaintiff]; c) disseminating, using or distributing any Web site pages, advertising or Internet code words or titles, or any other promotional materials whose appearance so resembles the Web site pages or trade marks used by [the plaintiff], so as to create a likelihood of confusion, mistake or deception; d) otherwise engaging in any other acts or conduct which would cause consumers to erroneously believe that Defendants' goods or services are somehow sponsored by, authorized by, licensed by, or in any other way associated with [the plaintiff].¹⁷⁶

For the above reasons, the court found for the plaintiff on the claims of trade mark infringement, unfair competition, and dilution, and therefore granted a preliminary injunction against the defendant.

The use of metatags can also infringe trade marks when applying the doctrine of initial interest confusion, in the case where Internet users are being diverted to another website. In the infamous case of Brookfield Communications,¹⁷⁷ the court granted an injunction in favour of the plaintiff because the use of the plaintiff’s “moviebuff” trade mark as a domain name and metatag gave the defendant improper benefits flowing from the plaintiff’s goodwill. Such use of metatags also created initial interest confusion because Internet users were unintentionally diverted, via a search engine, to the defendant’s websites. However, there was no confusion as to the source of websites since users could distinguish the patron of websites. The court also provided an interesting analogy to the use of metatags:

Using another's trade mark in one's metatags is much like posting a sign with another's trade mark in front of one's store. Suppose West Coast's competitor [Blockbuster Video] puts up a billboard on a highway reading -- "West Coast

176 ibid, 1219

177 Brookfield Communications Inc., v. West Coast Entertainment Corp.

Video: 2 miles ahead at Exit 7" -- where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast.

Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill.¹⁷⁸

On the contrary, there have also been court decisions holding that the use of metatags does not constitute trade mark infringement. In Playboy v. Terri Welles,¹⁷⁹ the defendant used the plaintiff’s trade marks on her website and also as metatags. Nevertheless, the court held that the use of the metatags were for the provision of precise information about the website. The defendant, who was once a playmate-of-the-year, had used the plaintiff’s trade mark in good faith and only to index the content of her website. It was not an infringement because it referred to her identity and it was a legitimate editorial use. This decision has been followed many times in the US in instances where the use of metatags was only for reference and there were insufficient evidence to establish the bad faith use of trade marks.¹⁸⁰

Furthermore, the use of trade marks as metatags can constitute an act ofpassing off because the invisibility of metatags may lead to the misrepresentation of a trade mark.

Also, the intent to attract hits by search engine can be trade mark infringement, according to the decision of Judge Pumfrey in Reed Executive v. Reed Business.¹⁸¹ In that case, the claimant owned the registered trade mark “Reed” for an employment agency service. The defendant used the word “Reed” in relation to a similar business –

178 Ibid, 1064.

179 Playboy v. Terri Welles, United States Southern District of California.

180 See Trans Union LLC v. Credit Research, Inc. Federal Reporter second series, United States Northern District of Illinois; National Baseball Hall of Fame & Museum, Inc. v. All Sports Promotions Group, Inc., USPQ 2dS.D.N.Y.; and Ty, Inc. v. Jones Group, Inc., F Supp 2dUnited States Northern District of Illinois.

181 Llewelyn Kitchin, Mellor Et. Al., Kerly’s Law of Trade Marks and Trade Names (14 edn, Sweet &

Maxwell, London 2005) 737; See also Reed Executive Plc v Reed Business Information Ltd (No.2) [2005]

FSR 3The Court of Appeal.

as a part of the name, logo, and in the website source code as a metatag to attract more visitors.¹⁸² Judge Pumfrey for the High Court held that “the use of a mark in the course of a trade was a concept of infringement which was wide enough to cover even an

