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 Bow to deceive the public, or whether Long Bow even had the ability to influence their Google search results. Justice Sullivan also picked up on an analogy the CMLP made in its amicus brief: Browsing on the Internet is not like shopping in a grocery store aisle – one expects to find all sorts of information related to a query, not just the subject's own website. Justice Berry pushed back directly on the suggestion that a likelihood of confusion analysis could apply to compare the "Jenzabar" trademark with Long Bow's nominative use of "Jenzabar."
Long Bow's argument focused on the applicability of "initial interest confusion" to Internet activity. Long Bow noted that web searches are often designed to get the "plusses with the minuses" -- i.e., not just official or authorized content -- and that search engines return many sites from countless different sources. Justice Milkey queried whether Long Bow's argument rested on disputing prima facie infringement or on a fair use defense, and Justice Sullivan asked whether the existence of a likelihood of confusion is inherently a question for a jury. Long Bow responded by arguing that the court should adopt the Rogers v. Grimaldi balancing test for infringement, allowing use of another's name in an expressive context unless there is a clear intent to deceive the public, and provided a series of examples of cases where likelihood of confusion was resolved through summary judgment. The court almost launched into a discussion of the Streisand Effect, before Long Bow's time expired.
On rebuttal, Jenzabar's counsel took issue with Rogers as the test, claiming that Rogers is limited to artistic works and that the website here was a "piece of marketing." Jenzabar also attempted to analogize this case to the restaurant pamphlets in SMJ Group v. 417 Lafayette Restaurant LLC. In response, Justice Milkey picked up on a distinguishing characteristic that we noted in our amicus brief -- namely, that in SMJ Group the parties stipulated to there being confusion.
Naturally, we'll post an update when the case is decided. For more on the case, visit our threat entry and the briefs linked therein.
Andy Sellars is a staff attorney at the Digital Media Law Project and an employee fellow at the Berkman Center for Internet & Society. He wants to thank Sharkey's Twins for allowing the Red Sox to sweep at least one series this year.