September 15, 2020 |
Using Trademarked Terms in Meta Tags, Hashtags is Risky Business |
SAN FRANCISCO â In a complaint filed with the U.S. District Court for the Northern District of California last week, the operators of several online dating sites allege that a competitor has infringed on their trademarks and engaged in unfair competition. While the outcome of the case is far from certain, some of the issues raised in it are worthy of consideration, regardless of who prevails. Among other things, some of the allegations in the complaint involve common practices, some of which many site operators may not even realize are fraught with potential civil liability. In their complaint, Reflex Media (RMI) and Clover8 Investments, the operators of SeekingArrangement.com and several other dating sites, allege that SuccessfulMatch.com and a list of both named and John Doe defendants have adopted and used âcounterfeit marks identical to RMIâs Trademarks… in United States commerce.â While some of the allegations involve acts that are commonly found in trademark infringement complaints and other intellectual property litigation â things like using modified images originally published on the plaintiffsâ sites, for example â it also calls out acts which are not so visibly obvious at a glance. For example, in their complaint the plaintiffs allege that the defendants âuse one or more Infringing Marks within metadata keywords on their website, Attached to the complaint is an exhibit which displays the source code of a page on SugarDaddyMeet.com, demonstrating that among the terms in the siteâs keyword meta tag is âSeeking Arrangementâ â the name of RMIâs flagship dating site and one of the companyâs registered trademarks. The complaint also cites the defendantsâ use of social media hashtags that include the companyâs âseekingâ trademark, noting that the defendantsâ first use of those hashtags came several months after the plaintiffs began using them. âRMIâs official Instagram account for Seeking.com used the hashtags containing the SEEKING trademark (#seeking #seekingarrangement #whatareyouseeking #seekingluxury #seekingonmyterms #seekingnotswiping, in that order,) on January 9, 2020⦠and followed that post with many posts using those hashtags,â the complaint states. âOn June 8, 2020, the Successful Match Defendants began to use the hashtags #seeking, #whatareyouseeking, #seekingluxury, and #seekingnotswiping, in that order, on a post on its official Instagram page for SugarDaddyMeet.com… Additionally, the SugarDaddyMeet official Instagram account also contains âMutually Beneficial Relationshipsâ on its frontpage and other posts have used the SEEKING MILLIONAIRE trademark.â The complaint further notes that in a related case filed in a different court, the court dismissed the defendants from the case after finding that it lacked jurisdiction over them â and in the interim between the cases, the defendants made changes to some of the sites at issue in the case. âFollowing this dismissal, these Defendants edited their SugarDaddyMeet.com homepage to remove the term âmutually beneficial relationshipâ and replaced it with the term âSeeking Secret Mutual Benefits,ââ the plaintiffs allege in their complaint. âDefendants still use the term âmutually beneficial relationshipsâ on other pages on the SugarDaddyMeeet.com website as well as on their other websites. RMI also asserts that the defendants use of the phrase âSeeking Secret Mutual Benefitsâ represents âa strategic combination of registered trademarks of Defendantsâ competitors, namely, RMIâs SEEKING ARRANGEMENT and MUTUALLY BENEFICIAL RELATIONSHIPS marks, and OBOLEO LTDâs SECRET BENEFITS mark.â RMI alleges that the defendantsâ actions âindicate that Defendantsâ conduct is willful and intentional.â âDefendants knowingly combined these marks after they became aware that RMI was seeking redress for Defendantsâ violation of RMIâs MUTUALLY BENEFICIAL RELATIONSHIPS mark… Nevertheless, Defendants continue to use RMIâs MUTUALLY BENEFICIAL RELATIONSHIP mark on other pages of the SugarDaddyMeet.com site as well as on their other and affiliate websites.â While itâs not nearly as widely discussed as some more obvious intellectual property rights infringements, like copyright infringement claims stemming from content theft, use of trademarked terms in metatags can constitute an infringement on those marks. Courts in the Ninth Circuit (Brookfield Communications, Inc. v. West Coast Entertainment Corp), Eleventh Circuit (North American Medical Corporation v. Axiom Worldwide, Inc) and Seventh Circuit (Promatek Industries Ltd v. Equitrac Corporation) determined that infringing use of metatags can cause marketplace confusion, in some instances analogizing it to false advertising in the brick and mortar world. In Brookfield, for example, the court wrote that âusing anotherâs trademark in oneâs metatags is much like posting a sign with anotherâs trademark in front of oneâs store.â Itâs not quite as simple as âall use of third-party trademarked terms in metatags is prohibited,â of course â and the merits of any given case will rise or fall on the specific factual circumstances at hand. Even a complaint that ultimately fails in court costs money (and time) to defend though, so the decision to include metatags that may be infringing â or to use trademarked terms in social media hashtags â is not one any website operator should take lightly. Hashtag in sand photo by Pixabay from Pexels |