Case Summary: Making Sense of Metatags?

May 18, 2016

Tamara Ramsey provided a case summary for the Bulletin published by the Intellectual Property Institute of Canada about a recent case, Red Label Vacations Inc. v. 411 Travel Buys Limited, 2015 FCA 290, dealing with trade-mark and available by clicking here.

 

Case Comment: Making Sense of Metatags? Red Label Vacations Inc. v. 411 Travel Buys Limited, 2015 FCA 290

While metatags are as old as the Internet, there are very few cases to directly address whether it is possible to infringe a competitor’s intellectual property rights by using its trade-marks only in metatags. The recent Federal Court of Appeal decision answers this question with a definitive maybe?

The Federal Court of Appeal upheld the dismissal of claims for copyright infringement, trade-mark infringement, diminution of goodwill and passing off based on use of trade-marks owned by Red Label Vacations Inc. (“Red Label”) in metatags for the website of 411 Travel Buys Limited (“411 Travel”). The decision, however, is not definitive on the issue of metatags and infringement. As suggested in the conclusion of the concurring reasons of Madam Justice Dawson, “The extent to which a trademark may be used in metatags without infringing the trademark is, of necessity, fact specific.”[1]

 

The Claims

Red Label and 411 Travel are both in the business of offering travel services to customers over the Internet and telephone. Red Label uses the domain name redtag.ca for its website and 411 Travel uses the domain name 411travelbuys.ca for its website.

Red Label has three registered trade-marks: “redtag.ca”, “redtag.ca vacations”, and “Shop. Compare, Payless!! Guaranteed.” 411 Travel copied metatags from Red Label’s website, which metatags included “Red Tag Vacations” and “shop, compare & pay less.”

For ease of definition, the Federal Court of Appeal adopted the description of metatags from existing jurisprudence as follows:

32        A meta tag is part of a website not automatically displayed on the user’s computer screen in the normal course of viewing a website. A meta tag is put on the website by the website owner to provide key information about the website. Through the use of meta tags, a website creator can describe what is available at that particular site or insert any other information. A meta tag is written in HTML.

33        When search engines gather information they seek out and obtain the information in the meta tags. Meta tags are used by most search engines and directories to gather information, index a website and match the website to the key words in a user’s query. This generates search results corresponding to the user’s query. It is common to use meta tags to specify key words that will be matched to key words entered by someone conducting a search.[2]

It is important that none of the metatags that 411 Travel copied from Red Label appeared on the visible pages of the website for 411 Travel.

 

No “Use” on the Website

In the majority reasons of Mr. Justice Webb, concurred in by Mr. Justice Ryer, the analysis turned on well-established principles of trade-mark law: does use of the metatags constitute use within the meaning of sections 2, 4 and 20 of the Trade-marks Act.[3] The majority endorsed the trial judge’s application of the “classic Clairol analysis” which involves two separate elements:

  1. From section 4 of the Trade-marks Act, the question is whether the defendants associated their services with the plaintiff’s trade-marks; and
  2. From section 2 of the Trade-marks Act, the question is whether the defendants use the mark as a trade-mark for the purpose of distinguishing or identifying the defendants’ services in connection with the plaintiff’s ware or services? [4]

In the absence of any evidence that Red Label’s metatags were visible on 411 Travel’s website, there was no evidence of use of the marks for the purpose of distinguishing or identifying 411 Travel’s services in connection with Red Label’s services.

This lack of “use” was fatal to the claims for trade-mark infringement under section 20 of the Trade-marks Act and for depreciation of goodwill under section 22 of the Trade-marks Act.

 

No “Use” on Google

Red Label unsuccessfully sought to rely upon the 70th ranked search result from a Google search that included, among other things, the phrase “Book Online with Red Tag Vacations”.

The argument failed because the specific language in the metatag directed potential customers to Red Label’s website, not 411 Travel’s website. It therefore did not constitute use of the marks for the purpose of distinguishing or identifying 411 Travel’s services in connection with Red Label’s services.

The majority, however, noted that “[I]n some situations, inserting a trade-mark (or a trade-mark that is confusing with a registered trade-mark) in a metatag may constitute advertising of services that would give rise to a claim for infringement [emphasis added].”[5]

 

No Confusion

In her concurring reasons, Justice Dawson focussed on the issue of confusion. Although she specifically indicates that her reasons are not to be read as endorsing the trial judge’s remarks relating to “initial interest confusion”, she held that there were no errors of fact and law with the trial judge’s finding that there was no confusion because the use of Red Label’s trade-marks did not entice a consumer to visit the website for 411 Travel. A consumer maintains a choice over which website he or she wishes to visit.

Justice Dawson went on to hold that the trial judge’s finding that there was no likelihood of deception as the source of services provided on the 411 Travel website was determinative of the passing off claim. The trial judge reasoned that the consumer was free to choose to redirect his or her search back to the site that he or she initially searched for, that is, Red Label’s site.

 

No Copyright

The findings with respect to copyright were likewise, fact-specific. The trial judge left open the possibility that “[I]n some cases there may be sufficient originality in metatags to attract copyright protection when viewed as a whole.”

The metatags were substantially derived from a list of Google key words that were incorporated into short phrases. The appellate court did not challenge the trial judge’s factual finding that the substance of the metatags asserted by Red Label did not meet the threshold required to acquire copyright protection in Canada.

 

No Certainty

The Court was very careful to limit its analysis to the specific facts of this case and not to make any broad statements regarding the impossibility of establishing trade-mark infringement and passing off based solely on metatags. It also did not rule out the possibility that copyright could exist in metatags.

Absent an unfortunately worded Google search result, it is difficult to imagine how metatags alone would ever lead to successful claims for infringement of IP rights.



[1]Red Label Vacations Inc v 411 Travel Buys Limited, 2015 FCA 290 at para 45 [hereinafter “Red Label”].

[2]British Columbia Automobile Association v Office and Professional Employees’ Union, Local 378, 2001 BCSC 156.

[3]Trade-marks Act, RSC 1985, c T-13 [hereinafter Trade-marks Act].

[4] The Court cited Compagnie Générale des Établissements Michelin–Michelin & Cie v National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), 1996 CanLII 11755 (FC), [1997] 2 FC 306 at para 26 where Justice Teitelbaum describes the classic Cairol analysis from Clairol International Corporation v Thomas Supply & Equipment Co Ltd, et al (1968), 38 Fox Pat C 176.

[5]Red Label, supra at para 22.

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