October 14, 2005
Trademark Seminar – Paper Outline
Amy L. Markowitz
I. Introduction
During the past few decades, it has become fairly common for American politicians to
appropriate famous trademarks for use in their own political speeches and advertisements.
Though the commercial owners of these marks frequently send letters protesting such use, these
cases are rarely litigated and, when they are, courts have been reluctant to find political
defendants liable for trademark infringement.
The bases for these decisions have been numerous and varied, however. In some cases,
the court analyzed claims under traditional likelihood of confusion analysis, finding that because
the trademark owner’s product and the political use were so different, there was little or no
chance that even the most unsophisticated consumer would believe one was sponsored by the
other. In other cases, the court used dilution analysis and concluded that political speech is an
exempt, noncommercial use and, even if it were not, that there was no actual dilution, thus
political defendants could not be held liable.
This latter holding may be undercut if the latest proposed amendments to the FTDA are
passed, however, since they would return the evidentiary standard to likelihood of dilution, as
opposed to Moseley’s requirement of actual evidence of dilution. This could make it more likely
that courts will find political speech diluting, though the amendment also codifies a fair use
defense for purposes of parody and criticism, which may help political defendants. I will
examine both possibilities in the paper, as well as whether there should be a common law or
statutory defense to trademark infringement specifically for use in political speech.
I believe such an exemption would be in the interest of public policy, since parody and
satire of famous marks in political speech increases the amount of attention the American public
pays to political messages. In this respect, such uses really are the rare example of “good free
riding,” and should be allowed to continue. The appropriate response by trademark holders who
disagree with a political use of their mark is not to suppress political speech, which has long been
recognized as the most valuable form of speech in our society, but rather to counter it with more
speech. Companies with the huge advertising and public relations budgets needed to create such
strong marks in the first place should have no problem making their voice heard in the public
arena.
II. Political Speech v. The Property Rights of Trademark Owners
A. History/legal precedent for treating political speech as most valued and most protected
form of speech.
B. Trademark Theory and Political Use
1. Traditional: The classic justifications for trademark protection - consumer
protection and lowering consumer search costs - do not apply in the political
context. There is little or no likelihood of consumer confusion.
2. Property Based: The true basis for protecting trademarks from use in political
context is an anti-free riding principle. But in a materialistic society where
product advertising reigns supreme, perhaps this is a desirable form of free riding,
since it may enable citizens to relate to and become engaged in politics in ways
that they hadn’t been before.
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III. Case Studies - Trademark Use in Political Speech
A. Not Litigated Examples
1. Walter Mondale - Asking his opponent, Gary Hart, during the 1984 presidential
primary, “Where’s the beef?” (from Wendy’s ads)
2. Michael Dukakis - Calling his presidential opponent, George H.W. Bush, the
“Joe Isuzu of American politics.”
B. Trademark Use as a Source Identifier (not permissible)
1. United We Stand America, Inc. v. United We Stand, America New York
C. Trademark Used in Communicative Message
1. Commercial use
2. American Family Life Insurance Company (AFLAC) v. Hagan
a. Ads were not parodies
b. AFLAC failed to show likelihood of consumer confusion
i. Low degree of similarity of “TaftQuack” character and AFLAC
duck (though court found Hagan did engage in some copying or
“palming off” of AFLAC’s marks)
ii. No intent to confuse
iii. Little competitive proximity
c. Dilution
i. Commercial v. Noncommercial use
* AFLAC argues when use is mixed commercial and
noncommercial, exemption should not apply
* “If parody is protected by the noncommercial use
exemption, then political speech certainly is.”
- Court held noncommercial use exemption from
FTDA was meant to refer to speech protected by the
First Amendment.
- Campaign contributions are speech in themselves,
so no mixed commercial/ noncommercial use here.
d. Alternative Avenues of Communication - Not relevant when property
involved is “a form of intangible property that itself conveys or
symbolizes ideas.”
i. Contrast with Mutual of Omaha, where court dismissed parody
& First Amendment arguments because there were other ways to
make the same point without using Mutual’s mark.
