pageok
pageok
pageok
Court Order Seizing Copies of Mongol Biker Gang Symbol:

The federal government is prosecuting many members of the Mongols biker gang for a wide range of very serious crimes. But the unusual twist is that the Mongols symbol was apparently officially trademarked by the Mongols, the federal government is seizing the trademark as an asset, and a federal court has just ordered the criminal defendants, plus their "family members[] and those persons in active concert or participation with them," to

surrender for seizure all products, clothing, vehicles, motorcycles, books, posters, merchandise, stationery, or other materials bearing the Mongols trademark.

This strikes me as unjustified by trademark law, and violative of the First Amendment. The First Amendment first: The court is ordering the seizure of certain expressive materials -- materials that contain a particular symbol -- precisely because they contain that symbol. These materials don't constitute commercial advertising, which is less protected under the First Amendment than is other speech. (Trademark law is often justified because it tends to apply to commercial advertising, but this isn't so here.) Nor do they fit within any First Amendment exception.

It's true that the symbols could be used in certain ways that are constitutionally unprotected, for instance if someone is using the symbol to communicate to people in a particular criminal conspiracy (e.g., "you'll know your drug courier because he'll be wearing a Mongols patch on his right front pocket"), or to convey what the law views as a "true threat" to a particular person. The same can be said of swastikas, Confederate flags, or peace symbols. But that would justify punishing the people who are using the symbol in a particular illegal way, upon proof that they are so using it -- not a demand that all copies of the symbol be surrendered. (Likewise, if someone is convicted of a crime, his speech may be restricted even while he's not in prison but is out on probation or parole. But that, too, requires a criminal conviction, and not just being indicted, or being a family member of an indicted person.)

Now courts do allow the seizure of trademarked goods, generally goods that are intended to be sold, when the goods were produced without the trademark owner's permission. In some situations, that's clearly constitutionally permissible, for instance if a store is selling counterfeit trademarked clothing. The counterfeit trademark conveys false information to the consumer about the origin of the clothing, and thus the products as they are displayed by the seller qualify as constitutionally unprotected false commercial advertising (here, the trademark displayed on the clothing in the store is itself advertising for the clothing).

In other situations, the First Amendment justification for seizures of trademarked goods may be less clear. But in any case, the rationale is that the goods were produced without the trademark owner's permission, and are thus contraband. Here, unless I'm missing something, the goods were produced with the Mongol Nation's blessing; it's just that the new temporary (and perhaps eventually permanent) owner of the trademark now wants to stop their use.

I'm not a trademark law expert, but I'm pretty sure the new owner -- whether government or not -- isn't authorized by trademark law to bar such uses. For instance, if you bought a USC T-shirt with USC's permission (or got it for free from USC), and now USC's trademark is acquired by someone else who doesn't want the T-shorts worn, the new owner can't retroactively claim all the shirts are contraband.

The new owner might be able to bar the commercial manufacturing and distribution of new shirts with the symbol. But it certainly can't stop the wearing of shirts that had already been produced and distributed with USC's blessing. And it probably can't even stop the resale of such shirts (or other materials), because the first sale doctrine allows someone who lawfully acquired trademarked goods to resell them (at least so long as the resale isn't misleading).

Nor does trademark law, to my knowledge, have any doctrine that somehow avoids these results when the initial trademark owner committed various crimes, or when the trademark symbolizes criminality. At most, trademarks that are associated with crime could be denied registration because they are "immoral or scandalous," but that would limit the rights of trademark owners who want to sue for infringement -- it wouldn't increase anyone's power to block the wearing of such marks.

It's not clear to me that the government can ever use intellectual property law simply to suppress symbols that the government thinks (even rightly thinks) are supporting and promoting evil behavior. In such a case, the Court's justifications for essentially recognizing intellectual-property-based exceptions to First Amendment protection (e.g., preventing consumer confusion, maintaining some commercial property owners' rights to control the associations of their trademark, providing an incentive to create, and the like) wouldn't apply, and I don't think the exceptions should apply either.

But in any event, even if the government has exactly the same power to enforce seized trademarks, for any reason it wishes, as a private property owner would have to enforce its trademarks, I don't see how the power would extend to this situation.

Finally, I should stress that none of this is a criticism of the general prosecution of the Mongols -- it sounds like many of them committed very serious crimes, and they should be seriously punished for them. But I don't want to see this case become the occasion for further broadening of intellectual property-based speech restrictions, or for the recognition of a government power to suppress symbols (even ones that symbolize bad organizations, and that are often used by bad people).

For a newspaper account of the matter, see here.

Related Posts (on one page):

  1. Order Against Family Members:
  2. Court Order Seizing Copies of Mongol Biker Gang Symbol:
Kazinski:
And what would be wrong with the government siezing the USC trojan logo and required everybody to surrender trojan logo goods. You say that like its a bad thing.
10.24.2008 4:47pm
cboldt (mail):
Trademark enforcement is ostensibly to protect the public's right of accurate association between the mark and a certain "quality" of goods or services. Loss of trademark generally results in a loss of power to the trademark holder, to enjoin others from using the same or similar mark. Lack of trademark doesn't prevent using a mark, it prevents limiting the use of the mark.
.
Is the federal government prohibiting everyone in the world from using this mark in interstate commerce, or just certain individuals? Are there parallels where gang members are enjoined from using gang symbols?
10.24.2008 4:50pm
Aultimer:
Any brave DeCSS t-shirt owners wanna try again with a Mongol's 3 piece patch?

