Update: The final letter from the Long Bow Group to Jenzabar, seen below, was dated April 11, 2007. Shortly thereafter, Jenzabar, Inc., its CEO Robert Maginn, Jr., and its President Chai Ling, filed suit in Boston against the Long Bow Group, claiming defamation and trademark infringement. The defamation claims were thrown out in 2008 and the trademark claims were dismissed in 2010. In 2013, a motion by Long Bow for Jenzabar to pay legal fees was granted by the Superior Court of Massachusetts, which made note of Jenzabar's "abuse of process," its "multiple and shifting legal and factual theories," its "extortionate conduct," and its "ulterior purpose." Click on the following links to read a summary of the lawsuit and an online appeal for support.
Jamison J. Barr, Esq.
Assistant General Counsel
(617) 492-9099 ext. 269
February 9, 2007
Long Bow Group, Inc.
55 Newton Street
Brookline, MA 02445
Dear Sir or Madam:
I represent Jenzabar, Inc. ("Jenzabar") as its Assistant General Counsel and am writing about the Web pages you maintain at http://www.tsquare.tv/film/jenzabar.html, http://www.tsquare.tv/film/american dream.html and http://www.tsquare.tv/film/forbes.html (the "Web pages"). These Web pages make and publish numerous false and defamatory statements regarding Jenzabar, its current Chairman and Chief Executive Officer, Robert A. Maginn, Jr. and its founder, President and Chief Operating Officer, Ms. Ling Chai.
Specifically, your Web pages republish statements to the effect that "five former executives have sued Jenzabar, including the former chief financial officer, who accused Chai and Maginn of 'a number of unethical, inappropriate, and/or illegal actions.'" This statement is false, misleading, and defamatory. We are aware of four suits brought by former executives, not five, all of whom had been terminated, and several of whom had violated their noncompetition and confidentiality agreements. Only one suit, brought by Joseph DiLorenzo, the former CFO of Jenzabar, accused Ms. Chai and Mr. Maginn of illegal actions. Mr. DiLorenzo later voluntarily dropped his claims against Ms. Chai and Mr. Maginn without receiving any settlement payments to do so, admitted that he had no basis for them, and issued the attached apology, which is on file with the court.
Regardless of what the Boston Globe or Forbes might have published more than four years ago, it is irresponsible and defamatory to suggest or state now, as your Web pages do, that Jenzabar and its executives committed any illegal or inappropriate actions when the only person who made such an accusation has now admitted that the accusations were false and unsupported. Given the information that we have now provided, you can no longer claim ignorance about the facts. Your republication of these statements is defamatory, and we insist that you remove the false and defamatory articles and statements on your Web pages.
Your republication of defamatory statements is wrongful in itself, but you compound this wrongdoing by repeatedly using Jenzabar's trademarks to attract traffic to the offending Web pages. Your Web page uses JENZABAR, JENZABAR.COM, and JENZABAR.NET, in addition to Ms. Chai's name, as metatags, in the title of the page, and in the URL. The marks JENZABAR and JENZABAR.COM have been registered with the U.S. Patent and Trademark Office and issued Registration Nos. 3108414 and 2557986 respectively. It's self-evident that you have designed these Web pages and used Jenzabar's marks to maximize the prominence of your Web pages on Internet search engines, in order to deliberately divert Internet users who are looking for the Jenzabar Web site. This unauthorized use of Jenzabar's federally registered marks to draw traffic to your Web pages constitutes trademark infringement under the Lanham Act and Massachusetts law.
Your calculated efforts to attract attention to the false and defamatory information on your Web pages have yielded the results that you've apparently intended: the reputations and goodwill associated with Jenzabar and its senior executives have suffered significant damage for which you are liable.
