Metatags are (usually hidden) tags or labels in binary language that describe or relate to some aspect of the contents of a website. Such metatags are decided upon by the owner/operator of the relevant website or web-pages. When an internet user uses a search engine to look up information on any particular product, service, subject or event, the metatag information contained or embedded in the website allows the search engine to identify and index web pages which match or relate to the kind of information sought.
In contrast keywords are used in web advertising. Companies or individuals select a wide list of keywords or phrases often including registered trade marks (which may or may not relate to their business) and pay SEPs for advertisement links to appear every time an internet user searches under any identical or similar keyword. These advertisements are known as “banner” advertisements. The keywords selected are not apparent to the internet user.
Both metatags and keywords have the same general purpose which is to attract the attention of internet users to a certain site by ensuring that any search on a relevant topic will generate results which contain direct or advertisement links to that site.
It is necessary to distinguish and contrast between the activities of business or individual competitors on the one hand, and the role of SEPs on the other.
Third party competitors are generally responsible for (a) purchasing banner advertising from SEPs in which the registered trade marks have been selected as keywords and/or (b) operating/publishing web pages in which metatags comprising or consisting of registered trade marks have been embedded.
In contrast, SEPs have no involvement or control over the use of metatags in websites. SEPs are however responsible for offering and selling banner advertising facilities (which includes allowing the selection of offending keywords). They may or may not be responsible for actual selection of trade marks as offending keywords.
In respect of use of the Registered Marks by competitors in visible website content, the normal principles of trade mark law will apply and present case-law is applicable. Insofar as the use in question falls foul of Section 10 of the Trade Marks Act 1994 (Art 5 of Council Directive 89/104, December 21, 1988), infringement will follow, unless a Section 11/Art 6 or some other overriding defence (such as consent or acquiescence) can be established.
The position in relation to invisible or hidden metatags and keywords however is however undecided. In Reed Executive PLC v Reed Business Information Limited  RPC 40 (a case involving (inter alia) the question of infringement of trade mark through use of such hidden keywords or metatags by a competitor (as opposed to SEP)) the Court of Appeal questioned (obiter) whether such use could amount to relevant “use” as a matter of law and thus infringe at all (see full discussion in Reed, paragraphs 137 to 150).
It should be noted that there is no EU or UK jurisprudence on the infringement of trade marks in the present context. Any litigation commenced by you will thus to some extent be “testing the water”.
Direct Infringement: As stated above, it appears that SEPs are not responsible for selection and use of trade marks as metatags or keywords. Such selection appears to be down to the individual competitor creating a website or applying for a banner advertisement account. In my view, it is questionable whether SEPs can be said to be using registered marks in any realistic trade mark sense. The function of trade mark is to guarantee origin/indicate source – it is difficult to see how invisible hidden keywords or metatags (which never come to attention of public and are dealt with automatically by computer search systems) can be said to be use which interferes with this function.
Notwithstanding the above, insofar as any direct infringement case is to be launched against Google or Overture-Yahoo (or indeed any other SEP), the best possible case in such circumstances must be based upon Section 10(1)/Art 5(a). Infringement under these provisions require only: (1) use of a sign which is identical to the registered trade mark; (2) in relation to goods or services which are identical to those goods or services for which the mark is registered. In a sense infringement under Section 10(1)/Art 5(a) is “strict liability” infringement; it requires no assessment of likelihood of confusion or other qualitative assessment.
As it was put in Reed: “The web-using member of the public knows that all sorts of banners appear when he or she does a search and they are or may be triggered by something in the search. He or she also knows that searches produce fuzzy results – results with much rubbish thrown in”. The view of Lord Justice Jacob was that the idea that a search under the (trade marked) name REED (which had been selected as a keyword by the Defendant and which turned up results for the Defendant’s “total-jobs” banner advertisement) would make anyone think there was a trade connection between the defendant and the claimant in that case was “fanciful”.
Whether or not a section 10(1) or 10(2) case is pursued, the following questions arise:
- whether the role of SEPs using invisible trade mark keywords in computerised search functions and/or displaying the results can amount to “use” for the purposes of trade mark infringement, and if so
- whether using such keywords to identify and provide links to third party (as opposed to the SEP’s own) goods and/or services for economic gain amounts to relevant use “in relation to goods or services” for the purposes of infringement.
This matter seems to me to raise important issues of trade mark law which are likely ultimately to involve a reference to the European court. Particularly as it appears that a French court (which, like the UK courts, is bound to apply and interpret its trade mark law consistently with the EU Directive 89/104 and EU case law) has decided that the sale by Google France of banner advertisement space utilising trade mark keywords amounted to direct infringement on its own account (see Case law.)
These factors should be borne in mind by any rights holder in deciding who and when to sue. Clearly the best positive case must be selected. In my view direct liability of SEPs is arguable, although the outcome is not possible to predict at this stage.
Joint Tortfeasorship: A more straight-forward case for liability (in law) may be by way of joint tortfeasorship with a competitor that is responsible for infringing use of the Registered Marks. Liability by way of joint tortfeasorship is discussed fully by the Court of Appeal in MCA Records Inc v Charly Records Limited & Ors  EMLR 1;  FSR 26. Joint liability is dependent upon proof that the SEP in question has personally procured (by inducement, incitement or persuasion) the acts of infringement, or that the acts have occurred pursuant to a common design or purpose. A distinction must be made between being actively involved in the tort and merely facilitating it.
There is some scope for saying that procurement has taken place or a common design exists where SEPs actively sell and exploit trade marked keywords which are likely to increase hits or interest in competitor websites for which both parties receive financial gain: SEPs in the form of banner ad subscriptions and payments which become due per hit (i.e. cost per click), and competitors in the form of (at least) potential or actual sales.
- The case for direct trade mark infringement liability of SEPs is difficult but arguable. The client must be prepared that any litigation is likely to raise points of law which may lead to a possible reference to ECJ. Advantages: If successful, this will allow you to protect the Registered Marks overall and limit the necessity for pursuing each competitor on a case by case basis. It will be an extremely useful from a PR perspective and a number of other companies will watch this case with a keen eye. Disadvantages: Likely to be costly and lengthy; involves uncertainty as to ultimate result. Given the importance of search functions to internet use as a whole, any decision of the courts on whether to hold SEPs liable for trade mark infringement may involve an element of policy. It will have a profound effect on the market.
- The case for liability of the SEP by way of joint tortfeasorship is likely to be more straight-forward in law. Such a case must be coupled with a primary liability case against a selected third party competitor. It will be necessary to select a competitor that represents the best case on infringement under section 10/Art 5. Advantages: likely to result in quicker resolution. Disadvantages: As the case will turn on its own individual facts (in particular the specific activities of the competitor(s) selected as defendant(s)), the benefit of ‘blanket protection’ will be lost.