by Paul Alan Levy
In a decision issued this morning, the Massachusetts Appeals Court affirmed the dismissal of the trademark claims brought by Massachusetts software company Jenzabar against documentary filmmaker Long Bow Group, claiming that the use of the name “Jenzabar” in the keyword meta tag and the title tag for a web page about Jenzabar infringed and diluted its trademark. (We represented the film company). The decision serves as a gratifying confirmation of how baseless Jenzabar’s claims are. Even indulging Jenzabar’s most far-fetched assumptions, the court upheld a summary judgment by finding that no rational juror could possibly find a likelihood of initial interest confusion. And the opinion contains much that will be useful in defending Internet critics in the future. The emphasis on the need for evidence that confusion is probable, not just possible; the refusal to consider the possibility of confusion by merely careless consumers; and the insistence that a finding of initial interest confusion requires evidence of a deliberate bait-and-switch and an intent to confuse, not simply an intent to use a trademark to identify the subject of criticism, will all help other Internet speakers fend off suits intended more to punish them for criticism than to vindicate the objectives of the trademark laws. The court’s firm rejection of Jenzabar’s argument, that the mere fact that a certain number of Internet users reached a critical web site as a result of seeing a reference to the trademark holder in a search engine result is itself evidence of actual confusion that supports a claim of initial interest confusion, will be similarly useful. Most important, the court made clear that plaintiffs cannot force critics into an expensive trial just by dumping mountains of paper on the appeals court and arguing that there must be a triable issue of fact in there someplace.
In other respects, however, the opinion may be less helpful to other litigants. Long Bow Group burned though more than $250,000 in legal fees on preliminary motions and discovery, and veered close to bankruptcy before it found public interest lawyers who were willing to assume responsibility for the litigation; the Appeals Court upheld summary judgment after a review of a joint appendix more than 2700 pages long. Unlike other recent decisions that dismissed claims of “initial interest confusion” out of hand, such as because the Internet critic was not benefitting financially, or because “momentary confusion [is] dispelled the moment the Internet user reaches [underlying] site,” the Appeals Court conducted a lengthy analysis of the summary judgment record to reach that conclusion. To be sure, many of the undisputed facts on which the court relied are likely to be found in most cases where a critic’s page about a trademark holder has appeared prominently in the search results. In the end, the only evidence Jenzabar had was the search result itself, and the Appeals Court properly ruled that this is simply not enough to avoid summary judgment. Yet if avoidance of a trial depends on a painstaking analysis of a detailed summary judgment record—and if future abusive trademark litigants can avoid early summary judgment by arguing that they hope to compile a better record through extensive (and expensive) discovery—there will be many Internet critics who will find the cost of a legal defense too great a barrier to continued exercise of their free speech rights. Consequently, if Jenzabar appeals this case further, we will be asking the Supreme Judicial Court to affirm on the alternate ground that the theory of initial interest confusion is itself a bankrupt doctrine. Regrettably, an appeal is likely because of the Jenzabar is, apparently, cash-rich and willing to spend on three separate law firms so far to press this case forward.
Another aspect of the decision that may take litigation in this area a step backward is the apparent acceptance of a confusing expert’s affidavit as being sufficient to create an issue about whether inclusion of a trademark in a keyword meta tag can raise the search ranking of a page containing that meta tag. The Appeals Court acknowledged official statements by Google, cited by the Ninth Circuit and the McCarthy treatise, to the effect that search engines no longer take account of the keyword meta tag, but if a wealthy litigant can avoid summary judgment by hiring an expert witness who is willing to say whatever he needs to say to get paid (and we thought that the expert very carefully tiptoed around the issue of the impact of keyword meta tags, rather than addressing them directly), the social utility of the truth as a bar to litigation is substantially reduced.
So, a nice win for this client, but there is much more to be done to protect against such abusive litigation. The passage of an anti-SLAPP statute covering federal question litigation over the exercise of free speech rights would certainly be one useful step forward.
The Digital Media Law Project, which submitted an excellent amicus brief that the Appeals Court went out of its way to praise, has a trenchant analysis of the opinion. Rebecca Tushnet's equally forceful discussion includes an expression of disappointment about the dissent:
"We don’t want people using SEO 'when ambiguous title tags or poorly labeled text describe the search result link or the displayed advertisement, as is the case here…. This is wrong.' Mark Lemley says that many trademark owners think that the phrase 'unfair competition' is redundant. Here we don’t even have the competition—a grin without a cat, as it were—but an equally powerful sense that it’s just wrong to show up in search results about a trademark just because you have something to say about the trademark owner. I don’t really know what to say to that intuition, because it seems so unreasonable to me. The thought that a trademark owner suffers actionable harm because someone might, even for a short time, see criticism of that trademark owner, seems so contrary to our system of free expression that I can only think that the incantations of 'good will' and 'confusion' cause people like the dissenting judge to lose sight of what trademark is for."