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Chapter 75

LINKS, METATAGS: A COPYRIGHT AND

TRADEMARK LAW PERSPECTIVE
Alain Strowel'

As human beings, we establish multiple links: family ties, bonds of friendship,

marital links, and all other kinds of social links. Without these links, we would not
be what we are.
In a similar way, without the hyperlinks and other associational tools, the World
Wide Web would not be what it is. The hyperlink is to some extent the glue with
which the Web (in the strict sense of the term) is woven.2 The activity consisting of
weaving links, that is linking, makes it possible to overcome the incredible
dispersion of information available on the Internet.
Without the possibility of linking, without the possibility of using other
instruments, such as the search engines, which index the Web sites, the information
on the Web would lose most of its value. This is to say that these associational
means are essential for the development of the future information highways.
But their use does create some legal problems. More precisely, these tools are
able to affect intellectual property rights, copyrights and trademarks.'

' Alain Strowel is an attorney with the law firm, Nauta Dutilh, Brussels, and Professor at the Saint-
Louis University, Brussels and Universit6 de Liege. This paper was presented at the Seventh Annual
Conference on International Intellectual Property Law and Policy at Fordhan University School of Law
between April 8-9, 1999.
2 See Clay Webster (Journal of a Webster: http://www.unipress.com.people/clay, quoted by L.
Carriere, Hypertextes et hyperliens au regard du droit d'auteur: quelques 616ments de r6flexion, Les
Cahiers de proprit6 intellectuelle, p. 467, May 1997): "The silent unassuming hero of the World Wide
Web, the glue of the Web, the hyperlink."
3 See, e.g., M. O'Rourke, Fencing Cyberspace:DrawingBorders in a Virtual World, 82 Minn.
L Rev. 609 (1998) [hereinafter "Fencing Cyberspace"] f.; L. A. Stangret, The legalitiesoflinking on
the World Wide Web, Comm. L, vol. 2, p. 202 (1997) ff.; W. A. Effross, Withdrawal ofthe Reference:
Rights,Rules andRemediesfor Unwelcomed Web-linking, 49 S.C. L. Rev. 651 (1998) if.; M. Jackson,
Linking Copyrightto Homepages, 49 Fed. Comm. L.J., 731-59 (1997); J. R. Kuester et P. A. Nieves,
Hyperlinks, Frames andMetatags: An IntellectualPropertyAnalysis, 38 IDEA 243 (1998) if. (see
in general the Panel Discussion: Link Law on the Internet, 38 IDEA 197, (1998) ff); L. Carriere,
Hypertextes et hyperliens au regarddu droitd'auteur: quelques didments de rdflexion, Les Cahiers
de propritd intellectuelle, p. 467, May 1997 ff.; P. Trudel, Droit du cyberespace, Centre de recherche
en droit public de l'Universiti de Montr6al et 6d. Th6mis, p. 16-67 to 16-69 (1997). For an extended
bibliography on the subject, see the site of St. Bechtold, The Link Controversy Page
<http://wwwjura.uni-tuebingen.de/s-bes/lcp.html>.

75-1
75-2 INTERNATIONAL INTELLECTUAL PROPERTY LAW &POLICY

I. THE TECHNICAL BACKGROUND'

A. WhatIsAHyperlink?

A Web page is constructed using Hypertext Markup Language (HTML), a text

coding technique that provides display instructions (tags) to a Web browser.
One type of HTML tag is the hyperlink often represented as bolded or underlined
text. By clicking on a hyperlink, the contents of another Web page referenced by the
hyperlink are displayed by the Web browser. This possibility of "jumping" from one
page to another is at the heart of the Web. The jump is possible within one site, for
example, from the home or front page to another page of the same site. But
hyperlinks can be created between different sites as well, and it is the latter links
which raise intellectual property issues.
However, different types of links have to be distinguished.

B. Types Of Links: HREF Links, Deep Linking, Inlining,Framing

The hyperlink in the strict sense of the term, or the so-called HREF link (also
called "hypertext link"), allows the user to access another Web page, and in this
case, the computer screen does not keep any element or information of the site from
which the user comes. This link to another Web site can be made to the "home
page" or to another page, a sub page within the linked site. The first type of linking
can be called "surface linking," and the second type, "deep linking." It is obvious
that "deep linking," a link which bypasses the "home page" and refers directly to a
subsequent page of the site, raises more legal questions than "surface linking."
Another associational tool is called inlining. Inline linking enables a webmaster
to insert an image, for instance a logo, coming from another Web page in a site. In
this case, the user does not have to leave the linking site in order to view this image.'
A last form of linking is called framing. This tool provides a means for dividing
a Web site into separate windows. Each window is displayed in a separate portion
of the Web browser screen and functions independently to display an individual
Web page. But these windows remain within the frame of the original site. In most
cases, there is not much to distinguish between the original site and the framed site,
and the user can therefore be confused.

' I have benefited from the research assistance and the comments ofC6dric Laurant, LLM student
at Columbia University, on the technical aspects of the present paper. I thank him for his help.
' Sometimes, this type of link is included in a more comprehensive category of "content links." In
this case, images, graphics or text from a linked site are incorporated in the material of the linking site
while the URL of the linking site remains displayed.
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-3

C. The Role Of Search Engines

Search engines are becoming essential in order to find the right information on
the sea of the Web. Web users utilize search engines such as Yahoo, Alta Vista,
Lycos, Infoseek and HotBot to locate Web sites that are of interest to them. In order
to collect the information, many search tools send out a programme, often called a
"spider" or a "crawler," that combs the Net collecting Web pages. The results of the
queries made through the search engine's programs consist of a list of hyperlinks
to related Web sites.
The search engines follow different indexing methods. They use the location of
keywords and frequency in a Web page as the basis of ranking pages in response to
a query.'But the search engines not only analyse the displayed text, the titles and the
addresses of Web pages, but also make use of the metatags, that is to say elements
of information written in HTML language but not visible for the users.

D. The Meta-Information Tags (Or "Pre-Hyperlinks")

Three main kinds of HTML tags may be distinguished:

/al the linking tags: these tags connect the user to other Web documents or
other Web pages, and even to other services of the Internet (<HREF>
links, <FRAMESET> links (frames), <1MG SRC> links (inlining),...);
/b/ the tags which format characters in a text : these tags do nothing but
modify the way a text looks when the browser displays it. (<B>,</B>
for bold, <I>,</I> for italic, <P> for a new paragraph, <UL> or <NL>
<LI> text <LI> <UL> or <NL> for a bulleted list or a numbered list,...);
/c/ the meta-information tags (ITs) or metatags : tags that contain meta-
information about a document, such as its author, its expiration date, a
list of keywords, etc. Meta-information does not affect how the
document is displayed when loaded into a browser. But although the
user does not see these tags directly, the tags support search tools, such
as search engines that look at the meta-information tags to see what the
document is about, and to identify, index, and catalogue its content.'

