DMLP Advocates Protection for Uses of Trademarks in Critical Speech Online Before Massachusetts Appeals Court
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.harvard.edu/clinical.
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