• Intellectual Property Basics for Web Site Operation
  • May 20, 2003 | Author: Mark S. VanderBroek
  • Law Firm: Troutman Sanders LLP - Atlanta Office
  • A. Intellectual Property and the Internet

    Creating and operating an Internet web site is becoming an essential part of doing business in today's economy. It also raises a number of intellectual property issues -- both at the initial stage of creating and setting up a web site (when you will be choosing a domain name and possibly a trade name and establishing the content of the site), and in the operating stage (when you could be accused of, or accusing others of, operating a web site that violates intellectual property rights).

    The explosive growth of the Internet and e-commerce has stretched the application of trademark and copyright laws to new areas such as "cybersquatting," "linking and framing" and "metatagging." Moreover, a natural tension exists between protecting a business' trademarks and its rights to copyrighted or proprietary information, on the one hand, and the Internet's purpose of providing free and easy access to and flow of information to consumers and businesses. This tension is exacerbated by the ease with which people can obtain domain names, post information on a web site to a worldwide audience; link to and frame others' web sites; and copy and include on their own web sites the trademarks, logos, and copyrighted information of others. In the cyberspace marketplace, business competitors and others seeking to capitalize on the reputation, goodwill and work product of established businesses have a variety of new tools and opportunities at their disposal to aid them.

    Legal rights and obligations in certain areas of Internet-related law are starting to become clearer; e.g., in the domain name area. However, many gray areas remain. The following discussion is intended to aid in understanding some of the basic intellectual property issues relevant to the creation and operation of a web site. It includes a discussion of: (1) a general overview of trademark, copyright, and unfair competition law; (2) choosing, clearing and protecting a domain name; (3) domain name "cybersquatting" and procedures available to resolve domain name disputes; and (4) legal issues associated with web site references to trademarks or copyrighted information of others, and with hyperlinks, framing, metatags, and keyed ad banners.

    B. General Principles of Trademark, Copyright and Unfair Competition Law

    A trademark is a word, name, symbol, device, or combination thereof that is used to identify and distinguish one's goods and services from those manufactured or sold by others and to indicate the source of the goods or services. A trademark can include a company name, trade name, logo, product name, and advertising slogan. Trademarks serve as symbols of a business' goodwill and reputation. Trademark infringement occurs when a second party uses the same or a similar trademark in a way that is likely to cause confusion in the marketplace as to the source, origin, sponsorship or approval of the goods, services or commercial activities in question, or as to the affiliation, connection, or association of one business with another. Trademark dilution occurs when a second party's use of a similar trademark tarnishes or otherwise dilutes the distinctive quality of a trademark, even if there is no likelihood of confusion.

    Copyright law protects against copying or misappropriation of original artistic or literary works and other original works of authorship, including books, magazines, newspapers, computer software, songs, artwork and web site content. Copyright protects the expression of ideas (e.g., a specific photograph of the Atlanta skyline at sunset taken by a specific photographer from a specific location), but does not protect the underlying idea itself (taking a photograph of the Atlanta skyline at sunset). Copyright infringement occurs when there is an unauthorized copying, reproduction, broadcast, distribution or performance of a copyrighted work. However, "fair use" of a copyrighted work, for purposes such as criticism, comment, news reporting, teaching, scholarship or research, is not an infringement of copyright.

    Unfair competition is a broad legal concept that protects fair play in commercial competition. It includes wrongdoing such as trademark infringement, false or misleading advertising, product or trade disparagement, and other false or misleading designations of origin or descriptions or representations of facts which are likely to cause confusion or mistake, or to deceive, in the commercial marketplace.

    Legal remedies potentially available for trademark and copyright infringement and unfair competition include an injunction prohibiting the infringing or unfair competitive practice, and recovery of monetary relief.

    C. Choosing, Clearing, and Protecting a Domain Name.

    A domain name is part of a Uniform Resource Locator (URL), which is the address of a site or a document on the Internet. In general, a domain name is comprised of a second-level domain, a "dot," and a top-level domain (TLD) such as "com," "org" or "net" -- for example, priceline.com.

    The first step in choosing a domain name is to log onto the web site of Network Solutions ("NSI") at www.networksolutions.com, or of another domain name registrar, and determine if the domain name is available. It may not be, given the tens of millions of domain names that have been registered ahead of you. If it is available, you can register the domain name. If the business that will be operating the web site has a well-established company name or brand name for which it owns a federal trademark registration, and if the second-level domain in the domain name is the same as that company or brand name, then this may be all that you need to do to select, reserve and protect a domain name. However, the more common situation is that a business is selecting a domain name that also will be a new company name, trade name, brand name, or product name, or that otherwise has not been previously used by the business a trademark. In these situations, additional work should be done.