'The exact mechanism though is slightly different for each engine. Some ofthem rank the results
with the help of the keywords in the "keywords MIT" or in the title, some do not. Some display the
results taking account of the title and the "description MIT," some do not. The search engine Excite, for
example, indexes Web pages by grouping sentences by concept and by extracting the most dominant of
them, instead of relying only on the "description MIT" or on the first few lines on page, or on the first
200 characters after the "body" tag for example, which is the method used by Infoseek.
7
B. Smith & A. Bebak, Creating Web Pagesfor Dummies, 3rd ed., Foster City, CA (USA), IDG
Books, p. 59 (1998).
75-4 INTERNATIONAL INTELLECTUAL PROPERTY LAW &POLICY

Among the several available meta-information tags,8 the most relevant in the
trademark cases are:

- <TITLE></TITLE> : gives the title of the page which appears above

any Web page (when displayed on a screen or printed). This kind of
information is understood by search engines, which are then able to
display search results by crawling through the titles of the Web pages.
- <META name="description" CONTENT="***"> : gives search
engines a description of the content of a Web page in place of the
summary the search engine would ordinarily create. This tag thus lets
you control the description which appears on the results page of a search
tool.
- <META name="keywords" CONTENT="***, ***, ***"> :gives
search engines the keywords of a Web page, which they may use to
index one way or another, in addition to words from the title and
document body. It is typically used for synonyms and alternatives of
title words.
- <META name="ROBOTS" CONTENT="NOINDEX"> : controls
Web robots which can traverse the page but not index it."

In the HTML language, each META element specifies a property/value pair : the
name attribute identifies the property and the content attribute specifies the
property's value.
Meta-information tags provide a useful way for Web page authors to control how
their pages are indexed by most search engines : MITs help provide keywords and
descriptions on pages that for various reasons lack text. ITs keywords may be
considered as "pre-hyperlink" since a hyperlink is often created by a search engine
in a search results phase. These MITs may also boost the page's relevancy.o

E. What Is Spamdexing?

This is the reason why "spamdexing" developed." What is spamdexing?

Spamdexing is the contraction of "spamming" and "indexing." It is a technique by
which some Web page creators "stack" or "stuff' irrelevant words or MITs on their
Web pages in order to increase the chances of a search engine returning the site,
although the site may have nothing to do with the inserted word. They may, for

' The meta-information tags are to be written with the <META> tag (except for one of them: the
<TITLE> tag) between two HTML tags: <HEAD> and </HEAD>. (The <HEAD> tag comes after the
<HTML> tag and the </HEAD> tag comes just before the <BODY> tag on an HTML page.)
'Cf<wysiwyg://detail.18/http://vancouver-webpages.com /META/metatags. detail.html>. See also
<http://searchenginewatch.intemet.com/webmasters/spiders.html> (last visited on June 18,1999).
0 Cf <http://www.searchenginewatch.com/webmasters/meta.html>. See also <http://
WDVL.Intemet.com/Authoring/HTML/Head/meta.html> (last visited on June 18, 1999).
n See <http://searchenginewatch.internet.com/webmasters/features.html>.
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-5

example, put into the keywords field of their Web site words such as "sex,"
"Diana," or other frequently requested words. They may also duplicate, in their
keywords field, the keywords of frequently searched sites so that the pornographic
site will be returned by search engine looking for the frequently searched site.
It may work. And it has actually worked quite well for some cunning
webmasters, as we will see further in some cases.'

III. A FEW ILLUSTRATIONS OF HAZARDOUS HYPERLINKING AND

METATAGGING

A. Hyperlinks

The Shetland Times Ltd v. Dr. Jonathan KIMs Case (HREF Linking)

The first case is a Scottish one. "

In this case, the defendant (Dr. Jonathan Wills), director of a service of on-line
information called "The Shetland News," was the webmaster of a site which
reproduced the headings of some articles published in the newspaper "The Shetland
Times" and inserted them in the Web site of this newspaper.
The Shetland Times introduced an action for interim interdict (or preliminary
injunction) based on the existence of a copyright infringement. The seized judge
considered that it was probable that some headings are protected under copyright
law as literary works, in particular the titles composed of eight words or more.
Consequently, there was a prima facie illicit reproduction within the meaning of
Article 17 of the Copyright, Design and Patent Act of 1988. In the balance of
interests, the judge highlighted the fact that it is essential for the applicants that the
contents of their Web sites be accessible only if the user reaches the site while
passing through the first Web page (the so-called "home page"). However, this was
not due to financial reasons in this particular case: indeed, the site of the Shetland
Times was not financed by advertising banners, which usually appear on the front
or home page of the site.
The interim decision was not the end of the matter. On November 11, 1997,
before appearing in Court for an action on the merits, the parties reached a
settlement ending the dispute.

1 Some companies guarantee to their customers they could have their Web site ranked in the top 20
of the main WWW search engines. Mediacity, for example, claims to do it for US $ 299.0 plus US $
0.25 per click through (see <http://del. sportsodds.com/top20.htnl>. Cf also D. Delbecq, "Les rois de
I'effraction", LeMonde, TRM suppl., p. 33, May 3-4, 1998.
13 The text of the interim decision of 24 October 1996 can be found on the Internet at:
Http://www.jmls.edulcyber/index/ under the heading "linking and framing." The site of the John
Marshall Law School features an interesting collection of cases concerning Internet law. The Shetland
Times Ltd. V Dr. Jonathan Wills and Zetnews Ltd. case can be found directly under
Http://www.jmls.edu/cyber/cases/shetdl.htl (last visited on June 18, 1999).
75-6 INTERNATIONAL INTELLECTUAL PROPERTY LAW & POLICY

According to the terms of this settlement ," the defenders are entitled to link to
stories of the Shetland Times by means of headlines, but they have to respect some
conditions:

1) each link has to be acknowledged by the legend "A Shetland Times

Story" appearing underneath each headline;
2) adjacent to any such headline, a bottom showing legibly the Shetland
Times masthead logo must appear;
3) the legend and the button must be hypertext links to the Shetland Times
online headline page.

2. The Haftung Far Links Case (HREF Linking)

This German case" which ended up in the May 12, 1998 decision of the
Landgericht Hamburg does not involve intellectual property issues. The action was
based on the right of honour or reputation, as well as on the general principle of tort
law (art. 823 and 824 BGB). On this basis, the plaintiff, Mr. Steinhofel, sued Mr.
Best for damages. Mr. Best had created links with other sites containing
information prejudicial to the honour of the plaintiff. In the balance of interests, the
judge recognised that the personality right weighs more heavily than freedom of
expression. The links were not established in order to help the finding of the truth,
but in order to tarmish the reputation of the plaintiff. Defendant was ordered to pay
40,000 Deutsche Marks in damages.

