Trademark infringement from sharing a specialized license plate?

Raptor Education Foundation v. Rocky Mountain Raptor Program, 2010 WL 4537119 (D. Colo.)

In 1999, nonprofit plaintiff REF (loves predators, doesn’t believe in global warming) allegedly signed a contract with the Colorado Department of Motor Vehicles for a specialty license plate. The plate features a drawing of the head of an eagle (or other bird of prey) and the words "Respects Wildlife." REF then obtained a Colorado state trademark registration for the plate and registered a copyright in the design. At first, only members of REF could get the plate. Recently, the Colorado legislature amended the statute governing specialty license plates to permit issuance of the plate to members of RMRP, another Colorado nonprofit. RMRP then began to use an “essentially identical” plate to attract members, and put images of the license plate on its website and in its promotional materials. REF sued.

RMRP moved to dismiss the non-copyright claims (Lanham Act false designation of origin, unfair competition, and false advertising, with coordinate state law claims). It argued that there was no connection to interstate commerce, because only owners of vehicles registered in Colorado may receive the specialty plates at issue. REF argued that posting images of the design on RMRP’s website satisfied the interstate commerce requirement, and that RMRP issues vouchers to its members for the license plate, and some members may not be Colorado residents. (In which case, could they even get the license plates?)

The court quoted precedent that, while the internet is generally an instrumentality of interstate commerce, that doesn’t mean that any use of the internet is necessarily commercial for Lanham Act purposes. “However, the pleadings claim the use of the plate to solicit membership throughout the world, which may be found to be a commercial use in interstate commerce.” This was enough to state a plausible claim, even though there was a question whether the specific activity associated with the license plate itself had any economic impact outside the state.

(Unmentioned at this point is a really interesting issue: who’s allegedly confused, and over what? If the use of the design doesn’t make RMRP members think they’re REF members, then all that’s at issue is a very odd kind of post-sale confusion, mediated through the state. And isn’t the state’s role here also of interest? If it specifically permitted this use, then there’s at least some argument for deference to that judgment.)

RMRP also argued that the state law claims were preempted by copyright. At a minimum, REP could plead its claims in the alternative, since RMRP denied the validity of the copyright, so there was no preemption based on the pleadings.