| 7th Circuit Rules on Use of
Trademarks in HTML Metatags |
8/13. The U.S.
Court of Appeals (7thCir) issued its opinion
[PDF] in Promatek
v. Equitrak, a trademark case involving HTML
metatags. The Appeals Court affirmed a District Court
injunction.
Parties. Both Promatek
and Equitrac sell cost
recovery equipment. That is, they sell systems that enable law
firms, accounting firms, and others to automatically capture
expenses related to a client, such as photocopies, faxes,
phone calls, and couriers, and integrate them into the firm's
billing system.
Promatek holds the trademark for "Copitrak".
Promatek products are sold under the Copitrak name. Equitrac
maintains a web site that employs the use of meta tags in its
HTML source code. Equitrac listed the term "Copritrack"
in a meta tag.
Meta Tags. Many web pages contain <meta>
tags in the <head> section of the html source
code. There are a variety of uses of <meta>
tags. For example, a hypothetical web page with a news story
about this case might include the following in its html source
code: <meta name="keywords"
content="trademark, infringement, piracy, keyword,
deception, Seventh Circuit, metatag, injunction">.
In addition to "keyword" metatags, there are
"description" metatags, which serve a similar
purpose.
This information is not visible on a page viewed with a
browser in its normal mode. Most people who surf the web never
see this information. However, some search engines use
programs that "visit" web sites and read this
information to index web pages for their databases. Then, if a
person using one of these search engines enters one of the
keywords used in a metatag, he might obtain a list of web
pages that includes the web page that use that keyword.
One reason for using keyword and description metatags is to
assist web users in locating a web page. Another reason is to
maximize traffic to a web site. In order to pursue this
purpose, some web site operators use deception, such as
keywords which have nothing to do with their web pages. (Note:
Tech Law Journal wrote an article titled "Keyword
Deception Is Common In Political Web Sites" on
September 3, 1999.)
District Court. Promatek filed a complaint in U.S.
District Court (NDIll) against Equitrac alleging violation of
the Lanham Act, and seeking injunctive relief. The District
Court granted Promatek's motion for preliminary injunction.
The order also required Equitrac to publish the following
language in its web site: "If you were directed to this
site through the term ``Copitrack,´´ that is in error as
there is no affiliation between Equitrac and that term. The
mark ``Copitrak´´ is a registered trademark of Promatek
Industries, Ltd., which can be found at www.promatek.com or
www.copitrak.com."
Appeals Court. The Court of Appeals affirmed. The Court
followed the standard three part analysis for issuance of
injunctive relief: likelihood of success on the merits, no
adequate remedy at law, and irreparable harm if the relief is
not granted.
The Court reasoned that there was a likelihood of success on
the merits. The claim was for violation of 15
U.S.C. § 1125(a), which requires ownership of a valid
mark, and that use of the term is likely to cause confusion
among consumers. Hence, the analysis then focused on whether
the metatag usage would likely cause confusion. The Court
concluded that it would.
Promotek did not present evidence of actual consumer
confusion. However, the Court found other factors to be
sufficient. The term used was very similar to the trademark. (Equitrac
accidentally misspelled it.) Also, the two companies are
direct competitors.
The Court continued that "the fact remains that there is
a strong likelihood of consumer confusion as a result of its
use of the Copitrack metatag. The degree of care exercised by
consumers could lead to initial interest confusion. Initial
interest confusion, which is actionable under the Lanham Act,
occurs when a customer is lured to a product by the similarity
of the mark, even if the customer realizes the true source of
the goods before the sale is consummated."
The Court relied on the 1999 opinion
of the U.S. Court of
Appeals (9thCir) in Brookfield Communications v. West
Coast Entertainment (174 F.3d 1036). It wrote that "The
Ninth Circuit has dealt with initial interest confusion for
websites and metatags and held that placing a competitor’s
trademark in a metatag creates a likelihood of confusion. In Brookfield
Communications, the court found that although consumers
are not confused when they reach a competitor’s website,
there is nevertheless initial interest confusion. ... This is
true in this case, because by Equitrac’s placing the term
Copitrack in its metatag, consumers are diverted to its
website and Equitrac reaps the goodwill Promatek developed in
the Copitrak mark. ... That consumers who are misled to
Equitrac’s website are only briefly confused is of little or
no consequence." (Citations omitted.)
The Court added that "What is important is not the
duration of the confusion, it is the misappropriation of
Promatek’s goodwill. Equitrac cannot unring the bell. As the
court in Brookfield explained, "[u]sing
another’s trademark in one’s metatags is much like posting
a sign with another’s trademark in front of one’s
store." ... Customers believing they are entering the
first store rather than the second are still likely to mill
around before they leave. The same theory is true for
websites. Consumers who are directed to Equitrac's webpage are
likely to learn more about Equitrac and its products before
beginning a new search for Promatek and Copitrak."
(Citation omitted.)
The Court addressed briefly the other requirements for
issuance of a preliminary injunction.
