Federal Court Weighs In On Copyright and Trademarks Rights in Metatags

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.

Gotta Catch ‘Em All: Nintendo Pulls The Plug On 3D Printed Pokémon Planters

Claudia Ng is obviously a big fan of Pokémon. So much so that she decided to design 3D printed planters in the shape of her “personal favourite starter Pokémon”, Bulbasaur. She posted and offered these ceramic planters for sale on Shapeways, an online marketplace for 3D printed items. According to a GameZone post, the original Shapeways page featuring the planters was pulled when the website got a takedown request from Nintendo saying that the planters infringed its copyright. Much like YouTube and Facebook, Shapeways has a copyright content policy and takedown procedure (outlined here) which allows copyright holders to address these issues quickly and effectively.

 

The adorable side of copyright infringement

According to Ms. Ng, Nintendo asked that the page be taken down and for all monies generated from products already shipped by Shapeways. It is unclear whether Nintendo will pursue any formal copyright infringement proceedings against Ms. Ng or the Shapeways website. Its recourse against the latter may be significantly curtailed depending on the forum of a potential suit. This is because many countries, including the U.S. and Canada, have enacted provisions in their respective copyright laws limiting the liability of internet intermediaries or ISPs.

3D printing technology promises to hold many challenges to IP rights holders. These challenges will extend beyond the copyright space to touch patents and trademarks as well. On the bright side, rights holders should be encouraged by Shapeways’ response to this claim and hope that other players in the 3D printing market follow suit. 

From the perspective of someone looking to create and sell content on these sites, takedown policies will always be a looming nuisance. There will invariably be frivolous claims and false claims of infringement made out of malice. It may sometimes prove difficult (and costly) to discern legitimate from illegitimate copyright claims. One need only look at YouTube’s copyright policy to get a notion of the major machinery involved in implementing a fair copyright takedown system.

 Google has developed a highly advanced ContentID system whereby rights holders may submit reference files to YouTube of their copyright protected audio and audiovisual works. YouTube compares all videos uploaded to its service to the content stored in this reference database to weed out infringing uploads. YouTube has created a manual copyright claim process for those uploads that are missed by this system. Instead of each claim resulting in an automatic takedown, the policy allows for a time period during which the uploader may make a “counter-claim”. The original claimant may also withdraw an erroneous claim during this period. 

Google has the funds and manpower to do this; smaller websites may not. Since national laws, such as the ISP safe harbour provisions in the American DMCA, often require that qualifying ISPs have a robust takedown procedure, websites like Shapeways are more likely to favour caution and adopt a policy of “when in doubt, take it down”. The hope is that this reality does not have a chilling effect on the productivity enabled by the exciting new technology that is 3D printing and the innovative services growing around it.

Ontario Superior Court of Justice Offers A Way Around Bad Faith Requirement in CDRP…Kind Of

On December 30, 2013, the Ontario Superior Court of Justice granted an Order forcing the transfer of a domain name back to the original owner. The Plaintiff Corporation, a Toronto area mold removal service, was created by Mr. Sullivan (the Defendant) and Mr. Dalrymple. Sullivan registered the domain name “mold.ca” for the business. 

photo by mikeleeorg

Sullivan and Dalrymple’s business relationship soured. Despite the fact that the website was clearly the property of the Corporation, Sullivan was the named registrant of the domain name and asserted ownership over it. He then sold it to a third-party. 

The Plaintiff undertook CIRA domain name dispute resolution proceedings but was unable to obtain the transfer of the domain because it was unable to prove bad faith on the part of the new owner.

To be successful in a complaint under the CDRP, one must prove that:

1. The Registrant’s dot-ca domain name is Confusingly Similar to a Mark in which the Complainant had Rights prior to the date of registration of the domain name and continues to have such Rights;
2. The Registrant has no legitimate interest in the domain name; and 
3. The Registrant has registered the domain name in bad faith.

 The CDRP further defines Bad Faith at Section 3.5 of the Policy. 

At Common Law, an action for the conversion of property does not require a plaintiff to prove bad faith on the part of the person holding the property. The Superior Court therefore granted the summary motion to have “mold.ca” returned to the Plaintiff. 