’invisible’ use of a registered trade mark as a metatag, since that invisible use becomes visible once it is translated into a search result which appears on a user’s browser.”¹⁸³

b. Keywords

Besides metatags, keywords for search engine have become another new challenge for trade mark owners. Keywords generally work similar to metatags. A website owner can buy a group of keywords from search engine providers such as Yahoo or Google. Every time one or more of the purchased search terms are typed by an Internet user into the search engine the website of the purchased search term will be displayed alongside the search result as a sponsored link. This will cause some users click on the sponsored links rather than visiting the website that they had originally intended to visit. The keywords sold by Google are called the Adword program. The Adword program was held to be trade mark infringement by a French court in 2005 because the sale of search terms, which included trade mark “Louis Vitton”, was without authorisation of the trade mark owners.¹⁸⁴ However, Google appealed and the case is now awaiting the decision of the European Court of Justice (ECJ). In contrast, Google won two adword cases in the US and one case in the UK. Generally, the courts’ reasoning was that the use was not the use of a trade mark in the sense of trade mark infringement.¹⁸⁵

c. Linking problem

Links are parts of website content and are sometimes called hyper-links. HTML codes are written to link websites together. Normally, linked texts are in underline formats or of a different colour than the rest of the text in a website’s content. These links transport

182 Notes, '[2003] E.T.M.R. CN7' 437.

183 Ibid, at 438. However, there was a recent decision in the Court of Appeal that neither a banner nor a metatag in this case could constitute a trade mark infringement. For the first reason, a banner in this case does not contain any sign or logo of Reed Executive, and for the second reason, the metatag as an invisible use, cannot function as a trade mark or create any confusion to the consumer regarding the origin of the metatag.

184Matt Chapman, 'Louis Vuitton wins Google Adwords ruling ' (2006) Vnunet.com

<http://www.vnunet.com/vnunet/news/2159368/louis-vuitton-wins-google > (8/12/2008).

185 Outlaw.Com, 'Judge clarifies Google AdWords ruling in the US 'Likelihood of confusion'' (2005)

<http://www.theregister.co.uk/2005/08/15/google_loses_adwords_trademark_case/> (8/12/2008);

Google Inc. v. American Blind & Wallpaper Factory, Inc. Case No C03-05340-F (ND Cal); and

Outlaw.Com, 'Interflora sues M&S over Google keywords' (2008) <http://www.out-law.com/page-9638 >

(8/12/2008).

users to the same or other homepages in one click. It is customary on the Internet that the destination websites do not normally officially approve of the link, since it facilitates the free transmission of information.¹⁸⁶ Problems relating to hyper-links mostly result from a deep link, which is able to transfer users to a particular page of the destination website without accessing its first page. As a consequence, users may lose their interest in the first website if a new website is more attractive. This is also one of the problems for trade mark owners because they may lose prospective customers after the customers are transferred to other websites and never return.

There is some discussion of limiting the numbers of links in each website in order to minimise this problem;¹⁸⁷ however, since endless linking is a feature of the Internet, there is still no standard that controls the quality and quantity of links. There have been some cases concerning linking and trade mark infringement. In Jeri-Jo Knitwear v.

Club Italia,¹⁸⁸ the defendant was an Italian company that had the concurrent trade mark

“energie” with the plaintiff, a US based company. They both ran businesses involving clothes. The defendant operated three websites, two of which were in the US. The US websites did not show clothing collections but contained links to an Italian website which held the apparel collection. The defendant’s trade mark was advertised in search engines in the US. The plaintiff, therefore, requested a preliminary injunction prohibiting the defendant from making links to its Italian website and from the websites being provided by search engines. The former request was successful but the latter was rejected. The judge rendered his supported opinion as follows:

Defendants . . . do have world-wide rights in the mark outside the United States. Accordingly, while I direct the defendants to immediately de-link its [Italian] site from its [US] sites, I do not conclude defendants should be required to delist its [Italian] site from various search engines because I do not believe an adequate evidentiary foundation has been laid to require such broad relief where even plaintiff concedes 100% perfection is not possible, and, I repeat, defendants may legitimately advertise their mark over much of the rest of the globe, and there is no showing of damage to plaintiff from the failure to act with more dispatch. Plaintiffs did observe at oral argument that perfection is not possible, the Internet being what it is.¹⁸⁹

There was also a deep-link case at Ticketmaster.com.¹⁹⁰ Here, Ticketmaster was the plaintiff complaining against Microsoft’s Seattle Sidewalk website which had made

186 Making links without permission was found to be fair use under the Lanham Act.

187 Cristal, 'Web Abuse' 332.

188 Jeri-Jo Knitwear v. Club Italia, F Supp 2dUnited States Southern District of New York

189 Ibid, at 459.

190 Ticketmaster v. Microsoft, United States District Court for the Central District of California, Civil Action.

deep links into its website without authorisation and had misappropriated its trade mark.

