Jenzabar, Inc. v. Long Bow Group, Inc. [1]

In 2007, Jenzabar [2], a company that makes software systems for colleges and universities, sued Long Bow Group, the maker of a documentary film about the 1989 student protests at Tiananmen Square called The Gate of Heavenly Peace [3]. The complaint [4] included claims for trade libel, defamation, and various trademark violations. 

Long Bow publishes the TSquare [5] website, which features information and commentary about the events and people depicted in the film. Among other things, it includes articles and background information about [6]Chai [6]Ling [6], the founder of Jenzabar who was a student leader during the Tiananmen protests and who was portrayed critically in the film.

According to court documents, Chai Ling, Jenzabar, and another Jenzabar executive, Robert A. Maginn, Jr., claimed that Long Bow defamed them on the TSquare website by publishing an "excerpt from an August 2003 Boston Globe column stating that 'fiveformer executives have sued Jenzabar, including the former CEO, whoaccused Chai and Maginn of "a number of unethical, inappropriate,and/or illegal actions."'"  Slip op. [7], at 2-3. The former CEO referenced in the Globe article eventually retracted his allegations anddismissed his lawsuit.

The plaintiffs also claimed that Long Bow violated federal and state trademark laws by using their trademarks—JENZABAR, JENZABAR.COM, JENZABAR.NET, LING CHAI AND CHAI LING—as metatags for those pages discussing Chai Ling and Jenzabar.

In response to Long Bow's motion to dismiss the complaint [8], in August 2008 the court dismissed the defamation and trade libel claims, ruling that Long Bow had no continuing duty to investigate the accuracy of the Boston Globe article posted on its site.  The court denied the motion to dismiss the trademark claims, but expressed doubt as to their viability:

Although Jenzabar seems unlikely to prevail on this claim because of the dissimilarity of Long Bow's business, Jenzabar has adequately pled the likelihood of confusion element, which is all that is required to survive a motion to dismiss. 

Slip op. [7], at 7.

Long Bow filed a motion for summary judgment [9] in October 2009, arguing that use Jenzabar's trademarks in its metatags does not create a likelihood of consumer confusion, and that the First Amendment protects its use of the metatags because they are directed to Long Bow's truthful and noncommercial speech about Jenzabar and Chai Ling.

In November 2009, Jenzabar filed a motion to disqualify [10] Public Citizen Litigation Group as Long Bow's counsel based on two blog posts Public Citizen lawyers published about the case—Jenzabar Joins Trademark Abusers Hall of Shame [11] (CL&P Blog) and Faulty trademark case pits Tiananmen Square protest leader against filmmaker [12] (Citizen Vox).  Jenzabar argued that the posts will "create controversy" and "cause prejudice to Jenzabar," and that anylawyer who engages in such blogging is in violation of Massachusettscourt rules. Paul Levy of Public Citizen publicly responded to these claims on the CL&P Blog [13], characterizing the motion as a further attempt to suppress speech.

Update:

12/7/10 -  Superior Court Judge Cratsley granted [14] defendant's motion for summary judgment on the ground that there was no evidence supporting the claim that any reasonable Internet user might be confused about whether Jenzabar was the sponsor of Long Bow's web site.

9/6/11 - Jenzabar appealed the grant of defendant's motion for summary judgment.

10/17/11 - Jenzabar filed its opening brief [15] with the Massachusetts Appeals Court.

12/22/11 - The Boston Patent Law Association filed an amicus brief [16] urging the Appeals Court to recognize "initial interest confusion" as a valid doctrine under trademark law.

1/18/12 - Appellee Long Bow filed its brief [17] with the court. The Digital Media Law Project filed an amicus brief [18]urging the court to reject application of trademark law to critical, communicative uses of trademarks. 

3/2/12 - Appellant Jenzabar filed a reply brief [19] with the court, addressing the claims from Appellee Long Bow and the Digital Media Law Project.

10/18/12 - The Massachusetts Appeals Court affirmed summary judgment [20] in favor of Long Bow, holding that: (1) Jenzabar's infringement claim failed because it did not present sufficient evidence to support a finding of likelihood of confusion; (2) allegations that Jenzabar's trademark was used for the purposes of critical commentary could not support a dilution claim; and (3) the fact that Long Bow's website did not possess a tendency to deceive consumers was fatal to its Massachusetts statutory claim for unfair and deceptive trade practices.

11/2/12 - Jenzabar filed an Application for Further Appellate Review [21] with the Massachusetts Supreme Judicial Court. 

11/19/12 - Long Bow filed an opposition to Jenzabar's [22] application.

12/19/12 - The Supreme Judicial Court denied the application [23] for further appellate review.