Last week President Obama’s campaign committee, Obama for America, filed a trademark infringement lawsuit against an online vendor, DemStore.com, for allegedly using the campaign’s trademarked logo without permission. The campaign sent DemStore.com two “cease and desist” letters last year, but the company did not stop using the logos. DemStore has sold merchandise supporting Democratic candidates since 1985, and currently sells Obama election merchandise bearing two logos that belong to Obama for America. The two logos at issue are the “Rising Sun” logo, which Obama for America has owned under a federally registered trademark since 2008; and the “2102 Rising Sun” logo, for which it has a pending federal trademark application.
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| Rising Sun Trademark |
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| 2012 Rising Sun Trademark |
Why would Obama’s campaign committee choose, during a reelection year, to use trademark law essentially to suppress speech by an organization that is highly favorable to its cause? Listing four claims – trademark infringement under the Federal Lanham Act, unfair competition and false designation of origin under the Federal Lanham Act, common law trademark infringement, and common law unfair competition – Obama for America argues that DemStore’s use of the logo is not only “likely to create confusion” among consumers, but that the DemStore’s use of the logos also damages the campaign’s ability to perform its fundraising and campaigning functions.Obama for America explains that it relies entirely on contributions from supporters to run its operations and the sale of merchandise featuring the Rising Sun trademarks produces a significant portion of its revenue. Each time supporters purchase merchandise, including those bearing the Rising Sun trademarks, the campaign collects contact information which it may later use to contact supporters for further donations or promotional opportunities. The DemStore interferes with the campaign’s ability to interact with potential supporters and gain revenues and future revenues through the sale of merchandise with similar logos.
Does the campaign also believe perhaps that if it enforces its rights against the DemStore it will preserve its rights to enforce them against others, including negative exploiters?
Enforcing trademark rights over political logos is not party specific. The Republican National Committee (RNC) threatened a similar lawsuit back in 2008 when the web-based t-shirt company CafePress sold merchandise with iconic Republican symbols.
The RNC owns federally registered trademarks to “GOP,” “Grand Old Party,” “Republican National Committee,” “RNC,” and a specific elephant design. While some shirts were clearly in support of the Republican Party, others were more critical and attacked the Republican Party.
The RNC ultimately withdrew its threats of trademark litigation after the story received too much negative publicity, but both parties argued whether the shirts and similar uses were protected as political statements under the First Amendment or whether they were commercial speech (which is afforded less protection).
Unlike CafePress, however, DemStore sells no merchandise critical of Obama or the Democratic Party. While CafePress had a strong defense in favor of use under First Amendment law and under trademark law’s parody exemption, DemStore will have no such trademark parody defense because it supports, rather that critically comments on, Obama’s reelection.
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| Merchandise sold on DemStore.com |
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| Merchandise sold by Obama for America |
Still, is there a freedom of expression defense for the defendant? It is common practice today for people to use buttons, bumper stickers, and t-shirts to express their political beliefs. In 2002, the 9th Circuit held in Mattel v. MCA that certain trademarks can become such an important part of our culture and language that the First Amendment is implicated when a trademark holder attempts to suppress expressive uses of the trademark. There the trademark in question was Mattel’s Barbie trademark. The Mattel v. MCA court articulated that “some trademarks enter our public discourse and become an integral part of our vocabulary . . . Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law.” Mattel v. MCA, 296 F.3d 894, 900 (9th Cir. 2002).
Do Obama’s Rising Sun trademarks “assume a role outside the bounds of trademark law?” Has Obama’s Rising Sun become such a vital part of this country’s political discourse that it should be in the public domain free for all to expressively use? Or is the specific use to which the DemStore is putting the mark more in the nature of commercial speech than that of a voter, supporter or commentator who decides to incorporate the mark in an illustration? Is the DemStore free-riding on the goodwill and commercial magnetism of the logos, thereby hindering a campaign fundraiser and engaging in unfair competition?
Lizbeth Hasse
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