ProtectMarriage.com issues Cease and Desist for Prop 8 Trial Tracker logo depicting family of two mothers with two kids
By Julia Rosen
Earlier this week we received a Cease and Desist letter from ProtectMarriage.com, demanding that we immediately take down the logo for this site. (Well actually, they demanded we take it down from the Courage Campaign site, but it was clear that they were ticked off about the Trial Tracker logo.)
They are upset that we are parodying them and are making themselves out to be victims again. It’s just ridiculous. It’s very clear that the our logo is a parody, and they are just freaking out about an image depicting a family of two mothers with two kids. The ProtectMarriage.com logo was originally used as the pro-Prop 8 logo, you know the proposition this trial is about… that little thing.
All these guys want to do is stop everything from being public. They can’t stand the fact that they are on trial, that everything from their motivations to their intent are being scrutinized by a federal judge. After successfully crying wolf to the Supreme Court about the witnesses being shown on TV, they have turned their lawyers on us, or at least a lawyer way out in Ohio.
No, we aren’t going to take it down. We will not let them bully us, or let them turn themselves into victims. And our letter back makes that clear (scroll down to see it).
Here is their letter to us in all its glory:
They are clearly thin-skinned and are determined to press this issue legally, even though they really have no basis for pursuing this. Our lawyer had a nice little chat with their lawyer yesterday, which is referenced in our shall we say, inspired, spirited letter back to them.
January 14, 2010
John M. Skeriotis
Brouse McDowell LPA
388 S. Main St., Suite 500
Akron, OH 44308
Re: Alleged Copyright and Trademark Infringement
Dear Mr. Skeriotis:
As you know, Morrison & Foerster LLP represents Courage Campaign in connection with the intellectual property matters raised in your letter of January 12, 2010. Your letter threatening legal action and demanding a response in two days is a clear attempt to abuse intellectual property laws to stifle our client’s freedom of speech, particularly as no one is likely to confuse Courage Campaign with ProtectMarriage.com merely because of our client’s parody of your client’s logo. Courts in the United States have universally rejected attempts to use trademark and copyright infringement claims to obstruct free speech and shut down parody. Should your client attempt to press the arguments raised in your letter, it will
undoubtedly see the same result.
In this case, Courage Campaign is using a parody of the ProtectMarriage.com logo to provide commentary on the Perry v. Schwarzenegger trial and the viewpoint of ProtectMarriage.com, which Courage Campaign diametrically opposes. While our client does appreciate the irony of the suggestion in your letter that a logo of a family made up of a man, a woman, and two children is “substantially indistinguishable” from a logo of a family made up of two women and two children, your assertion is incorrect. This difference between our client’s parodic logo and your client’s logo is a graphical representation of the core difference between Courage Campaign’s views and ProtectMarriage.com’s views, presented in a sassy way that will not be lost on the public. You conceded over the phone that bloggers and online commentators noted the changes from man to woman and are making fun of your client, demonstrating that the public notices the difference and gets the joke. Creative works that are designed to poke fun at another group or communicate a message by modifying the other group’s own work or style in a key respect are the very essence of parody.
A parody is a literary or artistic work that imitates the work of another for comic effect or ridicule. Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792, 801 (9th Cir. 2003). Parody is a form of criticism with socially significant value as free speech under the First Amendment. Id. at 801. Thus, when an artist released a series of photographs parodying Barbie in a way that was “ripe for social comment,” the artist “created the sort of social criticism and parodic speech protected by the First Amendment.” Id. at 803. The Ninth Circuit affirmed summary judgment against Mattel on all claims, including copyright, trademark and trade dress infringement and dilution, and state law claims. Id. at 816. Moreover, the Ninth Circuit acknowledged that a groundless or unreasonable trademark infringement claim against expression protected by policy interests in free speech may be an “exceptional case” justifying an award of fees and remanded the case to the district court for a determination of attorney’s fees. Id. On remand, the district court agreed that it was unreasonable of Mattel to make a claim against the defendant’s parodic work under both the Copyright Act and the Lanham Act, and awarded the defendant its attorney’s fees and costs. Mattel, Inc. v. Walking Mt. Prods., 2004 U.S. Dist. LEXIS 12469, at *3-11 (C.D. Cal. June 21, 2004).
This state of the law is echoed by courts throughout the country. For example, GTFM, LLC, a clothing company, sold clothing under the “FUBU (For Us By Us)” mark, meant to promote youth empowerment and leadership. It filed suit against Universal Studios, Inc. after Universal released the movie How High, in which a character wears clothing bearing the mark “BUFU,” explained as standing for “By Us F*** You.” Universal’s motion for summary judgment was granted as to all counts of the Complaint, “pursuant to the substantial body of case law establishing ‘safe harbors’ for this form of comical expression. Parodies of trademarks necessarily incorporate the original mark’s likeness in order for consumers to get the joke.” GTFM, LLC v. Universal Studios, Inc., 2006 U.S. Dist. LEXIS 30192, at *6-7 (S.D.N.Y. May 16, 2006).
