The closing months of 2009 saw the beginning of an unfortunate legal dispute in which a trademark owner, the U.S. Chamber of Commerce, ran to court to punish political activists for using its marks in a political parody. Sadly, less than a week into 2010, another trademark owner, Peabody Energy, is also using legal threats to attempt to silence criticism.
Peabody is one of a group of coal companies that has formed a Consortium for Clean Coal Utilization (CCCU) with Washington University, ostensibly to research “clean coal” methods -- much to the consternation of students and environmental activists who view “clean coal” as an oxymoron. One of those activists, Brian DeSmet, created a website spoofing the CCCU’s official site. To give a flavor of the spoof: the official site declared that CCCU's mission is to “be a resource to industry for the advancement of technologies that foster clean utilization of coal by creating an international partnership between universities, industries, foundations, and government organizations;” the spoof site declares that CCCU's goal is to “be a public relations tool for industry for the advancement of misinformation intended to manipulate the public to believe that clean utilization of coal is possible by hijacking the credibility of universities, industries, foundations, and government organizations.” The spoof site identified consortium members by name and, reasonably enough, included the members’ corporate logos.
Peabody was not amused, and sent an after-hours cease and desist letter demanding that Mr. DeSmet shut the site down by the next morning, insisting that use of logos and even references to Peabody amounted to not only trademark infringement and dilution but also defamation, product disparagement, and even unfair competition. Hoping to put a quick end to the threat, Mr. DeSmet voluntarily removed the logos and added a disclaimer, but Peabody continues to insist that it has veto power over the look and feel of the critical site.
Nonsense. As EFF has explained to Peabody at length, the spoof site is just that — a clearly parodic website that uses some of the target's trademarks as a necessary part of the parody. As such, it is protected by trademark fair use doctrine and the First Amendment. Moreover, the site is entirely noncommercial; it neither offers for sale nor even links to advertising for any goods or services. Several courts have held that noncommercial uses are exempt from federal trademark infringement claims (and they are statutorily exempt from dilution claims).
This shameless takedown is one for the books, and you can look forward to seeing it in EFF's Takedown Hall of Shame soon. As trademark expert Professor J. Thomas McCarthy observes:
some mark owners are hyper-sensitive to . . . humorous and sometimes caustic criticism. Perhaps it is because many top executives in large companies are not used to being mocked and made fun of. Therefore, they are ready, willing and able to unleash the dogs of litigation against anyone who makes fun of the symbol of their company. But the more successful and famous a company and its products becomes, the more likely it will become a societal symbol of something. . . . A certain toughening of the hide may be a more effective response than asking the courts to silence the clowning critic.
6 McCarthy on Trademarks and Unfair Competition § 31:153.
Hear, hear. It’s time for hyper-sensitive trademark owners to finally learn that the best response to critical speech is more speech, not legal threats. Using bogus trademark claims to threaten critics doesn’t persuade anyone. Instead, it simply makes the public wonder why you can’t take a joke.