Jenzabar v. Long Bow: Oral Argument Focuses on Initial Interest Confusion and Search Engine Results

This morning Jeff and I had the pleasure of watching the Massachusetts Appeals Court argument in Jenzabar, Inc. v. Long Bow Group, Inc.  As we mentioned once before on this blog, the CMLP filed an amicus brief in this case with the assistance of Harvard Law School's Cyberlaw Clinic. (And thanks again to HLS students Mike Hoven and Andrew Pearson for their help!)

The case concerns a documentary film company that released a film concerning the Tiananmen Square protests, called The Gate of Heavenly Peace. The film profiles many of the figures surrounding the protest, and is critical of a student protester named Ling Chai. Chai later moved to Boston and co-founded an educational software and service company named Jenzabar. The film company, Long Bow, created a website related to the film, which, among other things, criticized Chai on a webpage. Long Bow titled the page "Jenzabar," and included terms related to Jenzabar in the metadata.

After the website was published, Jenzabar sued Long Bow for various trademark claims, as well as for defamation and trade libel. The case took about five years to reach the Appeals Court, after the defamation and trade libel claims were dismissed and summary judgment was granted in favor of Long Bow on the remaining trademark claims. On appeal the parties and two amici (the CMLP and the Boston Patent Law Association) focused their arguments on two particular issues in trademark: (1) whether the trademark law doctrine of "initial interest confusion" should apply to online behavior, and (2) whether forcing Long Bow to remove metatags and change the title of the page is a violation of Long Bow's free speech rights.

In our amicus brief, the CMLP (under its new name, the Digital Media Law Project) expressed serious concerns about the theories pursued by the plaintiff in this case. The CMLP argued that applying trademark analysis does not make sense when the defendant is using the plaintiff's trademark to say something critical about the plaintiff. Trademark doctrines are ill-equipped to handle these cases; trying to shoehorn expressive uses into a standard "likelihood of confusion" analysis only results in tortured interpretations of the relevant factors, while creating protracted and costly fights that lead to unnecessary self-censorship.

The CMLP also argued that the defendant has a First Amendment right to use the metadata of a website to increase the website's public accessibility, noting that the public has a constitutional right to receive such information. Finally, the CMLP noted that modern Internet realities make the "initial interest confusion" doctrine wholly inappropriate in cases like this one, where search engines have actively developed algorithms and mechanisms to avoid third-party "gaming," and Internet users expect and employ search engines to find all relevant information about a party, not just the party's own website or approved material. 

At oral argument, Justice Jancie Berry sat as the chief of the very active panel, along with Justices James Milkey and Mary Sullivan. Joshua M. Dalton from Bingham McCutchen argued on behalf of Jenzabar, and Paul Alan Levy of Public Citizen argued for Long Bow.

Jenzabar sharply focused its oral argument regarding infringement on the Google search results for the term "Jenzabar" as reflected in a screen capture submitted in Jenzabar's brief.  According to Jenzabar, Long Bow's website appeared as the third search result, with the title of "Jenzabar" and the description:

The information on these pages about Chai Ling and Jenzabar, the software company she runs with her husband Robert Maginn, contains excerpts from and links to...

Google cuts off the description at that point. According to Jenzabar, it is that rank, title, and description that are the basis of liability; Jenzabar alleged that Long Bow engaged in "metatag stuffing" to achieve its rank and that its use of "Jenzabar," standing alone, for the title was confusing. Notably, Jenzabar's counsel conceded that it would have been fine if Long Bow had  titled its page "Jenzabar lies" or "Jenzabar sucks" instead. If Long Bow is allowed to use "Jenzabar," Jenzabar argued, using "Jenzabar Official" would also be okay, and then search engines would quickly become a lawless domain fraught with confusion.

During Jenzabar's argument, the court focused for a good deal of time on whether the record indicated any intent by Long Bo