Maker of Religious-Themed Military Dog Tags Can Move Ahead with 1st Amendment Claims Against DoD

In Shields of Strength v. U.S. Department of Defense, (ED TX, March 31, 2023), a Texas federal district court allowed a company that manufactures military personnel "dog tags" to move ahead with certain of its 1st Amendment claims against the military that sought to prevent the company from producing dog tags with Biblical or other religious references near symbols or phrases that the military had registered for trademark protection. DoD regulations provide:

DoD marks may not be licensed for any purpose intended to promote ideological movements, sociopolitical change, religious beliefs (including non-belief), specific interpretations of morality, or legislative/statutory change.

 The court said in part:

If the military does not have meaningful conditions and controls on the licensing of its trademarks, the military may be deemed to have opened a limited public forum for private expression using those marks.... If a public forum were opened, disallowing views that promote religious beliefs would seem a prima facie case of unconstitutional viewpoint discrimination. So defendants’ motion to dismiss the viewpoint-discrimination claims ... is denied....

For purposes of the religious-exercise claims ... the court assumes that any marks not licensed for use on Shields’ dog tags are valid trademarks, used in a way likely to confuse consumers, without a defense to liability (other than religious-exercise rights). The question under Counts 2 and 8 is whether the military’s failure to license that usage violates the Free Exercise Clause or RFRA. 

The answer turns on the same categorization called for by the free-speech challenge.... If the military’s grants of trademark licenses are government speech, then any burden from the military’s licensing choice is justified by the compelling governmental interest that animates trademark law generally and, specifically, a trademark owner’s liberty to decide and control its own vision of a mark’s reputation....

On the other hand, if the military’s program here is so unrestrictive that the military has surrendered any licensing voice—making its licensing program a limited public forum for private speech using the marks—that deficiency also negates the compelling public interest for denying Shields’ ability to use the marks.... 

However, the court refused to issue a preliminary injunction because it found no substantial likelihood of success on the claims.

Kosher Certification Agency Sues Airline For Unauthorized Use Of Trademarked Symbol

Suit was filed last week in a New Jersey federal district court by Kof-K, a kosher certification agency, against JetBlue Airways claiming that the airline used the agency's certification symbol without authorization on a pre-packaged in-flight artichoke snack.  The complaint (full text) in Kosher Supervision Service, Inc. v. JetBlue Airways Corp., (D NJ, filed 6/23/2022), alleges trademark infringement and other trademark violations,  unfair competition and consumer fraud. As reported by The Observer, Kof-K does not contend that the snack was not kosher. It merely contends that it had not certified it as such.

Court Dismisses Unification Church Trademark Dispute On Ecclesiastical Abstention Grounds

In Holy Spirit Association for the Unification of World Christianity v. World Peace and Unification Sanctuary, Inc., (MD PA, March 30, 2022), a Pennsylvania federal district court dismissed on ecclesiastical abstention grounds a trademark dispute between the Unification Church (HSA), led by the late Rev. Sun Myung Moon's wife, and defendant Unification Sanctuary, an organization created by Rev. Sun Myung Moon's son to spread Rev. Moon's teachings. At issue is the right of Sanctuary to use the trademarked Twelve Gates symbol. The court said in part:

While it is undisputed that the Twelve Gates symbol is registered with the USPTO in HSA’s name, Sanctuary contends that the Twelve Gates symbol is not entitled to trademark protection because the symbol has become generic as a universal religious symbol that represents Unificationism generally....

[T]he implicit question raised ... is whether Sanctuary can be classified as a branch of the Unificationist church in light of the apparent fundamental disagreements between the parties relating to the beliefs and practice of this religion. Indeed, while Sanctuary classifies itself as a Unificationist church, HSA vehemently disputes this assertion.... [I]t is well-settled that the court cannot resolve church disputes on the basis of religious doctrine and practice....

HSA’s registration of the Twelve Gates symbol with the USPTO constitutes prima facie evidence that it owns this trademark right....  However, Sanctuary has contested HSA’s ownership on inherently religious grounds. Specifically, Sanctuary has alleged that Sean Moon is the owner of all Unificationist property as the heir of Rev. Moon, and that he therefore owns the trademark to the Twelve Gates symbol since he controls the Unificationist Church, and by extension, HSA as a branch of same.

