Don't confuse metatags with initial interest confusion.

• Author: Dunaevsky, Yelena
• Position: Trademark infringement law

INTRODUCTION

The beginning of the new millennium brings with it a variety of technological advances and, as a result, more than a handful of legal issues. One of the most prominent technological breakthroughs is the Internet. In the last few years, courts have been faced with a barrage of Internet related legal dilemmas. (1) The focus of this Comment is whether the legal doctrine of "initial interest confusion" (2) should be applied in metatag (3) related trademark infringement cases. (4) Likelihood of confusion is required to prove trademark infringement. (5) Such likelihood, however, is not easily apparent in cases involving trademark infringement through the use of metatags (6) (parts of programming language embedded in a webpage that Web designers use to describe their webpages). (7) Therefore, some courts have used initial interest confusion (8) (the transient confusion that Internet users may experience while searching for a particular product or service on the Internet) to lower the legal threshold for the required proof of confusion. (9) This Comment argues that because it does not improve or clarify the existing process of legal inquiry in a trademark infringement litigation, the doctrine of initial interest confusion is a superfluous legal tool and may even be harmful from a public policy perspective.

Specifically, this Comment explores whether the doctrine of initial interest confusion, as used in metatag related cases, serves any useful purpose not already served by the expanded definition of actual confusion, (10) which is required to prove the likelihood of confusion element (11) in a trademark infringement suit. This Comment concludes that the usefulness of the doctrine is greatly compromised not only by the broad definition of actual confusion, (12) but also by the limitations imposed on consumers by a strict implementation of the doctrine. (13) Part I of this Comment provides background information on the Internet, search engines (14) and metatags. Part II offers an update on the relevant trademark law. Part III presents a brief overview of the recent court cases involving metatags and initial interest confusion. Finally, Part IV argues that a hasty expansion of the trademark law in applying the doctrine of initial interest confusion to metatag related cases may prove detrimental to both trademark law and the economy. Such expansion will likely not only promote superfluity, but would also favor the protection of trademark owners without considering the interests of consumers. This would, in turn, undermine consumers' free access to information and stifle healthy economic competition.

1. THE WORLD WIDE WEB (15)

   1. The Internet

      The Internet, or the "World Wide Web," is a worldwide network providing connections between millions of computers, thereby facilitating the communication and exchange of information. (16) The Internet offers an effective medium for businesses to advertise, sell their products or supply consumers with a variety of other information made available on the World Wide Web. (17) This information is located on electronic webpages (18) and is becoming available to an increasing number of consumers. (19) For example, over 2.8 million websites (20) existed in 1999, while the current number of webpages is estimated at over one billion. (21)

   2. Domain Names (22)

      Internet users have two basic options to locate needed information. The first option allows a web surfer (23) to access a specific site by entering the site's domain name into his web browser's (24) address window. Domain names are used to identify webpages on the Internet. (25) Every webpage has an assigned domain name that serves to distinguish it from millions of other webpages. (26) Essentially, a domain name serves as a street address by which different pages on the Internet can be located. A user can either type the domain name directly into the address bar on his browser immediately and bring up the desired webpage, or, if he does not remember the specific domain name, he can use a search engine. (27)

      Domain names contain two main parts: a top level domain and a second level domain. (28) The top level domain indicates the type of organization that operates the webpage. (29) For example, businesses usually use ".com" as their top level domain; organizations use ".org"; educational institutions are designated by ".edu"; and government agencies by ".gov." (30) The second level domain consists of the company's name, its product or a term descriptive of the company's name, product or business. (31) "Yahoo" and "nytimes" are examples of second level domains; thus, familiar domain names include "yahoo.com" and "nytimes.com". (32)

   3. Search Engines

      The second strategy websurfers use to locate information involves search engines. (33) If a user does not know the exact domain name of the website he needs to access, he can enter keywords into a search engine. (34) The search engine will then scan millions of webpages (35) to retrieve the information that matches the searched keywords. (36) Based on the keywords provided by the consumer, the search engine retrieves web addresses (37) that link to the pages containing closely matching information when the user clicks on the link with a mouse. (38)

      Search engines operate via two general methods: the "human-centered" method and the "mechanical" method. (39) Search engines like Yahoo are human-centered because their directories are compiled by people who individually evaluate every new website. (40)

      The mechanical method, used by search engines such as Alta Vista and Excite, provides "a mechanical index of the Web" by allowing massive databases to continuously search and read through thousands of new websites and then to index the websites according to certain specifications. (41) These specifications are provided by human beings who write "web crawling" programs, (42) but such programs do not have the flexibility of making intelligent choices. (43) Unlike human-centered search engines such as Yahoo, web crawling programs provide an avalanche of results, which often lack logical connection to the user's keywords. (44) Thus, although the human-centered method is slower than the mechanical method, its organization is probably more logical and useful to the Internet surfer. (45) This is where the process of ranking results becomes important. (46)

      Search engines use ranking systems to determine the order in which they present their results to Internet users. (47) Different engines use different factors when devising their ranking systems. (48) A common factor is the number of "times a given search term appears on a [w]eb page." (49) The likelihood of a search engine picking out a specific webpage increases with the number of times a given search term is used in that page. (50) Search engines also differ in the "relevance factor" (51) they assign to metatags. (52) Some award great weight to "keyword metatags"; (53) others, like Excite, ignore them altogether. (54) In other words, search engines focus on different properties or attributes of webpages to procure the list of websites they produce for the Internet users.

      If a web surfer is using a search engine which does not rely heavily on metatags, (55) he is less likely to be confused by an improper use of a metatag and thus less likely to suffer initial interest confusion. (56) Even if a search engine relies heavily on metatags, (57) the chance of encountering initial interest confusion is small because the search engine only generates a list of available websites. (58) Thus, the search engine does not force the user onto any specific site, but simply lets him choose from the list of websites that it generates. (59)

      Normally, a user can distinguish the source of the website based on either the short description of the website or its domain name. (60) Both of these distinguishing features are displayed underneath the website's link in the list produced by the search engine. (61) If the user makes a mistake by clicking on an incorrect page, or is dissatisfied with the products offered by the page he first chose, he can "normally return to the list produced by the search engine by selecting the `back' key" on his Web browser. (62) Thus, search engines do not trap users into particular websites, but simply provide users with a number of choices. (63)

   4. Metatags

      As discussed in Part I.C, some search engines match users' keywords to the metatags of Internet websites. (64) "A metatag is part of the webpage programming language that is embedded on a webpage, but never seen by the end user." (65) Web designers use metatags to describe their webpages. (66) The two types of metatags that some search engines use to index and rank websites, and which are most relevant to trademark infringement litigation because they have a greater chance of causing initial interest confusion, are the "keyword" and the "description" metatags. (67)

      A "keyword" metatag is used to specify the terms contained in the website. (68) If one or more of these terms is matched with the user's search request, the website containing the metatag is included in the results of the search. (69) Search engines also read "description" metatags, which allow web designers to give "a brief description of the contents of their pages in plain English." (70)

      There are reasons why websites strive to attract as many users as possible and why they use metatags to do so. To make money, a website must attract users. (71) A website can make money in two ways. (72) The first way is through selling the products or services offered on the site. (73) The second is by selling advertising space on the website to third parties. (74) The price of the advertisements depends on the volume of users that visit the site; the price goes up with an increase in the number of visitors. (75)

      Webpage developers advocate the use of metatags because metatags are most effective in attracting more attention...