Tiananmen Square Activist Loses Trademark Bullying Case Against Critic, But Ruling Is Weak

from the could-be-better dept

We've been covering the absolutely ridiculous lawsuit of educational software firm Jenzabar against documentary filmmakers Long Bow for a few years now. The short version is that Long Bow made a documentary about some of the activists from the Tiananmen Square uprising, that was somewhat critical of them -- including a protest organizer named Ling Chai. Chai later moved to the US and founded an educational software company called Jenzabar. She has regularly played up her history as a Tiananmen Square organizer in getting PR for the company. The filmmakers called into question some of her actions back during the protests, and also set up a webpage, associated with the movie, critical of Chai. Chai sued for defamation -- which was quickly thrown out. However, she also had Jenzabar sue for trademark infringement, because the page about her on Long Bow's site mentioned Jenzabar in the title and in the meta tags.

The case has gone on for over 3 years now, with an initial ruling against Jenzabar, saying that there was no trademark issue because there was no likelihood of confusion. Jenzabar, however, continued to pour money into the case, appealing the ruling, and claiming that they should still win based on the obsolete theory of initial interest confusion, which suggests there can be trademark infringement even if someone is only misled initially, and quickly realizes the situation. In this case, Jenzabar argued -- somewhat ridiculously -- that initial interest confusion might apply to someone doing a Google search on Jenzabar, and then go to the Long Bow page, believing that it was associated with the company, only to discover, upon loading, that it was not. If such a theory were valid, it would be a huge tool for trademark bullies to take down all sorts of critical commentary about their companies or products.

Thankfully, the appeals court has now affirmed the initial ruling, saying that there is no trademark infringement issue here at all. Unfortunately, it chose to do so somewhat narrowly, lending credence to some of the troubling theories raised by Jenzabar. That is, rather than just recognizing that this case is a clear attempt to abuse trademark law to stifle critical speech, the court decided to go through a full "five factors" test to determine if something is trademark infringement via initial interest confusion.

There are serious problems with the court going this route. The folks over at the Digital Media Law Project (who filed an amicus brief in the case) have highlighted some of the concerns:

But by choosing to approach the trademark infringement question in the way that it did, the court perpetuated certain problems that we flagged in our brief. Applying the standard infringement factors to critical speech forces to the court to come to some awkward conclusions about how the factors should apply, and leaves open some potentially odd results in future cases. This analytic tension in applying a likelihood of confusion analysis to critical speech permeates the majority’s analysis. Some highlights follow below:

Similarity of the parties' goods: This is a classic factor in trademark infringement analysis, and when applied to two market rivals using similar marks to sell their goods it makes a great deal of sense: the more similar the goods are, the more likely a consumer may be confused looking at those goods. But here the application makes no sense whatsoever.

The court here notes (quite correctly) that Jenzabar sells educational software systems and Long Bow makes documentary films. Those two fields are unrelated, and thus the court held that this factor favors Long Bow. That is convenient for Long Bow, but in this context it is irrelevant. Consumers looking at critical speech are not any more likely to be confused as to the origin of the speech because it comes from a market competitor. To hold this as relevant is to say that Reed Elsevier or the New York Times would be more successful in attacking critical speech on trademark grounds, because those publishing criticism usually do so at media and publishing companies.

Paul Levy, from Public Citizen, who represented Long Bow in the case, raises a few other concerns about the ruling, including that this decision to go through the detailed factors test will allow trademark bullies and others pursuing SLAPP-type litigation to increase the time and expense for those they are suing -- a clear concern for Long Bow in this case:

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.

This is a huge concern. Levy also notes that, if Jenzabar appeals (and all indications are that it will do so), he will seek to get the higher court to affirm on the grounds that "the theory of initial interest confusion is itself a bankrupt doctrine."

