7th Circuit Rules on Use of Trademarks in HTML Metatags

August 13, 2002. 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.