Web-Tracking Data: An Under-Utilized Legal Resource

Several years ago, businesses like WebSideStory began offering dedicated Web-tracking services. These services can capture and analyze many aspects of Web traffic and create a multitude of customized reports. Such digital market research has become indispensable to many online businesses. (Its use has also raised many concerns about privacy, which are beyond the scope of this article.) On the other hand, it offers significant, yet largely unrecognized, benefits to trademark attorneys in their efforts to assist clients. This article briefly outlines some of the ways that trademark attorneys can utilize this data.

Most trademark lawyers are familiar with “cookies,” which are strings of text that a Web server places on a user's hard drive when delivering a requested Web page. As a result, the Web server that delivered the cookie, and sometimes other servers as well, can read the cookie when delivering another Web page to the same computer. This allows the Web server to associate certain activity on a Web site with that computer, and, presumably, its user. Among other things, cookies can reveal how users move through a Web site once they arrive. For a variety of reasons, often having to do with privacy, cookies have been the focus of much attention and are presumed by many to be the primary way in which Web sites gather data about their visitors. In fact, Web sites can, and do, collect significant amounts of information, including how a visitor arrives at a particular site, through other means. Many Web sites use a variety of technology to track the online movements of their visitors.

As an example, Web sites can engage in “referrer logging,” the technical term used for collecting the URLs that have sent visitors to a particular Web page. Businesses use this data to evaluate the effectiveness of their affiliate marketing or other e-commerce strategies. But this information can be equally valuable to the trademark attorney. These logs may reveal whether unscrupulous entities have registered domain names confusingly similar to a client's trademark, such as common misspellings or domain names that are composites of a trademark. For instance, The Hertz Corporation's discovery that many visitors arrived from www.herz.com, a Web site offering discount car rentals, could be probative of actual confusion in an action against the registrant of that domain name. (The examples in this article are not based on actual facts but are for illustrative purposes only. In fact, the Web site www.herz.com is inactive and the authors do not intend to imply that its owner has engaged in any misconduct).

Web-tracking statistics also include the identity of referring search engines and the number of visitors from each source. Businesses find this information helpful in determining which search engines are generating traffic to their Web sites. However, these statistics also tally the actual searches that eventually led visitors to the site. Thus, this data identifies which search terms the general public associates with a client's product or service. As a result, it can help evaluate the conduct of a potential defendant in a trademark infringement action. For instance, a discovery by Calvin Klein that “colored jeans” was a search term used by 10% of the visitors to its site could be very useful in a case against a company selling jeans designated “Cal Kline: the colored jeans.”

Web-tracking data also reveals the amount of traffic from country code domains (ccTLDs), which can be of great value to a client trying to establish international renown, or merely demonstrate that its mark is being used in a foreign jurisdiction in order to establish foreign rights. In the litigation context, this data may also provide a factual basis to assert jurisdiction in the United States over a foreign defendant. In a licensing arrangement, it can help audit compliance with territorial restrictions.

Bear in mind, Web-tracking data is not 100% accurate or complete. Information obtained regarding referring URLs cannot distinguish between those users accessing a Web site from a “bookmark” on their computer or via a link in an e-mail message, or even those who type the URL directly into their browser. Domain names are also often ineffective in revealing a visitor's physical location (for example, if the visitor is logged into a corporate network while surfing). Nevertheless, the data can paint a valuable picture of how clients' trademarks are both perceived and used, and can aid in efforts to police them, both domestically and internationally.

The Internet offers many other interesting tools not yet fully exploited by the trademark bar. For instance, the Overture search engine has a tool that allows for the discovery of the number of searches made of a word or phrase in the last month. See, www.content.overture.com/d/USm/ays/index.jhtml. This data can serve as evidence of secondary meaning, or of the fame of a particular mark.

For instance, in Playboy Enters., Inc. v. Netscape Communs. Corp., 55 F. Supp. 2d 1070 (C.D. Cal. 1999), rev'd, 2004 U.S. App. LEXIS 442 (9th Cir. 2004), Playboy alleged that Netscape's sale of the keywords “playboy” and “playmate” (to purchasers whose banner advertisements would then be displayed on Web pages generated by searches for those terms) infringed its well-known PLAYBOY and PLAYMATE marks. Noting that Playboy had neither produced a survey nor demonstrated that users typing “playboy” or “playmate” into a search engine necessarily sought the services provided under the Plaintiff's marks, the district court ruled that Playboy had failed to establish likelihood of confusion. Id. at 1084, 1085.

A review of statistics from Overture, however, reveals that in January 2004, most of the more than 144,000 searches for “playmate” were for “playboy playmate,” “playmate gallery,” “playmate of the year,” and other phrases clearly associated with Playboy magazine. Had this data been available to Playboy in 1999, it would certainly have provided compelling evidence of secondary meaning and likelihood of confusion. (Of course, the Ninth Circuit subsequently found this aspect of the lower court's ruling patently absurd even without a consideration of such evidence. 2004 U.S. App. LEXIS 442 at 17.)

Trademark law has changed drastically as a result of the Internet. Although much has been written on using the Internet to search and clear trademarks and to investigate potential infringement, Web-tracking data remains an untapped resource. While this article provides a basic introduction to these tools, creative attorneys will no doubt find numerous other ways to derive benefit from them.