    At a minimum, a search of the records of the U.S. Patent and Trademark Office should be conducted to determine if there are existing federal trademark registrations or pending trademark applications for trademarks that are identical or confusingly similar to the domain name and/or trademark that you want to register and use. If another business is using an identical or similar trademark to provide similar goods or services, use of your domain name could be found to infringe upon others' trademarks or to amount to "cybersquatting" (see discussion of cybersquatting in Section D, below). It is also wise to obtain a comprehensive search from an outside trademark search company that will not only search for federal trademark registrations and applications, but also state trademark databases and common law sources which could reveal the existence of relevant similar trademarks.

    Assuming your domain name clears this search process, you should consider seeking a federal trademark registration for the domain name. A trademark registration provides significant legal and practical advantages. However, you cannot obtain a trademark registration for a domain name that serves only as a web site address. You can obtain a registration if the domain name also is used as a trademark to identify, advertise, market or promote the source and origin of goods and services provided by the business. Many domain names are used in this way. See Patent and Trademark Office Examination Guide No. 2-99, at www.uspto.gov/web/offices/tac/notices/guide299.htm, which explains when domain names can be registered as trademarks.

    Finally, you also may also want to consider registering additional domain names that consist of common variations of your intended domain name, or of the same second level domain in other TLDs (e.g. ".net" and ".org"). This will help prevent cybersquatters from registering domain names that could cause confusion with your domain name.

    D. Cybersquatting and Domain Name Dispute Resolution Procedures.

    The growth of the Internet and e-commerce in the mid to late 1990s led to an initial gold rush in which many so called "cybersquatters" and "cyberpirates" registered domain names that were trademarks of other businesses or common misspellings or modifications of those trademarks. The cyberpirates then held those domain names hostage in an effort to sell them to the trademark owner or otherwise misappropriate and profit from the goodwill associated with the marks. Traditional trademark principles were not always effective in addressing and resolving these issues.

    In late 1999, two new legal weapons were provided that to this point have proved quite effective in protecting trademark owners against cyberpiracy. First, the Internet Corporation for Assigned Names and Numbers ("ICANN"), which is the entity established to oversee domain name system management for the major top level domains used on the Internet, adopted a uniform domain name dispute resolution policy which provides for administrative procedures to resolve domain name disputes. Second, Congress amended the federal Lanham Act (the Trademark Act) to include an "Anticybersquatting Consumer Protection Act." Both the ICANN policy and the Anticybersquatting Act are intended to provide a trademark owner with relief against a domain name holder who registers or uses, in bad faith, a domain name that is identical to or confusingly similar to the trademark owner's mark.

    The ICANN policy has proven to be the more popular of these remedies, and generally is quicker and less expensive than a court proceeding under the Anticybersquatting Act. However, the Anticybersquatting Act provides additional remedies and also has been effective for trademark owners.

    1. ICANN Domain Name Dispute Resolution Policy

    The ICANN policy creates an administrative procedure for resolving domain name disputes. Anyone who registers a domain name with any domain name registrar in the top level domains of .com, .net and .org, is required to submit to such a proceeding if a trademark owner submits an administrative complaint against them.

    Under the ICANN policy, a domain name will be transferred to a trademark owner ("the complainant") if the complainant proves that:

    1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; and

    2) the domain name registrant has no rights or legitimate interest in respect to the domain name; and

    3) the domain name has been registered and is being used in bad faith.

    Evidence indicating registration and use in bad faith includes:

    1) circumstances indicating that the domain name was registered primarily to sell it to the complainant or to a competitor of the complainant;

    2) that the domain name was registered to prevent the trademark owner from reflecting the mark in a corresponding domain name, if the domain name registrant has engaged in a pattern of such conduct; or

    3) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or

    4) use of a domain name to attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant's mark.

    Complaints filed under the ICANN policy are resolved by arbitrators appointed by dispute resolution service providers approved by ICANN. Decisions are based on the written complaint and a written response. The only available remedy is transfer or cancellation of the domain name registration. Any party unsatisfied with the result of an ICANN proceeding can file a civil lawsuit, in which case the domain name will not be transferred or canceled until the lawsuit is resolved.

    A copy of the ICANN policy is included herein as Exhibit A. Additional information about the policy can be found at "www.icann.org/udrp."

