E’ quanto stabilito dalla Corte Federale Canadese:
Introduction
The recently released Federal Court decision in Red Label Vacations Inc v 411 Travel Buys Limited(1)contains one of the first detailed considerations by a Canadian court of the issues of copyright and trademark infringement via the use of metatags. The court held that the plaintiff’s metatags were not subject to copyright protection, and therefore there could be no copyright infringement. The court further held that use of the plaintiff’s trade name and similar words in the defendant’s metatags was not passing off or trademark infringement since it would not likely lead to consumer confusion.
A ‘metatag’ is a word or short phrase that is included in the source code of a website, but does not appear on the visible webpage. Internet search engines may use metatags, along with other types of metadata, as a means of identifying relevant webpages and ranking the websites which are displayed in the search results.
Search engine optimisation is an integral part of marketing online and metatags are a common tool used to ensure the best possible search rankings for a company’s website.
The plaintiff, Red Label Vacations Inc, operated a travel information and booking service via its website www.redtag.ca, which had been in operation since 2004. The plaintiff also owned registrations in Canada for the trademarks REDTAG.CA, REDTAG.CA VACATIONS and SHOP. COMPARE. PAYLESS. GUARANTEED, which it used in promoting its business.
The defendant, 411 Travel Buys Limited, was a competing travel booking provider that launched in 2009. When the defendant’s website first appeared online a number of its webpages included metadata which was identical or very similar to the plaintiff’s, including the metatags ‘red tag vacations’ and ‘shop, compare & payless’. These metatag terms were not visible to customers visiting the defendant’s website, but were included in the website’s metadata. In terms of what was visible to the consumer, the website did not depict any of the plaintiff’s trademarks and instead depicted the defendant’s own trademarks, which were not alleged to be confusing.
It was undisputed that the defendant had copied some of the plaintiff’s source code, as misspellings of certain metatags in the plaintiff’s source code were also included in the defendant’s source code.
The plaintiff alleged, among other things, copyright infringement, trademark infringement and passing off in view of the defendant’s use of these metatags. The plaintiff asserted that as a result of the defendant’s use of these metatags, internet traffic to the plaintiff’s website had declined in favour of the defendant’s website, which had resulted in damage to the plaintiff by way of lost revenue.
Copyright infringement
Under the Copyright Act, in order for there to be a finding of copyright infringement, copyright must subsist in the work asserted by the plaintiff and the defendant must have reproduced the work or a substantial part thereof. For copyright to subsist in a work, the work must be “original”, in that its creation involved at least a minimal degree of skill and judgement.
On the issue of whether metatags can be the subject of copyright, Justice Manson canvassed the limited prior Canadian jurisprudence, which suggested that metatags acted as targets for search engine algorithms, thus serving more of a practical function rather than being the expression of an idea which could be the subject of copyright. Similarly, in this case the judge concluded that the metatags in issue were not the subject of copyright, stating as follows at paragraph 101:
“In this case there is little evidence of any sufficient degree of skill and judgment in creating these meta tags, as is required by the test set out by the Supreme Court of Canada in CCH, above, or for the originality required in compiling data or other compilations, as discussed by the Federal Court of Appeal in Tele-Direct.“
With respect to the above, the plaintiff’s metatags in this case were substantially derived from a list of Google keywords and then incorporated into short phrases descriptive of travel services, locations, discounts and deals. However, the judge notably left open the possibility that copyright could subsist in metatags in different circumstances:
“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.“
In addition, the judge held that even if copyright did subsist in the plaintiff’s metatags, based on the facts of this case there had not been a substantial copying with respect to the plaintiff’s website as a whole. While the analysis of whether a “substantial part” of the work has been reproduced is a qualitative rather than quantitative analysis, the judge noted that the defendant copied metatags only on 48 pages of approximately 180,000 pages of source code used to create the plaintiff’s website.
Consequently, no copyright infringement on the part of the defendant was found.
Passing off and trademark infringement
With respect to both passing off and trademark infringement, the central issue was whether the defendant’s use of the plaintiff’s trade name and other similar words as metatags was likely to cause confusion among consumers as to the source of the respective parties’ services.
It was not disputed that the inclusion of these metatags in the defendant’s source code caused the defendant’s website to be listed among the search results when consumers conducted an internet search for the plaintiff. However, there was no actual display of the plaintiff’s trade name or trademarks on the defendant’s website, as the latter was clearly labelled with the defendant’s own trademarks.
The judge acknowledged that some US courts have held that use of metatags can cause “initial interest confusion”, where confusion is caused before a consumer actually purchases a product, because they are lead to a competitor’s website. However, he did not find this principle applicable to the present case because the presence of the plaintiff’s metatags did not lead consumers directly to the defendant’s website, but merely included the defendant’s website in a list of search results which would then be reviewed and chosen by the consumer:
“The use of metatags in a search engine merely gives the consumer a choice of independent and distinct links that he or she may choose from, rather than directing a consumer to a particular competitor. Rankings may affect the choice to be made, but nevertheless, such a choice exists.“
The judge then concluded:
“use of a competitor’s trademark or trade name in meta tags 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.“
Consequently, it was held that there was no trademark infringement or passing off by reason of the defendant’s use of the metatags.
The above findings are arguably more narrow than the law that has developed in the United States and Europe. In this regard, several US courts have held that in appropriate circumstances, using a competitor’s trademarks in metatags can result in trademark infringement based on the theory of initial interest confusion. Courts in Germany, Belgium, Denmark and Austria have found trademark infringement for the use of third-party trademarks in metatags, while courts in the Netherlands have dismissed similar claims. Courts in France have decided the matter on a case-by-case basis, with some claims being dismissed and others resulting in a finding of infringement. Further, the European Court of Justice confirmed in 2013 that use of metatags can constitute “advertising” within the meaning of the EU directives, and is therefore subject to the rules relating to misleading advertising.
This decision constitutes the most direct and detailed consideration by a Canadian court to date of the issue of copyright and trademark infringement via the use of metatags. While not foreclosing entirely the possibility that the use of metatags could constitute copyright or trademark infringement in certain circumstances, subject to a successful appeal, this decision suggests that it may be difficult to establish copyright and trademark infringement in Canada based on the use of metatags alone. The plaintiff has appealed.
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