3. Georgia Senator Mack Mattingly campaign (also used AFLAC duck in
campaign and was sued)
4. Mastercard International Inc. v. Nader 2000 Primary Committee
a. No likelihood of consumer confusion (court uses Polaroid factors
balancing test).
i. For Π: Strong mark, and high degree of similarity
ii. For Δ: No proximity of products, very unlikely Mastercard
would “bridge the gap,” no evidence of actual confusion or that
Nader wanted to falsely indicate he was endorsed by Mastercard
(no bad faith).
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iii. Consumer Sophistication: Court noted “it is reasonable to
conclude the general American public is sophisticated enough to
distinguish a Political Ad from a commercial advertisement.”
b. Dilution
i. Noncommercial speech: Court agrees with AFLAC court that
this type of use is noncommercial speech, noting that “The
legislative history of the Lanham Act clearly indicates that
congress did not intend for the Act to chill political speech.”
ii. Even if it was commercial speech, court continues, there is no
evidence of actual dilution, thus no liability under FTDA.
5. Citizens United (also used “Priceless” ad format in an anti-John Kerry ad called
“Man of the People”)
6. FOX News Channel v. Al Franken (use of “Fair and Balanced” motto in his
book title)
IV. A Need for Reform?
A. H.R. 683 - Proposed FTDA Amendments
1. Evidentiary Standard - Will this make it easier to find politicians liable for
trademark dilution?
2. Parody, Criticism and Comment Exemption - Does this apply to such satiric
uses?
B. Common Law or Statutory Exemption
1. Compare to political candidate exemption from national Do Not Call List.
2. Is such an exemption even necessary, given favorable precedent?
V. Conclusion
In all of these cases, there was no untruthful speech and a very low likelihood of
consumer confusion (as the dissent in Mutual of Omaha noted, association is not the same thing
as confusion), thus the traditional justifications for trademark protection don’t apply. Trademark
owners sought relief based on a property theory of entitlement, but the rights of political speakers
must be protected more diligently than those of commercial trademark owners. Traditionally,
the remedy for unwelcome speech is more speech, not suppression. Famous mark holders almost
always have the resources to make their voices heard, but political speakers, particularly
minority speakers such as third party candidate Ralph Nader, don’t always have such
opportunities. That is why they choose to piggy-back on the popularity of famous marks because it is an effective means of getting people who wouldn’t normally pay attention to take
notice of their message. Minority speech such as this must be protected, otherwise dissent and
alternative views will disappear altogether. When balanced against the property rights of a
strong trademark holder, the nation’s interest in protecting political speech should prevail.
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Bibliography
Primary Sources:
Mastercard International Inc. v. Nader 2000 Primary Committee, 2004 WL 434404 S.D.N.Y.
(2004).
American Family Life Insurance Company (AFLAC) v. Hagan, 266 F.Supp.2d 682 (N.D. Ohio
2002).
United We Stand America, Inc. v. United We Stand, America New York, 128 F.3d 86 (2d Cir.
1997).
Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397 (8th Cir. 1987).
Secondary Sources:
Michael K. Cantwell, Confusion, Dilution and Speech: First Amendment Limitations on the
Trademark Estate: An Update, 94 Trademark Rep. 547 (2004).
Robert S. Weisbein & Nadine Farid, Trademark Usage in Political Advertising: False
Endorsement or Free Speech?, Intellectual Property Today, Sep. 2003, at 30.
Bob Geiger, Four Years Later, ‘Priceless’ Ad Parody Still Pushing Hot Buttons, Finance &
Commerce, Mar. 16, 2004.
Stacy Grossman, Political Parody During Presidential Campaigns: IP Owners Aren’t Laughing,
New York Law Journal, Oct. 12, 2004, at S2.
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