Posted by Eugene Volokh:
Court Order Seizing Copies of Mongol Biker Gang Symbol:
http://volokh.com/archives/archive_2008_10_19-2008_10_25.shtml#1224876663
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 [1]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 [2]here.
References
1. http://volokh.com/files/mongols.pdf
2.
http://www.nytimes.com/aponline/us/AP-Biker-Gang-Busts.html?_r=2&oref=slogin&oref=slogin
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