PlexLex: The Law of Google

Use of Competitor's Mark as Metatag Doesn't Confuse Consumers: Syncsort v. Innovative Routines International

Syncsort Inc. v. Innovative Routines International, Inc., 04-cv-3623, 2008 WL 1925304 (D.N.J. April 30, 2008). 

Plaintiff Syncsort and defendant IRI both sell sorting software.  IRI also sells conversion software that is specially made to allow users of Syncsort's software to switch to using IRI's software.  IRI put the word "syncsort" into the metadata of one of its webpages, so Syncsort sued IRI, claiming that this metatag constituted trademark infringement.  IRI moved for summary judgment.

The Court began its analysis by quoting a dictionary definition of "metatag" that makes a sweeping claim about the effect of metatags:

A metatag is “[a]n HTML tag that contains descriptive information about a webpage and does not appear when the webpage is displayed in a browser. A word that is in a metatag of a webpage will cause that webpage to turn up as a result of a search engine's search on that word, even if that word is not found in the webpage as viewed in a browser.”  The American Heritage Science Dictionary.

As the Eastern District of Wisconsin recently recognized, that definition goes too far, as search engines don't necessarily base their search results on metatags.  However, the defendant here survived in spite of such a broad presumption.

Syncsort argued "that the relationship between the two products is confused when a user searches for 'syncsort' and is provided a list of search results which includes the IRI website."  Unlike some other courts that have reflexively found that use of a competitor's trademark in a megatag equals skewed search results equals infringement (such as the Eleventh Circuit in its recent decision in North American Medical Corp. v. Axiom Worldwide, Inc.), the Court here found this argument unpersuasive. To reach its decision, the Court quoted J.G. Wentworth, S.S.C. L.P v. Settlement Funding LLC, 06-cv-597, 2007 WL 30115, *7-8 (E.D.Pa. Jan.4, 2007), stating:

At no point are potential consumers ‘taken by a search engine’ to defendant's website due to defendant's use of plaintiff's marks in meta tags. Rather ... a link to the defendant's website appears on the search results pages as one of the many choices for the potential consumer to investigate.... links to defendant's website always appear as independent and distinct links on the search result page.... Due to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant's services, goods, advertisements, links or websites for those of the plaintiff. Therefore, I find that initial interest protection does not apply here. Because no reasonable factfinder could find a likelihood of confusion under the set of facts alleged by the plaintiff, I will grant defendant's motion to dismiss.

The Court granted summary judgment to IRI on the trademark claim, finding that its use of Syncsort's mark was a fair use.

Court: No Trademark Liability for Use of Competitor's Mark in Meta Tags

Standard Process, Inc. v. Banks, No. 06-C-843, 2008 WL 1805374 (E.D. Wis., April 18, 2008). 

In trademark meta tag litigation, it's good to see judicial interest in whether search engines actually pay attention to meta tags.  This decision is one example of such interest.  However, litigators should not rely on mere citation to this decision; they should make a fresh inquiry into what a particular search engine does with the meta tags at issue in their case, as the answer changes over time.  It's not true that all search engines ignore them, as one might conclude after reading this decision.  For example, Google offers advice to webmasters on proper use of meta tags, indicating that Google is paying attention.

Key language from the Standard Process decision:

Standard Process ... alleges that Dr. Banks is liable for trademark infringement because of “initial interest confusion.” See Promatek Indus., LTD v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir.2002). “Initial interest confusion” 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. Id. For example, in Promatek, the plaintiff used a direct competitor's trademark in its metatags. A metatag is HTML (Hyper Text Markup Language) code that describes the content of a website, and search engines used to use them to identifying the content of a website. The Seventh Circuit found that the use of the competitor's trademark in the plaintiff's metatags diverted customers to the plaintiff's website and likely caused customer confusion. Id.

... Dr. Banks used Standard Process trademarks in the metatags of his website. However, today “modern search engines make little if any use of metatags.” 4 J. Thomas McCarthy on Trademarks and Unfair Competition § 25:69 (4th ed.2003). As more and more webmasters “manipulated their keyword metatags to provide suboptimal keyword associations, search engines progressively realized that keyword metatags were a poor indicator of relevancy.”  Accordingly, search engines today primarily use algorithms that rank a website by the number of other sites that link or point to it. See 4 McCarthy on Trademarks § 25:69.

In any event, even if search engines still made significant use of metatags, this case is different than Promatek. Consumers who enter “Standard Process” in a search engine may be diverted to Dr. Banks's website where, unlike the plaintiff's site in Promatek, it actually provides an opportunity to purchase the trademark holder's goods. Dr. Banks is not a direct competitor to Standard Process. Consumers will still be able to purchase unaltered SP Products on his site, so the likelihood of consumer confusion is not present here like it was in Promatek.

Court refuses to take judicial notice of Google search results

Dorner v. Commercial Trade Bureau of Cal., No. CIV-F-08-0083, 2008 WL 1704137 (E.D.Cal., April 10, 2008)

Defendant Commercial Trade Bureau of California is a private company engaged in the business of debt collection.  Plaintiff filed suit alleging violations of the Fair Debt Collection Practices Act, 15 U.S.C. § 1692 et seq. (“FDCPA”), specifically 15 U.S.C. § 1692e(1), (9), and (10). In substance, Plaintiff argues Defendant's use of the name “Commercial Trade Bureau of California” gave the false impression that the debt collection company was in some way associated with the State of California.

Defendant filed a motion to dismiss for failure to state a claim.  Plaintiff asked the court to judicially notice “the fact an ordinary quick search of first page results on ‘Google’ for the phrase ‘California bureau’ shows a possible nine results, seven of which are government agencies.”   

On a motion to dismiss, a court may take judicial notice of facts outside the pleadings.  Mack v. South Bay Beer Distributors, 798 F.2d 1279, 1282 (9th Cir. 1986).  However, the Court declined to consider the Google search results, ruling as follows:

Results from a Google search do not meet the standard required as they are not “capable of accurate and ready determination by resort to sources whose accuracy cannot be reasonably be questioned.” Fed.R.Evid. 201(b). Google is continually updating its search system, and results for an identical search can vary from day to day. The Google search results are not considered in ruling on this motion.