I applaud your organization for the critical acclaim its films have received and strongly believe that the story of the largest nonviolent protest in China's history must never be forgotten. However, Jenzabar cannot and will not tolerate your organization's seemingly deliberate efforts to smear the reputation of Jenzabar and to infringe on its intellectual property. Accordingly, Jenzabar demands that you take the following actions within (7) seven days of the date of this letter:
1. Cease and desist from using JENZABAR in the URL of any Web page you own or maintain;
2. Cease and desist from using JENZABAR, JENZABAR.NET, and JENZABAR.COM in the title, metatags and html code of any Web page you own or maintain;
3. Confirm that none of the principals, employees, or agents of your Long Bow Group, Inc. have contributed any of false and defamatory information that was posted to the wikipedia.org article about Ms. Chai;
4. Cease and desist from republishing any of the false and defamatory information regarding Jenzabar and its senior executives; and
5. Add the following disclaimer to your Web pages - "This Web page is not affiliated with or sponsored by Jenzabar, Inc."
If I do not receive written confirmation within (7) seven days that you've taken these remedial actions, Jenzabar will take whatever actions it deems appropriate to protect its interests and reputation. Such actions may include initiating litigation without any further notice. This letter is sent in an effort to avoid litigation, and nothing in it should be taken as a waiver of any claims, positions, rights, or remedies that may be available to Jenzabar, all of which Jenzabar expressly reserves.
(Also available: PDF file of Feb. 9, 2007 letter)
Reply from the Long Bow Group, dated February 27, 2007:
February 27, 2007
Jamison J. Barr
5 Cambridge Center
Cambridge, MA 02142
Re: Jenzabar, Inc.
In response to your letter of February 9, 2007, please be advised that we took your allegations very seriously and accordingly consulted with both litigation and intellectual property counsel with respect to the same.
Their advice to us was that neither your defamation allegations nor your trademark infringement claims are valid.
With respect to the defamation allegations, please note that the articles posted on our webpage were posted over three years ago, that Long Bow is only citing articles which are a matter of public record, that the statute of limitations in Massachusetts is limited to 3 years and so (to the extent it had been relevant) has expired, and that the courts have rejected the theory that the statute of limitations is continually refreshed by the maintenance of the posting. Please further note that the articles cited on our webpage were from respected sources, published for informative and newsworthy purposes, and that our references to and citations of the same were likewise published for informative and newsworthy purposes.
That said, we were unaware of the September 22, 2006 letter from Joseph DiLorenzo which was attached to your letter, which appears to have been a private communication, and which purports to retract charges asserted by Mr. DiLorenzo over 3 years earlier. Please note that the date on the letter is over 3 years following The Boston Globe article cited on our webpage and does not itself refute the statements in that article. However, the letter from Mr. DiLorenzo does suggest that he no longer believes that the allegations in the complaint he had filed (and which were quoted, apparently accurately, by The Boston Globe) were valid.
Accordingly, we would be willing to take the following actions in order to address your stated concern and provided that it puts this matter to bed:
• Because the letter from Mr. DiLorenzo offers additional material information relating to the sentence in the 2003 article from The Boston Globe which you allege to have been defamatory, we will post a copy of the letter on our webpage. We will also add a sentence to the webpage indicating that Jenzabar has informed us that only 4 lawsuits were filed rather than the 5 reported by The Boston Globe. We understand from your letter that you are not suggesting that any other material on our webpage was defamatory.
• We will revise certain elements of the language on the webpage to indicate that the positions taken by the authors in the referenced articles do not represent the opinions of all persons.
• We will add the disclaimer that you requested.
• We will forward your letter and its attachment to the authors of the Forbes and The Boston Globe articles cited on our webpage in order to alert them to your concerns about inaccuracies in their reporting.
With respect to the trademark violations you allege, we have been advised by counsel that our use of the name ‘jenzabar’ in the keywords and metadata related to the webpage is considered use for ‘referential’ purposes and accordingly is not in violation of any state, federal or common law. In fact, please note that our use of Jenzabar’s name in the disclaimer you have requested us to insert on the webpage constitutes a similar ‘referential’ use.
