twistedlibrarian writes “When he launched the ASU Underground, a student newspaper at Arizona State University, in January, Ben Powers wanted the paper to be an independent student voice on campus.
As far as ASU’s legal department is concerned, the Underground is not independent enough.
On Feb. 9, the Underground received a cease and desist letter from counsel representing the university, demanding that the two-month-old Underground remove the acronym “ASU” from its masthead and on its Web site.
ASU will lose.
ASU is likely going to lose this one if my analysis is correct. There is an article in the publication IP Litigator titled Trademarks and the First Amendment: the delicate balancing of property rights and free speech rights in works of artistic expression.
The article discusses the Mattel Inc. v. MCA Records Inc. case (Citation: 296 F.3d 894) where Mattel sued the band Aqua for the song “Barbie Girl”. Mattel lost in the Federal Court of Appeals. From the article The Ninth Circuit held that the band’s use of Mattel’s BARBIE trademark was not an act of infringement because the title was relevant to the underling work and did not mislead as to the source of the work. In so doing, the court reinforced the prevailing standard that the Lanham Act can only prevent the use of a trademark as the title of an artistic work when the public interest in avoiding consumer confusion outweighs the public interest in free expression.
The public interest in this case is the ability to communicate and critique a university. The consumer confusion is that someone might think the ASU underground site is run by ASU. I think that a court will find that the likely hood of confusion is low and that the public interest in free expression will outweigh the possibility of public confusion. End result: student wins, university loses. The student that runs the ASU underground needs to get a copy of the article listed above so that they can give it to their attorney to study.
Complete citation: IP Litigator, March-April 2003 v9 i3 p42(1)
Article title: Trademarks and the First Amendment: the delicate balancing of property rights and free speech rights in works of artistic expression.
Note: You can click on the link above to the citation for the Mattel case. The case will display in pdf and it is well worth a read.