A recent decision of the Federal Court considered the legal effect of the use of copies of the plaintiff’s metatags by the defendant in the metadata of the defendant’s website.
Metatags
A metatag is a computer code contained on a website which is invisible to an individual but which enables a search engine or a web browser to identify that particular website.
Metatags are usually placed on the header of the webpage. Typically they can be viewed by right clicking the page and choosing “view source” or “view page information” depending on the Internet browser being used.
The Plaintiff
Red Label Vacations Inc. (“Red Label”) is a travel business that offers online travel information services and bookings through its website at <redtag.ca>, catering mostly to the Canadian market. Red Label owns three registered trademarks: REDTAG.CA, REDTAG.CA VACATIONS, and SHOP. COMPARE. PAYLESS!! GUARANTEED (the “Red Label trademarks”).
The Defendant
411 Travel Buys Limited (“411 Travel Buys”) is an online travel agency offering information to customers through its website, and the availability of agents over the phone to create bookings for travel and travel-related services. It also caters primarily to the Canadian market.
The 411 Travel Buys created a website which went online in January of 2009. At that time a number of the webpages included content that was identical or very similar to the content of Red Label’s webpages. This information included the title, description and keyword metatags, and the terms “red tag vacations” and “shop, compare & payless”. The 411 Travel Buys content was not visible to customers visiting its website, and was located only in the webpage’s metadata.
After an initial oral complaint the 411 Travel Buys’ website was taken down entirely and the allegedly infringing content was removed over the course of two days. The offending content was present on the website no longer than from early January to mid-March of 2009.
During the period from February to November 2009, Red Label experienced a lull in web traffic and revenue to a higher degree than in previous years. The estimated period of negative effect or impact on the Red Label`s business created by 411 Travel Buys’ alleged infringement was from March to November of 2009.
The Action
Red Label commenced an action against 411 Travel Buys for copyright infringement, trademark infringement, passing off and depreciation of goodwill in the Red Label trademarks. The action proceeded to trial.
Copyright
There was no dispute that the defendant copied the plaintiff’s metatags, when it copied the title tags, meta descriptions and meta keywords on 48 pages of its website. On some pages, even spelling errors in the plaintiff’s metatags were reproduced.
The judge said that a metatag was a word or small phrase embedded in the source code of a website. It is not visible on the actual page itself. When a person types a phrase into the search bar of a search engine, such as Google, it uses an algorithm to search through the internet looking for web pages with those particular words in them. The greater the number of times a term appears in metatags and in the text of the webpage itself, the greater the chance that a search engine will choose that website to be listed higher on the list of search results. Search Engine Optimization is an important step in marketing a company’s wares or services. While Google does use some metatag data in their search rankings, it had not used keyword metatags for many years prior to 2009.
Originality
In order for there to be valid copyright in a work, there is a threshold requirement that the work must be original. The work need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is the exercise of skill and judgment. In this context “skill” means the use of one’s knowledge, developed aptitude or practised ability in producing the work. “Judgment” means the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. The exercise of skill and judgment necessarily involves intellectual effort.
It was observed that whether a metatag could be subject to copyright was being debated in Canada as well as the United States, England and elsewhere in the world.
In this case Red Label’s metatags had been substantially derived from a list of Google key words which were incorporated into short phrases descriptive of the travel industry, types of travel, locations, and discounts or deals for consumers. As a result there was little evidence of a sufficient degree of skill and judgment in their creation or compilation to satisfy the requirement for a valid copyright. While there could be sufficient originality in metatags to attract copyright protection when viewed as a whole, the substance of the metatags in issue in the case did not meet the threshold required for copyright protection in Canada.
Passing Off and Trademark Infringement
A number of disputes have occurred in the U.S. where one party uses the tradename or mark of another party in its metatags to attract business and increase traffic to its web page. Some of the U.S. cases have found that such activities constitute trademark infringement but it has been suggested that there may be cases where such use is a legitimate use.
In this case the plaintiff’s claims were dismissed. The judge said that the use of metatags in a search engine gave the consumer a choice of the independent and distinct links that he or she could choose at will, rather than directing a consumer to a particular competitor. Even if a searcher is looking for the website connected with a particular tradename or trademark, once that person reaches the website, there must be confusion as to the source of the entity or person providing the services or goods. Accordingly, use of a competitor’s trademark or tradename in metatags does not, by itself, constitute a basis for a likelihood of confusion because the consumer is still free to choose and purchase the goods or services from the website he or she initially searched for.
There was no use of any of the plaintiff’s trademarks or tradenames on the defendants’ visible website. The website was clearly identified as the defendant`s website. There was no likelihood of deception or confusion as to the source of the services provided on the defendant`s website, and a consumer was free to redirect his or her search to the Red Label website.
Comment
The decision with respect to the claim for copyright protection seems to be driven by the facts of this case. In the next case there may be sufficient originality in metatags to attract copyright protection.
The decision concerning passing off and trademark protection appears to be broader in the scope of its application.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.