Finally, with respect to the concerns you expressed regarding Wikipedia’s coverage of Chai Ling, please be advised that I am not aware of anyone at Long Bow who has contributed to Wikipedia’s entry on Chai Ling. Furthermore, no one in this company has any knowledge about anyone who has submitted material about Chai Ling to Wikipedia. My understanding is that Wikipedia does offer utilities which allow you to identify the names of the contributors to the encyclopedia and I suggest that, to the extent your concern remains, you pursue your concern through those utilities or with the staff of Wikipedia.
I appreciate your commendation of Long Bow’s film making efforts. Please know that we strive very hard to maintain intellectual integrity as well as compliance with and respect for the legal and individual rights of the persons and companies with whom we work from time to time. Accordingly, if your legal counsel disagrees with the opinions we have received from our legal counsel, could you please forward to me the grounds for their disagreement (including citations to relevant caselaw where applicable), and we will assuredly re-examine the issues in light of the same.
Letter dated March 22, 2007, from Jenzabar, Inc. to the Long Bow Group:
Jamison J. Barr, Esq.
Assistant General Counsel
(617) 492-9099 ext. 269
March 22, 2007
Long Bow Group, Inc.
55 Newton Street
Brookline, MA 02445
Thank you for your letter dated February 27, 2007. I appreciated your thoughtful response, your offer to take certain corrective actions, your request for additional information and your willingness to re-examine your position in light of the additional information. I do take much comfort in your statement that the Long Bow Group ("Long Bow") strives "very hard to maintain intellectual integrity as well as compliance with and respect for the legal and individual rights of the persons and companies with whom" you work with.
Because your letter is based on some misunderstandings about the facts and the law, however, I'm taking you up on your offer to point out these errors - having included citations to case law where applicable - and to request that you take corrective action.
At the outset, while I appreciate that Long Bow is reproducing articles that first appeared in other publications, that fact does not insulate Long Bow from liability for defamation. Massachusetts courts treat republishers of defamatory statements as the original publisher for purposes of determining liability. See Appleby v. Daily Hampshire Gazette, 395 Mass. 32, 36 (Mass. 1985) ("Generally speaking, the republisher of a defamatory statement 'is subject to liability as if he had originally published it'"). Similarly, the fact that the original articles were from respected sources, a republisher will be liable for defamation if it is negligent in republishing it. See Mac-Gray Services, Inc. v. Automatic Laundry Services, Co. Inc., 2005 WL 3739853, *2 (Mass.Super. 2005), citing Reilly v. Associated Press, 59 Mass.App.Ct. 764, 769 (2003). A republisher is negligent if it knew or should have known of certain facts extraneous to the republished piece which would have raised doubts as to that piece's veracity. See Appleby, 395 Mass. at 40.
Here, we have provided Long Bow with documented evidence that the allegations reported in these articles are false. First, the letter from Mr. DiLorenzo that Jenzabar previously filed was not merely a private communication; it was filed with the Superior Court for Middlesex County, attached to Mr. DiLorenzo's stipulation of dismissal (see Exhibit 1). Mr. DiLorenzo was the former CFO of Jenzabar whose allegations were reported in the Boston Globe article and republished on your website. See http://www.tsquare.tv/film/american_dream.html ("Five former executives have sued Jenzabar, including the former chief financial officer, who accused Chai and Maginn of 'a number of unethical, inappropriate, and/or illegal actions.'").
There were three other proceedings involving former executives, but the article falsely and misleadingly suggests that they had merit. In one case, John Pierce, the owner of a company that was purchased by Jenzabar, was found liable for making misrepresentations about the company; Jenzabar was awarded $1.75 million in an arbitration proceeding, and Pierce was awarded nothing on his claims. I've attached a copy of the decision for your reference (see Exhibit 2).
In another case, Mahendran Jawaharlal, who had previously been CEO of Pierce's company, sued Jenzabar seeking to avoid his non-competition obligations. The court threw out his claims. I've attached a copy of the ruling (see Exhibit 3). Following that ruling, the company was awarded a judgment in its favor.