    The ICANN procedures have proven to be a popular and relatively quick and inexpensive alternative to the courts for resolving domain name disputes. A ruling on an ICANN complaint generally can be obtained within two or three months of filing. Through October 4th, 1,956 cases involving 3,554 domain names had been filed. Of the 1,194 cases decided, 930, or 78%, have favored the trademark owners. Many of these cases have involved clear instances of cybersquatting. Domain names that have been ordered transferred to trademark owners include "alcoholicsanonymous.net," "bestwestern-hotels.com," "carolina panthers.com," "espn.net," "hewlettpackard.com," "pokemons.com," "victoriassecret.net," "worldwrestlingfederation.com," and "walmartuksucks.com." Links to all pending and decided ICANN proceedings can be found at "icann.org/udrp."

    2. Anticybersquatting Consumer Protection Act (15 U.S.C. ยง 1125(d))

    The stated purpose of the Anticybersquatting Act is "[t]o protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad faith and abusive registration of distinctive marks such as Internet domain names with the intent to profit from the goodwill associated with such marks - a practice commonly known as cybersquatting." Sporty's Farm LLC v. Sportsman's Market, Inc., 202 F.3d 489, 495 (2000) (citing Senate Rep. No. 106-140 at 4).

    Under the Act:

    a trademark owner is entitled to relief, including an order requiring a domain name registrant to transfer, forfeit, or cancel its domain names, if the trademark owner shows that:

    1) it owns a distinctive or famous mark

    2) that the domain name registrant registers, uses, or traffics in a domain name that is identical to or confusingly similar to the trademark owner's mark, and

    3) the domain name registrant had a "bad faith intent to profit" from the trademark owner's mark.

    Spear, Leeds, & Kellogg v. Rosado, 2000 Dist. LEXIS 3732 at *8 (S.D.N.Y. 2000). A copy of the Act is attached hereto as Exhibit B. It includes a non-exhaustive list of nine factors to be considered in determining whether a domain name registrant had a "bad faith intent to profit" from the trademark owner's mark.

    The remedies available under the Anticybersquatting Act are broader than those available under the ICANN policy. A court can order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. In addition, statutory damages in the amount of $1,000 to $100,000 per domain name may be awarded for violations of the Act that occurred on or after the enactment of the Act, and a plaintiff may seek to recover its attorneys' fees.

    Since the implementation of the Act in late 1999, efforts to enforce the Act through litigation generally have been successful for trademark owners.1 The large majority of decided cases have resulted in an injunction being entered canceling or requiring the transfer of the domain name.

    In one of the earliest cases addressing the Act, Sporty's Farm, Inc. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000), Sporty's Farm and its owner were enjoined from using the domain name "sportys.com" to sell Christmas trees, and were required to transfer the domain name to Sportsman's. The court found that defendant's use of sportys.com, was indistinguishable from Sportsman's "SPORTY'S" trademark that had been used since the 1960s to sell products to pilots and aviation enthusiasts; and that Sporty's Farm had acted with a bad faith intent to profit in that it had made no use of the SPORTY'S mark before registering it as a domain name, and planned to use the sportys.com web site to directly compete with Sportsman in the aviation consumer market.

    A violation of the Act also arises when domain names are registered that are common misspellings or alternate spellings of trademarks. See Shields v. Zuccarini, 89 F. Supp.2d 634 (E.D. Pa. 2000).

    While trademark owners have generally prevailed in Anticybersquatting Act lawsuits, they will not prevail under all circumstances. For example, a holder of a domain name that consists of a common English word might not be required to transfer the domain name to an owner of a trademark that includes that word. A court recently denied summary judgment to Cello Holdings Company, which sells audio equipment under the trademark "CELLO," in a case seeking to require transfer of the cello.dom domain name. The court held that a jury would have to determine whether the defendant was acting with bad faith intent in registering a common noun and attempting to sell it to a number of buyers who used the name "cello" in connection with their businesses. Cello Holdings v. Lawrence-Dahl Companies, 89 F. Supp.2d 464 (S.D.N.Y. 2000). Similarly, results will be difficult to predict when two legitimate businesses using an identical trademark in different markets compete for the same domain name. For instance, until Delta Airlines recently acquired the domain name, delta.com was the domain name for the web site of Delta Financial Corporation, not Delta Airlines. Delta Airlines would have had a difficult time obtaining the transfer of this domain name, either under an Anticybersquatting Act lawsuit or an ICANN proceeding.

