Links, Metatags, Framing, Streaming ContentThe Power of Convergence Technology Creates Fertile Ground for Trade Mark Infringement Claims.
The Internet has taken on the imprimatur of a new frontier. The technology for copying and linking paths of communication, be it by audio, video, or text are developing faster than the legal system can create means of enforcing commercial rights and preventing criminal behavior. One of the areas that has caused web masters and content providers significant grief is the unauthorized use of trademarked material. Indeed it is common practice for web sites to engage in “framing” proprietary text, video or audio with an infringers banners, or infringing on a trade mark through linking, or use of trade marks and/or names in meta-text, hot links or domain names. This practice has forced content providers and owners of intellectual property to prowl the net for infringers and take swift legal action to protect their valuable assets. This article highlights the current areas of “contention” in an effort to provide content providers and web designers with a preliminary road map for avoiding disputes related to site development and links.
Nominative Fair UseLinking, Framing, Hot Links and Hypertext
The law regarding use of trade names in Internet sites, embedded text and within the actual text of websites as descriptive material or metatags (so called connectors) is evolving. Even in the area of more conventional applications of trade mark law such as print, radio and televised media, each jurisdiction has adopted a slightly different set of factors for determining whether infringement has occurred.
Fair Use/Likelihood of Confusion Tests Defined
The two tests routinely applied by Courts to determine whether infringement has occurred are (1) the fair use defense, and (2) the likelihood of confusion test. A minority of Circuits has carved out an exception to trademark infringement referred to as “descriptive”,”narrative” or “nominative” fair use of a mark.
In the case of New Kids on the Block v. News America Publishing, Inc., the Ninth Circuit court held that it was not trademark infringement for two newspapers to run surveys concerning the popularity of the band, “New Kids on the Block” even though New Kids on the Block had its own hot line and fan club. The Court observed that “narrative use of a markwhere the only word reasonably available to describe a particular thing is pressed into servicelies outside the strictures of trademark law.” Id. at 308. The Court was also persuaded by fact that the newspapers (i) regularly conduct polls and therefore do not target only one rock group, (ii) do not use the groups logo, and (iii) do not suggest any level of sponsorship in their written materials.
The Ninth Circuit in New Kids opted for a fair use analysis rather than a likelihood of confusion test because the use of the trademark did not attempt to capitalize on consumer confusion or appropriate the cachet of one product for a different one. Instead minimal use of a mark was made of the only word reasonably available to describe a particular thing.
The following three-part test was adopted by the New Kids Court for determining whether an improper “commercial use” had been made of a trademark.
First, the product or service in question must be one not readily identifiable without use of the trademark.
Second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
Third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
In the case of Mattel, Inc. v. MCA Records, the District Court utilized the above-described three part test concerning nominative fair use articulated by the New Kids Court to find that the defendants could not effectively parody the “Barbie” doll without mentioning her by name. The Court observed that the song was a parody because it “critiques” the image the doll has acquired in some quarters. The Court found it significant that the album identifies on the CD case that “the song is a social comment and was not created or approved by the makers of the doll,” even though the warning does not appear on all versions of the CD single. The Court also observed that the defendants took other actions to avoid confusion. For example, the producer established a marketing plan to avoid any direct connection with the doll by avoiding use of the doll or persons with its image.
As an alternative holding, the Mattel Court applied the Ninth Circuits version of the likelihood of confusion test. The factors applied by the 9th Circuit are: (1) the strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendants intent in selecting the mark; (8) likelihood of expansion of the product lines. In the Mattel case, the Court found that after applying these factors, no likelihood of confusion existed.
