DMLP Victory! Mass. Appeals Court Finds No Trademark Infringement in Critical Website

 (This piece is co-authored by Jeff Hermes and Andy Sellars)

The DMLP is pleased to announce that the Massachusetts Appeals Court has ruled in favor of the result we advocated in an amicus brief in Jenzabar v. Long Bow Group, Inc. 

For more background you can visit our earlier releases about the case, but in quick summary: the case concerns Long Bow, a documentary film company that released a film concerning the Tienanmen Square protests.The film is critical of many of the student leaders, including a protester named Ling Chai. The film company created a website related to the film, which, among other things, criticized Chai on a particular webpage. As Chai had since moved to Boston and co-founded an educational software company called Jenzabar, the page was titled "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 trade libel and defamation claims were later dismissed.) The Massachusetts Superior Court for Suffolk County granted summary judgment in favor of Long Bow on the remaining trademark claims, applying the traditional "likelihood of confusion" test. On appeal, Jenzabar argued that the court improperly granted summary judgment because it did not adequately focus on a particular type of confusion, "initial interest confusion." According to Jenzabar, the use of their name in the title tags and metadata was sufficient to cause the average viewer to temporarily visit Long Bow's webpage by accident, and that alone should be recognized as grounds for trademark infringement.

In our amicus brief, the DMLP expressed serious concerns about the plaintiff's claims, and argued that applying a traditional trademark analysisdoes not make sense when the defendant is using the plaintiff's trademark to say something critical about the plaintiff. 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 DMLP 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 DMLP noted that modern Internet realities make the "initial interest confusion" doctrine wholly inappropriate in cases like this one, where 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. 

The opinion affirmed summary judgment for Long Bow, but for more narrow reasons than the DMLP hoped. The court did not take the opportunity to reject initial interest confusion on the Internet or apply a standard other than "likelihood of confusion" to claims based on critical speech.

Instead, the court applied a subspecies of likelihood of confusion test drawn from one Ninth Circuit case and one District of Massachusetts case, focusing on (1) the similarity of the parties' goods; (2) the level of care exercised by the relevant purchasing public; (3) the strength of the plaintiff's mark; (4) the defendant's intent in using the plaintiff's mark; (5) evidence of actual confusion; and (6) the visual appearance of the link or advertisement in context on the screen. The court ultimately found that factors favored Long Bow on all except (3) and (6), which according to the court were less relevant. The court also quickly disposed of Jenzabar's trademark dilution and state unfair competition claims.

There's a lot of great material to pull out of this opinion. The gist of the trademark infringement claim is summarized and disposed of wonderfully in this small excerpt from the court's analysis of Long Bow's intent:

Given that Long Bow's site actually contains information about Jenzabar and does not sell goods that compete with Jenzabar, the most natural inference arising from Long Bow's use of the word "Jenzabar" is not of intent to confuse but rather of intent to accurately describe the page'scontents, and to bring it to the attention of Internet users searching for information about Jenzabar, who would find it relevant to their search.