    3. Practical Issues re: Domain Name Dispute Resolution

    Based on the first ten months of experience of domain name dispute resolution through the ICANN procedure and Anticybersquatting Act, it appears that trademark owners generally will prevail over a domain name registrant with a confusingly similar domain name, unless: (1) the domain name is generic or descriptive (e.g., cello.com, eautoparts.com); (2) the domain name registrant made prior legitimate use of the mark in its business (e.g., clue.com, fuji.com); or (3) the domain name registrant is making legitimate noncommercial or fair use of the mark.

    The ICANN proceedings have been popular and effective, and generally will lead to cheaper and faster results than a civil lawsuit under the Anticybersquatting Act. However, the Anticybersquatting Act may be preferable if: (1) there is a need for immediate relief in the form of a temporary restraining order or preliminary injunction (e.g., a pornographic site has adopted your company's trademark as a domain name); (2) the trademark owner also wants to pursue other claims against the domain name registrant (e.g., the trademark owner's mark is being infringed on registrant's web site); or (3) the trademark owner wants to try to recover damages or attorney's fees.

    Should you proceed against every cybersquatter who is using any of your marks as part of a domain name? Even if you wanted to, time and resources might not allow it. Consequently, it might be necessary to prioritize enforcement efforts. At the top of any priority list for enforcement efforts against cybersquatters should be those: (1) who are using your main brand or trade names, or variations of them; (2) who are competitors; (3) who have registered domain names that you want to use; and (4) who have web sites with offensive content.

    E. Web Site Content Issues: Use Of Another's Trademark (or a Confusingly Similar Trademark) Or Copyrighted Work On A Web Site.

    This situation involves the closest approximation to traditional applications of trademark and copyright infringement law. If the content of a web site includes unauthorized uses of another's trademark, or use of a trademark that is confusingly similar to another's trademark, in a manner that is likely to cause confusion as to the source, origin, sponsorship or endorsement of the web site, or in a manner that blurs the distinctive value of or "tarnishes" the trademark, then trademark infringement and/or dilution will be found. See Playboy Enterprises , Inc. v. Calvin Designer Label, 985 F. Supp. 1220 (N.D. Cal. 1997) (use of the trademarks "Playboy" and "Playmate" in an adult orientated web site unaffiliated with Playboy Enterprises amounted to trademark infringement).

    One court recently concluded that use of the Internet as a marketing and advertising channel serves to exacerbate likelihood of confusion arising from use of similar trademarks, since it allows for competing marks to be encountered at the same time on the same computer screen. That court stated that "with respect to Internet services, even services that are not identical [and that use similar trademarks] are capable of confusing the public." GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000). The news media recently reported that Disney paid $21.5 million to settle this lawsuit, in which the court found that Disney's "Go Network" logo infringed the plaintiffs' "GoTo" logo used for a similar Internet portal site. See also Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) ("West Coast and Brookfield both utilize the Web as a marketing and advertising facility, a factor that courts have consistently recognized as exacerbating the likelihood of confusion").

    Similarly, a web site that, without authorization and for commercial purposes, copies and redistributes a substantial portion of another's copyrighted work may be found guilty of copyright infringement.

    1. Fair Use

    Not all use of another's trademarks as part of the content of a web site will amount to trademark infringement. Such use can be protected "fair use" of a trademark. This is illustrated by the oft-cited case of Playboy v. Welles. Terri Welles was Playboy's 1981 Playmate of the Year, and operated a web site containing pictures of her. Playboy sued to prevent her from using the terms "Playmate" and "Playboy" on her web pages and within her metatags. The court refused to enjoin this use, finding that Ms. Welles was using "Playboy" and "Playmate" not as trademarks, but rather as descriptive terms which fairly and accurately described her status as a former Playmate of the Year, and which permissibly indexed the content of her web site with search engines. Playboy v. Welles, 7 F. Supp. 2d 1098 (S.D. Cal. 1998).

    Similarly, "fair use" of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship or research, is not an infringement of copyright.

    F. Linking, Framing, Metatags, and Keyed Ad Banners.

    1. Linking

    One of the most common and useful features of the Internet is the ability to "link" from one web site to another by clicking on a words or icon that immediately transports -- or "hyperlinks" -- the user to a page on another web site. Linking has become an essential component of the Internet that allows users to easily find and link to useful information on topics of interest.