Equitrac's web site continues to use meta tags, but does not
list "copitrak". Its home page contains the
disclaimer required by the District Court order. |
|
|
|
| Charles James Discusses
Antitrust Activities |
8/13. Charles
James gave a speech
titled "Rediscovering Coordinated Effects" to a bar
group in Washington DC. He reviewed the activities of the Antitrust Division in the
last year. He then concluded with a discussion of coordinated
effects analysis. James is an Assistant Attorney General in
charge of the Department of Justice's Antitrust Division.
James stated that the number of Hart Scott Rodino transactions
is way down, and that "The telecommunications and
technology sectors have been particularly slow".
He also referenced several technology related matters. For
example, he said that "since June 2001, the Division has
successfully challenged 18 of the 19 transactions it had
deemed anticompetitive. The Division was unsuccessful in
seeking to block the Sungard/ Comdisco merger, a transaction
the Division asserted was likely substantially to lessen
competition in the market for shared hotsite disaster recovery
services."
He also said that "this past April, we announced a
proposed settlement of a gun jumping complaint against
Computer Associates and Platinum Technology, alleging
violations of both Section 7A of the Clayton Act and the
Sherman Act."
He also briefly touched on the Microsoft case. He said that
"the big news this past year in the non-merger area has
been our settlement of the Microsoft case. The settlement,
together with hearings on separate remedial proposals being
advanced by a group of dissident states, is under review by
the Court."
He next addressed some of the Antitrust Division's ongoing
work. He stated that "we have launched a number of
important joint venture investigations involving, among other
things, on-line media, financial services and electronic air
passenger ticketing. Joint ventures are a high priority for
the Division, in part because we believe that many firms are
turning to joint ventures as an alternative to full-out
mergers, and in part because joint ventures are an important
way in which competitors interact with each other in emerging
markets."
DOJ FTC Merger Review Agreement. James also discussed
his attempt to agree with the Federal
Trade Commission (FTC) Chairman Timothy Muris to divide
responsibility for merger reviews. The two issued a Memorandum of
Agreement in January 2002 concerning clearance procedures
for merger reviews and other antitrust matters. The agreement
attempted to define, by industry, which transactions would be
reviewed by which agency. The agreement was dropped following
opposition from, and threats of appropriations cuts by, Sen. Ernest Hollings
(D-SC). See, story titled "DOJ & FTC Abandon Merger
Review Agreement Under Threat from Sen. Hollings" in TLJ
Daily E-Mail Alert No. 436, May 22, 2002.
James stated that "Our landmark but ill fated clearance
agreement with the FTC also was part of our process of
procedural reform in the merger area. By reducing the time
spent in clearance disputes, more time could be spent on
actual investigations during the first HSR waiting period.
During its brief life, the agreement had reduced clearance to
a one day process, and for the first time in decades
eliminated all pending clearance disputes. The agreement
itself did not change or alter substantive antitrust
enforcement, nor did it transfer industry responsibility from
one agency to the other. It merely institutionalized in
advance the results that should have been dictated by the
pre-existing, experience based system."
He concluded that "Much to our disappointment, the
agreement had to be voided in May of this year due to the
threat of budgetary reprisals against the agencies. Chairman
Muris and I, however, remain committed to improving the
efficiency and effectiveness of the clearance process.
Nevertheless, despite our best efforts, in recent weeks, the
average time for clearing matters to the agencies has risen to
five days."
Coordinated Effects Analysis. James concluded with a
general discussion of coordinated effects and unilateral
effects. He said that "we will renew the focus on
coordinated effects analysis". He also stated that
"unilateral effects should not be the theory of choice
simply by default. If we reach too quickly for unilateral
effects theories to the exclusion of meaningful coordinated
effects analysis, we might miss important cases that should be
brought or craft our relief too narrowly in cases that we
actually pursue."
He stated that there is a team of lawyers and economists at
the Antitrust Division studying coordinated effects. He also
stated that "Revisiting the various factors that
potentially might affect coordination, and providing
additional insight into how such factors might interact with
each other, will assist our staffs in identifying solid
coordinated effects cases and allow us to more readily develop
the evidence we need to prove them in court."
He also rhetorically asked, but did not answer, several
questions. He stated: "The age old questions of merger
policy still persist. When exactly do market conditions become
ripe for coordination and why does this particular merger
matter in creating such conditions? Is it enough to
demonstrate that the merger will eliminate important
constraints upon coordination, or must the government go much
further to present a much more detailed story as to how some
specific form of post-merger coordination is more likely to
occur? What must the government prove and to what level of
certainty?"
See also, speech
on coordinated effects on April 24, 2002, by Deputy Assistant
Attorney General William Kolasky. |
|
|
| DOJ Official Addresses
International Competition Network |
8/12. William Kolasky gave a speech
titled "Can the International Competition Network Help
Tame the Growing Multinational Merger Thicket?"
The International
Competition Network (ICN) was formed last October by the
Department of Justice's Antitrust
Division and Federal Trade
Commission (FTC) and thirteen other competition agencies
from other jurisdictions. It now includes 63 jurisdictions.
