The Confusing Intersection of Trademarks and Search Engine Optimization

April 2, 2012

Douglas R. Wolf

(as published in Inside Counsel)

Last December, a Superior Court for the Commonwealth of Massachusetts, an educational software company, the Tiananmen Square student protests and a documentary film company converged on the Internet. The Boston Patent Law Association (BPLA) weighed in by filing an amicus brief, drafted by attorneys at Wolf, Greenfield & Sacks, P.C., urging the appeals court to protect Internet users.

This suit arises out of a dispute between Jenzabar, a company owned in part by Chai Ling, who figured prominently as a student organizer during the Tiananmen Square protests, and the Long Bow Group, which produces documentary films. The Long Bow Group produced one film in particular that focused on the student protests in China at the end of the 1980s.

According to Jenzabar, the Long Bow Group used search engine optimization (SEO) to cause a link to appear near the top of search results triggered by a search for “Jenzabar.” This link featured a title tag comprised entirely of “Jenzabar” and accompanying text that, in the BPLA’s view, did nothing to tell Internet users that it was not an official Jenzabar website. Although Chai Ling appeared in the film several times, a search of the transcript reveals that Jenzabar was never mentioned.

In the Superior Court’s Dec. 7, 2010 order in favor of the Long Bow Group, the first sentence stated “[t]his action arises from a dispute between the plaintiffs and defendant over content on the [Long Bow Group’s] web site” (emphasis added). In the BPLA’s estimation, this mischaracterization of the case overshadowed the Superior Court’s decision and threatened the usability of the Internet. The court seemingly viewed this as an attempt by Jenzabar to censor the defendant and so gave short shrift to the allegation that the defendant used Jenzabar’s trademark to trick consumers into viewing that content.

While the BPLA took no position as to whether there was infringement in this case, it urged the court to recognize that trademark law does not countenance the use of a trademark to divert Internet users to a website. This is true regardless of whether the party doing the tricking competes with the trademark holder or if there is a commercial motive at all. Whether Internet users would be confused once they landed on the trickster’s website is also of no consequence in this context.

The analogy frequently employed to defend the use of a trademark that triggers links to unaffiliated websites in online search results is that such use recreates in the digital world the experience of walking down a grocery store aisle. Consumers looking for mustard would see all available mustard brands even if they went to the aisle specifically for Grey Poupon.

But this analogy holds true only so long as the mustard brands are not confusingly labeled. If a consumer could only determine which brand was which by removing it from the shelf, the experience of grocery shopping would be frustrating at best. In its brief, the BPLA took the position that using a trademark to trigger links in search results is acceptable, but only so long as the links that are triggered are not confusing. This would protect Internet users from searches that are littered with confusing results, while allowing competitors and activists to make non-infringing use of trademarks that promote competition and free speech.

The Long Bow Group is expected to file its brief with the Commonwealth of Massachusetts Appeals Court within the week. Additionally, the Berkman Center for Internet and Society at Harvard University has also sought leave to file an amicus curiae brief in this case.