    The propriety of linking to another's web site has been a source of controversy in the Internet community on which the courts to this point have provided little guidance. Many instances of linking do not appear to bother, and may benefit, the owner of the site that is being linked to. This will often be the case if the hyperlink connects directly to the home page of the linked-to site (which may contain identifying trademarks and logos, advertising, terms and conditions, and other information that the owner of that site wants a user to see), and is set up in a way that clearly indicates that the user is being connected to another web site and that does not misleadingly or confusingly suggest that the first site is connected or affiliated with, or endorsed or sponsored by, the operator of the linked-to site.

    Some companies encourage non-misleading links to their website, and have established policies that allow linking under certain conditions. See verizon.com/about/linking.html; gateway.com/logolinks.html. A federal District Court in California recently held that hyperlinking to another web site does not in itself involve a violation of the Copyright Act, since no copying of material from the copyright owner's website is involved. Ticketmaster Corp. v. Tickets.com, Inc., 54 U.S.P.Q.2d 1344 (C.D. Cal. 2000). However, the court implied that linking could constitute unfair competition if it caused a likelihood of confusion as to the source or sponsorship of a web site or of the products or services offered on the site.

    In certain instances linking can raise significant and legitimate legal concerns to the owner of a commercial web site that is linked to by another site. Linking can confuse the public as to the source, origin and sponsorship of a site and can allow a site operator to profit from the labor of others. Some of the circumstances under which unauthorized linking may be problematic are when: (1) the linking is done in a manner that suggest that the linking site is affiliated with or sponsored or endorsed by the owner of the linked-to site; (2) "deep links" link to an interior page of a web site, thereby bypassing the home page that contains advertising, terms and conditions of use, or other information that the web site operator wants a user to see; or (3) the operator of the linking site is obtaining a free ride and commercial benefits from information created by the operator of, and maintained, on the linked-to site.

    For example, in 1997, Ticketmaster filed a lawsuit complaining about a Microsoft web site that provided information about upcoming entertainment events in a particular area and included a deep link to interior pages of the Ticketmaster site that offered tickets for the particular events. At that time, Ticketmaster had recently agreed to provide event information and ticket-ordering links, for a fee, to a web guide service that competed with Microsoft's service. Ticketmaster claimed that Microsoft's practices devalued its site and constituted a false designation of origin, unfair competition and trademark dilution. The case settled in February 1999; since then Microsoft has not provided deep links to Ticketmaster's site but is only linking to the Ticketmaster home page.

    In July 1999, Ticketmaster filed a lawsuit in California against a competitor, Tickets.com, that operates a website that provides information about entertainment and sporting events and that deep links to Ticketmaster's site where a user can order tickets to the posted events. The lawsuit included claims of trademark infringement, copyright infringement, and unfair competition, among others. In March 2000, the trial court dismissed Ticketmaster's copyright infringement claim, stating that "hyperlinking does not itself involve a violation of the Copyright Act (whatever it may do for other claims) since no copying is involved. The customer is automatically transferred to the particular genuine web page of the original author." 54 U.S.P.Q. 2d 1334. However, the court denied the defendant's motion to dismiss Ticketmaster's claims of trademark infringement and unfair competition, finding that such claims could be supported by the allegations that Tickets.com falsely implied an association with Ticketmaster through deep linking and other conduct.

    Thus, there are gray areas remaining to be determined regarding the legality of linking to another's web site. Factors such as the commercial status and the motives of the linking site, and the manner in which the linking is accomplished, will be important in future court decisions. For now, the safest practice for a web site wanting to link to another site is to get permission from the owner of the linked-to site. Web site operators may also want to post, on their site, conditions under which they will and will not permit linking to their site.

    2. Framing

    Framing raises similar, but usually more serious, legal concerns to those raised by linking. Framing technology allows a web page to be split into parts in which a page from one web site can be "framed" within the borders of another site. Thus, the user can view a second web site within the frame of the original site, with the URL (or domain name) that appears in the Internet browser typically being that of the original web site.

    As with deep linking, owners of web sites that use framing technology can confuse the public as to the source, origin, and sponsorship of the framed site and can profit from the labor of others. For example, they can sell advertising on their own site while displaying the content from another site; or can cover or cut off advertisements or content of the framed site thereby reducing the value of that site to the viewer and advertiser. This was the situation raised in the case of The Washington Post v. TotalNEWS, in which TotalNEWS operated a web site that provided links to news articles from other news organizations. These articles were framed within the TotalNEWS web site that displayed advertising sold by TotalNEWS. Further, the URL at the top of the page was that of TotalNEWS and not of the linked-to sites. The plaintiffs were a number of large media companies including CNN, Reuters, Time, and the Washington Post, that offered news web sites that were framed by TotalNEWS. They contended that the defendant's practices misappropriated their proprietary information and violated copyright and trademark laws. The parties eventually settled the case: TotalNEWS agreed not to frame the news providers' web sites but is linking to the home page of the news sites.