The Ticketmaster Corp. v. Microsoft Corp. Case (Deep inking)

This case addresses the implications of "deep linking" without permission. The
Microsoft Web site, called "Seattle Sidewalk" uses deep hyperlinks to specific
pages within the Ticketmaster Web site, so that a user of the "Seattle Sidewalk"
Web site can bypass all policies, service information and ads provided on the
Tickelmaster homepage and go directly to Ticketmaster's event listing to purchase
tickets. In fact, this possibility of buying tickets on line is the main service offered
by Ticketmaster. This on line service was of interest to Microsoft which was
building city Web sites all over the United States containing information on
restaurants, sports, cultural events, and so on. The parties tried to conclude a linking
agreement, whose purpose would have been the reciprocal promotion of their sites.
After the negotiations failed, Microsoft established the links directed to the
subsidiary pages within the Web site. Ticketmaster alleged that due to this direct

" Http://www.jmis.edu/cyber/cases/shetld2.html. See also V. Marsland, Shetland Times Web-

linking Litigation Settles onFirstDay Trial, 13 The Computer L. Ass'n Bull. 30 (1998).
" Http://www.jmls.edu/cyber/cases/stein.html (last visited on June 18, 1999).
" Http://www.jmls.edu/cyber/cases/ticketl.htmi (last visited on June 18, 1999).
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-7

linking which also used Ticketmaster trademarks, Microsoft benefited from

Ticketmaster's trademarks and name.
Ticketmaster filed a complaint, alleging numerous claims against Microsoft,
including dilution of Ticketmaster's trademarks and several unfair competition
claims based on different laws. In its reply, Microsoft denied that they had
wrongfully appropriated or misused Ticketmaster's name or trademarks or engaged
in unfair competition. Microsoft also raised eleven affirmative defenses, including
fair use, news reporting and First Amendment. The two parties reached a settlement
in 1998.

4. The Washington Post Co. v. Total News, Inc. Case (Framing)"

In this case, the plaintiffs, including the Washington Post, Time Inc., CNN,
brought multiple actions against the defendant, Total News Inc. In fact, Total News
had developed a site which was primarily a collection of links to more than 1,200
sites of on-line information. On the Total News Web site, activation of a hyperlink
to an external site opened the associated external page within one of the framed
portions of the Total News homepage while leaving the Total News logo,
commercial advertisements and URL on the screen surrounding the activated page.
So it was a case of linking through framing.
The plaintiffs claimed that this method of advertising was the "internet
equivalent of pirating copyrighted material from famous newspapers, magazines or
television news programs." Included in their causes of action were
misappropriation, federal trademark dilution, trademark infringement, unfair
competition, and copyright infringement.
No court addressed the issue since Total News and the other defendants settled
this controversy by agreeing to stop the framing.
This settlement could suggest that hyperlinking in a framed arrangement could
be actionable. Indeed the settlement allows Total News to continue linking without
framing, which they are still doing today.

5. The United Media v. Dan Wallach Case (Inlining)

In 1995, Dan Wallach, a Princeton University student, made inline hyperlinks

of the Dilbert Hack comics on his personal Web site." As stated above, inlining is
a form of linking which makes it possible to insert in a Web page an image or a
graphic coming from another Web site, but, contrary to HREF linking, the user does
not have to leave the Web site which is visited. So, in the Dan Wallach case, the

" Http://www.ljx.com/internet/totalse.html. On framing, see also the case Future- dontics Inc. v.
Applied Anagramics Inc., 45 U.S.P.Q.2d 20005 (C.D. Cal. 1998) (plaintiffs site appeared within a
frame on defendant's site; the court denied plaintifiPs motion for preliminary injunction on its copyright
claim that the frame created an unauthorised reproduction and derivative work of its Web site).
i <http://www.cs.princeton.edu/-dwallach/> (last visited on June 26, 1998).
75-8 INTERNATIONAL INTELLECTUAL PROPERTY LAW &POLICY

comics were inlined from the United Media site" each day. This means that the
visitor of this site, when clicking on one of the Dilbert Hack's picture, would receive
the image directly from the United Media server, without any reproduction made on
Dan Wallach's server. United Media lawyers required Dan Wallach to stop making
inline hyperlinks of "copyrighted material belonging to United Media,'1o which
the student eventually complied with.

B. Metatags

The first cases concerning the use of marks as metatags are Insituform Techs,
Inc. v. NationalEnvirotech Group, L.L.C.," Playboy Enterprise,Inc. v. Calvin
DesignerLabeP and Oppedahl& Larson v. Advanced Concepts.' The third case
involves solely metatagging while other uses of the trademarks (for instance, in the
domain name or on the Web site) were present in the other two cases. In Insituform,
as part of the settlement reached by the parties, the court issued a consent decree
barring the defendant from using the plaintiff s trademarks as metatags. In Playboy
v. Calvin Designer, the court granted a preliminary injunction barring the
defendants' use of the trademarks "in burried code or metatags on their home page
or Web pages or in connection with the retrieval of data."" In a latter case,'
Playboy sued AsiaFocus International for trademark infringement resulting from
defendant's use of the trademarks "Playboy" and "Playmate" in its HTML code and
a district court granted jugdment in favor of Playboy, reasoning that AsiaFocus
intentionally misled viewers into believing that its web site was connected with, or
sponsored by, Playboy.
Two other cases have been considered by U.S. courts of appeal since the end
of 1998 and therefore deserve more attention.

<http://www.unitedmedia.com/comics/dilbert/> (last visited on June 18, 1999).

n "The materialon oursite cannot be reproducedunder any circumstances. Ifyou display an
elementfrom our site on your web page,you have alteredour materialand redistributedit without
ourpermission. Altering our copyrightedmaterial,i.e., inlining a comic strip, is a violation of United
Media's copyrights, - as provided by the United Media Web site FAQ
(<http://www.unitedmedia.com/info/site/faq.html> ( last visited on June 18, 1999)).
" V. Sedallian, Droit de l'Internet,coil. A.U.I., Paris, Ed. Net Press, p. 110 (1997) (For V.
Sedallian, Dan Wallach infringed the right of communication to the public ("droit de representation")
and the author's moral right).
' No. 97 Civ. 2064 (E.D. La. final consent judgment entered Aug. 27, 1997). See
Http://www.cll.com/keyword.htm (last visited on June 18, 1999).
' 985 F. Supp. 1220, 44 U.S.P.Q.2d 1156 (N.D. Cal. 1997).
2 Http://www.patents.com/ac/ (last visited on June 18, 1999).
' 985 F. Supp. at 1221, 44 U.S.P.Q.2d 1157 (N.D. Cal. 1997).
" Playboy Enters. v. AsiaFocus Int'l, Inc., No. 97-734, 1998 WL 724000 at *3 (E.D. Va. April 10,
1998).
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-9

7
1. Playboy Enterprises, Inc. v. Terri Welles

The site of Mrs. Terri Welles which opened in June 1997 (and is still in
operation)" contains various reproductions of well-known trademarks of Playboy
Enterprises. The trademarks "Playboy" and "Playmate" are, for instance, included
in metatags listing keywords.
Playboy sued on the basis of trademark infringement, false designation of origin
and trademark dilution. Plaintiff argued that defendant's use of the Playboy and
Playmate trademarks was likely to harm it and its trademarks since websurfers
would be likely to believe that defendant's web site was authorised, sponsored or
otherwise approved of by Playboy Enterprises.
The U.S. District Court for the Southern District of California denied plaintiffs
motion for a preliminary injunction. The court decided that there is no strong
likelihood of success on the merits. First, the use of these trademarks by the
defendant was recognised as fair, due to the fact that Mrs. Terri Welles, a former
model for Playboy, had in 1981 received the title of Playmate of the Year.
Therefore, Mrs. Welles had used Playboy Enterprises trademark to identify herself
truthfully and in good faith as the Playmate of the Year 1981. Where the trademark
is used only to describe the goods or a person, the "fair use" defense applies. In
addition, Mrs. Welles was cautious enough not to deceive the public by using a
disclaimer on most of the free pages of the site. According to the court, should the
fair use defence not apply, the plaintiff had nevertheless failed to demonstrate the
likelihood of confusion for websurfers. In the balance of interests, the Court decided
not to grant a preliminary injunction. This decision was confirmed by the federal
Court of Appeals for the Ninth Circuit on October 20, 1998.29

