Expert Advice

by Jonathan Pink
     
      Search Engines in Overdrive
      Building a successful business has never been more complicated. Customers must be able to locate you using any major Internet search engine. Because 90 percent of search users never go beyond the second page of results, unless your website listing appears near the top, you might as well go fishing. But improving your search engine ranking, or "search engine optimization," can be fraught with legal pitfalls.
     
      Trademark infringement. Embedding keywords and metatags-or hidden code-on a Web page is the most common method of attracting search engines and boosting ranking. Using keywords and metatags that accurately describe a site's content is fine, but using a competitor's trademark can get you in trouble. (15 U.S.C. § 1125(a).)
     
      In Brookfield Communications, Inc. v. West Coast Entm't Corp. (174 F.3d 1036 (9th Cir. 1999)), the court ruled that including a competitor's trademark in metadata constituted trademark infringement because it diverted traffic to the defendant's site. Making an analogy to a roadside billboard that misdirects customers, the court held that the plaintiff's mark improperly caused initial interest in the defendant's site-and thus infringement-even though users soon realized the mistake. (174 F.3d at 106166.)
     
      One key to avoiding infringement is the "fair use" doctrine, which permits using another's trademark to identify your goods or services provided there is no likelihood of confusing them with those of the trademark holder. In Playboy Enter., Inc. v. Welles (279 F.3d 796 (9th Cir. 2002)), Playboy sued one of its former bunnies, Terri Welles, for using the words "Playboy" and "Playmate of the Year" in her website's metatags. Welles won, arguing that use of these terms was necessary to describe her as "Playboy Playmate of the Year 1981." (But see, Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006) finding infringement when the defendants' metadata contained the plaintiff's trademark even after the defendant stopped selling the plaintiff's product.)
     
      Another way to avoid infringement appears to be purchasing keywords-including a competitor's trademark-directly from the search engines. Then when a user searches for that keyword, an advertisement pops up with a link to your site, or a "sponsored link" appears that boosts your ranking to equal your competitor's. (See Playboy Enter., Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004); Government Employees Ins. Co. (Geico) v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004); see also, 1-800-Contacts, Inc. v. WhenU.Com., Inc., 414 F.3d 400 (2d Cir. 2005).)
     
      The Geico case involved Google's AdWords program, which sells the ability to appear as a sponsored link when a search is run using a competitor's mark. The court found insufficient evidence that using "Geico" as a keyword was likely to cause consumer confusion, and thus it found no infringement. However, the court held that if a sponsored link displayed the plaintiff's mark, it would violate the trademark law. Google lost a similar case in France several weeks later.
     
      In the 1-800 Contacts case, the Second Circuit ruled that software that provided a competitor's pop-up advertisements when users accessed a plaintiff's website was not infringement. The court reasoned that including the plaintiff's marks in a directory of terms that triggered the pop-ups was not a "use" in commerce as defined under trademark law.
     
      Although this line of cases is still developing, one thing is clear: The surest way to increase your website's ranking is to make like a politician and buy your way to the top.
     
      Copyright infringement. Stuffing your site with high-quality, original content is an excellent way to increase your search engine ranking. Stuffing it with content poached from another site will only lead to trouble. (See 17 U.S.C. §102(a) (copyright protection applies to literary, artistic, musical, and architectural works exhibiting a modicum of originality and fixed in any tangible medium).) Translation: You can get sued for misappropriating content. (17 U.S.C. §501(a).)
     
      Unfair competition. California Business and Professions Code section 17200 and 15 U.S.C. section 1125(a) broadly protect against unfair competition. In addition to the conduct discussed above, these statutes can apply to other techniques that professional Search Engine Optimizers regard as unethical, such as inundating blogs and discussion boards with return hyperlinks. Though links are important-they are one factor search engines look at when determining rank-a better approach is to obtain them legitimately by becoming popular with your peers.
     
      Unless, of course, you'd rather be fishing.
     
      Jonathan Pink (pink@lbbslaw.com) is a partner in the Intellectual Property and Technology Group at Lewis Brisbois Bisgaard & Smith in Costa Mesa.
     

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