Levy raises one other problem with the ruling. We had talked about how Jenzabar had found an "expert witness" who argued that Google relied on keyword metatags to determine search rankings, in an effort to prove that Long Bow's use of "jenzabar" in its metatags impacted Google results. There was, however, a big problem with this claim: Google has stated publicly for years that it does not use keyword metatags. When this was pointed out, Jenzabar insisted that public statements from Google employees to this point were hearsay. Unfortunately, the court still seemed willing to entertain the testimony:

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.

In the end, while it's clearly a good thing that the summary judgment against Jenzabar was upheld, there are some problems with the ruling. Given the expectation that the case will be appealed, hopefully the Supreme Judicial Court will correct some of these flaws.

Filed Under: documentary, free speech, initial interest confusion, ling chai, slapp, tiananmen square, trademark
Companies: jenzabar, long bow

Jenzabar Continues To Try To Censor Criticism Via Trademark Bullying

from the not-again dept

Some people continue to insist that intellectual property and censorship are two totally separate issues, but that's ridiculous. Yet another example is in the ongoing case concerning software company Jenzabar, which we've covered before. If you're just picking this up now, one of Jenzabar's founders, Chai Ling, many years ago, was one of the student leaders of the Tiananmen Square uprising -- a point that the company regularly used in its PR efforts. A documentary film from Long Bow Productions showed Ling making some comments years ago about how she hoped the uprising would lead to bloodshed, in order to incentivize a wider uprising. Most people might write off such comments as extreme comments in the heat of the moment from a young, immature activist, and let it go. If Ling had just said that she regretted the comments, the whole thing would have probably blown over.

Instead, Ling appears to have decided to use trademark law to try to silence the filmmakers. They first tried a defamation lawsuit, and that didn't work (seeing as Ling apparently actually said what's shown in the film), and everything else was nonactionable opinion statements. So then they shifted to a clearly bogus trademark claim. The filmmakers had put up a website about the film, including one page about Jenzabar. So the company sued the filmmakers, claiming trademark infringement. This is pretty absurd of course. There's no trademark issue here. No likelihood of confusion. Even though Ling/Jenzabar claim that the page in question presents "lies," the defamation lawsuit didn't work -- this is entirely about trademark law. It seems pretty clear that Ling (and others at Jenzabar) just don't like that this info is getting out, and are trying to use trademark law to stop this form of speech.

The court sided with the producers, granting summary judgment and tossing out the case, but Jenzabar is appealing the ruling. Part of the original argument for the trademark claim was that Long Bow used the company's name in its metatags. This is silly for a variety of reasons. First, the page actually does talk about Jenzabar. Second putting a trademarked company name in metatags isn't a violation of trademark law. Third, and most importantly, metatags are almost entirely ignored by search engines -- so the claim that this impacted Google's search results seems misguided. Of course, somehow Jenzabar found an "expert witness" to insist that Google does use metatags (in combination with title tags) in determining rankings, and tried to dismiss claims from actual Google employees to the contrary as hearsay.

Now, in the appeal, Jenzabar is apparently arguing that because the Google snippet that shows with the page mentions that Jenzabar tried to censor the site, it's proof of infringement. As Paul Levy notes in talking about the case, "Will its lawyer be able to argue that with a straight face?" As is noted in Levy's filing (on behalf of Long Bow), the fact that Long Bow has made it even clearer that Jenzabar has no association with the page -- by publicly stating that the company tried to censor the page -- actually works against Jenzabar's trademark claim. It's even more evidence that there is unlikely to be any confusion by users finding Long Bow's page. Any moron in a hurry can tell that the page is not endorsed by Jenzabar. But, rather than recognizing how this hurts its own case, Jenzabar is claiming that this new tidbit of info on the page is somehow new evidence of infringement.

In theory, this new listing should have met Jenzabar’s purported concern that the original search listing could confuse potential customers using Jenzabar’s name as a search term. But Jenzabar argued below, and apparently still contends on appeal, that this is an “infringing” use of its marks.... Nothing could show more clearly that this case is about suppressing public access to truthful criticism, not protecting against deception of consumers.