Kolasky said that the ICN exists to "provide support for
new competition agencies both in enforcing their laws and in
building a strong competition culture in their
countries", and "to promote greater convergence
among these authorities around sound competition principles by
working together, and with stakeholders in the private sector,
to develop best practice recommendations for antitrust
enforcement and competition advocacy that could then be
implemented voluntarily by the member agencies."
Kolasky is the Deputy Assistant Attorney General in charge of
international antitrust and policy enforcement for the
Department of Justice's Antitrust
Division. He was previously a partner in the Washington DC
office of the law firm of Wilmer
Cutler & Pickering. He was appointed to the DOJ in
October 2001. See, DOJ
release. |
|
|
|
| Bush Addresses Broadband
Deployment |
| 8/13. President Bush spoke about broadband deployment at an
event in Waco, Texas. He stated that "In order to make
sure the economy grows, we must bring the promise of broadband
technology to millions of Americans. My administration is
promoting investment in broadband. We will continue to work to
prevent new access taxes on broadband technology. If you want
something to be used more, you don't tax it. And broadband
technology is going to be incredibly important for us to stay
on the cutting edge of innovation here in America. The Federal
Communications Commission is focusing on policies to encourage
high speed Internet service for every home and every business
in America. The private sector will deploy broadband. But
government at all levels should remove hurdles that slow the
pace of deployment." See, transcript. |
|
|
| Bush Addresses Trade Policy |
8/13. President Bush spoke about trade policy at an event in
Waco, Texas. He stated that "In order to make sure that
we continue to grow our economy, we need to be aggressive when
it comes to trade policy. Zoellick
mentioned to me, he said they're all looking to me. They may
be looking to me, Zoellick, I'm looking to you. You're the
Trade Representative, you've now got the tools, go out there
and start negotiating free trade agreements around the
world." See, transcript.
Bush also addressed the trade promotion authority (also known
as fast track) bill which he signed earlier this month.
"We're back at the bargaining table as a result of
getting the Trade Promotion Authority vote out of the United
States Congress. It is essential that we move aggressively,
because trade means jobs. More trade means higher incomes for
American workers. Listen, a confident nation is one which
opens up markets. A nation which isn't confident is one that
closes its markets, and puts walls around."
Bush concluded that "I'm confident. I'm confident in the
American entrepreneurs, I'm confident in our high tech
industry, I'm confident in our farmers and ranchers. I'm
confident that when we compete, we're the best in the world,
and therefore I want to trade. I want to open up those
markets. I want to level those playing fields. Open trade is
good for American workers and American families." |
|
|
| Wednesday, August 14 |
1:00 - 5:00 PM. The Department of Commerce's (DOC) National Telecommunications
and Information Administration (NTIA) will host a
roundtable meeting regarding the convergence of communications
technologies, including the Telephone Number Mapping (ENUM)
Protocol that facilitates convergence between the Internet and
the public switched telephone network. See, NTIA
release, agenda,
and notice
in the Federal Register. For more information, contact Wendy
Lader, NTIA Office of Policy Analysis and Development, at 202
482-1150 or wlader@ntia.doc.gov.
Location: Room 4830, DOC, 1401 Constitution Ave., NW.
3:00 PM. William Lerach of the law firm of Milberg Weiss will hold a
press conference regarding CEO and CFO certifications of SEC
filings. Lerach focuses on securities class action lawsuits
against technology companies. For more information, contact
Cara Zarcone at 202 822-5200. Location: First Amendment Room,
National Press Club, 529 14th St. NW, 13th Floor. |
|
|
| GAO Reports on Internet
Cigarette Sales |
8/13. The General Accounting
Office (GAO) released a report [60
pages in PDF] titled "Internet Cigarette Sales: Giving
ATF Investigative Authority May Improve Reporting and
Enforcement".
The report identified 147 web site addresses for Internet
cigarette vendors based in the United States. It also
concluded that most do not comply with the Jenkins Act, 15
U.S.C. §§ 375-378, which requires that any person who sells
and ships cigarettes across a state line to a buyer, other
than a licensed distributor, to report the sale to the buyer's
state tobacco tax administrator.
This GAO report recommends that "To improve the federal
government's efforts in enforcing the Jenkins Act and
promoting compliance with the act by Internet cigarette
vendors, which may lead to increased state tax revenues from
cigarette sales, the Congress should consider providing ATF
with primary jurisdiction to investigate violations of the
Jenkins Act".
The report was prepared for Rep. John Conyers
(D-MI) and Rep. Marty
Meehan (D-MA). Rep. Meehan has also sponsored legislation
to regulate Internet tobacco sales. See, TLJ story titled
"Rep.
Meehan Introduces Bill to Ban Internet Sales of Tobacco to
Minors", September 27, 1999. |
|
|
| More News |
| 8/13. The U.S. Patent and
Trademark Office (USPTO) announced that it will
discontinue paper publication of the Official Gazette of
the United States Patent and Trademark Office - Patents
after the September 24, 2002 issue. See, USPTO
release. |
|
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