Monday, December 19, 2011

Southern Snow Manufacturing Co. v. Sno Wizard Holdings, Inc., --- F. Supp. 2d ----, 2011 WL 6287950 (E.D. La.)

Earlier ruling discussed by Eric Goldman -- these opinions just showed up in my Westclip, but are from April 2011.

SnoWizard moved for summary judgment for all claims based on the hidden use of SOUTHERN SNOW® and FLAVOR SNOW® in metatags and/or hidden text on its website. The court earlier rejected the argument that use of another party’s trademark in a website metatag creates likely confusion as a matter of law. Though expert testimony regarding search engines isn’t required, likely confusion is the lynchpin of any infringement claim, and it’s not enough to show that the alleged infringer used the trademark as a metatag. When the court earlier dismissed SnoWizard’s counterclaim, it noted the additional infirmity that the counterdefendant had’t even used SNOWIZARD, but had instead used “snow wizard.” The court wasn’t willing to speculate on the practical consequences of using that term.

 Southern Snow had more evidence for its claims than SnoWizard did for its metatag counterclaims. It showed that when SnoWizard “imbedded” SS’s trademarks in its website, either as metatags or hidden text, SnoWizard’s website showed up in search results. “Plaintiffs' evidence demonstrates, for example, that when a user runs “southern snow flavor snow” as a Google search, SnoWizard's website is listed first in the results before Plaintiffs' own website.” The court described this predicate showing as “a walk from home plate,” as distinguished from scoring a run (proving infringement).

 Strength: the marks were at least descriptive and not generic, but SS didn’t submit evidence of strength, so this factor was neutral. Mark similarity, product similarity, outlet and purchaser identity, and advertising media similarity all “unarguably” weighed in favor of SS: SnoWizard used SS’s trademarks verbatim in its website, and the parties directly compete to sell the same products to the same pool of potential customers using the same type of sales media.

 There was no evidence of intent; SnoWizard said that it legitimately used the trademarks because it repairs SS’s snowball machines. The court found this factor neutral. There was no evidence of actual confusion despite four years of use on SnoWizard’s site. This weighed against SS. Finally, there was no direct evidence of the care exercised by potential purchasers, though the parties emphasized that the customer base was snowball stand owners and other wholesalers/vendors who sell to snowball stand owners: business people and not the “less-caring, consuming public.” This was either neutral or weighed against SS.

 A mechanical tally of the factors was inappropriate. Though the parties both used an identical term, “with internet metatags, keywords, and hidden text the user never actually sees the trademarks or knows that they are in use. The customer is not likely going to be confused by the similarity in a mark whose presence is completely hidden from view.” Thus, mark similarity would not weigh heavily in the plaintiff’s favor. Instead, the court found that lack of actual confusion should be given more weight. Indeed, because SS’s only evidence in support of likely confusion was the Google search results, the court found actual confusion to be even more crucial. “The fact that SnoWizard's website appears in the search list for ‘southern snow flavor snow’ ahead of Plaintiffs' listing does not necessarily suggest an association or connection between the companies or their products, or that any prospective buyers would be likely to confuse the two companies.”

Echoing Eric Goldman, the court pointed out that “one cannot make assumptions about the searcher's objectives when he types ‘southern snow flavor snow’ or some part or combination of that phrase into an internet search engine. The user is not necessarily trying to locate Plaintiffs' website because other vendors like SnoWizard service their machines.” The bottom line: the mere fact of appearing in search results for a trademarked term ahead of the trademark owner “does not necessarily suggest that any prospective buyer will be confused into believing that the competitors are associated or affiliated, that SnoWizard is one of Plaintiffs' product lines, or that SnoWizard is a pseudonym for Southern Snow or Flavor Snow.”

 The court emphasized that the consumers here were businesses. “Moreover, the internet and its vast search capabilities are no longer new to society as a whole, and this is especially true for the more popular search engines like Google. It is highly unlikely that the snowball stand owners who run internet-based searches when purchasing supplies are so utterly unfamiliar with how Google searches work so as to believe that SnoWizard might be affiliated with Plaintiffs' companies simply because the SnoWizard listing appears in the search results,” especially since these highly successful companies had been in the snowball business for years. Judgment for SnoWizard as a matter of law.

Next up: post on the false advertising aspects of the case.

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