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By Richard Stobbe

What if a competitor copied the metatags on your website and you watched web traffic bleed from your own site while the competitor’s site enjoyed a bump in hits? Are metatags subject to copyright or trademark protection? The recent Federal Court decision in Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19 (CanLII), dealt with just such a dispute when Red Label sued its competitor 411 Travel for copying the title tags, meta descriptions and meta keywords on 48 pages of the 411 Travel website.

The court reviewed the facts and past metatag decisions and decided that, on balance, the metatags that were copied did not qualify for copyright protection. “In this case there is little evidence of any sufficient degree of skill and judgement in creating these metatags…or for the originality required in compiling data or other compilations… While in some cases there may be sufficient originality in metatags to attract copyright protection when viewed as a whole, the substance of the metatags asserted by the Plaintiff in this case does not meet the threshold required to acquire copyright protection in Canada.” (Emphasis added) There was copying, but without copyright, there can be no infringement.

As for the trademark claims, the court reviewed the role of the “searcher” (i.e. the potential customer who enters certain search terms into a Google search) in ultimately deciding whether or not trademark infringement had occurred. “Even if a searcher is looking for the website connected with a particular trade name or trademark, once that person reaches the website, there must be confusion as to the source of the entity or person providing the services or goods. If there is no likelihood of confusion with respect to the source of the goods or services on the website, there is no support for finding this prong of the test for passing off. Accordingly, use of a competitor’s trademark or trade name in metatags does not, by itself, constitute a basis for a likelihood of confusion, because the consumer is still free to choose and purchase the goods or services from the website he or she initially searched for.” In this case, there was no use of any of the Plaintiff’s trademarks on the visible portion of the 411 Travel website. Thus, the court dismisses the trademark infringement claims.

Interestingly, the role of the searcher was also reviewed in a case between Vancouver Community College and Vancouver Career College. Vancouver Community College sued for trademark infringement, on the basis of the rival college using “VCC” as part of a search-engine optimization and keyword advertising strategy. While this recent decision (Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2015 BCSC 1470 (CanLII)) didn’t deal directly with metatags, it dealt with the use of trademarks in Google AdWords, and the court noted: “The authorities on passing off provide that it is the ‘first impression’ of the searcher at which the potential for confusion arises which may lead to liability. In my opinion, the ‘first impression’ cannot arise on a Google AdWords search at an earlier time than when the searcher reaches a website.”

In other words, it is the point at which a searcher reaches the website when this “first impression” is gauged. Where the website is clearly identified without the use of any of the competitor’s trademarks, then there will be no confusion.

This helps clarify the laws around the use of metatags and Google AdWords; it also leaves open the possibility that metatags, in other circumstances, could qualify for copyright protection.

Calgary – 07:00 MT