This case is the most recent in a small line of cases concerning the intellectual property implications, or lack thereof, in using website metatags formulated based on a competitor’s website or trade-marks.
While the Court’s findings are fact specific, many aspects of the decision may make it difficult for brand owners to assert rights where they find that their trade-marks or trade-names have been used as metatags in a third party competitor’s website.
Background and facts
Red Label is a travel business that offers information and bookings through its website. It holds registered trade-marks for “redtag.ca”, “redtag.ca vacations” and “Shop. Compare. Payless‼ Guaranteed”.
411 Travel is a competitor travel business that also offers travel information online.
Metatags include titles, descriptions and keywords that are not directly visible by a person visiting a website. These tags are used by search engines such as Google, to locate and rank websites.
When 411 Travel’s website went online in 2009 its website included metatags that were identical or similar to content that formed part of Red Label’s website including the terms “red tag vacations” and “shop, compare & payless”. 411 Travel had never used Red Label’s trade-marks in any visible portion of its website. It should be noted also that 411 Travel removed the offending metatags when requested to do so.
Red Label initiated a claim based in copyright and trade-mark relating to the metadata contained on 411 Travel’s website as well as the “look and feel” of the website.
There was no dispute that 411 Travel had copied metatags from portions of the Red Label website. However, the Court held that copyright did not subsist in the asserted metatags.
The Court noted that the asserted metatags were substantially derived from a list of Google key words and were indicative of common generic terms in the industry. The Court held that there was little evidence of any sufficient degree of skill and judgment or originality in either creating or compiling the metatags although left open the possibility that there may be sufficient originality in metatags to attract copyright protection in an appropriate case. In this portion of the decision, the Court did not comment specifically on the metatags that overlapped with Red Label’s trade-marks.
The Court went on to find that even if copyright subsisted in Red Label’s metatags, there had not been substantial copying having regard to the Red Label website as a whole. The Court noted that metatags from only 48 of approximately 180,000 pages on the Red Label website had been copied. The Court also held that in light of the functional role played by metatags, there was no substantial copying of the skill and judgment of the authors of the Red Label website.
The Court also dismissed Red Label’s claim that the 411 Travel site copied the “look and feel” of its website finding that the look was common in the travel industry at the time and based on evidence that the 411 Travel website had been created from a template purchased by 411 Travel.
Passing off and trade-mark infringement
The Court dismissed Red Label’s claims for passing off and trade-mark infringement.
The Court held that the use of a competitor’s trade-mark or trade-name in a metatag, without more, does not give rise to a likelihood of deception or confusion.
The Court noted that metatags are used by search engines to give the consumer a choice of independent and distinct links that may be clicked on rather than directing a consumer to a particular competitor. The Court held that for a likelihood of deception/confusion to arise, there must be confusion as to source once the website itself is reached. The Court rejected the argument that “initial interest confusion” would allow actionable confusion to be found at the point where a list of links is presented by the search engine.
The Court also held that section 22 of the Trade-marks Act was not applicable on the basis that the metatags were not identical to the Red Label registrations and in any event, their use only as metatags (as opposed to visible parts of the 411 Travel website) meant that there was no connection between the marks and the 411 Travel Services.
This case follows on a series of decisions that show hesitancy on the part of the Court to apply traditional intellectual property regimes to the use of metatags and search engine optimization techniques. There is no doubt that the Court will be faced with more such cases as online commerce, and the stakes associated with online competition, continue to grow.
In the meantime, brand owners should be aware of these kinds of non-traditional uses of their brands particularly by competitors who may use these techniques to gain an edge in the online world. If initial interest confusion is to be used as a ground for liability, it will have to be supported by better evidence than was available in this case.
Case Citation: Red Label Vacations Inc (redtag.ca) v 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19
By Adam Haller, Norton Rose Fulbright LLP