Court Refuses Ron Paul Campaign’s Attempt to Subpoena Identity of Video Author

The opinion (Ron Paul 2012 Presidential Campaign Committee, Inc. v. Does (N.D. Cal. Mar. 8, 2012)) also in the process rules — correctly, I think — that signing one’s video “Vote Ron Paul” doesn’t violate federal trademark law, because it’s not a “commercial use”:

Plaintiff argues that it has met the Lanham Act’s commercial use requirement for two reasons: (1) Defendants used a Twitter account to post the video on YouTube and both of these websites are commercial in nature; and (2) the video was intended to frustrate Plaintiff’s fundraising efforts and increase the amount of money contributed to Presidential nominees other than Ron Paul.

The first reason is meritless. Plaintiff essentially argues that any individual who uses a commercial website — whether it is to post a video on YouTube or send an e-mail through Gmail — has automatically satisfied the commercial use requirement under the Lanham Act. While it is true that the websites for both Twitter and YouTube may have commercial purposes, it is Defendants’ conduct that is at issue here. And it is this conduct that in some way must be connected to the sale of goods and services for the Lanham Act to apply. Accordingly, Plaintiff’s first reason does not persuade the Court that Defendants’ own use of Plaintiff’s trademark was in a “commercial or competitive context.” See Stanislaus Custodial Deputy Sheriffs’ Ass’n v. Deputy Sheriff’s Ass’n of Stanislaus Cnty., 2010 WL 843131, at *7 (N.D. Cal. Mar. 10, 2010).

Plaintiff’s second reason requires a closer analysis. The Court agrees with Plaintiff that Bosley [a Ninth Circuit precedent] does not directly address the question of whether an individual who improperly uses the trademarked name of another politician to express an opinion has done so in a commercial context that satisfies the requirements of the Lanham Act. But Bosley does explain that “[T]rademark infringement protects only against mistaken purchasing decisions and not against confusion generally.” Bosley goes on to stress that the “appropriate inquiry is whether [the defendant] offers competing services to the public.” See also Stanislaus, 2010 WL 843131, at *6 (analyzing Bosley and other cases to find that “if an actual sale of goods is not involved, the infringer must be engaged in some form of commercial competition”). The District Court in Utah summarized the Tenth Circuit’s view on this issue as follows:

In our view, the defendant in a trademark infringement and unfair competition case must use the mark in connection with the goods and services of a competing producer, not merely to make a comment on the trademark owner’s goods and services …. Unless there is a competing good or service labeled or associated with the plaintiff’s trademark, the concerns of the Lanham Act are not invoked.

Koch Indus., Inc. v. Does, 2011 WL 1775765, at *3 (D. Utah May 9, 2011) (citing Utah Lighthouse Ministry v. F.A.I.R., 527 F.3d 1045, 1054 (10th Cir. 2008). In Koch, the defendants created a website that impersonated the plaintiff’s company website, and then issued a press release that contained a political message and was designed to appear as coming from the plaintiff. The Koch Court dismissed the plaintiff’s Lanham Act claims for failing to meet the commercial use requirement, explaining that the defendants’ “press release and fake website did not relate to any goods or services and were only political in nature.” Koch specifically rejected the plaintiff’s theory that the defendants issued the press release to attract more contributions to their activities since the defendants never even identified themselves in their press release or fake website.

While Koch is not exactly analogous to this matter, it — as well as other decisions in the Ninth Circuit — establish that a critical issue in this analysis is whether the trademark infringer is alleged to have offered any competing services. Plaintiff does not address this issue in its amended ex parte application. And the Court’s review of the video shows that Defendants did not identify themselves as a competing organization and did not solicit any contributions. More importantly, and why Plaintiff’s request for expedited discovery is denied, the complaint does not contain any allegations that Defendants released the video to compete with Plaintiff.

Paul Alan Levy (Public Citizen) has more on the subject; Public Citizen was the lawyer for the defendants.