Metatag Use of Phrase Close to Mark Not Likely to Confuse

by Richard Newman on March 6, 2011

On February 15, 2011, the U.S. District Court for the Eastern District of Louisiana ruled that metatag use of a phrase that sounds identical (but is only spelled similar) to a protected mark does not necessarily create a likelihood of confusion because search engine results are highly technical (Southern Snow Manufacturing Co. v. Sno Wizard Holding Inc., E.D. La., No. 06-9170, 2/16/11).  In short, the court dismissed the case because the plaintiff failed to offer any actual proof of customer confusion and merely asked the court to infer confusion as a matter of law.

The plaintiff, Southern Snow Manufacturing Co., has a registered trademark on the term “SNOWIZARD.” The defendant, Parasol Flavors LLC, allegedly uses the phrase “snow wizard” as a metatag on its website. The plaintiff claimed that this use infringed on its mark.

To prevail on a Lanham Act trademark infringement claim, a plaintiff must establish that: (1) it owns a valid, legally protectable mark; (2) that a defendant used the mark to identify goods or services; and (3) that the use was likely to create confusion concerning the origin of the good or services.  The court held that an infringement claim “ultimately turns on whether one mark is likely to cause confusion with another.”

Here, the plaintiff had not demonstrated that the defendant’s use of “snow wizard” as a metatag had resulted in consumer confusion.  Although the two terms sound identical to the ear, the court agreed with the defendant that computers are able to recognize the difference between “SNOWIZARD” and “snow wizard.” Indeed, because of the “technical, esoteric, and hidden nature of website metatags,” the court said that the plaintiff needed to be much more proactive in demonstrating that there was a likelihood of confusion based on the similarities between the terms.

The court said that a demonstration of confusion could have been presented by showing evidence of what happens when the defendant’s term is entered into a search engine. The court wondered whether a use of the defendant’s term in a search engine would immediately direct the customer to the defendant’s website, or if instead a link to the defendant’s website would appear at the top, middle, or bottom of the search results.  Further, the court was curious as to what precisely would need to be entered into a search engine to produce the confusion that the plaintiff alleged.  Ultimately, the court held that “the likelihood of consumer confusion will turn on questions such as these but the record contains no evidence of this nature.”

The plaintiff attempted to persuade the court to conclude, as a matter of law, that the defendant’s use of the plaintiff’s mark as a metatag created initial interest confusion.  In Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the Ninth Circuit relied on the initial interest confusion theory to find that the defendant’s use of the plaintiff’s mark as a metatag allowed it to improperly benefit from the goodwill associated with the plaintiff’s mark.  The plaintiff argued that Brookfield, and subsequent cases that followed, established that initial interest confusion existed as a matter of law when a plaintiff’s mark is used as a metagag.  The court disagreed.  These cases only show that initial interest confusion may result from the use of plaintiff’s mark as a metatag, but such a finding is not a forgone conclusion, and it is certainly not a matter of law, the court said.

Brookfield was recently criticized in 1-800 Contacts Inc. v. Lens.Com Inc., No. 07-591, (D. Utah 12/14/10), where the court said that the Brookfield decision resulted from a misunderstanding of the mechanics of search engines.  Here the court’s criticism was more subtle, but it did note that it would be odd 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.  Basically, the court was unwilling to “passively assume” that there was a likelihood of confusion.

The court noted that the plaintiff did not allege that the defendant actually used its registered mark as a metatag, but instead alleged that the use of a similar mark resulted in infringement.  The court said that if it allowed the case to proceed “the jury would be left to guess that ‘snow wizard’ and SNOWIZARD are synonymous to a computer search engine but the court is not even persuaded that such an assumption is factually correct.”

Richard B. Newman, Internet Lawyer and Business Litigation Attorney – Hinch Newman LLP

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