Several years ago, businesses like WebSideStory began offering dedicated Web-tracking services. These services can capture and analyze many aspects of Web traffic and create a multitude of customized reports. Such digital market research has become indispensable to many online businesses. (Its use has also raised many concerns about privacy, which are beyond the scope of this article.) On the other hand, it offers significant, yet largely unrecognized, benefits to trademark attorneys in their efforts to assist clients. This article briefly outlines some of the ways that trademark attorneys can utilize this data.

Most trademark lawyers are familiar with “cookies,” which are strings of text that a Web server places on a user's hard drive when delivering a requested Web page. As a result, the Web server that delivered the cookie, and sometimes other servers as well, can read the cookie when delivering another Web page to the same computer. This allows the Web server to associate certain activity on a Web site with that computer, and, presumably, its user. Among other things, cookies can reveal how users move through a Web site once they arrive. For a variety of reasons, often having to do with privacy, cookies have been the focus of much attention and are presumed by many to be the primary way in which Web sites gather data about their visitors. In fact, Web sites can, and do, collect significant amounts of information, including how a visitor arrives at a particular site, through other means. Many Web sites use a variety of technology to track the online movements of their visitors.

As an example, Web sites can engage in “referrer logging,” the technical term used for collecting the URLs that have sent visitors to a particular Web page. Businesses use this data to evaluate the effectiveness of their affiliate marketing or other e-commerce strategies. But this information can be equally valuable to the trademark attorney. These logs may reveal whether unscrupulous entities have registered domain names confusingly similar to a client's trademark, such as common misspellings or domain names that are composites of a trademark. For instance, The Hertz Corporation's discovery that many visitors arrived from www.herz.com, a Web site offering discount car rentals, could be probative of actual confusion in an action against the registrant of that domain name. (The examples in this article are not based on actual facts but are for illustrative purposes only. In fact, the Web site www.herz.com is inactive and the authors do not intend to imply that its owner has engaged in any misconduct).

Web-tracking statistics also include the identity of referring search engines and the number of visitors from each source. Businesses find this information helpful in determining which search engines are generating traffic to their Web sites. However, these statistics also tally the actual searches that eventually led visitors to the site. Thus, this data identifies which search terms the general public associates with a client's product or service. As a result, it can help evaluate the conduct of a potential defendant in a trademark infringement action. For instance, a discovery by Calvin Klein that “colored jeans” was a search term used by 10% of the visitors to its site could be very useful in a case against a company selling jeans designated “Cal Kline: the colored jeans.”

Web-tracking data also reveals the amount of traffic from country code domains (ccTLDs), which can be of great value to a client trying to establish international renown, or merely demonstrate that its mark is being used in a foreign jurisdiction in order to establish foreign rights. In the litigation context, this data may also provide a factual basis to assert jurisdiction in the United States over a foreign defendant. In a licensing arrangement, it can help audit compliance with territorial restrictions.

Bear in mind, Web-tracking data is not 100% accurate or complete. Information obtained regarding referring URLs cannot distinguish between those users accessing a Web site from a “bookmark” on their computer or via a link in an e-mail message, or even those who type the URL directly into their browser. Domain names are also often ineffective in revealing a visitor's physical location (for example, if the visitor is logged into a corporate network while surfing). Nevertheless, the data can paint a valuable picture of how clients' trademarks are both perceived and used, and can aid in efforts to police them, both domestically and internationally.

The Internet offers many other interesting tools not yet fully exploited by the trademark bar. For instance, the Overture search engine has a tool that allows for the discovery of the number of searches made of a word or phrase in the last month. See, www.content.overture.com/d/USm/ays/index.jhtml. This data can serve as evidence of secondary meaning, or of the fame of a particular mark.

For instance, in Playboy Enters., Inc. v. Netscape Communs. Corp. , 55 F. Supp. 2d 1070 (C.D. Cal. 1999), rev'd , 2004 U.S. App. LEXIS 442 (9th Cir. 2004), Playboy alleged that Netscape's sale of the keywords “playboy” and “playmate” (to purchasers whose banner advertisements would then be displayed on Web pages generated by searches for those terms) infringed its well-known PLAYBOY and PLAYMATE marks. Noting that Playboy had neither produced a survey nor demonstrated that users typing “playboy” or “playmate” into a search engine necessarily sought the services provided under the Plaintiff's marks, the district court ruled that Playboy had failed to establish likelihood of confusion. Id. at 1084, 1085.

A review of statistics from Overture, however, reveals that in January 2004, most of the more than 144,000 searches for “playmate” were for “playboy playmate,” “playmate gallery,” “playmate of the year,” and other phrases clearly associated with Playboy magazine. Had this data been available to Playboy in 1999, it would certainly have provided compelling evidence of secondary meaning and likelihood of confusion. (Of course, the Ninth Circuit subsequently found this aspect of the lower court's ruling patently absurd even without a consideration of such evidence. 2004 U.S. App. LEXIS 442 at 17.)

Trademark law has changed drastically as a result of the Internet. Although much has been written on using the Internet to search and clear trademarks and to investigate potential infringement, Web-tracking data remains an untapped resource. While this article provides a basic introduction to these tools, creative attorneys will no doubt find numerous other ways to derive benefit from them.