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Plaintiff Promatek Industries Ltd. ("Promatek") and defendant Equitrac
Corporation ("Equitrac") are competitors in the cost recovery business,
assisting their customers in such things as collecting the costs of document
reproduction from their clients.
Promatek has a cost recovery product it
markets under the trademark "Copitrak". At the request of its customers,
Equitrac services and maintains "Copitrak" equipment.
Equitrac instructed its web designer to use the mark "Copitrak" in the meta
tags of its web site. The web developer, by mistake, used the term
"Copitrack" instead.
When plaintiff objected to this practice, Equitrac
removed the mark from the meta tags of its web site, and requested search
engines to cancel any links on their sites that linked "Copitrak" and
Equitrac's site.
Not satisfied with the remedial action, Plaintiff thereafter commenced this lawsuit, and sought and obtained a
preliminary injunction, which both enjoined defendant from using the
"Copitrak" mark in the meta tags of its site, and required defendant to post
the language noted above on its web site. On this appeal, the Seventh
Circuit affirmed.
Relying principally on the initial
interest confusion doctrine, the appellate Court found that "Initial interest confusion, which is
actionable under the Lanham Act, 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."
In reaching this result, the Court rejected defendant's argument that its
right to use plaintiff's mark to describe its abilities to service and
maintain plaintiff's "Copitrak" product allowed it to use that mark in the
meta tags of its web site.
The Court opined "
What is relevant to the preliminary
injunction is not that Equitrac may advertise that it is capable of
servicing Copitrak. Equitrac is free to do so; it is also free to place
comparison claims on its web site, or include press releases involving the
litigation between Equitrac and Promatek.. It is Equitrac's use of the term Copitrack in its meta tag that is a prohibited
practice because of its potential for customer confusion."
The Court also rejected defendant's argument that injunctive relief was
unwarranted given the sophistication of the customers purchasing the
parties' respective products, and that defendant had not, as yet,
consummated a transaction through its web site.
Comments:
The judgment in this case raises a few interesting academic issues.
1. Re Interpreting the Scope of Meta Tags
The judgment provides an interpretation of its own on the use of Meta
Tags in the web documents. Meta tags relate to the context in which a
particular web page may be indexed by a Search Engine.
The Consumer searching for any information on the web also has a right to use
technological devices such as the Search Engine to locate the information of
his choice. If in the process of searching for a VSNL, the ISP, a search
engine extracts a page from SIFY and an article comparing VSNL to various
other ISP s, is it correct to say that the Consumer is being "Confused"
?.
If this linking of one site as relevant to another has to be facilitated by
the Meta Tag, then it is an essential consumer information tag. The Meta Tag
itself neither says the product is similar t another or superior to another.
It only indicates that the subject matter of a web page is relevant to the
Netizens who are searching for information on the relevant term.
It appears that the Court could have taken a broader view of the use of Meta
Tags than it has done in this case.
2. The Value of Disclaimers
The Lower Court has in this case recognized the value of a disclaimer which is
a disclosure that should address the need for preventing Consumer
Confusion.
Even though the appeal's court went beyond the disclaimer and ruled the
removal of the Meta tag itself, it is nevertheless relevant to take note of
the judgment of the lower court which opined that the disclaimer has some
value in such disputes. (This is the principle envisaged under Naavi's Verify
For Look Alikes Service, details of which are available at
www.verify4lookalikes.com ).
It can also be noted that the relevancy of the objection raised by the
plaintiff to the sufficiency of the use of the disclaimer in his appeal
was built in the context that it was self declaratory from the defendant and
therefore some motives could be imputed. If it had been a third party service
such as what is envisaged in Verify for Look Alikes, the argument would
perhaps be irrelevant.
3. Netizen is Dumb Theory:
Yet another point on which the Court has taken a debatable view in this case
is in holding that the Netizen is Dumb Enough not to understand the
limitations of a search engine and the meaning of the links that the search
engine throws up.
If the Court thinks that a search engine user can get confused that every link
that a search engine throws up is essentially a related site and the user can
enter into business dealings with each of those sites as if he is dealing with
the Company which he is seeking, then the Court has failed to appreciate
the need for a minimum level of prudence for Netizens whose interest the Court
wants to protect.
This argument is similar to saying that if a Netizen searches on a term
"Indian Government" on Google and it throws up 18 lakh links containing the
term "Indian Government", he can get confused that in each of this 18 lakh
sites, he is seeing an official Indian government page and may take decisions
in that belief.
To say that this is ridiculous could be an understatement.
It appears that the judgment is yet another indication of how the Cyber
Society is being misunderstood by the Meta society. This needs a larger debate
in the Society.
Naavi October 5 , 2002 The Copy of the Judgment (PDF)
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