Plainly, this is a dispute that the court cannot resolve without venturing into issues of church leadership or organization—an area in which the Southern District of New York and the Second Circuit have already determined is inappropriate in a similar dispute presented by the same parties.

Military Sued After It Withdraws Permission For Selling Religious-Themed Replica Dog Tags

Suit was filed this week against the Department of Defense in a Texas federal district court by a company that creates military-themed replica "dog tags" featuring Army, Marine and Airforce emblems. The emblems are used under trademark licenses from the military services. The company's replica tags-- which are often worn by members of the military and their families-- also feature Biblical verses or religiously inspired phrases. After receiving a complaint from an advocacy organization, the trademark licensing offices of the military services informed the company that it may no longer produce or sell trademark-licensed products that feature religious content. The complaint (full text) in Shields of Strength v. U.S. Department of Defense, (ED TX, filed 12/14/2021) alleges that DoD's actions violate plaintiff's rights under RFRA, the Free Exercise and Establishment clauses as well as its free speech rights. First Liberty issued a press release announcing the filing of the lawsuit.

Controversy Over Army Licensed Items With Religious Theme

First Liberty Institute yesterday sent a letter (full text) to the U.S. Army complaining about the Army's order to a private faith-based company that is licensed to produce Army-themed products. (Press release). The Army instructed the company to remove Biblical verses from its popular Shields of Strength (SoS) dog tags. Since 9-11, SoS has produced over 4 million dog tags, the most popular carrying the words of Joshua 1:9: "Have I not commanded you? Be strong and courageous. Do not be afraid; do not be discouraged, for the Lord your God will be with you wherever you go."

The Army's action follows a complaint from the Military Religious Freedom Foundation about the religious content of the Army-licensed products.  First Liberty argues, however:

once the Army creates a limited public forum via a trademark licensing regime and allows private entities such as SoS to obtain licenses, the Army cannot “discriminate against speech on the basis of its viewpoint” in the administration of the trademark licensing regime. The Army is therefore prohibited from discriminating against SoS because of its inclusion of biblical references on its products, in its advertisements, or on its website.....

More recently, in Iancu v. Brunetti the Supreme Court ...  invalidated the Lanham Act’s “immoral or scandalous” clause as viewpoint discrimination.....

Clearly, if a prohibition against trademarking offensive, immoral, or scandalous speech constitutes viewpoint discrimination, then certainly the Army’s prohibition against using religious speech in conjunction with its trademark does, too. This is especially true because the Army routinely grants licenses to similar, non-religious speech.

SPLC's "Hate Group" Designation For Christian Ministry For LGBT Views Is Protected By 1st Amendment

In Coral Ridge Ministries Media, Inc. v. Amazon.com, Inc., (MD AL, Sept. 19, 2019), an Alabama federal district court, in an interesting 141-page opinion, dismissed claims by a Christian television ministry against the Southern Poverty Law Center and Amazon's charitable program. As summarized by the court:

The lawsuit is based largely on Coral Ridge’s allegations that, because of its religious opposition to homosexual conduct, SPLC has designated it as a “hate group” and that, because of this designation, Amazon and AmazonSmile have excluded it from receiving donations through the AmazonSmile charitable-giving program.

Coral Ridge has three claims against SPLC: a state claim that its “hate group” designation is defamatory and federal claims for false association and false advertising under the Lanham Act, 15 U.S.C. § 1125. Coral Ridge has a single claim against the Amazon defendants: a federal claim that they excluded it from the AmazonSmile charitable-giving program based on religion, in violation of Title II of the Civil Rights Act of 1964, 42 U.S.C. § 2000a et seq.

The ministry conceded that it was a "public figure" for purposes of its defamation claim Engaging in a lengthy discussion of the meaning of "hate group", the court rejected the ministry's claim because "An alleged defamatory statement is generally not provable as false when it labels the plaintiff with a term that has an imprecise and debatable meaning." The court went on to say that even if there were a commonly understood definition of "hate group",  the defamation claim should still be dismissed:

To find actual malice just because SPLC publicized a meaning of “hate group” that conflicted with the common understanding of the term would severely undermine debate and free speech about a matter of public concern. This is because, even if the term had achieved a commonly understood meaning, that meaning would not be fixed forever, but rather could evolve through public debate. To sanction a speaker for promoting a genuinely held dissenting view of the meaning of “hate group” would be akin to punishing a speaker for advocating new conceptions of terms like “terrorist,” “extremist,” “sexist,” “racist,” “radical

The court rejected the ministry's Lanham Act claims, finding that they are subject to the same heightened First Amendment standards, not the lower commercial speech standards.

