Three recent judgments from three countries send out a not entirely consistent message to those contemplating differing types of links to other sites.
Topic: e links
Who: Estee Lauder and Excite.com/iBeauty, RoadTech and Mandata, Ticketmaster and Tickets.com
When: April and June 2000
Where: US, Germany and the UK
What happened:
Three recent judgments from three countries send out a not entirely consistent message to those contemplating differing types of links to other sites. The German case followed a US suit between the same parties and resulted in the grant of an injunction by the German District Court preventing Excite from using on its site Estee Lauder brands Estee Lauder, Clinique and Origins as keywords to trigger banner ads by on-line cosmetic retailer iBeauty. Excite and iBeauty were also ordered to stop using the Estee Lauder brands within banner ads, although if these were merely offering relevant products for sale it is not clear how this use was prevented unless an argument as to denigration of the brand by this mode of use was put.
In the US case, District Judge Harry Hupp threw out an action brought by Ticketmaster trying to stop internet startup Tickets.com from linking to pages deep within Ticketmaster’s site, as opposed to its homepage. Ticketmaster argued that to allow this practice encouraged competitors to build their business on the back of Ticketmaster’s hard work in building up the site (in this case selling tickets to live dates).
Hupp J held that as long as a deep linker did not usurp the identity of another site and identified the site visitors were being linked to, there was no deception and no unfair competition. As an open site and a member of the free internet community, the Judge pronounced, Ticketmaster had to live by the rules of that community as it has grown up.
Ticketmaster are contemplating further litigation.
In the British case, the first reported decision in this area in the UK , two road haulage companies litigated over Mandata’s use of Road Tech’s registered trade marks in the metatags on Mandata’s site, invisible to the eye coding that forms part of the address of a site and will be picked up by search engines, thus potentially diverting to the Mandata site surfers intending to go to the Road Tech site.
The court held in favour of Road Tech, apparently on the basis of trade mark infringement, awarding them damages and costs, yielding a total bill of around £80000 for Mandata.
Why this matters:
Although the judge in the US case referred to rules of the internet community as they have grown up, most previous US cases have gone the other way. They have concentrated on the damage to deeplinked site owners from visitors avoiding advertising otherwise encountered by those en route to the purchase pages. One notable exception was the unsuccessful claim by Playboy Enterprises against ex Playmate Terri Welles, on the basis that she was entitled to describe herself as a former Playmate, and use of the equivalent metatag therefore involved no deception.
The UK and German cases are more in line with most existing US case law, though reservations are expressed above about the use of trade marks on- line to promote products legitimately sold by a retailer. European Court of Justice case law suggests that unless the manner of use is such as to denigrate the marks, this should not be contrary to the trade mark owners’ rights. This was in an off-line context, however, and use as links/keywords may be regarded as outside a retailer’s legitimate use.
