Boy Scouts and Olympics Get Extra-Special, Speech-Quashing Treatment From CongressAugust 26, 2013
In the past Congress has granted certain organizations, such as the Boy Scouts of America and the Olympics special treatment when it comes to the use of names and logos. But with today’s trademark laws, isn’t it time to revisit the use of the law?
About a year ago, Samantha Matalong Cook and a number of her
friends decided to start an organization that would teach their kids how to
make, build, and hack various types of technology. They called the group “Hacker Scouts,” and as they got
underway, they started getting interest from thousands of parents around the
country, all interested in joining or starting local chapters of their own.
Soon, the Hacker Scouts applied for a trademark in their name. And since you’ve
read the title of this post, you know where this is
The Boy Scouts of America (“BSA”) sent
them a cease-and-desist letter, saying they couldn’t call themselves
“scouts.” This is ridiculous—the BSA doesn’t get to own the word
“scout” for the purpose of naming organizations. Of course, they’ve
gone to court to make that argument before, and have had some success (and
some failure) with it— but it seems that, according to them, no youth
organization but theirs (with the exception of the Girl Scouts) gets to use the
words “scout” or “scouting.”
Trademark lawyers might at this point start thinking about
how likely it is that someone might see the name “Hacker Scouts” and
be confused as to whether or not the group was affiliated with BSA. That’s a
necessary part of a court making a decision on trademark infringement—the
“likelihood of confusion.” They might want to discuss whether “Boy
Scouts” or “scouts” are generic, descriptive, or suggestive. But
these questions might be less relevant than it seems at first.
Favored Organizations With Super-Trademark
That’s because the BSA isn’t relying (just) on trademark
law, but the fact that Congress has given them a special-purpose law in
1916, which grants the organization
the exclusive right
to use emblems, badges, descriptive or designating marks, and words or phrases
the corporation adopts…
And courts have said that this means that the normal
trademark standards—including safeguards that can prevent trademarks from
overreaching and preventing legitimate uses of words—don’t apply. Read
literally, the language of the statute would seem to indicate that the BSA
could sue Disney for a song named “Be Prepared,” or adopt some new
word or phrase as theirs and run with it, preventing anyone else from using it
even if no one could possibly confuse the two.
The Boy Scouts aren’t the only organization given this
particular Congressional largesse. The U.S. Olympic Committee also has special rights in its
name, the Olympic rings and other symbols, and the words “Olympics,”
“Olympiad,” and even “Pan-American.” It famously wielded
those rights in a Supreme
Court case that forced a San Francisco athletic association to change the
name of its event from the Gay Olympics to the Gay Games (an incident that
makes you wonder how such a case might be decided today, with better-developed
case law on trademark parody and a clear reason for “Gay Olympics” to
be a criticism of the Olympic Committee).
Besides the BSA and the USOC, there are 39 other
organizations that get similar special protections. Most are veterans’
groups, but they also include the American Symphony Orchestra League, the U.S. Capitol Historical
Society, and the National
Tropical Botanical Garden (there are a lot more organizations named, but
not all of them get exclusive rights in their names).
These restrictions on these particular words and symbols
come from a different set of laws than trademark, so the argument is that
trademark defenses don’t apply to
them. But should they?
Consider the purposes behind these laws. They’re not meant
to be rewards for these organizations being good causes, and they’re not meant
to be a means by which the organizations can expand their control of the
English language—they’re meant to protect the organizations from being imitated
or impersonated by unscrupulous parties.
This is the same impulse behind trademark law. Yet despite
that valuable service, the law recognizes that trademarks can, if given too
much power, stifle speech, just the way overbroad copyright protection can.
Which is why the law needs to carve out a space for the First Amendment to
exist within all these areas of law. The Supreme Court has
recognized that fair use and other copyright doctrines help preserve the
First Amendment within copyright; trademark has its own limits that allow it to
make way for free speech. These “super-trademark” laws are no
different; they too are subject to the First Amendment.
Given how similar these laws are to trademark, it’s also
worth asking whether or not they’re now redundant and obsolete. Trademark law
has come a long way (in ways both good and bad) since 1916, when the BSA got
its special protection, and even since 1950, when the USOC was given its own
exclusive rights. The world has certainly changed, too, with some of the
organizations listed in the U.S. Code seemingly no longer in need of any special
of World War I of the United
States of America would seem to no
longer exist, for understandable
reasons. It might be time to ask whether this mishmash of laws remains
necessary, when these organizations can make use of the same trademark laws
that apply to the rest of society.