The court also rejected the ministry's claim that Amazon violated the public accommodation provision of the 1964 Civil Rights Act in excluding it from its charitable giving program, saying in part:

Even if it were assumed that the Amazon defendants are places of public accommodation subject to Title II, seeking to receive donations through the AmazonSmile program does not qualify as a service, privilege, or advantage, etc. protected by the statute’s anti-discrimination prohibition. This is because the Amazon defendants limit the ability to receive such donations exclusively to 26 U.S.C. § 501(c)(3) organizations and therefore do not make that ability open to the public. Moreover, an alternative ground for dismissing the claim is that Coral Ridge has not plausibly alleged that the Amazon defendants discriminated against it based on religion.

The court concluded its opinion:

The court should not be understood as even suggesting that Coral Ridge is or is not a “hate group.” It has merely held that SPLC’s labeling of the group as such is protected by the First Amendment....  

SPLC issued a press release announcing the decision.

Break-Away Diocese Cannot Use Former Trademarked Names

In vonRosenberg v. Lawrence, (D SC, Sept. 19, 2019), a South Carolina federal district court,in a 73-page opinion, resolved a trademark dispute between The Episcopal Church and a break-away diocese.  As summarize by World Intellectual Property Review:

A US judge has ordered a former South Carolina diocese of the Episcopal Church to change its name, after concluding the breakaway group was infringing the Episcopal Church’s trademark-protected diocesan shield.

On Thursday, September 19, District Judge Richard Gergel issued an injunction against the breakaway diocese, ordering the group not to use nine trademarks associated with the Episcopal Church and ... The Episcopal Church in South Carolina, an affiliate of the national church.

Supreme Court Says Ban on Immoral or Scandalous Trademarks Violates 1st Amendment

The U.S. Supreme Court today in Iancu v. Brunetti, (US Sup. Ct., June 24, 2019), held that the Lanham Act’s ban on registration of "immoral" or "scandalous" trademarks violates the First Amendment's free expression provisions.  The court's opinion written by Justice Kagan, and joined by Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh, concluded that the ban amounts to viewpoint discrimination.  In the case, the PTO had refused to register the trademark "FUCT" as the brand name for a line of clothing. Justice Kagan gave examples of the discriminatory manner in which the Act has been applied, including the following:

[T]he PTO refused to register trademarks associating religious references with products (AGNUS DEI for safes and MADONNA for wine) because they would be “offensive to most individuals of the Christian faith” and “shocking to the sense of propriety.” ... But once again, the PTO approved marks—PRAISE THE LORD for a game and JESUS DIED FOR YOU on clothing—whose message suggested religious faith rather than blasphemy or irreverence.

Justice Alito also filed a concurring opinion, stating in part:

Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas. The particular mark in question in this case could be denied registration under such a statute. The term suggested by that mark is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.

Three separate opinions dissenting in part were filed-- one by Chief Justice Roberts, one by Justice Breyer and one by Justice Sotomayor joined by Justice Breyer.  They all argued that while the ban on "immoral" trademarks violates the First Amendment, the ban on "scandalous" marks can be given a narrow construction that would save the provision. They contend it should be read to ban only obscene, vulgar or profane marks.  CNN reports on the decision.

Certiorari Denied In Church Trademark Dispute

The U.S. Supreme Court yesterday denied review in Universal Church, Inc. v. Toellner, (Docket No. 18-1159, certiorari denied 4/29/2019).  In the case, the U.S. Second Circuit Court of Appeals rejected a claim that the Universal Life Church had infringed the trademark of the Universal Church.  In Universal Church, Inc. v. Toellner, (2d Cir. Nov. 2, 2018), the court held that the term  "Universal Church" is generic in referring to religious counseling and evangelistic and ministerial services.