The Fair Use Defense May Authorize Limited Disclosed Linking, Framing and Descriptive Use of Marks
Although a minority of jurisdictions have adopted the fair use defense in conventional trademark claims, the defense is readily adaptable to and is gaining recognition in Internet related cases. Accordingly, a Court in a Circuit which recognizes the “fair use defense” would probably apply this defense to determine whether the alleged infringer made narrative or nominative use of a trade name within a website, as a metatag or as part of a primary or secondary tier domain name. Thus, for example the fair use defense may be used to justify listing helpful sites, which the viewer may wish to visit, provided that the link shows the distinction between the two sites. This is often accomplished by having the viewer click on a full address as opposed to having the viewer “hot link” on a key word. The fair use test is, however, fact intensive and as set forth in the cases outlined below, the results will vary based upon the fact pattern presented to the Court. The better practice, in light of recent precedent, is to seek prior written permission to link between the site or to frame copy of the other site, even where the web master attributes ownership of the text or mark to the original author.
For example, in Radio Channel Networks, Inc. v. Broadcast.com, Inc., a New York District Court applied the Second Circuits version of the “fair use” defense to Plaintiffs claim that Defendants use of the word “radio channel” in its website to designate segments or subsections of the site infringed upon its trademark. Plaintiff claims that the subtitle “Radio Channel” infringes on its use of its corporate name, the Radio Channel. Interestingly, Plaintiff was unable to obtain a trademark for this name because it was too common a meaning. The Court in finding fair use looked to (1) the descriptive nature of the use; and (2) the users good faith. The Court found that the use of the word “channel” to designate subparts of the Broadcast.com site was a commonly used term in the industry. The Court found that this combination of words was used in a descriptive manner and that Broadcast.com did not intend to infringe on Plaintiffs use of the designation to attract Radio Channel customers to its site. In making its ruling the Court observed that,
“Granting too much credit to the associative possibilities of the Internet would present an intractable problem for trademark law, however. Notwithstanding the fact that any word can be keyed into a search engine to locate a website, the operator of a website surely should not be held responsible for having used every word on its page in a source-identifying manner. The intent of the alleged infringer, and not he associations actually formed by the consuming public, must remain the touchstone for evaluating whether words have been used in god faith in their descriptive sense.”
Utilizing this rationale, the Court determined that it was sufficient for the purposes of the fair use defense for Defendant to demonstrate that it used its logo and company trade name on the same page as the words, “Radio Channel”, thereby distinguishing itself from Plaintiff..
In the case of Jews for Jesus v. Brodsky, the Court utilized a “nominative fair use test” to find that a preliminary injunction should issue in favor of the plaintiff, Jews for Jesus organization. The Court held that plaintiff, Jews for Jesus would likely prevail against defendant who used the mark “jewsforjesus.com” as its domain name. In that case the infringer used the site “jewsforjesus.com” to present negative commentary concerning the Jews for Jesus organization. The defendant site was linked to a for profit commercial site selling judacia and educational materials. In granting an injunction in favor of the plaintiff, the District Court observed that injunctions routinely issue for use of the same or misleadingly similar domain names on both a primary and secondary tier level.
Using Trademarks or Trade Names in Embedded Text Constitutes Infringement
Several complaints have been filed alleging that embedding a trademark or trade name in httml code and thereby covertly directing users to a site constitutes infringement of the mark.
In Playboy Enterprises, Inc. v. Calvin Designer Label, the District Court entered an order which demonstrates the willingness of at least one District Court to restrain the use of competing trade names in any manner of indexing. The Order provides, in relevant part that:
“using in any manner the PLAYMATE or PLAYBOY trademarks, and any other terms or terms likely to cause confusion there with including PLAYMATELIVE or playboyxxx.com or playmatelive.com, as Defendants domain name, directory name or other such computer address, as the name of defendants Web site service, in buried code or metatags on their home page or Web pages, or in connection with the retrieval of data or information or on other goods or services, or in connection with the advertising or promotion of their goods, services or websites.”