FYI - outlaw bikers protect their "colors" with extreme and quite extra-legal means - they'll go farther than a Republican candidate on election eve protecting Old Glory.
10.24.2008 5:17pm
Dilan Esper (mail) (www):
Kazinski:

Professor Volokh would have used UCLA as his example, but he knew it wouldn't be realistic because nobody wants to wear UCLA gear.
10.24.2008 5:31pm
Stolidus:
Well, I am not a lawyer, but I find the order for seizure of "...books...or other materials bearing the Mongols trademark" to be rather surprising.

Imagine that, for instance, a private party bought the rights to the Enron logo after the company collapsed (it probably could have been had pretty cheap). Could that company then seize every letter written on company letterhead under the theory that they are all now unauthorized uses of the logo?

This really seems like a bit if an overreach, particularly if applied the the private property of "family members" who are not charged with anything.
10.24.2008 5:57pm
Eugene Volokh (www):
Dilan: UCLA would add the extra complexity that UCLA is itself a government actor, and might (or might not, it's not clear) be limited in its ability to enforce its trademark as a result.

Stolidus: I'm troubled in principled about the books matter, but I'm not sure there really are, in this particular case, any Mongols books. But if there are, then a requirement that they be surrendered because they contain the logo would be even more clearly wrong.
10.24.2008 6:07pm
Karl Lembke (mail) (www):
This order strikes me as ripe for abuse.

One of my neighbors parks his pickup truck in front of my house on a constant basis. If I paint the Mongol's symbol on it and then call the police, will it be towed away?
10.24.2008 6:08pm
ShelbyC:

One of my neighbors parks his pickup truck in front of my house on a constant basis.


Why can't he do that anyway? It's a public street, right? I never understood why people think they own the parking spot in front of their house.
10.24.2008 6:33pm
Don Miller (mail) (www):

One of my neighbors parks his pickup truck in front of my house on a constant basis. If I paint the Mongol's symbol on it and then call the police, will it be towed away?

It would be an interesting test of the order and civil disobediance is someone were to get a bunch of Mongol Stickers and run around putting them on every vehicle, building, movable object they could find.

Would the Government realize the futility of the order or would they try to seize all the objects so tagged?
10.24.2008 7:13pm
ShelbyC:

It would be an interesting test of the order and civil disobediance is someone were to get a bunch of Mongol Stickers and run around putting them on every vehicle, building, movable object they could find.




Too much work. Just put them on the judge's car.
10.24.2008 7:34pm
Dilan Esper (mail) (www):
Dilan: UCLA would add the extra complexity that UCLA is itself a government actor, and might (or might not, it's not clear) be limited in its ability to enforce its trademark as a result.

I know, I know. But they would revoke my privileges at USC if I didn't trash talk you guys once in awhile.
10.24.2008 8:16pm
MLS:
Since a trademark owner is not permitted to transfer a trademark "in gross", I am quite surprised that the DOJ appears to believe a trademark is a species of property separate and distinct from the goods or services with which it is associated.

In the event of appeal I would expect the transfer be rescinded and perhaps replaced with direction that the mark be considered for cancellation by the USPTO (Note: state registrations may also be impacted, but the facts do not note if any such registrations exist).

As for subsequent use of the mark by either the principals or others, it seems to me that the First Amendment looms ahead as a major bump in the road.
10.24.2008 8:39pm
Porkchop:
Kazinski wrote:

And what would be wrong with the government siezing the USC trojan logo and required everybody to surrender trojan logo goods. You say that like its a bad thing.

As a new USC parent, I have discovered that I now wear one of the most expensive logo baseball caps in the country. Not that I like the price, but now that I paid it, "Molon labe."
10.24.2008 10:10pm
Point of Fact:
I have no knowledge of the case at hand, but once heard some testimony at a trial involving a different outlaw biker gang. In that one, 1)the gang had a trademark for their actual name and patch emblems, 2)they never allowed friends/fans/family to own or wear anything with the actual name/patch emblem, and 3)they didn't even let actual members own anything with the actual name/emblem - you might be given a patch, but ownership was retained by the gang, and must be returned if you left the gang. Members signed contracts to this effect when they joined.

Given that set of facts, perhaps it is reasonable to presume that any patches etc. extant at the time of the seizure were owned by the gang. That would mean, if an officer sees a patch, it must have been produced prior to the seizure of the trademark, and so be contraband, or after, and also contraband (assuming the govt grants no licenses).

I don't know about seizing a motorcycle with a painted emblem. I would point out that the gang (the one in the trial I saw) certainly would have seized such a motorcycle if a member left. As for tattoos, the gang at the trial I saw only required them to be covered with another tattoo. According to 'Under and Alone' by William Queen, the Mongols mask tattoos of anyone leaving .... by branding.
10.25.2008 12:03pm