The defendant had a website which provided information about the city of Seattle, including a page serving for theatrical bookings. In this page it had a deep link to a ticket booking page on the Ticketmaster website, which did not require users to access the first page and read the conditions before purchasing tickets. The fact that Ticketmaster gained certain advantages from users entering its website, page by page, to observe and build interest in other events was also affected by the deep-links from the Microsoft website. It may also have violated Ticketmaster’s trade mark by presenting the trade mark and offering services on the Microsoft website, thus creating a false designation as to the origin of the mark. Nevertheless, the case was settled in 1999 by the confidential agreement of the parties. As a consequence, there is no definitive precedent for deciding this kind of dispute.

d. Pop-up and pop-under advertisement problems

Pop-up advertisements can coordinate with adware, which inhibits a user’s computer and delivers pop-up advertisements associated with websites that the user visits.

Problems regarding trade mark rights are present across the Internet because of this pop-up technology. Firstly, showing a trade mark without permission in a pop-pop-up advertisement is a use of trade marks in commerce without due course. Secondly, to show pop-up advertisements containing trade marks on websites can create confusion as to whether the mark has the same origin as the website. Thirdly, the most harmful feature of a pop-up is that it distracts Internet users from one site to another, which may constitute unfair competition. Business competitors use this third feature with trade marks to create comparative advertisements on a website which has competing goods or services.

Although there are many pop-up blockers offered free of charge, previous disputes demonstrate that pop-up advertisements are a danger to trade marks on the Internet, and to online commerce. WhenU.com¹⁹¹ was a company with services that distributed pop-up advertisements with associations to the websites that users were visiting.

WhenU.com was sued by three different companies at different times for inter alia, trade mark infringement. It was found that WhenU.com’s related advertisement distracted Internet users from the plaintiffs’ websites. However, in the case of Wells

191 1-800 Contacts, Inc. v. WhenU.com U-Haul Int’l, Inc. v. WhenU.com, Inc.; Wells Fargo & Co v.

WhenU.com Federal Supplement, Eastern District of Michigan; and U-Haul Int’l, Inc. v. WhenU.com, Inc.

Fargo,¹⁹² the court found that the plaintiff’s offered evidence was not sufficient to support a finding that WhenU.com used the trade marks in commerce to create confusion. Similarly, the Court of Appeal, in the 1-800 Contacts case,¹⁹³ dismissed the complaint for similar reasons.

IV Current solutions to Internet trade mark problems

As stated above, the problems associated with trade mark use on the Internet have correspondingly increased as technology has advanced. The problems first presented in the US because it was the origin of the Internet; and the first among them were domain name-trade mark disputes. The use of trade marks as metatags came second but was closely followed by other problems, such as links and adware. When these problems first became troublesome, trade mark owners frequently looked for remedies under US law and the trade mark infringement provisions of the Lanham act¹⁹⁴ to resolve them.

After President Clinton began promoting international participation in the Internet in 1997,¹⁹⁵ the Internet became widely used throughout the world; however, the problems with its missuse have also spread throughout the world. The Internet Corporation of Assigned Names and Numbers (ICANN) asked the World Intellectual Property Organization (WIPO) to develop recommendations on, inter alia, a uniform approach to solving trade mark-domain name disputes regarding cyber piracy. As a consequence, the first international provision on trade mark disputes on the Internet was released as the Uniform Dispute Resolution Policy (UDRP). The UDRP has a major role in solving trans-border trade mark disputes on the Internet.

This part of the chapter will introduce some information about national provisions for trade mark protection in the UK and US, and international provisions for the protection, namely the UDRP, the Paris Union and WIPO Joint Recommendation Concerning Provisions on the Protection of Well-known Marks 1999, the Paris Union and WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs on the Internet 2001, the Paris Convention, and the

In document The uniform dispute resolution policy: a comparative study of nominet, .EU, ADR, US and UK legal system to find a proposal for an admendment (Page 89-97)