Introduction

An independent assessment of the investment market will reveal that foreign investors are increasingly willing to invest in businesses run by Nigerians who have better understanding of the local terrain as opposed to setting up and running them personally. The last decade witnessed a meteoric rise in entrepreneurship and birthed several start-ups in Nigeria. Venture Capital for Africa (VC4Africa), a new start-up funding platform reports that in 2014 alone, $26.9 Million was invested in African start-ups under its platform.

Konga, a Nigerian e-commerce start-up, recently attracted the investment of about $40 million by Swedish investor company Kinnevik and Jumia, another e-commerce platform was able to reel in over $70 million in foreign investment funding from MTN, Rocket and Millicom. These ambitious enterprises have by far raised the bar for competition and business innovation and are gradually beginning to understand the importance of branding and brand protection as an indispensable tool in the fierce arena of modern day marketing.

Search Engine Optimization

One formidable tool employed by businesses in modern day advertising and brand marketing is Search Engine Optimization (SEO). Businesses now rely on search engines like Google, Bing, and Yahoo! etc. for visibility to their target demographic. Naturally, ranking higher in search results on these sites translates to better business. SEO is the process of improving visibility and ranking of a website on search engine result pages, by incorporating search engine friendly elements into the website.

These elements could include keyword-rich title tags, meta tags, or web content (textual, image or links) featuring frequently searched words. SEO techniques are broadly categorised into “White Hat” and “Black Hat” techniques with the distinguishing factors bordering mainly on the ethicality, morality and even legality of the technique applied.

White Hat SEO is generally SEO practice within the search engine’s terms of service and guidelines and is considered ethical. Black Hat on the other hand employs aggressive SEO techniques that not only flout search engine guidelines but in some cases also break constituted laws and authority.

Most businesses engage professional SEO service providers to boost their online presence, but only a few bother about the ethicality or legality of the strategies employed by these agencies. The reality however, is that certain SEO techniques have raised disturbing questions as to their legality and the ability of intellectual property (IP) laws to prevent IP infringement in the realm of SEO.

Intellectual Property Concerns

One of such techniques is the use of another business’ trademark (usually trade name) by a competitor as a tag, key word, title or homepage content of its website in a bid to increase visibility or in extreme cases, create a false representation of identity or origin. For example, a relatively unknown retail business could include the trade names of retail giants Konga or Jumia in its SEO plans such that when customers key “Konga” or “Jumia” into search engines the retail business’ name shows up on the same page.

The borderless nature of SEO is a challenge and the fact that IP laws and precedents have been inadequate and slow to catch up with ever advancing technology further compounds this problem. The American case of Brookfield Communications Inc. v. West Coast Entertainment Corp. 174 F.3d 1036 (9^th Cir. 1999) was one of the first cases to broach this issue. Unfortunately the decision in the case could not catch on especially because the trademark laws of most common wealth countries do not recognise the principle of initial interest confusion which was the crux of the American court’s decision in that case. Another notable attempt at tackling black hat SEO techniques under trademarks law was the case of Playboy Enterprises Inc. v. Terri Welles Inc. 50 U.S.P.Q.2d 1545, 99 Cal. Daily Op. Serv. 2899 (1999) which held that the defendant’s use of the plaintiff’s trademark was only in a nominative capacity and thus did not amount to infringement.

The uplifting thing about these cases however is that they inadvertently acknowledge that certain black hat SEO techniques, especially the unauthorised use of a competitor’s trademark as meta-tags etc., could amount to trademark infringement.

Fortunately the recent 2014 Australian case of Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75 examined the lawfulness of certain SEO techniques and has begun capturing the attention of shrewd business owners regarding these techniques.

Lift Shop Pty Ltd (Lift Shop) and Easy Living Home Elevators Pty Ltd (Easy Living) are fierce competitors in the elevator sales market. In 2012, Easy Living as a marketing strategy engaged the services of an SEO service provider who was authorised to (a)include the word “liftshop” in its title page, (b)adopt “lift shop” as a keyword, and (c)include the words “lift” and “shop” in several portions of its website, particularly the home page. In effect, the website contained phrases like “we’re a lift shop in our 14^th year” and “looking for a lift shop?”

Resultantly, whenever a search was entered in search engines using the keywords “lift shop”, the search results would display Easy Living’s entry next to Lift Shop’s.

Lift Shop, owner of the illustrated trade mark therefore sued Easy Living for trademark infringement. Certain issues were crucial to the determination of the suit according to Australian Law.

1. Misrepresentation, and
2. Use of the allegedly infringing words “as a trademark”.

Misrepresentation

Whereas Lift Shop argued that Easy Living intentionally caused itself to be misrepresented in the search engines so as to mislead the public into believing that there existed an association between them or even believing that the website was that of Lift Shop, the Judge agreed with Easy Living’s argument that “lift shop” is generic and generally understood as describing a shop that sells lifts, as such there was no possibility of confusion to the public in respect of the search results.

Use of words as a trademark

An essential element of infringement in Australia’s Trademark Act is that the infringing mark must be used as a trade mark; similar to the requirement of “use in the course of trade” in Section 5(2) of the Nigerian Trade Marks Act. It was therefore pertinent to determine whether Easy Lift had used “lift shop” in its capacity as a trademark or as a generic word, merely describing their business. Predictably, the Judge surmised that the words “lift shop”, as used by Easy Living, were not intended to cause misrepresentation but rather to only describe the character of the business and the nature of services it engaged in.

The court found in favour of the defendant and even upon appeal, the judgment of the trial court was upheld.

The Lift Shop case is remarkable because it strongly highlights that the unauthorised use of another proprietor’s trademark in SEO may amount to infringement as long as it is established that such use amounts to use as a trade mark.

Conclusion

Black Hat SEO techniques also extend into the copyright and plagiarism terrain because an important aspect of SEO is creating content for a website. Such content could be logos, text, images, streaming music or videos etc. The temptation to lift already finished articles or photographs to boost a website’s content quality without recourse to the copyright owner should be strongly resisted as it is even an easier endeavour to establish a copyright infringement in SEO than an infringement of trade mark.

It is therefore pertinent for shrewd business owners to be wary of the techniques applied by their SEO providers or IT team. One cannot, of course, over underscore the need for a business to register all of her intellectual property with the appropriate agencies.