Imagine being a corporate executive awakening on Sunday morning to a Tsunami of media images of White Supremacists, KKK and Neo-Nazis embroiled in violent protests and, right there on the internet, newspapers, magazines and TV is your company’s trademark logo being worn as a symbol by these thugs. The sinking feeling is easily imaginable. But fear not because trademark law can save the day!
If you were following current events, this actually happened in Charlottesville during the so-called “Unite the Right” protests. One group of enterprising Neo-Nazis from Michigan has co-opted the Detroit Red Wings logo (above left) for their insignia (worn, for example on a collar). The group known as the Detroit Right Wings (above right) has copied the logo, but replaced the “spokes” on the wheel with repeating “SS” symbols.
On a conventional trademark infringement level, the Detroit NHL franchise may have problems winning a case. One must prove a “likelihood of confusion.” Commonly, this is referred to as “passing off:” the act of passing the junior party’s goods/services as emanating from the senior user. Since it would be hard to prove that any consumers were confused into joining the Neo-Nazi group believing it to be sanctioned by the NHL club, success would probably be unattainable.
However, with the 2006 Federal Antidilution Act, a trademark owner can now sue for dilution of its trademark through tarnishment. Trademark dilution is the concept that a non-authorized user may appropriate an owner’s registered mark for what would otherwise be non-infringing purposes (i.e., no likelihood of consumer confusion), but still causes harm to the owner’s brand through blurring (diminished distinctiveness of a famous trademark) or tarnishment (associating the owner’s trademark with goods or services that degrade the positive aspects of the brand).
Dilution through tarnishment has typically been recognized when a mainstream, famous brand is co-opted by junior users on sex-related products/services: Sex shop held to tarnish VICTORIA’S SECRET.
Or on illicit drug related items: Poster held to tarnish COCA-COLA
However, there is probably no better example of dilution of your brand than when it is appropriated by Neo-Nazis. That is about as derogatory as it gets.
Many dilution through tarnishment cases have a “free speech” defense since there is often motivation to parody or satirically comment on the brand owner’s mark or product. Yet, in the Detroit Right Wings scenario, there appears to be no such intent. Thus, the Neo-Nazis will likely have a tough time getting around a dilution through tarnishment claim.
Practically, the NHL club may have some hurdles to overcome. Neo-Nazis are not necessarily known for having a stable presence. The group does not appear to have a formal, corporate structure. It will be difficult to serve the group with process; instead, it may be necessary to serve each of the members. No doubt, this is a daunting prospect since one would expect the group’s members to react to a summons the same way that roaches react to the light: by scattering and hiding.
Of course, the likelihood that the NHL club could actually recover damages is probably wishful thinking. Nevertheless, the public statement of a lawsuit coupled with a list of John Doe defendants could lead to an injunction that might prove useful as the NHL club seeks to rein in the theft of its identity. Sometimes, for a trademark owner, the most important thing is to make a statement that it will not permit its goodwill to be associated with those espousing such hate and vitriol. Stay tuned.