Similarly, when the World Wrestling Federation (“WWF”) filed suit against Big Dog Holdings, Inc. for the latter’s use of phrases such as “Open up a Can of Woof-A**,” take-offs of WWF trademarks such as “Open up a Can of Whoop A**,” the court held that this “obvious joke” was parody protected by the First Amendment, and there was no likelihood of confusion. Judgment was entered against WWF. World Wrestling Fed’n Entm’t Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d 413, 435-36, 446-47 (W.D. Pa. 2003). Furthermore, it is not necessary for a parody to “state the obvious” – it is only necessary for a parodic element to “reasonably be perceived.” Mastercard Int’l Inc. v. Nader 2000 Primary Comm., Inc., 2004 U.S. Dist. LEXIS 3644, at *40 (S.D.N.Y. Mar. 8, 2004) (granting motion for summary judgment against claims of trademark and copyright infringement in their entirety).
When viewed in context, even beyond the parodic difference between the logos, there is absolutely no likelihood of confusion, which must be shown to carry a trademark infringement claim. See Two Pesos v. Taco Cabana, 505 U.S. 763, 769 (1992) (it is undisputed that trademark liability for unregistered marks requires proof of likelihood of confusion). As your letter notes, our clients are completely opposed in viewpoints. Visitors to both our clients’ websites are well aware of this fact. You even suggested on the phone that you are not taking the position that anyone is going to mistakenly donate to our client. Your client uses its logo on a website that prominently displays “ProtectMarriage.com” and other key statements of its position opposing gay marriage. Our client uses its parodic logo only in the banner of a website that displays, “Perry v. Schwarzenegger: Holding the right-wing accountable” and “A Project of Courage Campaign Institute.” There is no risk that existing or prospective supporters of our clients’ respective campaigns will be confused about Courage Campaign’s views, nor is there any likelihood that prospective supporters of your client’s campaign will accidentally visit our client’s website and believe that it is somehow affiliated with ProtectMarriage.com.
We are confident, for the reasons outlined above, that the allegations in your letter are without merit and an attempt on your client’s part to seek legal remedies would be easily defeated, likely with an award to our client of attorney’s fees and costs.
This letter is not intended to be a recitation of all of the facts or law pertaining to this matter or all of our client’s possible defenses. As you are aware, we were retained only yesterday, and you insisted today upon an immediate response. Accordingly, we have not yet had an opportunity to address every allegation in your letter. We are sending this letter now as
requested to prevent the filing of a precipitous and meritless legal action. Nothing in this letter should be construed as a waiver of any rights by Courage Campaign, all of which are expressly reserved.
Very truly yours,
/s/ Nathan B. Sabri
Nathan B. Sabri
Who knew lawyer letters could be so damn entertaining? Stay tuned as we await their next move.
To see the logos side-by-side, read this follow-up post.
By Julia Rosen
One benefit of Perry v Schwarzenegger is the defendants have to set aside the fears, lies and hyperbole used in political campaigns and instead focus on logic, reason and facts. The other side has been very successful on the ballot talking about everything but marriage, from kids in schools to churches non-profit statuses. This court case forces them to focus on the law and a few fundamental questions. Jenny Pizer from Lambda Legal writes over at LGBT POV:
These questions include: How rigorous should the constitutional analysis be of laws that discriminate against gay people? Should such laws be presumed invalid like laws that treat people differently based on sex, race, nationality or religion, such that weighty public purposes are required to justify them? Should sexual orientation discrimination be considered a form of sex or gender discrimination such that more searching review is warranted for that reason? Do gay people have the same basic right to marry the person they love that straight people have?
By contrast, a few days ago “Yes on 8″‘s general counsel Andy Pugno penned a long, meandering email for the Protect Marriage list, which reads in part:
What is at stake is whether voters can rationally conclude that traditional marriage is a unique institution that promotes important interests respecting natural childrearing, and that those interests are broader than the personal, private interests of the adults involved. And what is at stake is whether voters may consider their own moral and religious views about marriage – or any other subject – when casting their ballots.
There is a lot to unpack in this short paragraph. Let’s start with the voters. In many respects, the voters’ thinking is not in question during this trial. It does not matter much how rational or irrational they are, or what they conclude. Voters are allowed to use any reasoning they want to make their decisions at the ballot box, but in this case, did their decision on Prop 8 violate the constitution? Olson and Boies will argue that it did throughout this trial.
Most of the political campaigns have stayed away from uniqueness of straight relationships. It’s not a winning message to talk LGBT relationships not being the same or as good as straight relationships. But this trial will consistently expose the full beliefs of anti-equality advocates: that gay relationships are not as meaningful, do not provide as good an environment for child rearing and that the larger society does not benefit from recognizing and supporting those relationships. That’s why they are so eager to hide this trial as much as possible from the public. They know that Americans by and large will not agree with them.
In the heat of the campaign, there is no way that phrases like “natural childrearing” would ever make it into their communication. It is a direct attack on the fitness of LGBT parents. While Pugno does not state it here, he clearly believes that gays should not be allowed to have children because it is “unnatural”. We are likely to see the defendants argue that LGBTs provide an inferior environment for child-rearing, something that has consistently been rejected in courts around the country. That’s unlikely to stop them however.
There is much more to unpack from Pugno’s rant, after all that was just one paragraph out of fifteen. So keep checking back for more posts as we continue to track the right-wing’s reactions to Perry v Schwarzenegger.