Contributor, The Volokh Conspiracy

With the lovable personality of a drowsy badger and the voice of a bullfrog, Bernie is your comrade in fighting the good…

Posted by LibertyManiacs.com on Friday, November 6, 2015

A lawyer for the Bernie Sanders campaign is demanding that Daniel McCall stop selling shirts and coffee mugs with the text “Bernie is my comrade” (like the Sanders campaign’s design for the word “Bernie”), and a rogues’ gallery of Socialist figures Marx, Engels, Lenin, Stalin, and Mao; the design, the campaign argues, infringes its trademark and copyright:

Section 43(a) of the Lanham Act (15 U.S.C. § 1125) prohibits use in commerce of “any word, term, name, symbol or device … which is likely to cause confusion, or to cause mistake, or to deceive as to the origin, sponsorship or approval of his or her goods, services, or commercial activities by another person.” Your use of the [Sanders] Official Logos is likely to cause exactly such confusion. Additionally, by using the distinctive logo of Bernie 2016, Inc., Liberty Maniacs has violated the U.S. Copyright Act (17 U.S.C. § 501) and is liable for falsely applying the Bernie 2016, Inc. name and logo to Liberty Maniacs’ products. 17 U.S.C. § 1202. This list of Liberty Maniacs’ unlawful conduct is not exhaustive.

As an intellectual property owner, our client is obligated to take steps to protect its trademark and copyright rights and to protect the good will built up in its name and brand. Therefore, please confirm, within five (5) days of the date of this letter, that you have complied with the following:

1. Cease and desist from any and all use, reproduction, and/or display of the Official Logos or any similar, related, or confusing mark in any packaging, label, advertisement, signage, ad copy, domain name or extension, or the like; and

2. Destroy and/or take offline all materials, packaging, labels, advertisements, signage, ad copy, or the like to which the Official Logos or any deceptively or confusingly similar mark or proprietary content has been applied.

Due to of strict campaign rules and regulations, and other legal restrictions that apply to the use of the Official Logos, we must ask you not to use the Official Logos on any of your merchandise, and especially not on merchandise that you plan to sell. We encourage you to be creative in designing and using your own logos or trademarks to clearly identify you as the source of the efforts. Hopefully you see this as an opportunity to creatively and distinctively come up with something new and clever on your own.

Although we are confident that the issues raised in this letter can be simply and swiftly resolved, we are obliged to note that Bernie 2016, Inc., reserves all rights, claims, defenses, remedies, and contentions that it may have in connection with the subject matter of this letter….

Paul Alan Levy (Public Citizen) responds on McCall’s behalf, and I believe the law is on Levy’s side:

It is your contention, apparently, that an ordinary and reasonably prudent consumer would tend to be confused about whether it is the Sanders campaign that is promoting Sanders’ candidacy by associating him with the 19th Century theoreticians of the communist movement as well as with three ruthless Communist Party dictators.

That contention is absurd. You cannot use trademark theories to silence members of the American public who disagree with your client’s views and oppose his candidacy. They can hardly express their views in that respect without identifying the candidacy about which they wish to speak; and it is precisely because the logo is so recognizable that it is an excellent way of specifying which “Bernie” is the subject of commentary. Moreover, it is very common for people to express their views about presidential candidacies, completely independent of the campaign; such expression is so common that it defies belief that a reasonably careful consumer would believe that a shirt or bumper sticker associating your client with Communists necessarily came from the campaign itself.

Apart from the lack of likely confusion, the use of the logo is plainly fair use, protected by the doctrine of nominative fair use that is well recognized in courts throughout the country.

Beyond that, any lawsuit asking a court to impose remedies for the use of this political speech would run four-square into the First Amendment. Because speech about a candidate for president is protected by the First Amendment, any effort to use trademark law to quash such uses is highly suspect. Although Liberty Maniacs’ products are sold, their contents are noncommercial speech, which qualifies for full First Amendment protection. Ayres v. Chicago, 125 F.3d 1010, 1014 (7th Cir. 1997); see also Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 812 (9th Cir. 2003); Smith v. Wal-Mart Stores, 537 F. Supp.2d 1302, 1340-1341 (N.D. Ga. 2008). The First Amendment protection for non-commercial speech [which means speech other than commercial advertising, even if it is, like newspapers, books, and films, sold in commerce -EV] extends to bar trademark claims. Entertainment 2000 v. Rock Star Videos, 547 F.3d 1095, 1099-1101 (9th Cir. 2008); Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 968-976 (10th Cir. 2003); CPC Intern. v. Skippy Inc., 214 F.3d 456, 462-463 (4th Cir. 2000); L.L. Bean v. Drake Publishers, 811 F.2d 26, 33 (1st Cir. 1987).

Your letter also refers in passing to your client’s ownership of the copyright in the logos; the PDF of the letter was labeled “Notice of Copyright Infringement,” and that characterization was in the subject line of the email by which you transmitted the letter. However, you do not say that the copyright has been registered. Not only would you need to register the copyright before you can file suit for its infringement, but any such suit would run directly into the copyright fair use defense, which is heightened in the case of an obvious parody like this one. Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994). Because you refer to a copyright claim only in passing, I will not bother to walk you through the application of section 107’s fair use factors to this case. In addition, the invocation of the copyright laws to suppress expression that your client dislikes is copyright misuse, which constitutes an additional defense that the Second Circuit (where your client, Bernie 2016, Inc., has its headquarters) as well as the Ninth Circuit (where you are located) have both recognized. Practice Management Information Corp. v. American Medical Association, 121 F .3d 516, 521 (9th Cir. 1997); Rosemont Enterprises v. Random House, 366 F.2d 303, 311 (2d Cir. 1966). lnote as well that, because you are making a claim over political speech, it would be our contention that the First Amendment provides additional protection against your misuse of the copyright laws, just as it protects against misuse of the trademark laws. Rosemont, id. (the “spirit of the First Amendment applies to the copyright laws … [C]ourts should not tolerate any attempted interference with the public’s right to be informed regarding matters of general interest when anyone seeks to use the copyright statute which was designed to protect interests of quite a different nature.”)

Finally, your letter refers in passing to “campaign laws and regulations … that apply to the use of the Official Logos.” Are you assuming here that an independent committee supporting your client might run afoul of the ban on coordination if it were to using the official campaign committee’s intellectual property? But that analysis, even assuming that it is sound, certainly would not bar an opposing group from making fair use of the intellectual property to say it opposed your client.

For all of these reasons, McCall will not remove the images about which you complain from his web sites, nor will he refrain from continuing to offer printed images on shirts, hoodies and mugs for sale. Should you fail to revoke your claim of infringement, we reserve the right to file an action for a declaratory judgment of non-infringement in a court of appropriate jurisdiction.

Levy notes in his post about the case:

Just after I posted this article, my email to [the lawyer who wrote the demand latter] produced a call from the “lead counsel” for the Sanders campaign — a lawyer whose web page represents that he “provides strategic advice to candidates [and] political committees.” I understood him to say that the demand letter was sent by the law firm without any consultation with the Sanders campaign, as part of what he regards as his responsibility to protect his client’s intellectual property. But when I tried to explain to him that such responsibilities do not extend to trying to suppress parodies, he complained that I was lecturing him. I recognize that his thing is election law, not trademark law.