February 24, 2011
Savvy Louisiana Ruling on Metatags--Southern Snow v. Snowizard
By Eric Goldman
Southern Snow Mfg. Inc. v. Sno Wizards Holdings, Inc., 2011 WL 601639 (E.D. La. Feb. 16, 2011)
Have I ever mentioned how much I hate metatags cases? They have led to some godawful rulings. But surprisingly, today's opinion was quite refreshing. It's just the iceberg tip of a litigation battle royale taking place among Louisiana manufacturers of shaved ice equipment and flavorings. Sno Wizards manufactures the trademarked "SnoWizard" shaved ice machine. The defendant in this ruling, Parasol, makes syrup for shaved ice and put the term "snow wizard" in its metatags. (I checked a few pages on Parasol's website and couldn't find the reference any more). Presumably, Parasol wants to tell shaved ice retailers to consider their syrup for shaved ice manufactured using Sno Wizards' machine. Given that Sno Wizard also sells its own flavorings, it's easy to speculate why Sno Wizard might object to Parasol's efforts.
Sno Wizard argued the trademark owner's standard party line that use of its trademarks in someone else's metatags is per se infringement; no further proof required. The court recaps the argument: "SnoWizard retorts that the cases applying Brookfield Communications recognize that the defendant's use of the plaintiff's mark in website metatags creates initial interest confusion and therefore constitutes trademark infringement and unfair competition as a matter of law." From Sno Wizard's standpoint, res ipsa loquitur.
Fortunately, this judge digs deeper. Although the opinion is light on citations, it's rich with wisdom. The court starts out with this winner:
It 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. Thus, the Court is persuaded that SnoWizard cannot passively assume that likelihood of confusion is established as a matter of law in this case.
Why, YES! I enthusiastically agree that the typical pro-trademark owner metatag rulings get the burdens completely backwards.
The court continues by asking the key metatags-related technological question that has eluded most judges: just what do they do? (Google has given its answer). The court says:
SnoWizard cannot prevail on its metatag claim without evidence of what actually takes place as a result of the phrase "snow wizard" being hidden in Parasol's website. Is every consumer diverted to Parasol's website, or is Parasol listed at the top of many search results, or somewhere in the middle of a result list, or twenty names down the list? Does the consumer have to type in just "snow wizard" or is the metatag triggered by other variations of the phrase too?
This inquiry is in stark contrast to most judges' assumption that metatags are the most effective SEO tool ever and therefore guarantee top placement and masses of unwittingly diverted consumers. See, e.g., Art Attacks v. MGA and Venture Tapes v. McGills; but see Standard Process v. Banks, which would have been a helpful cite here.
The court concludes by noting the potential difference between "snowizard" (the trademark) and "snow wizard" (the metatag) to keyword searches:
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.
Amazingly, the fact that an extra space might affect keyword searches baffled the Ninth Circuit in the Brookfield case, which similarly involved references that differed by a space ("moviebuff" and "movie buff"). The possible difference also escaped the Seventh Circuit in the Promatek v. Equitrac case, where the trademark ("Copitrak") differed from the metatag ("Copitrack") and actually did produce different search results in Google (see the screen shots yourself, thanks to when Google posted an unmodified copy of its 2001 index).
And in a final display of savviness, the judge doesn't simply roll the issue to trial to examine these factual issues. Instead, saying the trademark owner didn't present enough evidence to earn its way to a trial, the judge dismisses the metatag claim on the spot. This case appears to be a much better context for Judge Kozinski's famous admonishment in Mattel v. MGA (the Barbie Girl case): "The parties are advised to chill."
The author of this gem is Judge Jay Christopher Zainey. Great work, your honor.
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