Jenzabar, Inc. v. Long Bow Grp., Inc.

Citation977 N.E.2d 75,82 Mass.App.Ct. 648
Decision Date18 October 2012
Docket NumberNo. 11–P–1533.,11–P–1533.
PartiesJENZABAR, INC. v. LONG BOW GROUP, INC.
CourtAppeals Court of Massachusetts

OPINION TEXT STARTS HERE

Joshua M. Dalton (Lawrence T. Stanley, Jr., with him), Boston, for the plaintiff.

Paul Alan Levy, of the District of Columbia, for the defendant.

Douglas R. Wolf & Christina M. Licursi, Boston, for Boston Patent Law Association, amicus curiae, submitted a brief.

Christopher T. Bavitz, for Digital Media Law Project, amicus curiae, submitted a brief.

Present: BERRY, MILKEY, & SULLIVAN, JJ.

MILKEY, J.

Defendant Long Bow Group, Inc. (Long Bow), operates a Web site that contains information critical of plaintiff Jenzabar, Inc. (Jenzabar). During the relevant time period, an Internet user who conducted a search for the term “Jenzabar” using the Web site Google.com (Google) would have found Long Bow's site prominently listed among the search results. According to Jenzabar, that listing was likely to confuse Internet users into believing that the Long Bow site was sponsored by or affiliated with Jenzabar. Claiming that such confusion was caused by Long Bow's unauthorized use of the trademark “JENZABAR,” Jenzabar sought to enjoin that use pursuant to State and Federal trademarklaw. A Superior Court judge granted Long Bow's motion for summary judgment. We affirm.1

Standard of review. We review a decision to grant summary judgment de novo, to determine “whether, viewing the evidence in the light most favorable to the nonmoving party, all material facts have been established and the moving party is entitled to a judgment as a matter of law.” Bank of N.Y. v. Bailey, 460 Mass. 327, 331, 951 N.E.2d 331 (2011), quoting from Augat, Inc. v. Liberty Mut. Ins. Co., 410 Mass. 117, 120, 571 N.E.2d 357 (1991). [T]hat some facts are in dispute will not necessarily defeat a motion for summary judgment. The point is that the disputed issue of fact must be material.” Hudson v. Commissioner of Correction, 431 Mass. 1, 5, 725 N.E.2d 540 (2000), quoting from Beatty v. NP Corp., 31 Mass.App.Ct. 606, 607, 581 N.E.2d 1311 (1991). “A fact is ‘material’ only if it might provide a basis for a fact finder to find in favor of the [nonmoving] party.” Liss v. Studeny, 450 Mass. 473, 482, 879 N.E.2d 676 (2008).2

Background. We summarize the essential facts, reserving certain details for later discussion. Except where specifically noted, the facts are undisputed.

1. The parties. Jenzabar is a Boston-based software company that designs complex software systems for use by colleges and universities. The company was founded in 1998 by Ling Chai, who remains Jenzabar's president and chief operating officer. Jenzabar holds a Federal registration in the word mark JENZABAR for use in connection with the sale of computer software and various related functions. Although the mark is not registered in Massachusetts, there is no dispute either as to the validity and protectability of the mark or as to Jenzabar's ownership of it.

Long Bow is a Massachusetts nonprofit corporation based in Brookline. Long Bow produces educational films and documentaries about Chinese history and culture. Long Bow does not sell its films directly to the public; instead, they are available only through a network of independent distributors.

2. Long Bow's Web site. In 1995, Long Bow released “The Gate of Heavenly Peace,” a documentary about the Tiananmen Square protests of 1989. A slightly abbreviated version of the film was broadcast on public television stations in 1996. In connection with that broadcast, Long Bow created a Web site to give background information about the film and the protests. The site, which has been updated periodically since its creation, contains over 2,000 pages of text in English and Chinese, as well as an interactive map of Tiananmen Square and a “media library” that includes photographs, music, and video clips. It has been recognized by a number of media organizations and educational institutions as a valuable educational resource.3

Among the many resources on Long Bow's site is a section containing information about sixteen of the “key characters”in the film. One of those characters is Chai, who was a student leader in the Tiananmen Square protests. The site contains a short biography of Chai, briefly describing her role in the protests and noting that she declined to be interviewed for the film. It also contains excerpts from Chai's criticism of the film and of her portrayal in it. After learning that Chai had founded a software company, Long Bow added a link from Chai's biography to a new page containing information about Jenzabar. That page, titled simply “Jenzabar,” is the principal subject of the parties' present dispute.

