The Internet and Trademark Law: A Primer

Despite Vice President Gore’s belief to the contrary, the Internet was, in fact, developed by the Department of Defense in the early 1970s. The Internet, among other things, includes a system of "Web pages" or of "Web sites," which allow users to interact with one another. Users access Web sites by either typing in a specific address (e.g. www.moss-barnett.com) or by utilizing any of several search engines (e.g. Yahoo, Alta Vista, Lycos, etc.).

The legal issues involving the Internet and e-commerce are varied and constantly changing. This article will briefly discuss three types: (1) domain name disputes; (2) Internet meta-tags; and (3) Internet linking.

Domain Name Disputes

Historically, the domain name system has been administered by Network Solutions, Inc. ("NSI"). NSI’s domain name registration system has been on a "first come – first served" basis. This system has permitted individuals to intentionally register a domain name incorporating the trademark of an established company with which the individuals are not affiliated. Thus, when a trademark holder gets around to registering a Web site incorporating its trademark, it may find that the desired name has been taken by such a "cyber-squatter." These cyber-squatters can attempt to sell the domain name for a significant amount, as the only other recourse for the trademark holder is costly litigation. This practice can be lucrative; Compaq paid over $3 million to purchase the domain name "Altavista.com" from a cyber-squatter and George Lucas paid over $1 million for the names "Episode1.com" and "Episode2.com."

Much of the litigation surrounding domain name and trademark law has been between legitimate trademark owners and cyber-squatters. While in many instances courts have aggressively applied trademark law to prevent squatting, they have also been more reluctant to find trademark infringement when a domain name is used for dissimilar goods or services.

Internet Meta-Tags

Meta-tags are encoded search terms invisible to the computer user but detectable by a computer in the hypertext markup language ("html"). Meta-tags are one means by which a search engine will locate Web sites which match the search in question. Issues of trademark infringement through the use of meta-tags can occur in the following manner. A new company decides to advertise its services on the Internet. The owner of the new company recognizes that it does not have sufficient consumer recognition to cause people to search for it on the Internet. When creating the Web site, the new company codes its site with meta-tags from a prominent and more established competitor in the same industry. Thus, consumers searching for the prominent competitor will also come across the new company.

Although meta-tag issues have less frequently been litigated in the courts, plaintiffs have enjoyed some success, including injunctions prohibiting defendants from misusing meta-tags.

Linking

Hyper-links are vital to the Internet, as the linking of various sites together enables users to browse the Web. Thus, a user at one Web site can follow a link to another Web site. The use of these links, however, poses potential problems for trademark owners because hyper-links may infringe on others’ trademark rights. This potential problem can occur if a user clicks on a link, goes to another Web site, and is confused as to the association between the two sites. This confusion may be greater if the link takes a user to an internal page of the second site, circumventing the second site’s home page which contains its identifying information. An additional problem arises if the first site implies an association with the linked site expressly or implicitly through the manner by which it uses the trademark of the second site. Such unauthorized associations may lead to trademark liability.

Lessons to Learn

Companies are well advised to regularly monitor their trademarks to determine if they are being misused on the Internet. They should set up regular audits and run their trademarks (and variations of them) through several of the larger search engines. Become concerned if such a search turns up sites associated with your competitors.

Additionally, closely monitor your own Web site. Does your Web site use the trademarks of others as meta-tags? Do not assume that your Web developer is aware that such programming should be avoided. Even if your company is not aware that such meta-tags are being used, it can still be liable.