Tuesday, June 14, 2022

Nonprofit political enterprise not commercial speech, not covered by Lanham Act

Think Rubix, LLC v. Be Woke. Vote, No. 2:21-cv-00559-KJM-AC (E.D. Cal. May 31, 2022) 

Think Rubix “is a social innovation consultancy firm” that uses its WOKE VOTE initiative to “promote[ ] public awareness of the need for educating citizens about politics . . . and encourage[ ] greater participation in the political process.” It has a registration for a word plus design mark (application in 2018) for “[p]romoting public awareness of the need for educating citizens about policies and issues in the political process and encouragement for greater participation in the political process through voter registration, voting, and advocacy.” The registration claims the colors yellow, black and white as features of the mark.

registered WOKE VOTE + design mark

Defendants’ Be Woke. Vote initiative, also launched in 2018, “aim[s] to encourage participation and inspiration of younger generations that are oftentimes disenfranchised . . . and to create discussions about politics through social media initiatives and in-person events.” It uses a circular logo that primarily uses yellow, black, and white, and, like Think Rubix, uses the mark online and on merchandise.

Be Woke. Vote

Think Rubix sued for trademark infringement and federal dilution (!). The court granted judgment on the pleadings: There was no attempt to profit here and thus no basis for Lanham Act jurisdiction under Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005). True, courts also extend the Lanham Act to sales-free situations where a defendant “offers competing services to the public.” United We Stand America, Inc. v. United We Stand, America New York, Inc., 128 F.3d 86 (2d Cir. 1997).

The complaint alleged that “defendants use their mark not only on apparel but also to promote their political engagement efforts, which are similar to those of Think Rubix.” But that didn’t mean their speech was “purely commercial,” which the Ninth Circuit requires. “If speech is not ‘purely commercial’—that is, if it does more than propose a commercial transaction—then it is entitled to full First Amendment protection.” [This is drawing from a different line of noncommercial cases—there is a tripartite division in the case law that doesn’t reflect a circuit split, but rather within-circuit divisions in treatment of (1) noncommercial but for-profit or money-soliciting speech, (2) noncommercial individual speech/griping, and (3) competing noncommercial organization names, usually of religious entities. My current project attempts to explain how these cases should be resolved, namely by applying strict scrutiny to extensions of the Lanham Act beyond commercial speech. This would usually mean no liability in (1) and (2) and liability in (3) only for uses that don't allow audiences to distinguish two entities, basically a fraud model.]

It is undeniable that the Supreme Court has long held that charitable solicitation is not commercial speech. Moreover, when speech is “characteristically intertwined with informative and perhaps persuasive speech seeking support for particular causes or for particular views on economic, political or social issues,” “it must be treated as a fully protected activity under the First Amendment,” Gaudiya Vaishnava Soc. v. City & Cty. of San Francisco, 952 F.2d 1059 (9th Cir. 1990). That was obviously the case here: “defendants’ use of Be Woke. Vote is inherently intertwined with their efforts to inform and persuade the public on social and political issues.”

Thus, the trademark claims failed on their face. This was true even as to sale of merchandise with the Be Woke. Vote mark displayed on it. The Ninth Circuit has already rejected the argument that “sale of [expressive] merchandise [by nonprofits] is nothing more than a commercial transaction and therefore is afforded no constitutional protection.” Gaudiya Vaishnava Society. Thus, “while plaintiff has a valid trademark covering the services in which the parties are engaged, the fundamentally noncommercial nature of the services places the defendants’ actions within the exception to the Lanham Act. Even if there is a risk of public confusion regarding the two marks, the defendants’ speech is nonetheless protected.” No leave to amend; that would be futile.

The dilution claim also failed because the speech was noncommercial. [In line with my comments above, the court declined to apply Rogers because Rogers was about “artistic expression,” a statement that is truly puzzling when one considers that art is often considered protected in order to protect political speech (writ large).]

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