• Use of Metatags Results in Tough Disclaimers
  • July 29, 2003
  • Law Firm: Graydon Head & Ritchey LLP - Cincinnati Office
  • A United States Appellate Court recently upheld an injunction order that required a company to include on its website a disclaimer directing visitors to the website of a competitor. The court found it necessary to take that step to remedy the initial interest confusion caused by the company's use of the competitor's mark in its metatags.

    The parties were both sellers of cost-recovery equipment. The defendant, Equitrac Corp., serviced the plaintiff's products. When the defendant created its website, it included a misspelling of the plaintiff's mark, COPITRAK, in the metatags. Despite the misspelling, the metatag directed search engines to the defendant's website.

    In the plaintiff's suit, the district court issued a preliminary injunction directing Equitrac to place the following language on its website: "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."

    Equitrac objected to the language, arguing that the language would not only inform consumers of its competitor, but would also encourage Internet users to immediately go to the other company's website. The court rejected Equitrac's argument though, noting that the language was necessary to remedy initial interest confusion caused by the use of the term in the metatags.

    The court noted, "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 Copitrack mark," the court said. "That consumers who are misled to Equitrac's website are only briefly confused is of little or no consequence. ...What is important is not the duration of the confusion, it is the misappropriation of Promatek's goodwill. Equitrac cannot un-ring the bell."

    The court rejected as speculative Equitrac's argument that inclusion of the language would give the plaintiff an economic advantage by encouraging Internet users to go to its competitor's website. Equitrac had not presented evidence that demonstrated that the language had caused it to lose customers to the plaintiff.

    Finally, the court noted that even though Equitrak allegedly did not intend to mislead customers with respect to Copitrack quote "the fact remains that there is a strong likelihood of consumer confusion as a result of its use of the Copitrack metatag."

    "What is relevant to the preliminary injunction is not that Equitrac may advertise that it is capable of servicing Copitrak," the court said. "Equitrac is free to do so; it is also free to place comparison claims on its website, or include press releases involving the litigation between Equitrac and Promatek. ...It is Equitrac's use of the term Copitrack in its metatag that is a prohibited practice because of its potential for customer confusion."

    Metatags are a powerful tool for attracting attention to a website. The court's ruling here recognizes that power.