Andrew J. Reitz on The Use of a Trademark in Metatags in a Descriptive Manner
Gregerson v. Vilana Fin., Inc., No. 06-1164 ADM/AJB, 2006 U.S. Dist. LEXIS 81731 (D. Minn. Nov. 7, 2006)
Associate, Faruki Ireland & Cox P.L.L.
The United States District Court for the District of Minnesota recently denied a party's motion for injunctive relief concerning the use of a party's registered trademark and trade name, noting that Plaintiff's changes to his website comport with the guidelines found to be appropriate concerning the use of metatags. In exploring the ramifications of Gregerson v. Vilana Fin., Inc., No. 06-1164 ADM/AJB, 2006 U.S. Dist. LEXIS 81731 (D. Minn. Nov. 7, 2006), and offering guidelines for practitioners concerning the potential liability associated with metatags, Andrew J. Reitz writes:
Plaintiff Gregerson sued Defendants for copyright infringement claiming that "Defendants took a photograph from Gregerson's web site and used it in advertisements without permission from Gregerson and without paying for the photograph." Defendants then counterclaimed on the theory that the websites created by Plaintiff Gregerson were "defamatory, interfere[d] with Defendants' employees and customers, and infringe[d] Defendants' trademarks." Defendants sought a preliminary injunction from the Court ordering Plaintiff Gregerson to "cease and desist from the use of Defendants' registered Service/Trade Marks and Trade Names, 'Vilana,' 'Vilana Financial,' 'Vilana Realty,' 'Vilanafinancial.com,' and derivatives thereof." (internal quotation marks omitted).
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The Gregerson Court was not persuaded by Defendants' [arguments]. As the Gregerson Court pointed out, “[a] defendant's use of a trademark in metatags in a descriptive manner can constitute a non-infringing fair use.” … certain web sites, such as Gregerson's site – which contained critical comments about Defendants – are protected by the First Amendment right to free speech. Finally, the Court noted that Plaintiff Gregerson's changes to his website comport with the guidelines found to be appropriate. Specifically, Gregerson "edited the metatags of his web site so that they are in a more descriptive format." As such, the Gregerson Court denied Defendants' motion for injunctive relief.
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Successfully representing a party being sued for trademark infringement based on metatags can be a difficult task, especially given the fact that the Circuits are split on what information in a metatag constitutes actionable conduct. Depending on the type of information contained in metatags, a party may limit its liability as a trademark infringer. With the rapid change in Internet technology, the desire by businesses to direct as many Internet users to their web sites as possible, and the difficulty in determining the difference between content that infringes another entity's trademark and information that simply describes the contents of a web site via a metatag, legal counsel must proceed with caution when advising clients on the potential liability associated with metatags.
(citations omitted.)