February 2011 Issue

Civil Cases

S. Snow Mfg. Co. v. SnoWizard Holdings, Inc.,
2011 WL 601639 (E.D. La. Feb. 16, 2011)

ABSTRACT
Plaintiff alleged that defendant used plaintiff’s trademark in defendant’s website metatags and sued for trademark infringement.  The court granted defendant’s motion for summary judgment, finding that plaintiff failed to show that defendant’s actions were likely to confuse consumers.  The court rejected plaintiff’s argument that use of a trademark as a metatag constitutes initial-interest confusion and trademark infringement as a matter of law.  It noted that such actions may constitute infringement because of the initial-interest confusion that may be created, but the plaintiff must prove that use of the “hidden” metatag is likely to cause consumer confusion as with an infringement claim involving a visible trademark.

CASE SUMMARY

FACTS
SnoWizard Holdings, Inc. (“SnoWizard”) manufactures shaved-ice machines under its federally registered SNOWIZARD mark.  Parasol Flavors, LLC (“Parasol”) produces flavored syrups for shaved ice.  SnoWizard alleged that Parasol used the phrase “snow wizard” in metatags on its website and sued for trademark infringement.  Parasol moved for summary judgment on SnoWizard’s infringement claim.

ANALYSIS
The district court granted Parasol’s motion and dismissed SnoWizard’s trademark-infringement claim.  Parasol argued that SnoWizard could not show that Parasol used “snow wizard” on its website, and that such use would not constitute a “use in commerce” of the SNOWIZARD mark even if it could be shown.  Parasol argued that although “snow wizard” and SNOWIZARD sound the same to a human ear, computer search engines do not process searches by sound and know the difference between the two terms.  Parasol also noted that SnoWizard did not offer any expert testimony to establish how a search engine would process the term “snow wizard” so as to establish that there would even be any likelihood of confusion based on the search results.  SnoWizard responded that the cases applying Brookfield Communications recognize that a defendant’s use of a plaintiff’s mark in website metatags creates initial-interest confusion, and thus constitutes trademark infringement as a matter of law. 

The court rejected SnoWizard’s contention that a likelihood of confusion is automatically established as a matter of law when there is metatag use of a competitor’s trademark.  According to the court, the cases cited by SnoWizard merely recognize that use of metatags could constitute trademark infringement because of initial-interest confusion that may be created, even if consumers never actually see the “hidden” metatag.  The plaintiff in such a case, however, must still carry its burden of proving the existence of a likelihood of confusion.  In this regard, the court noted that “[i]t would be odd indeed for the law to require a plaintiff in an ordinary trademark infringement case to prove likelihood of confusion to the jury, yet to create a lighter burden where metatags are involved, given that with metatags the consumer never actually sees the trademark or knows that it is in use.”  Because of the “hidden” nature of website metatags, the court held that SnoWizard could not prevail on its infringement claim without showing the actual effects of Parasol’s use of “snow wizard” as a metatag on its website, i.e., SnoWizard must show a likelihood of confusion.  Because SnoWizard did not offer any such evidence, Parasol was entitled to judgment as a matter of law on SnoWizard’s infringement claim.

CONCLUSION
This case highlights the importance for trademark owners of not taking anything for granted.  Even though defendant used a metatag virtually identical to plaintiff’s mark to sell closely related products, plaintiff still had to prove that defendant’s actions were likely to cause consumer confusion.