Brookfield Communications, Inc. v. West Coast Entertainment Corp.30

The U.S. Court of Appeals for the Ninth Circuit delivered an opinion filed on
April 22, 1999 in a case involving the use of plaintiff's trademark ("MovieBuff')
in the domain name ("moviebuff.com"), as well as in the metatags of defendant's
Web site. As Brookfield chose not to argue its trademark dilution claim in its
opening brief, the court limited its attention to Brookfield's trademark infringement
and unfair competition claims. After having applied the eight likelihood of confusion
factors of AMF, Inc. v. Sleekcraft Boats," and having concluded that defendant's
domain name was infringing plaintiff s trademark, the court was induced to adopt
a similar conclusion of likelihood of confusion with respect to West Coast's use of

27 Documents filed during the case can be found at http://www.pmdlaw.com/

PlayboyWellesDoes.htm (last visited on June 18, 1999).
" The homepage of Mrs. Welles is: http://www.terriwelles.com/ (last visited on June 18, 1999).
2No. 98-55911, D.C. No. CV-98-00413-K. See also http://miningco.com/library/ blplayd2.htm
30 174 F.3d 1036 (9' Cir. 1999) (available at http://www.veilp.org/Fedt/Circuit/9th/
opinions/985 6 918.htn).
3' 599 F.2d 341, 348-49 (9" Cir. 1979).
75-10 INTERNATIONAL INTELLECTUAL PROPERTY LAW & POLICY

"moviebbuff.com" in its metatags. The specificity of this use and confusion is that
the use of another's trademark is calculated "to capture initial consumer attention,
even though no actual sale is finally completed as a result of the confusion."32 The
initial interest confusion (to be distinguished from source confusion) is sufficient to
conclude that some infringement has occurred resulting from the misappropriation
by defendant of the goodwill developed by plaintiff in its trademark.
In its opinion, the Court also stressed the higher risk of confusion existing in the
context of the Internet.33

III. FREEDOM OF CREATING HYPERLINKS?

Before analyzing some of the intellectual property issues at stake, 34 it is

necessary to consider whether there is a form of free speech covering the freedom
to link and whether this freedom can be subject to limitations.

A. Linking And The Freedom Of Speech

A general issue needs to be raised first, and that is whether limitations on the
creation of hyperlinks (or on the use of some keywords as metatags and pre-links)
are compatible with free expression concerns. Or, to put it differently, are hyperlinks
and uses of keywords a form of protected expression?

' See LP. v. Penguin Books USA, Inc.,109 F.3d 1394, 1405 (9th Cir. 1989) (referring to Dr. Seuss
Enters.).
3 The court explained "[iln the Internet context, in particular, entering a web site takes little
effort, usually one click from a linked site or a search engine's list. Thus, Web surfers are more
likely to be confused as to the ownership of a web site than traditional patrons of brick-and-
mortar store would be of a store's ownership." For a critique of the application of the confusion
criterion to the Internet see J.H. Oran, The Costs of Confusion in Cyberspace, 107 The Yale
L.J.869 (1997). See also the case note of Planned Parenthood Federation of America, Inc. v.
Bucci, No. 97 Civ. 0629 (KMW), 1997 WL 133313, 42 U.S.P.Q.2d 1430 (S.D.N.Y. Mar. 24,
1997).
' For a more detailed analysis of the legal issues, see A. Strowel, Liaisons dangereuses et bonnes
relations sur Internet: a propos des hyperliens, A & M, 1998.4, p. 296-308.
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-11

In the U.S., one decision" concerning the Internet Police law of the State of
Georgia clearly attached First Amendment importance to hyperlinking. In the U.S.
at least, the importance of free speech on the Net was emphasized by the Supreme
Court's ruling in Reno v. ACLU" that the CommunicationsDecency Act was an
unconstitutional restriction of expression. But the court emphazised the distinction
between commercial and non-commercial speech - the latter warranting a higher
level of protection. If some kind of freedom to link exists, it only fully applies to
non-commercial linking.
In the absence of any limitations arising out of the infringement of third party
rights, for instance, intellectual property rights, the rule which applies by default is
thus the rule of freedom. Freedom to link.
In Europe, it remains to be seen whether linking is directly protected by
Article 10 of the European Convention on Human Rights, which has a narrower
scope than the American free speech provision. In addition, Article 10 allows for
exceptions, which means that freedom of linking could be limited in the case of
infringement of third party rights (for instance, IP rights).

B. ImpliedAuthorization OfLinking

If freedom of linking exists, this means that webmasters in practice grant a

license to link to their web sites. This authorization of linking is, most of the time,
implicit. The important issue is to determine the scope of this implied license. Here,
the nature of the link plays a role. It could be argued that an implied license exists
in the case of surface HREF link, but not in the case of deep linking, inlining or
framing. As with other implied licenses, the exact scope of the authorization is,
however, difficult to determine and can change according to the circumstances.

' American Civil Liberties Union v. Miller, 43 U.S.P.Q.2d 1356 (N.D. Ga. 1997). In this case,
plaintiffs contested the introduction in the Georgia Computer Systems ProtectionAct of a criminal
offense in the event of the use of any trademark or similar personal seal on the Internet in a manner that
falsely implied that permission for such use had been granted when in reality, such permission had not
been obtained. The plaintiffs recognized that the State of Georgia may have an interest in securing
intellectual property rights but was not allowed by Constitution to suppress some form of protected
expression under the thin guise of protecting intellectual property (see J.R. Kuester and P.A. Nieves,
Hyperlinks, Frames and Metatags : an Intellectual PropertyAnalysis, 38 IDEA 243, 267). The
district court agreed that Georgia's Internet Police law was unconstitutional under the First Amendment.
The court stated on the issue of linking : "A fair reading of the clause of the Georgia Computer Act as
written, is that it prohibits the current use of Web page links. The linking function requires publishers
of Web pages to include symbols designating other Web pages that may be of interest to a user. This
means that an entity or person's seal may appear on hundreds or thousands of other Web pages, just for
the purpose of enabling the linking system. The appearance ofthe seal, although completely innocuous,
would definitely "imply" to many users that permission for use had been obtained. Defendants have
articulated no compelling state interest that would be furthered by restricting the linking function in this
way"American CivilLiberties Union v. Miller, 43 U.S.P.Q.2d at 1360. See also J. R. Kuester et P. A.
Nieves, Hyperlinks: A Form Of Protected Expression? Georgia federal court implies a 1st
Amendment "right to link" defense to infringement claims, at
http://www.ljx.com/internet/0126hyperlink.htil.
- 521 U.S. 844 (1997).
75-12 INTERNATIONAL INTELLECTUAL PROPERTY LAW & POLICY

Indeed, the strength of the presumption of implied consent to linking could

increase if the technical means permitting control of the creation of links were to
develop. This means that, if today, the implied consent does not cover framing or
deep linking, this could change if the technical systems blocking such types of links
become more common. Another delicate issue is whether this implied license is
irrevocable or not." The implied license defense is probably only applicable before
the link-to site objects. After having sent a cease and desist letter, the webmaster of
the link-to site can sue the master of the linking site for an injunction, but in no case
can damages be granted if the link is removed expeditiously after receipt of the
cease and desist letter.

