• Using Non-Related Metatags in Germany May No Longer be Unlawful, although Use of Third Party Trademarks as Metatags Remains Problematic

    24. März 2003

    The Higher Regional Court of Düsseldorf has ruled that a website's use of  metatags not related to the goods and services sold through that website (referred to as "non-related metatags") may be legal, and has thus reversed a decision of the lower Regional Court of Düsseldorf. As we discussed in our April 2, 2001 Internet Alert, metatags are html code that are often used to describe the subject matter of a website. Most Internet search engines search the metatag field when conducting searches. A website may therefore attract hits by placing terms within its metatags, even if such terms are not used in or relevant to the website.
    On March 27, 2002, the Regional Court of Düsseldorf ruled that the use of non-related metatags on the website of an online shop was illegal. In this case, a company that sells robes for attorneys and judges included metatags in its website for the words "Repetitorium" (private coaching for law students) and "University." The Court ruled that the use of such keywords, which had no actual connection to the content of the website, violates the German Unfair Competition Act. The court found that Internet users searching for items directly related to those metatagged words were unreasonably harassed because they paid online usage and telephone fees to be connected to a website that had no connection to their search parameters.
    This judgment was reversed by the Higher Regional Court on October 1, 2002. The court held that the use of metatags by the website would neither improperly divert potential customers away from the websites of competitors, nor would the use be an unfair means of attracting customers. In addition, the Higher Regional Court pointed out that the website's behavior would not result in Internet users being harassed by unsolicited content, because the mere appearance of the defendant's website address on the hit-lists of search engines would not lead to an increase of traffic on the defendant's website. According to the Court, the results generated by search engines will always include a huge number of websites in which the user is not interested. The Court also overturned the lower court's finding that Internet users were harassed because they would have to click through the Internet addresses displayed by the search engines.
    Despite this judgment, the use of non-related metatags remains problematic in Germany. Even if other courts follow the reasoning of this decision, the use of third parties' trademarks as metatags will still be deemed to constitute an illegal trademark infringement. Additionally, the use of both third party individual and company names will most likely still be regarded as a violation of name rights and might be unfair competition.
    In the United States, the Seventh Circuit reached a similar conclusion, holding in Eli Lilly & Company v. Natural Answers, Incorporated, that use of third party trademarks as metatags can demonstrate an intent to confuse consumers, which is a required element of any trademark infringement claim. For further discussion of that case, see our April 2, 2001 Internet Alert.
    Courts in the United Kingdom have the same view on trademark infringements by metatags as German and U.S. courts. The English High Court found, in the April 2002 case of Reed Executive plc and Reed Solutions plc v. Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs.com Ltd, that "invisible use" of a trademark was sufficient use to infringe a registered trademark. In the Reed case, the defendants, whose core business was in publishing, were using the trademark REED as a metatag on their website totaljobs.com, which held a job vacancies notice board. The plaintiffs had a trademark registered for recruitment services. One search engine would pick up the totaljobs.com website when the search term was simply "Reed." The judge decided that: (a) the job vacancies notice board offered the same class of services as those covered by the trademark registered by the plaintiffs; and (b) using the word REED as a metatag was use "in the course of trade," a necessary element for infringement under Section 10 of the UK Trade Marks Act 1994, even if such use was invisible to the public. The fact that the defendants were using their own name was not a defense to infringement (as it is in certain circumstances) because the defendants' use was invisible.
    In all three countries, companies and individuals with websites that use the trademarks of third parties in metatags must be cognizant of the heightened risks of trademark infringement. However, German companies may under certain circumstances no longer be at risk if they use non-related words as metatags.