Either way, all the facts of the case seem to suggest that this lawsuit (and further appeal) are simply about trying to silence the filmmakers by burdening them with an expensive and distracting lawsuit. That seems like a pretty clear abuse of the purpose and meaning of trademark law.

Filed Under: bullying, censorship, ling chai, meta tags, tianmen square, trademark
Companies: jenzabar

Jenzabar Loses Its Attempt To Suppress Criticism Of Its Founder, A Former Tiananmen Square Activist

from the free-speech,-ftw dept

For a while now, we've been following the highly questionable lawsuit filed by Boston-based software company Jenzabar. You may recall that Jenzabar was founded by Ling Chai, who had been one of the student leaders of the Tiananmen Square protests in China many years ago -- a fact that Jenzabar (which makes software for colleges and universities) likes to play up in its PR. A few years back, the Long Bow Group filmed a documentary about the protests, which included an interview with Chai, that took place before the Chinese government sent tanks in to quell the protests, in which she suggested she was hoping for bloodshed out of the protests, as it would get more attention.

This is the sort of thing that she apparently didn't want people to know about anymore... but since she knew she couldn't sue directly for defamation (after all, she said what she said), she tried to pressure the filmmakers by having her company -- Jenzabar -- sue the filmmakers, claiming that it was defamed, because the filmmakers presented "unfavorable newspaper articles" about the company. That lawsuit got dismissed quickly, and then Chai and Jenzabar made a huge leap, and sued again for trademark infringement, claiming that just mentioning Jenzabar on the filmmaker's webpage -- and specifically using the term "Jenzabar" in the meta tags, was trademark infringement. It seemed rather ironic that someone who played up their role as an activist for democracy and free speech was now misusing trademark law to try to stifle speech.

Last week, thankfully, the court granted summary judgment to the filmmakers, noting that there was no evidence at all that there was any "likelihood of confusion" when someone found the filmmaker's website, that they would somehow think it was endorsed by Jenzabar. As Paul Levy notes in his writeup (linked above):

The timing of the court's rejection of Chai's attack on her critics' free speech could not be more ironic. Chai is in Norway to attend the award of the Nobel Peace prize to fellow Tiananmen Square protest leader Liu Xiaobo.

Filed Under: free speech, ling chai, tiananmen square, trademark
Companies: jenzabar

Jenzabar Finds 'Expert Witness' Who Will Claim Google Relies On Metatags, Despite Google Saying It Does Not

from the good-luck-there dept

It's been widely known for years that Google does not use metatag description comments in ranking its search results. Indeed, this simple fact is part of what made Google more reliable than other search engines, since many website owners used fake metatags to "optimize" their results in search engines. While this was quite obvious for many years, Google had never publicly admitted it (it doesn't like to talk about its algorithm) until just a few months ago. Still, the company was just confirming exactly what was widely known for the better part of a decade or so.

And yet, for years, people would bring trademark infringement lawsuits, insisting that metatags represent some sort of trademark violation. In one recent case, that we've discussed, the CEO of software company Jenzabar, Ling Chai, has sued the makers of a documentary about the Tiananmen Square uprising. Chai had been involved in the uprising and doesn't like how the filmmakers portrayed her role. The filmmakers, on their website, mention that Chai works for Jenzabar, and included the word "Jenzabar" in the metatags, which Jenzabar insists violates its trademarks.

The documentary makers brought on Public Citizen lawyer Paul Alan Levy, who noted in a blog post the simple fact that even Google says it does not rely on metatags, and in response, Jenzabar tried to block his being brought into the case, by saying that Levy's pointing to the Google blog post was hearsay.