C. Effect Of The LegalNotice On A Web Site

What is the legal effect of the notice on a web site expressly prohibiting the
establishment of a link? Such statements can be found on some sites.
In Anglo-American law, such notices are probably devoid of any legal effect.
The same is true in a civil law country like Belgium or France. But the presence of
this legal notice can be considered as a factor in assessing whether the creator of the
link is liable and whether he has committed a fault.

IV. INTELLECTUAL PROPERTY ISSUES

The creation of hyperlinks and the use of metatags raise many new problems in
the field of intellectual property, but also in relation to unfair competition. Leaving
aside unfair competition issues, I will try to shed some light on intellectual property
issues, notably on copyright and trademark law aspects.

A. Linking And Copyright

A clear distinction has to be made between the issue of copyright infringement

by the person creating the link and the eventual contributory infringement of the
Internet service provider who either links the user to a site with links to illicit
materials or only hosts the site containing the links.

1. Copyright Infringement By The Creator Of The Link

(a) Illicit Reproduction

Copyright infringement could take place if the link, more precisely the visible
aspect of the link, i. e. the pointer, is protected by copyright and reproduced on the
linking site. This is what happened in the Shedand Times case."

" See P. Jakab, Factsand Law of Web Linking, Web Page of the Computer Law Section of the
State Bar of Georgia, 1997.
" See supra Part II.A.I.
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-13

However, there is little chance of such copyright infringement as most hyperlinks

are only composed of the URL address of the linked site and therefore not protected.
As such, facts or data are not copyrightable.
In other cases, the pointer is an image or a logo, and as such, it can be protected
by copyright. Consequently, the copyright owner could prohibit the permanent
reproduction of this work in the HTML code of the linking site. Some copyright
owners may allow the use of protected material as pointer, but will subject it to
particular conditions (license to link). 9
The technique of inlining (or the "content link") is also likely to cause
infringements of the reproduction right of the copyright owner.

(b) Infringement Of The Moral Rights

In most European countries where strong moral rights are legally recognized, the
practice of linking, and especially the technique of framing, could infringe upon the
moral right of integrity, by associating the protected content placed on a site with the
fully opposite ideological content of the linking site. Of course, the copyright owner
has to demonstrate that the associational tool is causing damage to his/her reputation
of honor. Needless to say, this will be quite exceptional.
Some court rulings already indicate that the many changes in the environment
of the works made accessible through the Internet can provoke infringements of the
moral right of the author. As an illustration, in its decision of November 1997,40 the
Court of Appeal of Brussels stressed that journalists have a kind of right to have
their work published in an environment which corresponds to the ideological or
political line of the newspaper. Not only their reproduction right, but also the intuitu
personae relation between the newspaper publisher and the journalist working for
the newspaper allow them to prohibit a third party from introducing their articles in
a database (for online delivery of clipping service). It could be argued along the
same line that some forms of linking (for instance, the establishment of a link by the
webmaster of a Ku-Klux-Klan site and a site devoted to the fight against racism)
could affect the moral rights or even some personality rights of the creator of the
linked site.

2. Copyright And The Intermediaries

Copyright can be invoked by the provider of a search service (protection of the

compilation of links listed by the search engine) or against him (contributory
liability to copyright infringement).

3 See American Bar Association, Section of Business Law, Web-Linking Agreements, p.

54 (1997). See also J. Joyce, Framing, Unking, Suing, American Bar Association Journal, p.
18 (Oct. 1997).
4 Court of Appeal Brussels, 29 Oct. 1997, Auteur &Media, p. 383 (The CentralStation case).
75-14 INTERNATIONAL INTELLECTUAL PROPERTY LAW & POLICY

(a) The Protection OfA Compilation Of Links

Is a compilation of links copyrightable or protected by a related right, such as the
sui generis right on databases recognized in the 1996 E.U. Database Directive?
In order to further analyze the question of the protection by copyright, the
comparison between a list of hyperlinks and the index of a book is probably useful.
In the case of an index, the establishment of a relationship between two words or
concepts and the indication of the relevant pages in the book cannot be appropriated
by copyright. However, an index can be protected as a compilation. A compilation
is a work formed by the collection and assembling of data that are selected or
arranged in such a way that the resulting work as a whole constitutes an original
work of authorship.
Along the same line, a collection of links listed in a Web site or by the search
engine of some Internet portals could be protected as a compilation or a database
consisting of the URLs ofthe listed documents. As with other works of information,
the copyright protection is, however, thin. This means that "a subsequent compiler
remains free to use the facts contained in another's publication to aid in preparing
a competing work, so long as the competing work does not feature the same
selection and arrangement." 4
The new sui generis right on databases introduced by the 1996 E.U. Directive42
provides for a new and powerful right in the case of substantial investment in the
collection, verification or presentation of the elements of a database. The maker of
a database made of multiple links can invoke the right provided by Article 7 of the
1996 Directive in order to prohibit the extraction or reutilization of the whole or a
substantial part of the database. There is no strong argument for excluding such a
compilation of links from the very broad definition of databases in Article 1(2) of
the Directive. The fact that the list of links returned by the spider will constantly
change does not preclude the application of the database notion. The peculiar nature
and the difficulty of this case lies, however, in the fact that no substantial investment
has been directly made inthe collection, verification or presentation of the elements,
which are automatically and rapidly listed by the search engine, i.e. a computer
software. The producer of the software, more than the ISP offering this on-line
search service, should therefore be entitled to the sui generis right. This sui generis
right can, however, never apply to software, as it is explicitly excluded by Article
2 of the Database Directive. Can the indirect investment in the making of a tool by
which databases are generated be considered as respecting the requirement for
enjoyment of a sui generis right? If the answer is yes, and nothing in the text of the
Directive opposes this, the 1996 Directive grants a form of protection for
compilations generated by computer.

' Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 349 (1991).
4 Directive 96/9/EC of 11 March 1996 on the legal protection of databases, O.J. L 77/80 (1996).
A COPYRIGHT AND TRADELARK LAW PERSPECTIVE 75-15

(h) The Liability Of ISPs In The Case Of Linking

The risks of being sued because of contributory copyright infringement through
linking is not hypothetical. In the United States, the Record Industry Association of
America is considering a lawsuit against the Internet portal company Lycos. "On
February I of this year, Lycos launched a service using the technology and the
database of Norway's FAST Search & Transfer ASA to offer links to more than half
a million on-line recorded songs. The music is available through a popular and
controversial technology called MP3 which allow fans to download CD-quality
songs from the Internet onto computers or MP3 'players."""' In Norway, the IFPI
initiated criminal proceedings for copyright infringement against the company
FAST.' Other actions against service providers in the case of the establishment by
their clients of links to illicit MP3 files have been or are going to be introduced in
other jurisdictions (a case is pending in Belgium).
In the United States, the issue is partly solved by the introduction in the Digital
Millenium Copyright Act (DMCA)" Article 512 (d) of which provides that:

INFORMA TIONLOCATION TOOLS- A service provider shall not be liable

for monetary relief, or, except as provided in subsection (j), for injunctive or
other equitable relief, for infringement of copyright by reason of the provider
referring or linking users to an online location containing infringing material
or infringing activity, by using information location tools, including a
directory, index, reference, pointer, or hypertext link, if the service provider:

(1) (A) does not have actual knowledge that the material or activity is
infringing;
(B) in the absence of such actual knowledge, is not aware of facts or
circumstances from which infringing activity is apparent; or
(C) upon obtaining such knowledge or awareness, acts expeditiously to
remove, or disable access to, the material;
(2) does not receive a financial benefit directly attributable to the infringing
activity, in a case in which the service provider has the right and ability to
control such activity;and
(3) upon notification of claimed infringement as described in subsection (c)(3),
responds expeditiously to remove, or disable access to, the material that is
claimed to be infringing or to be the subject of infringing activity, except
that, for purposes of this paragraph, the information described in subsection
(c)(3)(A)(iii) shall be identification of the reference or link, to material or
activity claimed to be infringing, that is to be removed or access to which
is to be disabled, and information reasonably sufficient to permit the service
provider to locate that reference or link.

Reuters (March 25, 1999) at http://www.news.com/nNews/Item/ 0.4.34250.00.htmil

FinancialTimes, 25 March 1999 ("Music industry launches legal battle against internet piracy").
4 Digital Millenium Copyright Act, 17 U.S.C. § 512(d) (1999).
75-16 INTERNATIONAL INTELLECTUAL PROPERTY LAW &POLICY

The delicate formula "by reason of the provider referring or linking users to an
online location containing infringing material" will have to be interpreted by the
courts. It could be argued that only information location tools providers, that is
providers of tools to Internet users for finding web sites, such as Lycos or Yahoo!,
are exempted from liability under the conditions set up in Article 512 (d) of the
DMCA. In my opinion, the question remains whether the provider of hosting and/or
access can be sued for contributory infringement in the case of linking. Contributory
infringement exists where a defendant, with knowledge of infringing activity,
induces, causes or materially contributes to the infringing act of another. Does the
host service or access provider which is aware that one of its clients has put links
to infringing material contribute to the illicit communication to the public of the
material?
The liability issue related to on-line intermediaries is much debated in Europe
as the proposal of the E.U. Directive on certain legal aspects of electronic
commerce46 is now being examined by the European Parliament. The proposal of
the e-commerce directive does not contain any provision which is similar to Article
512 (d) of the DMCA. The Commission did not want to tackle this particular
problem. The exemption of liability is only granted to intermediaries which offer
mere conduit (telecom operators), caching, and hosting services.
That means that the issue of contributory infringement in the case of links
established directly by the ISP or indirectly by a client hosted by the ISP has to be
considered under the general principles of each applicable national law.

B. MetataggingAnd Trademark Infringement

In the U.S. metatagging cases, the plaintiffs would normally allege that the use
of their marks as metatags constitutes trademarkinfingement, trademarkdilution
or unfair competition." Of these three causes of action, the trademark dilution claim
is probably the strongest one." The advantage of a claim based on trademark
dilution is that in principle, no proof of confusion is required. On the contrary, a
trademark infringement claim must meet the requirements of the Lanham Act. The
action based on dilution is more likely to succeed, but it applies only to famous
trademarks.
In Europe, the situation is more complex.
First of all, the unfair competition issue cannot be tackled under a European
perspective as such, as there are may be as many different approaches of unfair
competition as E.U. Member States. This area of law is by no means harmonized

COM(1998) 586 final, O.J. C. 30/4 (May 2, 1999).

Seefor instance, the complaint introduced in Oppedahl & Larson v. Advanced Concepts (No.
97 Civ. Z-1592 (D.C. Colo., complaint filed July 24, 1997).
' The present section is largely based on the following articles: M. O'Rourke, Defining the Free-
Riding in Cyberspace:TrademarkLiabilityforMetatagging, 33 Gonz. L. Rev. 277 (1997) [hereinafter
"Defining the Free-Riding in Cyberspace..."]; Thomas F. Presson and James R. Barney, Trademarks
asMetatags:Infringement ofFairUse?, 26 AIPLA Q. J. 147 (1998).
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-17

at E.U. level."' Secondly, there is no pan-European Act on trademark dilution. On

the other hand, the United States has adopted a Federal Trademark Dilution Act in
1995." This means that metatagging cases have to be examined from the point of
view of traditional trademark infringement claims.

1. U.S. Approach

(a) The "Use In Commerce" Requirement

In order to sue on the basis of the Federal Trademark Act or the Lanham Act, a
preliminary requirement must be satisfied: there should be some form of "use in
commerce" of the trademark. Indeed, under the Lanham Act (Section 32(1)), a party
may be liable for trademark infringement when it "uses in commerce any [...] copy
[...] of a registered mark in connection with the sale, offering for sale, distribution,
or advertising of any goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive [....]"
Some commentators" doubt that the invisible use of a trademark as a metatag
could be considered as a "use in commerce" within the meaning of the Lanham
Act." The issue was, however, not really considered as an obstacle by the courts of
appeal in the Tern Welles and Brookfield cases outlined above." This confirms that
the "use in commerce" requirement is broadly interpreted by the US courts." The
same conclusion can also apply in Europe."

(b) The Risk Of Pre-Sale Confusion

As previously mentioned above, in the case of an action for trademark
infringement through metatags, the difficulty lies in proving the risk of confusion.
Analyzing the issue, Prof McCarthy indicates his opinion as follows: "The result is
that the trademark is used so as to confuse and divert someone looking for a web site