In the last case, Dwight Wyse was sued by Jenzabar for violating his fiduciary duties to the company. Mr. Wyse and his son then brought counterclaims, but every one was dismissed by the court. See the attached order (Exhibit 4). Dwight Wyse later agreed to a settlement with Jenzabar in which he agreed to forfeit considerable sums of money in payments that he would have received. That forfeiture was entered in open court and is part of the official court docket.
In view of this information, it is irresponsible and defamatory for your website to republish statements that Chai and Maginn were sued for allegedly committing "a number of illegal actions" without also stating that those allegations were later admitted to be false. It is similarly irresponsible and defamatory for your website to publish statements about lawsuits against Jenzabar, even suggesting that the claims had some truth, when a simple review of the public docket of the state and federal courts would show that all of the claims against Jenzabar were baseless. Regardless of what Long Bow might have known when it first republished the statements, it can no longer claim ignorance of their falsity.
Second, we've investigated your statute of limitations argument, and it fails on the facts.We have been able to determine, and have documentary evidence, that the defamatory statements that Long Bow republished on its website were posted on May 14, 2004. When a defendant has republished defamatory statements, a new cause of action for libel accrues for republications from the date of the republication. See Vondra v. Crown Publ'g Co., 2002 WL 31379948, *4 (Mass.Super. 2002); see also Flynn v. Associated Press, 401 Mass. 776, 780 n.5 ("Any future republication of the false statements complained of in this action could form the basis for a new cause of action against the republisher."). Consequently, the statute of limitations has not yet expired.
Finally, as to the use of Jenzabar's name as a metatag, there are
countless cases - including cases in the District of Massachusetts -
that hold that the use of another's trademark in a metatag creates
initial interest confusion. See, for instance, Eli Lilly & Co.
v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000)
("'[u]sing another's trademark in one's metatags is much like posting a
sign with another's trademark in front of one's store.' As such, it is
significant evidence of intent to confuse and mislead."); accord
Australian Gold, Inc. v, Hatfield, 2005 WL 3739862 (10th Cir. Feb.
7, 2006); Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999); Shainin
II, LLC v. Allen, 2006 WL 1319405 (W.D. Wash. May 15, 2006)
(metatag use supports preliminary injunction); Tdata Inc. v.
Aircraft Technical Publishers, 2006 WL 181991 (S.D. Ohio Jan 23,
2006); Full House Productions, Inc. v. Showcase Productions, Inc.,
2005 WL 3237729 (ND. Ill. Nov 30, 2005); Victoria's Secret Stores
v. Artco Equip. Co., 194 F.Supp.2d 704, 725 (S.D. Ohio 2002); J.K.
Harris & Co. v. Kassel, 62 U.S.P.Q.2d 1926 (N.D. Cal. 2002); Aztar
Corp. v. MGM Casino, 59 U.S.P.Q.2d 1460 (E.D. Va. 2001); New
York State Soc. of Certified Public Accountants v. Eric Louis Assoc.,
Inc., 79 F. Supp.2d 331, 341 (S.D.N.Y. 1999); Niton Corp. v.
Radiation Monitoring Devices, Inc., 27 F.Supp.2d 102 (D. Mass.
1998). These courts have recognized that consumers who use a mark as a
search term to look for a company experience confusion when their
search results include web sites not sponsored by the owner of the
mark. Brookfield Communications, 174 F.3d. at 1045; Playboy
Enterp., Inc. v. Netscape Communications Corp., 55 F.Supp.2d 1070,
1083 (C.D. Cal. 1999); Key3 Media Events, Inc. v. Convention
Connection, Inc., 2002 WL 385546 (D. Nev. Jan. 25, 2002). There is
no exception for "referential" uses, and, in any event, your website's
use of Jenzabar's registered trademark in its metatags is plainly
intended to divert traffic to your site, to more widely disseminate the
defamatory information I've identified above. This is a bad faith,
infringing use, and it is also an unfair and deceptive trade practice.