Now, the company has gone even further. It's found an "expert witness" who will claim that metatags do, in fact, influence Google results, even as the company itself insists they don't. The guy in question, Frank Farance, claims in his affidavit that "metatags are used by every Web search engine to determine search results and rankings." It's not clear how he has expertise in this particular realm or how he knows that Google uses metatags when pretty much everyone in the space has known for years it does not and Google itself has publicly denied using metatags to rank results.

Filed Under: expert witness, frank farance, ling chai, metatags
Companies: google, jenzabar

Jenzabar Says That Google Blog Post Is 'Hearsay', Not Official Google Statement

from the good-luck-with-that dept

Last month, we wrote about the highly troubling efforts by the head of software firm Jenzabar to abuse trademark law to stifle criticism of that company's founder and CEO (who, earlier in her life, was famous for "leading" part of the student uprising in Tiananmen Square). She was upset at the makers of a documentary film that was somewhat critical of her, and she tried to use trademark law against them, after an attempt at defamation failed. There is simply no trademark violation at all in this situation... but it is a company with lots of cash suing some independent documentary film makers, so it has all the appearances of filing a lawsuit just to cause trouble for the filmmakers.

Our posts were based on some blog posts by Public Citizen, criticizing Jenzabar and its founder/CEO Ling Chai. Rather than recognizing that it's going too far, Jenzabar apparently decided to go on the attack. Public Citizen's Paul Alan Levy alerts us to the news that Chai and Jenzabar are now claiming that Public Citizen's blogging about the case is illegal.

Specifically, the complaint from Jenzabar is that Levy pointing out that Google has stated that it does not use metatags in its search algorithms is not admissible and will "cause prejudice," because it is not an official statement from Google. That, of course, is silly. Google has made it clear for a while that it doesn't use metatags, but this particular announcement came from Google's Matt Cutts (disclaimer: an acquaintance/friend of mine) and was on Google's official blog, and Matt regularly speaks for Google on these sorts of issues. Yet, Jenzabar claims that it's "hearsay." That seems like a pretty difficult position to take. Jenzabar really wants to keep insisting that Google uses metatags, even as Google is making clear it does not? And it wants to force the court to censor blog posts to keep living in that fantasy world? Good luck with that...

Filed Under: ling chai, matt cutts, metatags, search engines, trademark
Companies: google, jenzabar

Tiananmen Activist... Turned Entrepreneur... Turned User Of Trademark To Stifle Free Speech

from the free-speech-for-me,-but-not-for-thee dept

Paul Alan Levy alerts us to yet another shameful case of someone abusing trademark law to try to silence critics. In this case, it involves the software company Jenzabar, which makes software for colleges and universities, and apparently likes to play up the fact that its founder and CEO, Ling Chai, was one of the "leaders" of the Tiananmen Square uprising in 1989, before fleeing to America. Apparently Chai likes to play up that connection for PR purposes, and has been able to get the press to cover Jenzabar with headlines like "From Tiananmen Leader to Netrepreneur" and "From Starting a Revolution to Starting a Company."

However, when the makers of a documentary film about the uprising at Tiananmen Square included some comments and links to articles that were critical of Chai, she went legal. It started with a lawsuit claiming defamation against the film makers, which got quickly tossed out. So, instead, Chai and Jenzabar appear to be trying to use trademark law to bankrupt the filmmakers. They've filed a trademark lawsuit, claiming that the filmmakers' web page, that talks about Chia and Jenzabar, violates its trademarks, noting that the page turns up in search results on Jenzabar and the term is in the metatags.

Pretty much everyone involved recognizes that this is a ridiculous abuse of trademark law to stifle free speech. There is no violation of trademark here. Posting links to stories about Chai and Jenzabar that are critical of her is not a trademark violation in any manner. Using the term in metatags is totally meaningless. It's a shame that someone who apparently once stood as a voice for freedom is now trying to stifle free speech in others via trademark law abuse.

Filed Under: chai ling, free speech, ling chai, tiananmen, trademark
Companies: jenzabar