*Concerning the protection of databases, the lack of harmonization of unfair competition law has
prompted the Commission to create a new intellectual property right, the so-called sui generis right,
instead of adopting a misappropriation approach, as the U.S. legislature is now considering (see recital
6 of E.C. Directive of 11 March 1996 on the protection of databases).
"See 15 U.S.C. 1054.
" Thomas F. Presson and James R. Barney, op. cit., p. 154.
" According to a spokewoman from Disney online, that is the main reason why Disney has so far
not sued over the practice of metatagging (see Defining the Free-Riding in Cyberspace ..., supra note
47).
5 See supra Part II.B.1,2.
-" See Defining the Free-Riding in Cyberspace...., supra note 47, n.65.
"Inits 1999 BMWjudgment (23 Febmuary 1999, case C-63/97 (BMW v. Ronald Karel Deeenik)),
the ECJ noted that the requirement of the use "in the course of trade" (within the meaning of Art. 5 (1)
and (2) of the Trademark Directive) is fulfilled when the sign is used by the owner of a garage for his
advertisements for the sale of second-hand BMW cars and for the repairs and maintenance of BMW cars.
Indeed, along with other illustrations, use of the sign on business papers and in advertising is explicitly
mentioned as a use in the course of trade in Article 5 (3) of the Trademark Directive. Use of the sign as
metatag; is,of course, different, but there is no clear reason why the use of a trademark which is invisible
could not be covered as a use in the course of trade.
75-18 INTERNATIONAL INTELLECTUAL PROPERTY LAW &POLICY

that is sponsored by the owner of that trademark."" He states further: "Infringement

can be based upon confusion which creates initial customer interest, even though no
actual sale is finally completed as a result of the confusion. That is, the web user is
lured to a web site she is not looking for as a result of confusion and deception
intentionally caused by the defendant who knows the limitations of the searching
device used by the potential visitor". This analysis is fully endorsed by the 1999
decision of the U.S. Court of Appeal for the Ninth Circuit in the Brookfield v. West
Coast case." This Court stated: "Although there is no source confusion in the sense
that consumers know they are patronizing West Coast rather than Brookfield, there
is nevertheless initial interest confusion in the sense that, by using 'moviebuff.com'
or 'MovieBuf' to divert people looking for 'MovieBuff to its Web site, West Coast
improperly benefits from the goodwill that Brookfield developed in its mark."" This
case confirns other cases which have expanded the likelihood of confusion beyond
the point of sale purchaser in order to incorporate "pre-sale confusion.""

(c) Trademark Dilution

In the United States, the action introduced against the use as metatags can also
be based on trademark dilution. Pursuant to Section 43(c) of the Lanham Act,
"otrademark dilution exists, for instance, when the use of the sign is lessening the
capacity of the mark to identify and distinguish goods and services, regardless of the
presence or absence of the likelihood of confusion, mistake or deception.
Intentional metatagging could be considered as dilution by blurring, by creating
"'noise' around the mark so as to diminish the ability of the search to trigger an
association between the mark and its owner."" The use as a metatag is thus likely
to affect the advertising function of the trademark. As far as we know, no US court
has directly addressed this issue.

2. E.C. Approach

(a) The Trademark Infringement Criterion

At the E.U. level, we are left with the standard requirements of trademark
infringement laid down in the 1988 Trademark Harmonization Directive.

" J. Thomas McCarthy, McCarthy On Trademarksand Unfair Competition, (release 5, March

1998 at section 25/69, p. 25-107 (quoted by William E. Maguire, Playboy Cases Provide a Contrast
on the "Tag" Issue, at http://www.trademarkesq.com/pages/Articles5.htm).
5 See supra Part II.B.2.

" 174 F.3d 1036 (9' Cir. 1999).

* See Sh. Upadhye, Trademarks Surveys: Identifying the Relevant Universe of Confised
Consumers, 8 Fordham Intell. Prop. Media & Ent. L. J. 549, 572 (1998). One ofthe leading cases on
pre-sale confusion quoted by the Brookfield decision is: Grotrian, Helfferich, Schulz, Th. Steinweg
Nachf v. Steinway & Sons, 365 F. Supp. 707, 716-17 (S.D.N.Y. 1973), aff'd, 523 F.2d 1331 (2d Cir.
1975).
The Lanhan Act § 43(c), 15 U.S.C. § 1120 (1946).
6 Defining the Free-Ridingin Cyberspace. . . ., supra note 47, p. 299.
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-19

Before the recent case law of the European Court of Justice, it was thought, for
instance, in Benelux countries,' that trademark infringement exists in three different
situations:

- when there is direct confusion : confusion between the mark and the sign
themselves;
- when there is indirect confusion : the likelihood that notwithstanding the
fact that the mark and the sign as such will not be confused, the
resemblance of the mark and the sign could lead the consumer to believe
that there is some kind of relationship between the proprietor of the mark
and the use of the sign (impression of a sponsorship relation); and
- when there is mere association : "likelihood that (subconscious)
connections or associations are made by virtue of the fact that through the
perception of a sign, recollection of the mark might be stirred up" (the
mark is called to mind through the appearance of the sign).

In the opinion of most Benelux lawyers, the possibility of obtaining an injunction

in cases of mere association allowed the prohibition of uses of a sign which were
diluting the distinctiveness of the trademark. So, likelihood of confusion in the broad
sense of the term also covered the likelihood of dilution."
Such a broad infringement criterion has apparently not been accepted by the
European Court of Justice. Indeed, in interpreting Article 5 of the Trademark
Directive,64 the European Court of Justice "ruled in the Sabel case" that the mere
association which the public might make as a result of the conceptual content of two
marks is not in itself a sufficient ground for infringement."" The likelihood of
association is only one element in order to define the scope of the likelihood of
confusion. However, it should be recalled that in the Sabel case, the trademark was
not particularly well-known to the public and was considered by the German
Supreme Court as has having little imaginative content.

6 See Ch. Gielen, Likelihood ofAssociation, in European Community Trade Mark, ed. by M.
Franzosi, Kluwer Law, p. 337 (1997).
' See P. Torremans, The Likelihood ofAssociation ofTradeMarks: An Assessment in the Light
ofthe Recent Case Law ofthe Court ofJustice,I.P.Q., No. 3, p. 295 (1998).
6 According to Article 5(1) of the Trademark Directive:

"The registered trademark shall confer on the proprietor exclusive rights therein. The proprietor shall be
entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical
with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or
similarity ofthe goods or services covered by the trade mark and the sign, there exists a likelihood of
confusion on the part ofthe public, which includes the likelihood of association between the sign and the
trade mark."
' ECJ, 11 Nov. 1997, case C-251/95 (Sabel BV v. Puma AG, Rudolf Dassler Sport).
* Ch. GielenDevelopment ofEuropean TrademarkLaw by the Court ofJustice, Maastricht 4-6
July 1998, paper for the Amsterdam/Maastricht Summer University, p. 12.
75-20 INTERNATIONAL INTELLECTUAL PROPERTY LAW &POLICY

The situation was different in the more recent Canon case." The plaintiffs mark
"Canon" was more distinctive and the question raised was whether a trademark of
wide reputation has a broader protection against the use of a nearly identical sign
(here "Cannon") for goods or services. The European Court of Justice ruled that the
distinctive character of the trademark, and in particular its reputation, has to be
taken into account.
This last judgment of the European Court of Justice also stresses the origin
function of trademark law. That does not mean that no likelihood of confusion will
exist if the public attributes the goods and/or services to different places of origin
("Herkunftsstatten" in German). The relevant issue is whether the public could
believe that the goods/services come from the same undertaking.The place of
production of the goods is not as important as the guarantee that the goods bearing
the sign "have originated under the control of a single undertaking which is
responsible for their quality."

