Red Label Vacations Inc. v. 411 Travel Buys Limited (2015 FC 19)
In January 2015, the Federal Court of Canada issued an important decision addressing the trademark and copyright significance of website metatags. The decision is one of the most comprehensive considerations of this issue to come from a Canadian court. In summary, the court held that in this particular instance, no copyright protection existed in the plaintiff’s metatags, nor did the defendant’s use of the plaintiff’s metatags (including metatags comprised of the plaintiff’s own trademarks) amount to trademark infringement.
The plaintiff, Red Label Vacations Inc., is a travel information and bookings website trading as Redtag.ca (“Redtag”), and primarily serving the Canadian market. The defendant, 411 Travel Buys Limited, trading as 411travelbuys.ca (“411”), was established several years after Redtag and is a competitor travel website, also serving the Canadian market.
Like many websites, both Redtag and 411 utilized “metatags” in an attempt to increase online traffic to their sites. Metatags are words that are woven into a website’s source code, but are not visible on the websites themselves. However, metatags can be discerned by search engines using algorithms to find online materials that contain the search terms. Thus, metatags are frequently used strategically, to increase a particular website’s ranking or placement among search engine results.
In February 2009, Redtag’s CEO searched for his company’s website using the Google search engine to monitor its ranking, and noticed that a number of 411’s web pages appeared in his search results. The metatags for these web pages contained terms similar to those contained in Redtag’s metatags. In fact, some of 411’s metatags consisted of Redtag’s registered trademarks. Other of 411’s metatags were compilations of travel-related terms, such as might be used by prospective customers looking for information and bookings for their next getaway, and were similar to those used by Redtag. Some even included the identical idiosyncratic misspellings that characterized Redtag’s own metatags. Redtag objected to 411’s use of these metatags.
Analysis of the Federal Court of Canada
The court considered both the trademark and copyright aspects of 411’s copying and use of Redtag’s metatags. On Redtag’s copyright claim, the court concluded that Redtag did not enjoy copyright protection in the metatags. Specifically, the metatags lacked the requisite originality, as it had not taken “skill and judgment” to compile these particular terms. The court found that Redtag’s metatags were derived from a list of Google key words, and that Redtag had culled from the list the “common generic terms” most relevant to the travel industry. The court left the door open for other, sufficiently original, metatags to rise to the level of copyrightability. Additionally, the fact that 411 copied metatags from only 48 individual web pages of Redtag’s total 180,000 web pages was insufficient to expose 411 to liability, even if copyright had been found to exist in the metatags.
With respect to trademark infringement and passing off, the court noted that other jurisdictions, including courts in the United States, have held that trademark infringement arises from use of a competitor’s metatags on the basis of “initial interest confusion.” Under this doctrine, confusion results even before a customer actually purchases a good or service, where the customer initially seeks a particular brand but is diverted to a competitor as a result of the competitor’s use of the first company’s trademark.
However, the Canadian Federal Court rejected this analysis with respect to the present situation, emphasizing that consumers did not actually see any infringing content on 411’s website, nor did any association with the Redtag website arise from 411’s use of Redtag’s metatags. In short, there was no confusion as to source. The court also found most compelling the fact that, although 411’s use of Redtag’s metatags may impact search results and rankings, consumers are nevertheless always left with a choice as to which of the various websites disclosed in their search they ultimately decide to visit.
This decision underscores the variability, across jurisdictions, of the law relating to metatags. In jurisdictions that reject the “initial interest confusion” doctrine and are more lenient towards use of competitor trademarks in metadata, brand owners should consider ensuring that their metatags are indeed original. Registering the copyright in sufficiently original metatags is a further protective step to consider, where possible, though the copyright treatment of metatags is still evolving in many jurisdictions, as illustrated by this decision in Canada. Even where registration is not a prerequisite for copyright protection, obtaining a registration may be prudent, as this generally provides evidence of the subsistence and validity of a copyright, together with proof of ownership.