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.