* * * *
“disseminating, using or distributing any Web site pages, advertising or Internet code words or titles, or any other promotional materials whose appearance so resembles the Web site pages or trademarks used by PEI, so as to create a likelihood of confusion, mistake or deception”
In the case of Playboy Enterprises, Inc. v. Asiafocus, Intl., a magistrate issued a report and recommendation stating that the use of (1) the domain name “ASIAPLAYMATE.com”, (2) embedded text containing the words “playboy” and “playmate” and (3) the slogan “for the Playboy in all of us” was likely to cause confusion and divert Internet consumers from sites sponsored by the
trademark owner, Playboy Enterprises, Inc. The magistrate also opined that Defendants were liable for dilution of the mark. The elements of the dilution test focused on by the magistrate included the potential that use of the mark would prevent consumers from distinguishing between the goods and services of the parties and/or will damage plaintiffs good will.
The general trend is to enjoin overt copying of marks in domain names, website addresses, indexes, metatags and banners. Nonetheless, analysis of recent cases demonstrates that in each case Courts will undertake a factual analysis concerning the narrative use of the mark, the likelihood of confusion, and potential application of other defenses such as First Amendment and satire or parody. Importantly, the results concerning infringement claims (even the same claim) will also vary by jurisdiction because not all Circuits have adopted the same elements of the “fair use defense” or likelihood of confusion tests.
Disclaimers May Not Be Enough to Avoid Liability, Particularly If the Likelihood of Confusion Standard is Applied
Some web masters believe that it is appropriate to use the copy of another site, link to another site using “hot links” or embedded text or use a trade mark that they do not own as long as they provide a disclaimer within the site. Recent case law demonstrates that this is probably not sufficient to avoid litigation, particularly where the viewer sees the other partys proprietary mark before they get to the disclaimer. A few examples may be helpful.
In Jews for Jesus v. Brodsky, the Court observed that similarity between the owners and alleged infringers domain name and home page was one of the most relevant factors in determining the likelihood of confusion. The Court further observed that, “considering the vastness of the Internet and its relatively recent availability to the general public, many Internet users are not sophisticated enough to distinguish between the subtle difference in the domain names of the parties.” Id. at 303. The Court further observed that defendants could not cure its deceptive use of plaintiffs mark through use of a disclaimer. The rationale utilized by the Court was that: (1) the domain name and homepage were reached before the content could be read, and (2) the content of the site is not completely different from the content of sites offered by the trademark owner.
Similarly, in the case of Planned Parenthood v. Bucci, the District Court held that use of the plannedparenthood.com domain name and the load line “welcome to planned Parenthood Home Page” on an anti-abortion site created a likelihood of confusion between the marks. In that case, the Court enjoined use of the Planned Parenthood mark in the domain name and in defendants web site, home page, or in any other materials available on the Internet. This broad injunction was upheld on appeal to the Second Circuit. The Court also observed that due to the confusing similarity of the domain names and “due to the nature of Internet use, defendants appropriation of plaintiffs marks as a domain name and homepage address cannot adequately be remedied by a disclaimer.”
Only Use Anothers Trademark if it Describes Your Company and Use it at Your Peril
The sheer number of injunctions granted for alleged infringement of “top-level” and “second tier” domain names demonstrates that the owner of a mark may enjoin unauthorized use of marks as a domain name, embedded text or banner. The only exception to this trend that we have found is where the domain name or metatags are descriptive of the user; or are necessary by way of engaging in protected speech.
For example, in the case of Playboy Enterprises, Inc. v. Terri Welles, the District court authorized Terri Welles, a former Playboy playmate, to continue to (1) use the term Playmate of the Year in the title of her homepage and the link page, (2) use the term PMOY 81 designation, and (3) use the term Playboy and Playmate in meta tagging (coding) of the site. The Court found that Ms. Welles designations constituted a fair use of the Playboy, Playmate and PMOY marks because use of the marks described her persona, and because she did not attempt to trick consumers into thinking that this was a Playboy authorized site. In fact she used different font, did not use the Playboy bunny logo, used a disclaimer, and did not use the terms Playboy or Playmate in her domain name.
