Judge acts in "metatag" case

A federal judge has issued a preliminary injunction forbidding a Web publisher from embedding keywords in its site that exploit the popularity of a competing site, a practice that is rampant on the Internet.

In the ruling issued last week, U.S. District Court Judge Charles Legge forbade an online publisher of sexually explicit material from inserting the words "playboy" and "playmate" into a section of its site that is seen only by search engines. Playboy Enterprises, publisher of Playboy magazine, objected to the practice and filed suit in August against the Web site, alleging trademark infringement.

"Metatags" are invisible to those surfing the Web but are important to search engines indexing the hundreds of thousands of sites on the Net. The tags consist of keywords and phrases that the engines feed back to a database to help viewers find information.

Webmasters and publishers often insert metatags that attempt to pull in as wide an audience as possible. Metatags for Pepsi's Web site, for instance, contain references to actor George Clooney, the movie Air Force One, and Major League Baseball, all of which Pepsi promotes on its site.

Playboy alleged that defendant, Net publisher Calvin Designer Label, inserted the magazine's trademarks in an attempt to pull readers searching for the popular men's magazine. The practice caused the site, which has now been taken down, to come up before Playboy's site on some search engines, causing unfair harm to the magazine, according to its attorney, Neil Smith of Limbach & Limbach in San Francisco.

If Legge's decision becomes precedent, it could force Web sites to tone down such practices. The preliminary injunction enjoins Calvin Designer Label from using Playboy trademarks in its domain names, metatags, and other online materials. While only a preliminary injunction, it is the first court action to apply trademark law to a common but arcane practice on the Internet, and it is likely to be influential in similar cases.

"It would be perfectly natural for courts to look to this opinion to guide their own analysis of metatagging," said Mark Lemley, an assistant professor specializing in Internet law at the University of Texas.

Lemley added that other courts are likely to adopt the same analysis reached by Legge: "It's hard for me to conceive of a ruling that says company A should be allowed to use the name of company B, its biggest competitor, in its site to draw people."