I Am Not a Lawyer

Today, I turn to a subject near and dear to the modern freelancer’s heart: search engine marketing. Well, more specifically, metatags, which are tags you put in your Web page to tell search engines what your page is about. Or in some cases, to lie about it to drive up traffic. That’s the basis of North American Medical Corp. v. Axiom Worldwide, Inc., out of the Eleventh Circuit. The companies on either side of that V compete in the same market, for spinal support devices that I hope never to need. Axiom has a Web site, where it put some of NAM’s trademarked product names into metatags. NAM sued for trademark infringement and won a preliminary injunction at the district level; the Eleventh Circuit upheld (for that part of the case). Specifically, the Eleventh decided that using the competition’s trademarks in your metatags is a use in commerce and creates a likelihood of consumer confusion, so NAM gets its injunction.

I am not educated enough about metatags or IP to compete or argue with Professor Goldman, so let me just note that this decision takes great pains to distinguish itself from 1-800-Contacts v. WhenU.com. That was a Second Circuit case in which WhenU.com was sued for making malware that popped up ads for competitors when the user searched for 1-800-Contacts. 1-800-Contacts lost its trademark infringement case because a URL is not a trademark and thus cannot be infringed. The Eleventh doesn’t seem to think much of the decision in general (”we think the Second Circuit’s analysis is questionable”), but also points out that Axiom used actual trademarks in metatags, not URLs. It also said Axiom caused search results to come up that used the trademarks, but Prof. Goldman pointed out that this might be Google’s fault. (Everyone, me included, assumes everyone else is using Google. Web designers wish.) So that’s one narrow standard you can use to figure out whether your search engine marketing is leaving you open to an infringement lawsuit.

On the whole, this doesn’t seem like an unreasonable decision to me, although I agree with Prof. Goldman that it would have been nice if the court had explained more thoroughly what type of metatags were at issue. (I can’t help picturing a clerk who barely understands it herself trying to explain it to the judges.) This sort of SEM seems underhanded, insofar as it misdirects dumb consumers, but not as dishonest as making designer knockoffs and such. I do wonder what kind of recovery is realistic for this sort of mild trademark infringement, but that’s between NAM and their expensive lawyers. And after all, if trademark holders snooze too long, they lose the trademark.