Another case, Ballys Total Fitness Holding Corp. v. Faber, demonstrates that a web designer can (1) use trademarked within links he created to demonstrate his or her skills as a designer of that website, and (2) use of work to comment upon a product or service without creating confusion in the mind of consumers. In Ballys the Court found that use of the tag “Ballys sucks” as a domain name and link was a fair use of the Ballys trade mark because the term “Ballys sucks” was used to designate a site containing consumer commentary on the quality of the Ballys establishment, which was protected speech. The Court also held that the web designer further insulated himself from liability by using a disclaimer, stating that his site was not authorized by Ballys. Based upon these actions, the Court determined that no reasonable consumer comparing the Ballys official site with this one, could be mislead. The Court also rejected Ballys argument that listing the “Ballys sucks” within a list of links to other sites, including pornographic sites, tarnished Ballys image. In rejecting this claim the Court declined to restrict linking to those who receive permission only after reviewing the creative elements of other linked sites, observing that,
“Looking beyond the “Ballys sucks” site to other sites within the domain or to other linked sites would, to an extent, include the Internet in its entirety. The essence of the Internet is that sites are connected to facilitate access to information. Including linked sites as grounds for finding commercial use or dilution would extend the statute far beyond its intended purpose of protecting trademark owners from use that have the effect of “lessening… the capacity of a famous mark to identify and distinguish goods and services”.
How to Avoid Trademark Litigation Over Linking.
Counsel should be consulted before launching text over the internet because our technological capabilities to make unauthorized copies and direct the path of users surfing the net exceed the right to use marks and content permitted under trade mark and copyright law. Counsel should review the text, the intended path of the html code, market plans and proposed “framed” text. To avoid exposure, the web master should obtain permission for all copying and links. The web master and Counsel should develop and monitor “take down” procedures whereby the company may be informed of infringement claims and allegedly infringing content may be evaluated and if appropriate, removed from the site.
Many organizations have considered the linking issue and have developed policies concerning linking. These policies are often posted on the company website or available through the web master. Concessions or agreements which may be demanded as a condition to granting permission to link, include the following requirements:
1.The Linked site must use a specific form of the logo, mark or go to call (html code) which may be downloaded or otherwise provided by the owner of the mark.
2.The mark may only be used for the purposes of making an active link.
3.The use of the mark must be accompanied by a disclaimer language indicating that use of the mark as a link is not an endorsement of the linked site.
4.An agreement that the disclaimer will not be removed from the site.
5.The site name and marks must appear on the same page and as prominently as the linked mark.
6.The linked mark cannot be displayed in a manner that implies sponsorship, endorsement or license.
7.The mark can not be altered in any manner.
8.The mark may not be used on any site that disparages the owner of the mark or its products.
9.Acknowledgment that the policies do not grant a license or any other right in the mark; and the owner reserves the right in its sole discretion to terminate or modify permission to link at any time.
10.The owner reserves the right to take action against any use that does not conform to company policies, infringes on any intellectual property right, or violates any law.
11.The owner disclaims liability for any warranties that may be express or implied by law regarding the mark, including warranties against infringement.
In order to protect both the company seeking to link and the intended link, permission should always be in writing, signed by a party with authority to bind the company. Permission should be broad enough to include use of the mark on modified versions of both sites without prior consent of the linked party. Use of the link should be authorized regardless of the server, ISP or other host used by the linking party. The linked party shall not have the right to dictate content of the site or otherwise prevent linking because of the content of other sites contained on any list of links within the site, provided that those links are not maintained by the party seeking permission to link.
If permission is not obtained and linking text or use of a mark is considered a fair use or other non-infringing use (such as parody), a disclaimer, distinguishing the site from the trademark owners is necessary as indicia demonstrating a good faith attempt to avoid confusion. A market plan, such as the one identified in the New Kids case would also be helpful in proving that a concerted effort was made to avoid confusion and/or trading off of the name or product of another.