Political party bars use of name and logo by dissidents

HT Eric Goldman. This is one of those cases that seems to be an extreme outlier, but then again see United We Stand America v. United We Stand America, New York, applying the Lanham Act to similar but perhaps more limited effect.  [ETA inexplicably omitted name of case, sorry!]

Canegata v. Schoenbaum, 2016 WL 3212270, SX-16-CV-324 (V.I. Super. Ct. May 27, 2016) 

In early May, the Territorial Committee of the Republican Party of the U.S. Virgin Islands held a special meeting setting a date for the territorial convention; adopting rules for selection of nominees and party officers at that convention; and amending the Party’s rules. A few days later, John Canageta, the State Chairman of the Republican Party of the U.S. Virgin Islands, and Robert Schanfarber, the Secretary, issued a “Call of the 2016 Republican Territorial Convention” to Republican voters telling them about the territorial convention.

Then, an alleged majority of the Territorial Committee demanding that Canegata issue a call for the territorial convention to take place on a different day. This group then appointed some individual defendants as the Territorial Convention Subcommittee. Herbert Schoenbaum, the First Vice-Chairman, then issued a call consistent with the Committee’s demand, based on the written refusal of Canageta to abide by the Committee’s demand. The Territorial Convention Subcommittee set up a Facebook page “to communicate with registered Republicans who want to participate in the [May 28, 2016] Territorial Convention.” The title of the page was “Territorial Convention of the Republican Party of the USVI” and identified the date of the convention as May 28. The profile picture contained “an image commonly associated with the Republican Party of the U.S. Virgin Islands,” a variation on the USVI flag, with a red, white and blue elephant logo, with three stars across its back, in the center of an eagle and “GOP” underneath the eagle.

Plaintiffs sought a TRO enjoining defendants’ use of (1) any symbol, emblem and insignia of the Republican National Committee, namely the Elephant; and (2) the “Republican Party of the U.S. Virgin Islands” name. Defendants voluntarily took down the logo, replacing it with a red, white and blue elephant logo upholding five stars across its back, and left the title and description of the Facebook page the same.

The court stated the issue clearly: “the extent to which a political party may prevent a dissident group from using the descriptive name and the symbol, emblem, or insignia of said political party.”  Plaintiffs and defendants were all members of the Republican party, rivals for control of the Territorial Committee.  But defendants were in violation of V.I. law because they didn’t have plaintiffs’ consent to use the name, symbol, emblem, or insignia of the Republican party.

Title 18 V.I.C. § 301(c) provides that:

Whenever a political party in the Virgin Islands affiliates with a national political party, committee, convention or organization, regardless of when such affiliation took place, no association, group, club, organization or instrumentality shall use the symbol, emblem, or insignia, of the national political party, convention, committee or organization which has affiliated with a Virgin Islands political party, without the express consent in writing from the chairman and secretary of the Virgin Islands political party filed with the Supervisor of Elections.

Without a word about the obvious constitutional questions here (for a start, unless “use” means “confusing trademark use,” there’s no way this can survive even gentle scrutiny), the court tried to figure out what constituted “a symbol, emblem, or insignia of the Republican National Committee.”  Given the replacement image’s similarity to the GOP elephant—both are red, white, and blue, with stars across their backs—“the average layman could very well interpret this image as a symbol, emblem, or insignia of the Republican National Committee, especially when used in the context to call a territorial convention of the Republican Party of the Virgin Islands.”  Thus, plaintiffs showed a reasonable probability of success on the merits. 

But the law didn’t cover the party’s “name.”  (Cf. Qualitex, holding that “symbol” covers everything that can hold meaning to consumers.)  But, wait for it, because defendants aren’t the Republican Party of the VI, plaintiffs can also prevent the [trademark] use of the Party’s name via a misappropriation theory.  “Those in control of the Republican Party of the U.S. Virgin Islands may lawfully prevent the appropriation of their name by organizations not functioning under the aegis of the Republican Party of the U.S. Virgin Islands.”

Irreparable harm: Plaintiffs pointed to the confusion “that will certainly ensue with regard to the actual date of the territorial convention.”  This would harm the Party’s reputation and credibility, including with the RNC.  “Loss of control of reputation and loss of good will are established grounds for irreparable injury.” As for harm to defendants, they wouldn’t be harmed by being enjoined from using a name and a symbol they’re not entitled to use, though they could continue their vigorous opposition to the present party leadership:

Defendants can continue to operate their Facebook Page. The relief would be limited to enjoining Defendants from the use of the symbol, emblem, or insignia of the Republican National Committee, namely the image of a red, white and blue elephant logo upholding stars across its back and the use of the “Republican Party of the U.S. Virgin Islands” name to avoid potential confusions among citizens. The injunction need not extend to the point of excluding entirely the use of the descriptive word “Republican”, so long as Defendants make it clear that the named group is in opposition to those currently in control of the Republican Party of the U.S. Virgin Islands. [ed. note: whose full name they can’t use, by those terms.] The purpose here is to avoid potential confusion.

The public interest also favored prevention of confusion about the Republican Party, which would also protect voters’ rights. TRO granted.