The recent case of Shainin II, LLC v. Allen is a straightforward metatag trademark infringement case. On May 15, 2006, Judge Pechman of the U.S. District Court for the Western District of Washington entered an order enjoining a former employee from using his former employer’s trademarks as metatags in a website promoting competing services.
Nodding to the well-known case of Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the court addressed the possibility of “initial interest confusion” arising from the wrongful diverting of web traffic to the defendant’s site. The court acknowledged, however, that use of another’s trademark as a metatag does not automatically mean trademark infringement. As in Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), sometimes metatag trademark use is permissible “nominative use.”
But in this case, the plaintiffs had raised serious questions going to the merits of their trademark infringement claim. Moreover, the balance of the hardships weighed heavily in favor of the plaintiffs, as defendants would suffer little or no harm in being forced to remove the metatags. In fact, they had already done so by the time of the hearing. Accordingly, an injunction against further use of the trademarks in the metatags was appropriate.
Shainin II, LLC v. Allen, (Slip Op.) 2006 WL 1319405 (May 15, 2006).