DMLP Advocates Protection for Uses of Trademarks in Critical Speech Online Before Massachusetts Appeals Court

January 27, 2012

The Digital Media Law Project (DMLP), assisted by Harvard Law School’s Cyberlaw Clinic, last week asked the Massachusetts Appeals Court to reject a claim of trademark infringement based on the use of a company’s name in metadata on a web page containing speech about that company.  

DMLP submitted an amicus curiae brief (PDF) to the Massachusetts Appeals Court in the case of Jenzabar, Inc. v. Long Bow Group Inc.  The case concerns a website operated by defendant Long Bow Group, Inc., in connection with a documentary film it produced.  The film examines the 1989 protests in Tiananmen Square and the protest movement’s student leaders, including the founder of plaintiff, Jenzabar. Long Bow includes the word “Jenzabar” in a web page’s URL and other metadata.  In its complaint, Jenzabar alleged that Long Bow defamed the company.  It also claimed that – by using the name “Jenzabar” in web page metadata – Long Bow infringed the company’s trademark rights.  The Massachusetts Superior Court dismissed the defamation claims and granted summary judgment in favor of Long Bow on the trademark claims. Jenzabar appealed the court's rejection of its trademark claims.  

DMLP submitted its friend of the court brief urging the Appeals Court to uphold several fundamental legal principles, including protecting critical speech online and preventing the misuse of trademark law in a distinctly non-trademark context to impede the free flow of information.  The use of a trademark to identify the subject of critical commentary is protected by the First Amendment, especially in cases like this one that involve purely communicative uses of trademarked names to convey information.  Traditional trademark analysis can lead to lengthy and costly litigation, the brief notes, threatening the free speech rights of parties without resources to defend against frivolous claims.   

DMLP points out in its brief that the use of company names in metadata is standard practice for multinational media organizations, citizen journalists, and website operators alike.  To block a website operator from using a trademark to identify the subject matter of an online article or to optimize pages for search threatens to expel critical speech to the “hinterlands of the Internet.”  

"The Massachusetts Appeals Court has the opportunity to confirm the proper limits of intellectual property doctrines such as trademark law,” said DMLP's Director, Jeff Hermes.  “Trademarks cannot be used to make an end run around the protections for critical expression offered by the First Amendment and the Massachusetts Declaration of Rights."

DMLP was represented on the brief by the Cyberlaw Clinic.  DMLP and the Cyberlaw Clinic are both based at Harvard University’s Berkman Center for Internet & Society, an organization dedicated to studying the development of cyberspace. DMLP regularly contributes to amicus curiae briefs in cases with important implications for online speech, journalism, and the public good that are of direct interest to all members of the news media and, indeed, the public as a whole.  Cyberlaw Clinic students Michael Hoven and Andrew Pearson drafted the brief, with assistance from Clinic student Alan Ezekiel, alongside DMLP Director Jeff Hermes, DMLP Staff Attorney Andy Sellars, and Cyberlaw Clinic Assistant Director Christopher Bavitz.

About the Digital Media Law Project

The Digital Media Law Project (formerly the Citizen Media Law Project) endeavors to serve as a catalyst for creative thinking about the intersection of law and journalism on the Internet. Through the project’s website, http://www.citmedialaw.org, the active engagement of lawyers and scholars, and occasional sponsored conferences, project staff are working to build a community of lawyers, academics, and others who are interested in facilitating citizen participation in online media and protecting the legal rights of those engaged in speech on the Internet. The DMLP also operates the Online Media Legal Network, a nationwide legal referral organization for online journalists and digital media creators.

About the Harvard Law School Cyberlaw Clinic

The Cyberlaw Clinic, based at the Berkman Center for Internet & Society, engages Harvard Law School students in a wide range of real-world litigation, licensing, client counseling, advocacy, and legislative projects and cases, covering a broad spectrum of Internet, new technology, and intellectual property legal issues. The Clinic was the first of its kind, and it continues its tradition of innovation in its areas of practice. Among many other areas, the scope of the Clinic’s work includes counseling and legal guidance regarding complex open access, digital copyright, and fair use issues; litigation, amicus filings, and other advocacy to protect online speech and anonymity; legal resources and advice for citizen journalists; licensing and contract advice, especially regarding Creative Commons and other “open” licenses; and guidance and amicus advocacy for effective but balanced protection of children in the areas of social networking, child pornography, and online exploitation.  More information can be found at http://cyber.law.harvard.edu/clinical.

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Last updated January 27, 2012

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