Bad faith may sometimes be difficult to prove rendering the CDRP useless to a trademark holder in those instances. At first glance, this seems like a quick and cost effective alternative to a trademark infringement and/or passing off action. 

While this decision is instructive, I am hesitant to hail it as ground breaking. This case was not decided on the basis of ownership of a trademark; the domain name registration itself was found to be personal property owned by the Plaintiff Corporation. Conversion would offer no aid in the case where a cyber-squatter registers domain names that are either identical to or confusingly similar with a trademark. Once again, here we have an actual registration that changed hands in contravention of the Plaintiff’s property rights as established by Ontario law. 

Domain name disputes usually turn around the bad faith and opportunistic registration of one or more domain names by a person with no interest in using those domain names for a bona fide purpose. Instead, the person seeks to contact a business or other entity, usually the owner of a trademark identical or similar to the domain name, to whom the registration may be “of value” in an attempt to obtain a price significantly higher than the cost of registration. 

For example, Fender Guitars Inc. owns the domain name “fender.com”. Suppose that they do not own “fenderguitars.com” (in reality they do and it redirects to their main site) and John decides to register it. John has no intention of using the domain for anything. In fact, all he wants to do is contact Fender and offer them the domain name for a premium. 

In this example, Fender does not, nor did it ever have a registration for fenderguitars.com. It therefore would not be able to prove any rights of ownership without proving its trademark rights. All of a sudden, our simple summary motion for the conversion of personal property has morphed into a full blown action for trademark infringement/passing off. 

Again, this does not mean that the decision was of no real value. It simply means that it is not as revelatory as one may expect. The tort of conversion is old law. All the Court did here was apply it to domain names. While this case certainly stands for the proposition that domain names are personal property and will be treated as such in matters of contract and tort, because of the facts of the case and the relationship of the parties, this by no means establishes an equal and equivalent alternative to CDRP proceedings or trademark infringement actions.

Win By Pin: Pinterest's Latest Battle for the Word "Pin"

Last October, Pinterest, the popular social networking platform sued a travel planning service called Pintrips in California District Court for trademark infringement, false designation of origin, unfair competition and dilution of their “PIN” family of trademarks. 

For those unfamiliar with Pinterest, it is a website whereby users (“Pinners”) collect images, recipes and other visual content and “pin” it to their user page (“board”). Much like the Facebook “like” button or Google’s “+1”, Pinterest has a “Pin it” social plug-in that third party sites integrate into their web pages. This is the vehicle by which Pinners add to their boards; by pinning images found on other websites.  

Photo by Norebbo

By its own description, Pintrips offers a service where you can “…shop for flights on your favorite sites, pin the options you care about, and see them on a personalized dashboard.” It markets itself as a travel facilitation application rather than as a social networking platform.

Pinterest’s claims are based on the Lanham Act and the California Business and Professional Code. Among other things, Pinterest claims that it had acquired rights in the “PIN-formative” trademarks before the Defendant began using its marks, and that the Defendant’s marks are confusingly similar and are likely to deceive the public into thinking that they are affiliated with the Pinterest brand. Pinterest’s claim for dilution is based on its assertion that its marks are famous, and have been so since before the Defendant started using its marks. They argue that Pintrips knowingly branded itself so as to capitalize on Pinterest’s goodwill.

Pinterest asks for interlocutory and final injunctive relief, delivery up and destruction, disgorgement of profits and compensatory damages.

While Pinterest acknowledges that the scope of its marks far exceed the travel industry, the Complaint alleges that the Pinterest travel section is one of the most popular parts of the website with more than 600 million total pins.

On January 6, Pintrips fired back with a motion to dismiss the Complaint.  Pintrips based its motion on the following grounds:

•     That Pinterest cannot assert ownership over the PIN prefix;
•     Based on this lack of ownership over PIN, the State law claims must fail; and
•      Even if the State law claims survive, the Court should decline jurisdiction in favour of the State Courts.

Setting the jurisdictional issues aside, Pintrips is arguing that “pin” is a generic term that describes a function. They argue that Pinterest has no trademark registrations for PIN and should not be able to obtain one given the market restricting effect this would have on a number of different web-based businesses.

