When Trademark Bullying Gets Expensive

by Paul Alan Levy

Over the past few years I have blogged about our defense of some documentary filmmakers who had to defend the use of the name "Jenzabar" (a software company) in the meta tags and title tag for a web page about a software company called Jenzabar (it was founded by one of the leading figures in their most important documentary).   Before the documentarists found us, they came close to running out of money defending themselves through a private law firm; eventually we obtained a summary judgment that was affirmed on appeal

In a ruling that we received today, the Superior Court handed Jenzabar its comeuppance — an award to defendants of more than $500,000 in attorney fees and expenses.  The judge did not accept the basic fees standard — invoking the Ninth Circuit’s decision in Mattel v. Walking Mountain, we had argued that when a trademark has been used for expressive purposes, it is enough that the lawsuit to suppress the use was legally unreasonable.  Instead, the judge applied an abuse of process standard derived from Seventh Circuit case law and found that Jenzabar’s ulterior purpose in pursuing the litigation was to punish the documentarists for their audacity in criticizing the plaintiffs: "The overall record of this case leaves no doubt that . . . Jenzabar . . . subjected Long Bow to protracted and costly litigation not to protect the goodwill of its trademark from misappropriation, but to suppress criticism of Jenzabar's principals and its corporate practices." 

We are grateful to Rebecca Tushnet for asking us to take a look at this case.