    I am told that there are technological means available to prevent framing of web sites.

    3. Use of Another's Trademarks As Metatags

    The use of metatags by search engines was ably explained by the court in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999):

    Search engines look for key words in places such as domain names, actual text on the web page and metatags. Metatags are HTML code intended to describe the contents of the web site. . . . [D]escription metatags are intended to describe the web site; the key word metatags, at least in theory, contain key words relating to the contents of the web site. The more often a term appears in the metatags and in the text of the web page, the more likely it is that the web page will be "hit" in a search for that key word and the higher on the list of "hits" the web page will appear.

    Web site designers and operators sometimes try to increase the number or search engine priority of "hits" on their site, by including in their metatags the names and trademarks of well-known businesses, products or services that are unrelated to the web site or that may be the marks of direct competitors to that site. This may be done to attract people interested in a competitor's goods or services, or just to increase traffic to the web site (which will increase advertising revenues and business opportunities for the site operator). Similar results can be achieved through "cyberstuffing," in which multiple entries of a key word are made on the face of a web page in a manner that is invisible to viewers (e.g., red lettering on a red background, which will be read by search engines).

    Misleading metatagging has been found to amount to trademark infringement and dilution. For example, in the Brookfield Communications case, 174 F.3d 1036, the plaintiff, which used the trademark "MOVIEBUFF" in selling software and services and operating a web site in the entertainment industry, was granted a preliminary injunction prohibiting the defendant from using the words "moviebuff" and "moviebuff.com" in its metatags for a web site that provided a similar service. The court found that such use of the plaintiff's trademarks as part of the defendant's metatags created "initial interest confusion" that diverted people looking for plaintiff's MOVIEBUFF service to the defendant's web site. The court concluded that this allowed the defendant to improperly benefit from the goodwill that the plaintiff developed in its mark, and could result in customers who were originally looking for plaintiff's product deciding to use the defendant's similar offerings instead. The court analogized using another's trademark in its metatags to the situation of posting a sign or billboard with your competitor's trademark in front of your store or on a highway exit leading to your store. The Brookfield court cited to several other cases in which courts had granted injunctions against use of one company's trademarks in another's web site metatags.

    In some situations use of another party's trademark in a web site metatag can be protected "fair use" of a trademark. In Playboy v. Welles, 7 F. Supp.2d 1098 (S.D., Cal. 1998), a former Playboy Playmate of the Year was allowed to use the terms "Playboy" and "Playmate" in the metatags of her web site. The court found that this use fairly and accurately indexed the content of her web site with search engines.

    4. Keyed Ad Banners

    Internet search engine operators sell advertising space on search result pages. The advertisements, known as "banner ads," are commonly found at the top of the screen and are designed to entice the Internet user to click on the ads which will transport the user to the web site of the advertiser. Some search engine operators accommodate advertisers by "keying" ads to particular search terms entered by users, such that a pre-selected set of banner ads will appear when certain search terms are entered by a user.

    In Playboy Enterprises v. Netscape Communications Corp., 55 F. Supp. 1070 (C. D. Cal. 1999), the defendant search engine operators keyed various adult entertainment banner ads to a large number of terms related to adult entertainment, including the terms "Playboy" and "Playmate." Playboy contended that this infringed and diluted its trademarks in a way that diverted Internet users from its web site to other adult entertainment web sites. The court denied Playboy's claims and refused to enjoin this conduct, primarily on the ground that the defendants were using the terms "playboy" and "playmate" in their English language word sense and not as trademarked terms.

    1 See generally, Sporty's Farm, L.L.C. v. Sportsman's Mkt., 202 F.3d 489 (2nd Cir. 2000); Morrison & Foerster L.L.P. v. Wick, 2000 U.S. Dist. LEXIS 5161 (D. Co. 2000); Shields v. Zuccarini, 89 F. Supp. 2d 634 (E.D. Pa. 2000); Spear, Leeds, & Kellogg v. Rosado, 2000 U.S. Dist. LEXIS 3732 (S.D.N.Y. 2000); Virtual Works, Inc. v. Network Solutions, Inc., 2000 U.S. Dist. LEXIS 2670 (E.D. Va. 2000).