United States: Political Speech, Trademarks And The Definition Of "Goods Or Services"

Last Updated: June 3 2015
Article by David A. Kluft

Last month witnessed the resolution of two trademark infringement cases involving the relationship between political activities and the definition of "goods or services." On May 18, 2015, State Senator Steve Hershey gave up his right to appeal to the Fourth Circuit from the District of Maryland's decision that he was infringing the Hershey Chocolate trade dress. On May 19, 2015, however, the Fourth Circuit overturned the case on which the District of Maryland had been relying. Did the Senator settle one day too early?

Hershey v. Hershey

As we previously reported, the Hershey Chocolate Company had accused Maryland State Senator Steve Hershey of violating its trade dress on numerous occasions over the years because the Senator's campaign posters looked like giant chocolate bars. In 2014, the Chocolate Company sought an injunction. The District of Maryland granted it, and then subsequently denied Senator Hershey's motion to dismiss.

Senator Hershey had argued, among other things, that his use of the Chocolate Company's trade dress for political speech could not satisfy the elements of trademark infringement because it was not "in connection with the sale, offering for sale, distribution or advertising of goods or services."  The District of Maryland, relying in part on the Eastern District of Virginia's opinion in Radiance Foundation v. NAACP, disagreed and held that the term "goods and services" includes "political activities."

On May 18, 2015, having lost two motions already, Senator Hershey entered into a Consent Order by which he promised to stop using the Chocolate Company's colors and font.

Radiance Redux

But on May 19, 2015, the very next day, the Fourth Circuit reversed the Eastern District of Virginia's earlier decision in Radiance Foundation v. NAACP. As we have previously reported, this case involved an anti-abortion group which used the term "National Association for the Abortion of Colored People" when referring critically to the NAACP on billboards and in the titles of articles posted on the internet. The Eastern District of Virginia had enjoined this speech at least in part on the grounds that the mark was being used in a confusing manner and "in connection with . . . goods and services," specifically because the articles were posted on websites that contained "Donate" buttons soliciting funds for the Radiance Foundation.

In reversing the District Court on this issue, the Fourth Circuit focused on the "in connection with" requirement, which it held was not satisfied because there was not a sufficient nexus between the use of the mark and any commercial activity. Here, the request for donations was "off to the side and did not itself use the NAACP's marks in any way." In other words, just because there was a transactional component somewhere on the website, that alone was not enough to satisfy the "in connection with" prong.

Did Senator Hershey Settle One Day Too Soon?

So, would the Fourth Circuit's decision have changed the outcome in Senator Hershey's case? Maybe, but probably not for at least three reasons.

First, the cases are distinguishable. The Radiance Foundation, unlike Senator Hershey, was engaged in expressive parody or, at the very least, satirical criticism of the NAACP, activity at the heart of the First Amendment. Also, Senator Hershey was using the Chocolate Company's trade dress as a source identifier ("Hey, vote for me, the source of this cool poster!"), whereas the Radiance Foundation was using the NAACP mark in the title of critical articles. The Fourth Circuit, adopting at least some of the logic of Rogers v. Grimaldi, noted that consumers expect titles to refer to the content of a work, not its source.

Second, the Fourth Circuit did not "go so far as to say that social commentary solicitations can never be the subject of a valid infringement claim." While political speech with only "some strained or tangential association" to a solicitation for funds should be protected from Lanham Act liability, that is not necessarily the case for less "strained or tangential" connections. Examples hinted at by the Fourth Circuit include circumstances where the defendant solicits donations in connection with a domain name containing the plaintiff's mark, or where the defendant uses the mark in such a way as to suggest that the mark owner is the recipient of those donations.

Third, the Fourth Circuit did not decide the ultimate question at issue in the Hershey case: to what extent is "political activity" a "good or service?" Beyond stating that "policy stances are neither goods or services, though the means of conveying them may be," the Fourth Circuit declined the opportunity to establish a more practical definition.  "Despite the need to reconcile the reach of the Lanham Act with First Amendment values," the Fourth Circuit stated, "'goods or services' remains a broad and potentially fuzzy concept."

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