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May/03

9th Circuit: 'Unreasonably Pervasive' Meta-tag Usage Enjoined


Plaintiff owns a federal registration for PYCNOGENOL, an anti-oxidant which is derived from French tree bark.  Defendant advertised its product as MASQUELIER’S: THE ORIGINAL FRENCH PYCNOGENOL, and inserted PYCNOGENOL into its meta-tags.  Plaintiff brought infringement and dilution claims.  On appeal, the Ninth Circuit held, under its nominative fair use test (see recent fair use cases here and here) that while Defendant could make some reference to PYCNOGENOL, its use in meta-tags (which it apparently admitted had done so to affect its search engine ranking) was ‘unreasonably pervasive’ and therefore exceeded the second and third prongs of the fair use test, namely that it exceeded the minimal amount necessary to refer to plaintiff’s mark, and that such use was likely to cause confusion. The Court did not elaborate on how pervasive was unreasonably pervasive, and whether it viewed any meta-tag use at all as unreasonably pervasive.

The dilution cause was remanded per Mosely.

I look forward to a Ninth Circuit review of the Northern District of California Taxes.com case, discussed here.

Aside: I put PYCNOGENOL into Google today.  The Google abstract of the third hit referred to PYCNOGENOL but the site it turned up, which sells the competing product, does not.

Horphag v. Pelligrini et. al., no. 01-56733 (9th Cir. May 9, 2003) Text here.

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