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Does First Amendment bar trademark infringement liability?
Does First Amendment bar trademark infringement liability?
Where does the First Amendment end and federal trademark law begin? That was the question in a case before the U.S. Court of Appeals for the Sixth Circuit involving the alleged infringement of a political party’s trademark. The court’s decision provides some valuable insight on the far-reaching impact of a 2023 ruling by the U.S. Supreme Court regarding infringement liability under the Lanham Act.
Party brawl
In 2022, two top officers resigned from the Libertarian Party of Michigan over concerns about a shift in the ideology among leadership. The subsequent ascent of an unpopular acting Chair caused a dispute over the identity of the Michigan affiliate’s rightful leadership.
A group of dissenting members voted to remove the acting Chair and were then elected to committee positions themselves. The organization’s Judicial Committee, however, found the election violated bylaws and reinstated the dethroned acting Chair, voiding the defendants’ appointments.
The Libertarian National Committee (LNC) sided with the Judicial Committee and the acting Chair. It informed one defendant that his representation of himself as the Chair of the Michigan affiliate was “patently false” and directed him to stop using the LNC’s trademarks to promote the offshoot political party and an unauthorized convention.
Despite receiving a cease-and-desist letter, the defendants continued to use the LNC’s registered trademark to hold themselves out as the official Libertarian Party of Michigan. They used the mark in connection with soliciting donations; filing campaign finance paperwork; and promulgating platform positions, endorsements and commentary criticizing the actual Michigan affiliate.
The LNC sued for trademark infringement and obtained a preliminary injunction blocking the defendants from continuing to use its mark. The defendants turned to the appellate court for relief.
Defense campaign loses
On appeal, the defendants argued that they didn’t use the trademark in connection with the sale or advertising of any goods or services, as required by the Lanham Act. Because the law regulates trademark infringement only in commercial speech, as defined in the First Amendment context, they asserted that their use of the mark in the course of political speech was outside its reach.
The appeals court began its analysis by noting the Supreme Court’s recent finding that, when a defendant uses a trademark as a source identifier, the trademark law generally prevails over the First Amendment. The use of a trademark in such a way undermines trademark law’s primary function — preventing misinformation about who’s responsible for a product or service.
And that’s the case even when the defendant’s use of the mark also includes an expressive message. In these circumstances, the Supreme Court said, the Lanham Act’s likelihood-of-confusion test “does enough work to account for the interest in free expression.”
Applying this reasoning, the appellate court found that the defendants’ use of the LNC mark to designate the source of their political services as affiliated with the LNC implicated “the core concerns of trademark law.” It acknowledged that speech related to the provision of political services typically constitutes political speech that receives heightened protection. But, when a defendant uses the trademark as a source identifier, the Lanham Act doesn’t “offend the First Amendment by imposing liability in the political arena.”
Not a total defeat
The appellate court affirmed the preliminary injunction, except in one circumstance: when the defendants used the mark to solicit donations on their website. There, they displayed a disclaimer alerting potential donors to the identity of the donation recipient. The disclaimer, the court said, reduced the confusion the Lanham Act seeks to prevent.
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