(h) Could A Use OfA Mark As Metatag Create A Risk Of

Confusion?
The recent rulings of the European Court of Justice are not particularly helpful
in resolving metatags cases. The relatively strict notion of confusion adopted by the
European Court of Justice does not seem to apply readily to metatag cases.
However, European Courts will probably consider that a use as metatag is liable to
confuse the consumer because in assessing the risk of confusion, the courts will tend
to look to the intent of the alleged wrongdoer.' So, as a commentator has put it,
even if the metatag suit is not an easy fit with the law, the webmaster introducing the
protected metatag to divert traffic appears as a "bad actor". Because of the presence
of such parasitic behaviour, a court might be willing to infer a likelihood of
confusion. In order to cover such cases, the confusion criterion should be broadly
construed as also including some kind of pre-sale confusion or initial consumer
confusion (initial association between the query/the mark and the returned site) The
risk of such a confusion exists even if this first impression of association or this
"pre-sale confusion" could be dispelled later when the user/consumer travels to the
site returned by the search engine.
The view that European courts will be induced to consider metatags cases as
constituting trademark infringement in the sense of Article 5 of the Trademark
Directive could therefore be supported.

V. CONCLUSION

"To link or not link," that was the first question raised.

ECJ, 28 Sept. 1998, case C-39/97 (Canon Kabushiki Kaisha v. Metro-Goldwyn-Meyer Inc.).
"See case C-10/89 HAG GF (HAG 11), 1990, ECR, 1-3711, § 13 and 14. See also ECJ, 28 Sept
1998, case C-39/97 (Canon Kabushiki Kaisha v. Metro-Goldwyn-Meyer Inc.), § 28.
" M. O'Rourke, Defining the Free-Riding in Cyberspace. . ., supra note 47, n.75.
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-21

In most cases, "to link" does not create any problem. But in certain
circumstances, caution should be exercised. Therefore, the formula proposed by
some commentators, "Think before you link" does make sense.
When is it necessary to think, or even to sign a contract, before implementing a
link?
First, when you want to do some kind of "deep linking," that is to say when you
want to create a link not to the home or front page but to some subsidiary pages.
Secondly, "framing" can certainly create legal problems as this technique allows
a person to bypass the ads or banners of the linked site. In addition, framing could
sometimes be attacked on the basis of an infringement of the moral right of the
author whose work appears within the frame of the linking site.
Thirdly, more thinking is required when you are making use of a pointer which
is protected, for instance, an image, such as in the case of inlining.
Second question: when is it necessary to think or even to sign a contract before
placing a metatag in the HTML code of a Web site?
The problem results here from the possible confusion created by this "pre-link"
If the metatag consists of a trademark, a risk of being sued for trademark
infringement and initial consumer confusion exists.

QUESTION AND ANSWER SESSION

QUESTION [Massimo Introvigne]: On the last speech, I have a comment and

a question. The comment is about entertaining cases. There is a case I hope will
go to court to some extent. On the other hand, it may not. I was involved in it, at
least at the level of sending a cease-and-desist letter. It is a case of Internet
marketing involving an agency offering escort services in Texas for outrageous fees,
like $5,000 or $6,000 for a lady escort. They use metatags with the names of a
number of famous fashion European brands, such as Gucci, Ferrari, Cartier and
others. These are absolutely invisible. Only by using a search engine will you go
to this strange page offering escort services. You do not find the famous
trademarks, and you have to go to the source core or HTML; then you see what kind
of metatagging they have used.
If this case eventually goes to court, it will be quite interesting. It is different
from the Playboy case because in this case what this American escort company is
offering has nothing to do with the famous brands. It is just a way of misusing the
famous brands to get some business.
The question is, of course, that your talk was mostly about the case in the United
States and Europe. Some of the worst cases of infringement are actually performed
by people using POP providers and domain names in countries in Africa or Pacific
islands. We know this problem in criminal law regarding child pornography, but
I have seen other cases.
For instance, there is a wonderful company whose domain name is located in the
island of Niue, which has the domain name ".nu," that secured the domain name
"gucci.nu," and they sell infringement watches of a number of famous trademarks
75-22 INTERNATIONAL INTELLECTUAL PROPERTY LAW &POLICY

all around the world. The problem is how to sue this company in Niue. I do not
even know whether there is a court system in Niue.
The tactics work because many famous brands are trying to trace this domain
name in Niue to an American company. But, of course, the people who really want
to infringe, not only through metatags but creating whole systems of linking to
people e-selling infringement or counterfeit products, normally, try to locate
themselves well outside of North America and Europe and in jurisdictions where it
is extremely difficult to sue.
PROF. STROWEL: I do not think there was a direct question addressed to
me. Your intervention is more another illustration of the difficulties to sue in case
of on-line infringements. Internet offers indeed many means (anonymity of the
content provider, location in an "intellectual property heaven," etc.) for people
trying to avoid any legal action and enforcement. On the other hand, the attention
should not be too much focused on these extreme cases. In the last months, we have
assisted to an increase in the number of legal decisions on matters such as
metatagging.o That means that defendants can be brought before the courts. In
addition, one can expect the development of cases on the liability of on-line service
providers: they can be identified and sued more easily than the direct infringers. But
most of the cases will probably end up with out-of-court settlements. We will not
have a very abundant case law on these problems.
QUESTION [Graeme Dinwoodie, University of Cincinnati]: Picking up on the
last discussion ofthe Playboy case, in fact I think it is quite clear when you read the
basis ultimately for that opinion, which is relying on trademark fair use to allow Ms.
Welles to do what she is doing, that in fact they wouldn't have had to get to that
issue unless someone, using meta tagging, using the trademark PLAYBOY, was
potentially liable. They relied on the trademark fair use defense, because she was
in fact describing herself accurately as a "Playmate of the Year." So in fact I think
that case more broadly stands for the proposition that the U.S. courts, at least, are
quite willing to find metatagging to give rise to trademark liability in the normal
case.
PROF. STROWEL: Yes, I agree completely. There are indeed other cases
mentioned in my paper where the courts found that there is some trademark
infringement in case of metatagging. I choose to speak about this case not only
because it is an entertaining one, but because it was the first one considered by a
Court of Appeal. Besides, the issue of the fair use exemption could be interesting
in a comparative approach with European trademark law (based on the 1988
Harmonization Directive) where such broad exception does not exist. But that is
another question. The general issue in relation to the use of marks as metatags is
whether this use generates some risk of confusion. Some U.S. courts have accepted
that "initial interest confusion" in the mind of the consumer is sufficient.

"See, e.g., Brookfield Communications Inc. v. West Coast Entertainment, No. 98-56918, D.C. No.
CV-98-09074-CRM (9th Cir. Apr. 22, 1999).
A COPYRIGHT AND TRADEMARK LAW PERSPECTIVE 75-23

QUESTION [Alfred Marks]: For whatever it is worth, I just wanted to mention

that Irecently had occasion to read an article. Unfortunately, I do not remember the
author, I do not remember the place of publication, and I do not recall many of the
cases it cited. But it did involve exactly this same issue, and my point is that it did
cite a number of other cases in the United States that dealt with this issue. Now, I
can find that article, I have a copy of it in my office, but I cannot recall it now.
PROF. STROWEL: There are indeed other cases I did not have the time to
speak about and they are mentioned in my paper.