Introduction

During the past few years commercial use of the Internet has boomed to the point where publishing companies - whether they be a Random House, a small niche publisher or a self-publisher – look upon opportunities from owning their own website as a relatively inexpensive marketing cost for increasing company recognition, sales and profits for their individual titles and product lines. As publishers begin to more actively utilize the World Wide Web for promotion of their company and products they should become more knowledgeable of Internet issues that may affect their online marketing efforts.

Trademark, Unfair Competition Law & the Right of Publicity

One of the guiding principals of trademark and unfair competition law is the protection of the commercial value in trademarks and trade names.

In addition the right of publicity protects the commercial value of the name or persona of a "famous" personality. Trademark, unfair competition and right of publicity legal actions generally result from infringement claims based upon conduct that confuses or misleads consumers to the commercial detriment of the owner of the trademark, trade name or personal name. This complained of activity is as pressing a matter in the physical marketplace as it is in the online marketplace.

What are Meta-Tags?

Meta-tags are invisible hypertext mark-up language; commonly referred to as HTML code that is inserted in a website by the website owner. The meta-tags generally consist of key words and phrases that describe the content of the website. Their purpose is to enable an Internet search engine, such as HotBot, Infoseek or Alta Vista, to read the meta-tags and identify the website containing the respective meta-tag as a relevant website with respect to a particular search word or phrase.

An example of how a publishing company might use meta-tags is the following. XYZ Publishing has recently published a book on the subject of parenting, entitled How To Be A Better Parent, and one of its marketing objectives is to publicize this title on its website. In an attempt to attract more viewers to its website the promotional copy for How To Be A Better Parent contains numerous references to the word "parenting" and variations on that word such as "parent", "parents", and "parented". In addition the website programmers could also include invisible meta-tags that contain the word "parenting" and its variations in the website. If an individual performed an Internet search on the word "parenting" the respective search engine would look for the word "parenting" and its variations in the visible text of the XYZ Publishing website - the promotional copy for How To Be A Better Parent – as well as the invisible meta-tags.

By inserting the meta-tags the programmers are attempting to increase the likelihood that a particular website will be ranked higher than another website. Many search engines rank a website based upon the number of times a word or phrase is used in the website as well as on where the word or phrase is located on the web page, with greater importance being accorded if the word or phrase is used at the beginning of the web page. Therefore, it is more likely that an Internet search on the word "parenting" would result in finding the XYZ Publishing website and the book How To Be A Better Parent if the promotional copy frequently repeated the word "parenting" and its variations and if meta-tags using the word "parenting" and its variations were placed at the beginning of the web page as well as throughout the remainder of the web page. By using the meta-tags in this manner it is possible that a search engine would determine that the XYZ Publishing website was the most relevant response for a search on the word "parenting".

By now you may be asking yourself is there anything wrong or illegal with the way XYZ Publishing used meta-tags in an attempt to increase the probability that the XYZ Publishing website would be found? The answer would be no and that the use of meta-tags was a good marketing strategy; that is unless the word "parenting" or one of its variations was a trademark owned by another entity.

Rule: Properly use meta-tags as part of your marketing strategy to bring web surfers to your website.

Invisible Infringement

It is also possible for XYZ Publishing in an attempt to increase the viewership of its web page to utilize other owner's trademarks or identifications in its meta-tags. This can be illustrated by once again using as our example the XYZ Publishing's promotion of the book How To Be A Better Parent. In this scenario the programmers could be instructed to incorporate meta-tags in the XYZ Publishing website of words, phrases or names that are readily recognized with respect to the subject matter of parenting such as "Parenting Magazine", "Dr. Spock", or the titles or names of well-known parenting books, programs, famous individuals or companies that the consumer identifies with the topic of parenting.

In this case if an Internet user searched on the name "Dr. Spock" it might result in their finding the XYZ Publishing web page and its book How To Be A Better Parent that was not authored by Dr. Spock. The Internet user is brought to the XYZ Publishing website through XYZ Publishing's use of another's trademark or identification. Since meta-tags are generally invisible to the viewer of the website when that page is opened by a web browser the Internet user may now be left wondering and confused why he/she is now looking at the XYZ Publishing web page and not at a Dr. Spock website.

Once again you may be asking yourself whether there was anything wrong or illegal with the way XYZ Publishing used the meta-tags in an attempt to increase the probability that the XYZ Publishing website would be found? This time the answer would be that it is highly probable that the inclusion of another owner's trademark or identification in the XYZ Publishing meta-tags may have constituted trademark infringement, dilution, false advertising or right of publicity violations.

Recently there have been a number of court decisions involving the issue of alleged misuse of meta-tags. In Playboy Enterprises, Inc. v. AsiaFocus, Inc. a federal court in Virginia held that the inclusion of Playboy's "Playboy" and "Playmate" marks in meta-tags constituted trademark infringement and dilution. In Niton Corp. V. Radiation Monitoring Devices, Inc. a Massachusetts federal court ruled that Radiation Monitoring Devices ("RMD") use of Niton's meta-tag descriptions to attract Internet users to RMD's website was likely to result in consumers believing that RMD was also known as Niton, that RMD was affiliated with Niton and that RMD made the products marketed by Niton; the court enjoined RMD from using its website to imply any association between itself and Niton. Playboy Enterprises was also successful in Playboy Enterprises, Inc. v. Calvin Designer Label in enjoining the unauthorized use of Playboy's "Playboy" and "Playmate" marks in meta-tags, but was unsuccessful in Playboy Enterprises, Inc. v. Welles in preventing a former Playmate's use of the words "Playboy" and "Playmate" as meta-tags because her use was fair use on the basis that the marks were not being used to compete with or suggest endorsement by Playboy of her website.

Rule: Do not misuse meta-tags by using trademarks, trade names or names of personalities owned by another without their permission.

Conclusion

Legitimate meta-tag use will continue to play a growing and more significant role in marketing a publisher's books by enabling web surfers to more easily find the publisher's website and information on a particular title, but it is also likely that the deceptive use of trademarks, trade names and names of personalities will also increase. Although the misuse of meta-tags may be illegal it is frequently difficult to catch. Therefore, as a means of caution a publisher who has important trademarks or trade names should periodically perform a search engine search of their trademarks or trade names to detect any misuse.