In a case that required the US Court of Appeals for the Sixth Circuit to articulate the boundary between the Lanham Act and the First Amendment when the trademark in question is the name of a political party, the Court found that the Lanham Act can constitutionally apply to use of the mark and that the defendants were improperly using the mark as a source identifier. Libertarian Nat’l Comm. Inc. v. Saliba, et al., Case No. 23-1856 (6th Cir. Aug. 28, 2024) (Cole, Gibbons, Readler, JJ.)
The Libertarian National Committee (LNC) owns the trademark LIBERTARIAN PARTY. Party bylaws of the LNC provide a licensing regime that authorizes recognized state affiliates, such as the Libertarian Party of Michigan, to use the LNC’s mark as a source identifier.
In 2022, two top officers of the Libertarian Party of Michigan resigned, and the third most senior member, Andrew Chadderdon, became acting chair of the Michigan affiliate. Chadderdon’s promotion sparked a dispute within the affiliate over the rightful leadership of the group. The dissenting members of the affiliate voted to remove him from the executive committee and voted themselves onto the committee. The Libertarian Party Judicial Committee determined that this replacement by the dissenting members violated the bylaws. It reinstated Chadderdon and voided the executive appointments, including those of the dissenting members, that resulted from the vote. However, the dissenting members (the defendants in this case) regarded themselves as the rightful executive board members of the Libertarian Party of Michigan. Despite being told to stop using LNC’s trademarks, the defendants continued to use them to hold themselves out as the official Libertarian Party of Michigan.
The LNC sued the defendants in federal court, bringing various claims of trademark infringement, and moved for a preliminary injunction barring them from continuing to use the LNC’s mark, which the district court granted. The defendants appealed.
The primary question before the Sixth Circuit was whether the defendants’ use of the LNC mark to “solicit party donations, fill out campaign finance paperwork, advertise events, and espouse political platform positions and commentary falls within the scope of the Lanham Act.” The defendants relied on the Sixth Circuit’s 2003 decision in Taubman Co. v. Webfeats to argue that their use of the LNC mark was political speech and therefore fell outside the ambit of the Lanham Act, which regulates commercial speech. Taubman concerned Webfeats’s use of a shopping mall’s trademark in domain names by the creator of a “fan site” and later a “gripe site.” Because Webfeats’s use of the mark was not to designate source but to comment on the trademark holder, it was protected expression.
The Sixth Circuit found Taubman to be inapposite, however. Citing the Supreme Court’s 2023 holding in Jack Daniel’s Properties, the Sixth Circuit pointed out that the defendants used the LNC’s mark “to designate the source of their political services as affiliated with the LNC” and thus implicated the core concern of trademark law: use of a mark as a source identifier.
The Sixth Circuit was also unpersuaded by the defendants’ contention that their activities as a political entity did not fall within the scope of the “goods and services” protected by the Lanham Act. The Sixth Circuit pointed out that courts have long construed the Lanham Act to encompass trademark infringement by political or nonprofit defendants, not just for-profit businesses.
The Sixth Circuit found that the defendants used the LNC mark as a source identifier and not for expressive purposes, and that First Amendment protections do not apply to such uses. Furthermore, as a dissident faction of the Libertarian Party of Michigan, the defendants used the mark without a license.
The Sixth Circuit also found that the defendants’ use of the trademark in connection with the provision of political services, such as maintaining a website containing political platforms, endorsing candidates, and filing campaign finance reports, created a sufficient likelihood of confusion.
Consequently, the Sixth Circuit affirmed the preliminary injunction granted as to those activities. However, because the defendants’ website displayed clear pop-up disclaimers in connection with their solicitation of donations, the disclaimers ameliorated any potential likelihood of confusion there. The Court therefore vacated the preliminary injunction as to the online solicitation.
Practice Note: When considering whether the use of another’s mark might fall within the ambit of First Amendment protection, the key inquiry is not whether the use is political in nature, but whether the mark is used as a source identifier. At the same time, however, courts have held that the use of a clearly worded disclaimer can allay any potential confusion as to source.