3. Google's search results.4 Since at least 2006, a Google user searching for “Jenzabar” would find Long Bow's “Jenzabar” page listed on the first page of results. A representative example of the initial search results, as they appeared prior to the summary judgment hearing, is reproduced in the Appendix. The listing for Long Bow's “Jenzabar” page specifically appeared as follows:

Jenzabar

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 ...

www. tsquare. tv/ film/ jenzabar. html— Cac hedSimilar

As is generally true, Google created this listing by applying its proprietary algorithms to the computer code of Long Bow's “Jenzabar” Web page. The information that Long Bow supplied in its code included both the visible content of its page and data that a viewer of the page would not be able to see (known generically as “meta data” or “meta tags”). The relationship between the information that Long Bow provided and the content of Google's listing varied somewhat among the three main components of the listing: its title; its short description of the referenced Web page; and the URL for that page.5 The title of the referenced Web page (“Jenzabar”) came from a “title tag” selected by Long Bow.6 A Web site's creator can also insert a “description meta tag” to control the description that appears in a search listing. However, because Long Bow had not done so at the time suit was filed, the description that appeared in the listing for Long Bow's “Jenzabar” page was simply “ripped” by Google from the opening text that appeared on that page. The URL was chosen by Long Bow.

The order in which Google lists its search results is determined by its proprietary algorithms. Although the specifics of those algorithms are not publicly available, the summary judgment record indicates that Google relies in part on information that the page's creator provides (i.e., the content of the Web site) and information from other sources (e.g., the quantity and nature of other pages in Google's index that link to that page). Viewing the record in the light most favorable to Jenzabar, we treat as true Jenzabar's contention that a Web page's author can improve the page's ranking in Google search results through the use of “keywords meta tags.” 7 Long Bow used the term “Jenzabar” as a “keywords meta tag” on its Jenzabar page and on several subsidiary pages linked to it.8

4. Correspondence between the parties. In February, 2007, Jenzabar contacted Long Bow with a number of complaints about Long Bow's “Jenzabar” page and two related pages. At that time, the pages contained excerpts from and links to media accounts of several lawsuits that had been filed against Jenzabar by some of its former top executives. Jenzabar complained that some of the quoted statements were false and demanded their removal. In addition, Jenzabar objected to Long Bow's uses of the JENZABAR mark in the URL and title of Long Bow's “Jenzabar” page and in all three pages' meta tags. According to Jenzabar, the use of its mark as a keyword was calculated to “maximize the prominence of [Long Bow's] Web pages on Internet search engines, in order to deliberately divert Internet users who are looking for the Jenzabar Web site.” Jenzabar demanded that Long Bow remove the term “Jenzabar” from the title, URL, and meta tags of its Web pages.

Long Bow made several changes to its site as a result of Jenzabar's letter. These changes included posting certain additional information regarding Jenzabar's disputes with its former executives; revising the language of the pages to ensure that readers would be aware that Jenzabar disputed the accuracy of some of the accounts; and adding prominent disclaimers to all of the pages on which Jenzabar was mentioned stating that the pages were “the sole responsibility of the Long Bow Group, and are in no way affiliated with or sponsored by Jenzabar, Inc.

5. The lawsuit. Unsatisfied with Long Bow's response, the plaintiffs filed an eight-count complaint in Superior Court on May 14, 2007. The first two counts alleged defamation and trade libel. The remaining counts alleged trademark infringement, trademark dilution, and unfair competition, under both Massachusetts and Federal law. See 15 U.S.C. §§ 1114, 1125(a) & (c) (2006); G.L. c. 110H, §§ 12, 13, 16; G.L. c. 93A, § 11.

Long Bow moved to dismiss the complaint for failure to state a claim. See Mass.R.Civ.P. 12(b)(6), 365 Mass. 755 (1974). On August 20, 2008, a judge allowed Long Bow's motion as to the two defamation counts,9 and the plaintiffs have raised no issue on appeal regarding that dismissal. On the trademark counts, the judge held that although Jenzabar seemed unlikely to prevail, it had adequately pleaded the claims to survive a motion to dismiss. Following extensive discovery, Long Bow moved for summary judgment. See Mass.R.Civ.P. 56(b), 365 Mass. 824 (1974). After a hearing, a second judge concluded that the evidence was insufficient to allow a jury to find that Long Bow's use of the JENZABAR mark created any likelihood of confusion.10 He granted Long Bow's motion in full on December 7, 2010.

Discussion. 1. Trademark...

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