Because of this, more is required of Long Bow to put "this matter to bed," and Jenzabar must insist that Long Bow takes the following actions immediately:
• Remove the name "Jenzabar" from any all domains used by your website;
• Remove the name "Jenzabar," "Jenzabar.net" and "Jenzabar.com" from the source code of your website;
• Remove all of the false and defamatory information identified in this letter, including but not limited to the statement that "Five former executives have sued Jenzabar, including the former chief financial officer, who accused Chai and Maginn of 'a number of unethical, inappropriate, and/or illegal actions.'"; and
• Add the following disclaimer - "This website is not in any way affiliated with Jenzabar, Inc."
Accordingly, please confirm by no later than March 30th, 2007 that you've taken these remedial actions. If I don't hear from you by then, Jenzabar will be forced to start initiating legal proceedings without any further notice. Given your stated commitment to integrity and willingness to re-examine your position, I am confident however that, after you've reviewed the information (both the law and facts) provided and discussed them with your legal counsel, you will take the actions listed above.
Please note this letter is sent in an effort to avoid litigation, and nothing in it should be taken as a waiver of any claims, positions, rights, or remedies that may be available to Jenzabar, all of which Jenzabar expressly reserves.
(Also available: PDF file of March 22, 2007 letter.)
Reply from the Long Bow Group, dated April 11, 2007:
April 11, 2007
Jamison J. Barr
800 Boylston St.
Prudential Center, 35th Floor
Boston, MA 02199
In response to your letter dated March 22, 2007, please be advised that we asked our counsel to make a thorough examination of the information you provided. Our understanding continues to be that neither Jenzabar's defamation allegations nor Jenzabar’s trademark infringement claims are valid.
That said, let me make two preliminary points. First, as I'm sure you know, truth is a defense against a defamation charge. The statement on the web site with which you take issue is, in fact, truthfully reporting that a Boston Globe article was published in 2003, which itself truthfully stated that lawsuits were filed, quotes accurately from Mr. DiLorenzo's complaint, and even says that the defendant denied the claims. To the extent that the Boston Globe article made an error on the number of executives involved in the action, that is hardly defamatory. As you know, not every false statement rises to the level of defamation. As to the rest of the article quote, it seems to be opinion at worst, truthful fact at best. Nonetheless, we are willing to clearly indicate on our website that Jenzabar has recently contested the accuracy of certain limited statements in the Boston Globe article and we will also post your letters to us which detail your concerns.
Second, I believe there has been some confusion around Jenzabar's claim of trademark violation. Specifically, the trademark cases you cite bear on situations where the intent of the user was to cause market confusion. In this case, there is no issue of market confusion; the use of the name 'jenzabar' is, in fact, solely for referential purposes and such use does not constitute a trademark violation. The website is identified as an historical website focusing on the 1989 Tiananmen Square demonstrations and the feature documentary "The Gate of Heavenly Peace." The copyright is explicitly held by the Long Bow Group, a non-profit educational corporation founded in 1982. Long Bow Group is not in the same (or even in a related) area of business as Jenzabar, and no visitor to our website would reasonably believe the website to be sponsored by or affiliated with Jenzabar. Please also know that your suggestion that there has been any intent on the part of Long Bow to defame your client is inaccurate, unfounded, and, quite frankly, inappropriate. As you know, the website contains information relating to many of the central characters in the film. The information provided with respect to Jenzabar is offered only because the company is so closely linked with Chai Ling, who by her own statements identifies herself as an important and controversial participant in the Tiananmen protests. Nonetheless, we are willing to add the following language to the webpage about Jenzabar: "These web pages are the sole responsibility of the Long Bow Group, and are in no way affiliated with or sponsored by Jenzabar, Inc."
Finally, the Long Bow Group remains committed to taking those actions which are both legally and ethically appropriate; but we are troubled by what seems a clear effort on Jenzabar's part to suppress our first amendment rights, censor the historical record, intimidate us with charges which are brought years after the fact, and which have been asserted in a hostile and threatening manner on unsupportable legal grounds.
(Also available: PDF file of April 11, 2007 letter)
Return to excerpts page.
This web page is the sole responsibility of the Long Bow Group, and is in no way affiliated with or sponsored by Jenzabar, Inc.