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Playboy Enterprises vs. AsiaFocus ...Recent cases challenge hidden Internet links

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by Mark Sableman

for the Business Journal

The Internet is fascinating in part because of its structure one thing easily leads to another.

Hyperlink surfing is everyone's favorite Internet activity. But these linkages at times also give rise to legal concerns, particularly when the links are hidden and unexpected.

Hidden Internet links come in several varieties.

Two kinds of hidden links metalinks, and banner advertising links have recently led to serious litigation.

Metalinks are links in a Web page's hypertext markup language programming code that do not show up on a Web site display.

The computer language of the Web permits Web site authors to include as meta words (sometimes known as metatags) key words that will inform others (including search engines) about the content of the Web site.

For example, if you are in the widget-making business, you can include the key word "widget" in your metatags. When someone searches on a search engine for "widgets," your metatags will increase the chance that your Web site appears that response to that search.

Metatags, like anything, can be used improperly.

In several cases, business firms used key trademarks of their competitors as metatags.

In several cases decided in 1998, courts held that such use of another's trademarks to gain visibility for one's own Web site constituted trademark infringement and dilution.

In one case, Playboy Enterprises vs. AsiaFocus, an adult-oriented Web site that used "playboy" in its metatags, even though it had no affiliation with the publisher of Playboy magazine, was held to have willfully violated Playboy's rights and was assessed civil damages of $3 million.

Use of another's trademark in metatags may be allowable in some situations, however. The key issues are the purpose and effect of the use. If the trademark is used in an accurate descriptive sense, there may be no infringement.

The principle of descriptive use was recognized in the metatag context last year, in another case involving Playboy. This time, Playboy lost when it complained of former playmate Terri Welles' use of the trademarks "playboy" and "playmate" as metatags.

The court held that Ms. Welles was simply describing herself, not suggesting that Playboy ran or endorsed her Web site.

Accordingly, how one uses trademarks in metatags is all-important. If, as in the AsiaFocus case, the trademark is used deceptively to suggest an affiliation with the trademark owner, then infringement will be found.

If, as in the Welles case, the mark is an accurate description of the Web site content, it may be allowable.

By way of example, a seller of cheap glassware cannot use the trademark "Waterford" in its metatags to attract Web traffic, since it has no affiliation with Waterford. But a Web site devoted to collectors of Waterford crystal can use the trademark because it describes the subject of that Web site.

Another kind of hidden link came to the fore quite recently, when that experienced Web litigant Playboy and the cosmetics maker Estee Lauder Inc. separately complained of the linking practices of certain search engines.

Playboy didn't like it that when someone conducted a search on the Excite search engine using the word "Playboy," Excite then posted, over the search results, a banner advertisement for a non-Playboy-affiliated adult site.

Estee Lauder complained similarly that Excite posted a banner advertisement for Fragrance Counter a company that doesn't carry Estee Lauder fragrances in response to searches for "Estee Lauder."

The Playboy and Estee Lauder search engine cases were filed in February and are in the initial stages of litigation. However, the innovative legal theories they are based on are untested and present many problems.

At root, the situation they complain about isn't much different from a typical practice in the business world the attempt to sell consumers who are interested in one product on a competing product.

The "compare to" labels used on house-brand packages, a waiter's request that a customer who asked for "Coke" accept "Pepsi" instead, and even highway signs for hotels and attractions are often premised on steering a consumer from one brand-name product or service to a competing one.

The search engines contend that their banners simply apply this practice in the virtual world.

The metalink and search engine banner cases are neither the first nor the last set of disputes over Internet linkages. More visible links, such as traditional hyperlinks, framing practices and image linking, have also generated litigation, particularly where the links were perceived as deception, copyright infringement or appropriation of advertising opportunities.

New and developing Web technologies, which will enhance linking capabilities, will also create further opportunities for abuse and concern.

Courts will be challenged in these cases to regulate improper conduct without inhibiting the usefulness of Internet links.

(Mark Sableman is a partner with Thompson Coburn LLP in St. Louis.)

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