The art of concealment: use of a competitor’s trade marks in metatags held not to amount to copyright or trade mark infringement in Canada
The Federal Court of Canada recently handed down a decision which squarely examines whether the use of metatags can constitute copyright or trade mark infringement. In Red Label Vacations Inc v 411 Travel Buys Limited, 2015 FC 19, Justice Manson found that the impugned metatags did not attract copyright protection, and so the reproduction of them by a competitor in the source code of the competitor’s website could not amount to copyright infringement. His Honour also dismissed the plaintiff’s claims of passing off and trade mark infringement on the basis that the use of metatags by the competitor in this way would not likely lead to consumer confusion.
But first, what is a metatag?
For those readers that are more accustomed to the brick-and-mortar world, and the author unashamedly counts herself in that category, a metatag is a word that is placed in the source code of a website and its pages by the person in charge of the website. Significantly, metatags are not displayed on the website itself. Nevertheless, these invisible words are powerful tools because internet search engines (such as Google) use metatags to assist in indexing and ranking the relevance of websites in response to user search requests. Put simply, if a keyword is embedded in a website’s underlying source code (i.e. as a “metatag”) then the website is more likely to appear higher in the list of search results in response to a user’s search for that keyword. The practice of seeking to influence where a website appears in a search engine results page (including through the use of metatags) is known as “search engine optimisation”.
The factual matrix
The plaintiff, Red Label, offers online travel information services and bookings through its website www.redtag.ca. It owns three registered trade marks: “redtag.ca”, “redtag.ca vacations” and “Shop. Compare. Payless!! Guaranteed”, which it has used since 2004.
The defendant, 411 Travel Buys, entered the scene in 2009 and similarly operates an online travel agency in competition with Red Label in Canada.
When 411 Travel Buys’ website went live, a number of its webpages copied Red Label’s metatags, including the metatags “red tag vacations” and “shop, compare & payless”. The copying of the metatags was so blatant that 411 Travel Buys even reproduced spelling errors found in Red Label’s source code.
Whilst the reproduced metatags were concealed in the webpage’s metadata (and not visible to customers visiting 411 Travel Buys’ website), Red Label discovered the use of these phrases and alleged that its competitor had engaged in copyright and trade mark infringement.
Justice Manson rejected Red Label’s argument that copyright could subsist in its metatags and, as a consequence, dismissed the allegation of copyright infringement. His Honour reiterated that in order to attract copyright protection, a requisite level of skill and judgment must be shown which necessarily entails intellectual effort. Red Label’s metatags simply failed to overcome this threshold hurdle. Justice Manson stated:
the Plaintiff’s redtag metatags…were substantially derived from a list of Google key words which are then incorporated into short phrases descriptive of travel… there is little evidence of any sufficient degree of skill and judgement in creating these metatags…or for the originality required in compiling data or other compilations.
However, Justice Manson did not completely shut the door on the prospect of copyright subsisting in metatags stating that there may be some cases where the requisite level of originality is satisfied.
Passing off and trade mark infringement
Justice Manson dealt with the passing off and trade mark infringement claims by asking whether 411 Travel Buys’ use of Red Label’s trade name and metatags such as “red tag vacations” , “red tag” and “shop. compare & payless” were likely to cause confusion amongst consumers about the source of the services on 411 Travel Buys’ website. His Honour answered this question in the negative.
Justice Manson stressed that the confusion about the source of the entity providing the services or goods had to arise once the person was on the website. His Honour did not think the mere use of metatags could give rise to such confusion:
The use of metatags in a search engine merely gives the consumer a choice of independent and distinct links that he or she may choose from at will, rather than directing a consumer to a particular competitor…
Here, there is no use of any of the Plaintiff’s trademarks or trade names on the Defendant’s visible website. The website is clearly identified as 411 Travel Buys’ website. There is no likelihood of deception as to the source of the services provided on the 411 Travel Buys website.”
Consequently, the passing off and trade mark infringement claims simultaneously fell down leaving Red Label victoryless.
What is the position in Australia?
Metatags have received only limited judicial consideration in Australia, so first principles apply when assessing whether use of a competitor’s metatag will amount to copyright infringement, trade mark infringement, passing off or misleading or deceptive conduct.
A metatag, consisting of a single word or short phrase will likely be regarded as too insubstantial to qualify for copyright protection in Australia (the de minimis principle). A Court might find that a collection of metatags qualifies for copyright protection as a compilation literary work, however – similar to the approach of the Federal Court in Canada – the ultimate question would be whether an author has expended “independent intellectual effort” in compiling and arranging the metatags as a compilation literary work.
Further, in Australia, the mere act of embedding a competitor’s registered trade mark as a metatag in the source code of a webpage, without more, may not amount to “trade mark use” and so not infringe. In Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd  FCA 1319 (CTI case), Justice Kenny held that the use of a metatag (without more) did not amount to “trade mark use”, as users cannot see metatags.
Whether use of a competitor’s metatag, on its own, amounts to misleading or deceptive conduct or passing off was not considered in the CTI case. It is theoretically possible that the use of a competitor’s trade mark as a metatag (without more) would, in all the circumstances, mislead the ordinary or reasonable consumer. However, such cases would be rare.
The above analysis would likely change if a competitor’s metatag was used in conjunction with other trade mark uses, for example, use in domain names, on webpages or in search engine results, as was the case in Mantra Group Pty Ltd v Tailly Pty Ltd (No 2)  FCA 291. It follows that visibility is a critical factor – the more visible a competitor’s trade mark is to consumers, the more likely such use will amount to a breach of the competitor’s rights.
Metatag usage is a topic which is certainly ripe for further judicial clarification in Australia. But for the time being, it appears as though use of a competitor’s trade mark as a metatag – so long as the trade marks does not appear in the domain name or text of a webpage (or in a search engine result) – can be characterised as a permissible art of concealment.