This is a key element of Pintrips’ argument because Pinterest will doubtless argue on the motion that pin has acquired secondary meaning associating that prefix with its brand; and this regardless of what comes after that prefix. Oddly, Pinterest failed to allege that its family of PIN-formative trademarks are so strong that PIN has acquired secondary meaning. 

Pintrips has cited law to the effect that regardless of how strongly the public may associate a generic term with a given brand, trademark status cannot be granted in the generic term. This strong consumer association with a generic term is known as de facto secondary meaning and has been rejected by courts as sufficient grounds to claim ownership over a generic term like “PC” or “MP3”.

Pintrips provided a number of examples where companies use pin as a generic term in association with “software applications, online maps, and websites”. Among those applications mentioned were Microsoft Windows, Facebook and Google Maps.

It would appear that the law backs up Pintrips’ argument. At the hearing of the motion (Scheduled for February 13, 2014), it will be essential for Pintrips’ counsel to drive home the point that “pin” is a commonly used term to denote a specific type of action in the online environment, namely marking a specific thing or place on a webpage (Google Maps), or the act of posting content from a third-party website to a user page of some sort (Facebook and Pinterest).

It may be tricky to convince a judge, particularly one who is not in the habit of pinning things online, that pin is in fact a generic action in the online environment. It may be helpful for Pintrips to liken the action of pinning to the action of posting. Posting is a familiar action online and can relate to any number of things, some of which could also be described with the term pin.

If I were arguing the motion on Pintrips’ behalf, I would offer the following two analogies:

•       Whether I say “he knocked the ball out of the park” or “he hit the ball out of the park”, without any other information, the mental image one forms in their mind is that of a batter making contact with the baseball hard enough to propel it out of the field.
•       Whether I say “he jumped off the building” or “he leapt off the building”, without any other information, the mental image one forms in their mind is the same.

In the same way, posting a photo or pinning a photo amounts to the same thing. Both are generic terms denoting a single action.

Upon a search of the USPTO trademark database, it appears that Pinterest has applied for PIN (Serial no. 85698998) in association with a wide range of goods and services. The opposition period has expired but the trademark has not been registered. Pinterest also claims registrations in several other jurisdictions.

Pinterest’s claim is not based on a trademark registration, but on Common Law rights. Much of their argument turns on the fact that a great deal of its popularity comes from its third party plug-in buttons; and that the Pintrips button (that may be alongside the “Pin it”) button causes confusion and dilutes Pinterest’s brand. 

The fact that these buttons may appear side by side is a functional reality. Websites that use these third-party plug-ins tend to put them all in the same place on the page. From a visual inspection of these marks, it would appear difficult to confuse them. Apart from the word pin, the marks are completely different. The “Pin it” button has red text with a stylized font. The Pintrips button is in a plane blue font. The Pintrips mark also contains a visual depiction of a sewing pin. In the “Pin it” button, the word pin is a prefix. In the Pintrips button, the word pin stands alone and comes after the image of the sewing pin.

Pinterest argues that in addition to appearance, the confusing trademark sounds the same or confusingly similar. Depending on how one pronounces the word “interest” (in two syllables or three), this may be true. But here, Pinterest can only be comparing its PINTEREST mark with PINTRIPS; not their respective third-party plug-in buttons depicted above. This is not self-evident given the drafting of the Complaint.

While this is only a partial analysis, it may be for naught if the Judge agrees with Pintrips on their motion and dismisses the complaint before arguments for confusion are ever made. Suffice it to say that Pinterest will be fighting an up-hill battle on this motion, and if they succeed, perhaps in the ensuing jury trial.

This is a typical David vs. Goliath situation. The fame of the Pinterest trademarks is beyond question. However, as Pintrips argues, no degree of notoriety should give anyone a monopoly on a technical or generic term.

Post Script:

In a somewhat related turn of events, last November, the European Commission’s Office for Harmonization in the Internal Market, Trade Marks and Designs Division rejected Pinterest’s opposition to a registration for PINTEREST by a news aggregator website and corporation called Premium Interest Ltd. This means that if Pinterest wants to operate officially in Europe, it will have to either change its name or buy a license from the Registrant.