In Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), the Federal Court had occasion to consider whether using metatags could constitute copyright infringement, trademark infringement, passing off or depreciation of goodwill. Justice Manson dismissed all of these claims. This decision is of particular interest since the reasons (partly) extend beyond the facts of the case and make a broader legal statement on the status of metatags as IP in Canada.
A metatag is a piece of information contained in a webpage’s code. Its purpose is to describe the contents of the page to help search engines place the page in search results based on the search terms used. In this case, the Defendant used metatags that were either identical or very similar to the Plaintiff’s registered trademarks. It also evidently copied these metatags from the source code on the Plaintiff’s website.
On the copyright claim, the Court had to determine whether the Defendant’s metatags met the originality requirement and, if so, whether a substantial part of the Plaintiff’s ‘work’ was copied. Justice Manson surveyed some cases that have addressed metatags. He cited Justice Hughes in Netbored Inc v Avery Holdings Inc in which, without speaking determinatively on the issue, Justice Hughes casted doubt onto whether metatags were protected by copyright.
Justice Manson did not pronounce definitively on whether metatags were susceptible to being protected by copyright in general. Rather, he found that there was no copyright infringement because of a lack of originality on the facts of the case. The metatags used by the Plaintiff were largely copied from a Google keyword list. There was therefore insufficient skill and judgement exercised for the Plaintiff’s metatags to merit copyright protection.
Even if the Plaintiff’s metatags did benefit from copyright protection, the Court found that the Defendant did not copy a substantial part of the overall work. The record showed that the Defendant copied the metatags on 48 individual pages of the 180,000 pages that make up the Plaintiff’s website. While recognizing that substantiality in copyright law is a qualitative and not quantitative measure, the Court refused to find infringement based on the small number of words copied even though they were identical to the metatags found on the Plaintiff’s site.
On the passing-off and trademark infringement claims, the Court found that there was no likelihood of confusion. Even though using the metatags may have caused consumers to be presented with the option of navigating to the Defendant’s website, the website itself did not masquerade as the Plaintiff’s. This makes it unlikely that a user would be confused into thinking the Defendant was actually the Plaintiff. This reasoning applies more broadly to any instance in which a defendant, though using the plaintiff’s trademarks as metatags, does not represent itself as the plaintiff on its actual website.
The Court refused to import the so called “initial interest confusion” doctrine applied by some United States courts. Under this theory, an infringement may be found when a potential customer’s initial interest is drawn away from the plaintiff’s offering and towards those of the defendant through use of the plaintiff’s trademark. The Court noted that even if it were disposed to consider initial interest confusion, the doctrine did not apply in the present case. This is because there must ultimately still be confusion as to the source of the goods. Once a person navigates to the Defendant’s website, it is immediately apparent that the site is not affiliated with the Plaintiff’s business.
The claim for depreciation of goodwill under Section 22 of the Trade-marks Act was also rejected. Citing Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée., the Court found that the Plaintiff’s trademarks were not being used as registered and that the claim under Section 22 must fail on that basis.
Whether metatags should be copyrightable is an open question. Some may say that they should be in principle, so long as they are original either in content or in their organization. For my part, I am doubtful as to whether they should qualify as a work. While it is settled law that a work need not be in a human readable format to attract copyright protection, the metatags are never really viewed in any format. They do not appear as an image or colour or effect on a website; they exist solely as a tool to help search engines index webpages.
Consider a fishing analogy: the website (the actual work) is the fish. The search engine is like a sonar fish finder and the metatags are sonar reflections that give away the positions of the fish. The sonar reflections are not the fish themselves. Likewise, the website is the protected work, not the metatags which simply help one find the website.
While this is an interesting point of debate, I think the implications on trademark law are far more important. This decision demonstrates how the current trademark legal regime is ill-equipped to address an unfair business practice relating to the use of trademarks.
I am not certain that it should. At the heart of trademark law is the effort to eliminate consumer confusion and allow consumers to be reasonably certain as to the origin of the goods and services they purchase. As the Court found here, that goal is not served by rending use of a trademark as a metatag infringement. While some may consider it a dubious business practice, the absence of confusion takes this scenario out of the realm of trademark law and into the realm of unfair competition. As the Federal Government has learned, it must be careful in how it attempts to address those issues under the Trade-marks Act lest the provision be struck down on constitutional grounds like Section 7(e).
Arguably the Court’s decision on the Section 22 claim was fact specific and leaves the door open to claims of depreciation when the trademark is used by the Defendant exactly as registered. In the absence of a claim in passing-off or trademark infringement, trademark owners may yet be able to avail themselves of that remedy when their competitors use their trademarks as metatags.