SCOTUS Hears Arguments On Immoral Trademarks

Yesterday the U.S. Supreme Court heard oral arguments in Iancu v. Brunetti (transcript of oral arguments). At issue is whether Sec. 2(a) of the Lanham Trademark Act that prohibits registration of a trademark that contains "immoral" matter is invalid under the free speech provisions of the 1st Amendment.  Here is the SCOTUSblog case page for the case linking to all the briefs and other pertinent material. Mark Walsh at SCOTUSblog describes the case as an introduction to his entertaining summary of oral arguments:

The first case for argument today involves the highly provocative trademark, “FUCT,” for a line of “streetwear” founded by Erik Brunetti in California in 1990.

Washington Post also reports on the oral arguments.

Cert. Filed In Universal Church Trademark Case

A petition for certiorari was filed on March 4 in Universal Church, Inc. v. Toellner. (Full text of petition at 2019 U.S. S. Ct. Briefs LEXIS 831). In the case, the U.S. Second Circuit Court of Appeals rejected a claim that the Universal Life Church had infringed the trademark of the Universal Church.  In Universal Church, Inc. v. Toellner, (2d Cir. Nov. 2, 2018), the court held that the term  "Universal Church" is generic in referring to religious counseling and evangelistic and ministerial services.

Satanic Temple Sues Netflix Over Wrongful Use Of Bahomet Statue

Yesterday The Satanic Temple filed suit in a New York federal district court against Netflix and Warner Brothers, seeking $50 million in damages.  The complaint (full text) in United Federation of Churches LLC v. Netflix, Inc., (SD NY, filed 11/8/2018), alleges that defendants wrongfully used the image of a statue belonging to the Satanic Temple in its television series Chilling Adventures of Sabrina. The Satanic Temple alleges that it spent $100,000 to develop the statue, Baphomet with Children, which is a modification of the historical deity Baphomet:

Baphomet historically involved a goat’s head ... on a female body associated with Lilith, a figure from Jewish mysticism sometimes considered a goddess of the night. The classic visual representation of idea of Baphomet is an image created in or about 1856 by an occult historian Eliphas Levi.... 

[T]he TST Baphomet with Children, consists of several modifications from the historic expressions of the deity....

The Sabrina Series’ evil antagonists stand in stark contrast to TST’s tenets and beliefs.... By misappropriating TST Baphomet with Children (which is a registered copyright and famous mark of TST) to publish this false and defamatory depiction of TST, Defendants have engaged in three classes of wrong: copyright infringement (Claim 1), trademark violation (Claim 2), and injury to business reputation (Claim 3).

In addition to damages, plaintiff seeks an injunction requiring defendants to digitally remove the statue from all future distributions of the TV program. Courthouse News and Reuters report on the lawsuit. [Thanks To Tom Rutledge for the lead.]

UPDATE: According to a Nov. 21 post by Lucien Greaves, the suit has been amicably settled, with the unique elements of the Satanic Temple’s Baphomet statue acknowledged in credits of episodes already filmed.

Unification Church Sues Its Founder's Son For Trademark Infringement

The Unification Church (Family Federation for World Peace and Unification USA) has filed a suit alleging unauthorized use of a registered trademark against  The World Peace and Unification Sanctuary in Newfoundland, Pennsylvania ("Sanctuary Church").  According to a Unification Church press release:

In light of the recent media attention surrounding Sanctuary Church, public concern regarding the political views of this organization, and public brand confusion, Family Federation has made the difficult decision to pursue litigation to protect the legacy of its founders, the Reverend Sun Myung Moon and Dr. Hak Ja Han Moon.

As reported by The Blaze earlier this month, the founder of the Sanctuary Church is Hyung Jin Sean Moon, the son of the late Rev. Sun Myung Moon who founded the Unification Church in the 1950s. Hyung has been labeled an anti-LGBT cult leader by the Southern Poverty Law Center. Earlier this year, Sanctuary Church sponsored a service at which hundreds of members, some holding unloaded AR-15 rifles, exchanged wedding vows.  They see the AR-15 as symbolizing the "rod of iron" in the Book of Revelation.

Supreme Court Invalidates Lanham Act Bar To Registration of Disparaging Trademarks

In Matal v. Tam, (Sup. Ct., June 19, 2017), the U.S. Supreme Court today held unconstitutional under the 1st Amendment's free speech protection the provision in the Lanham Trademark Act that prohibits registration of any trademark that

consists of ... immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. (15 U. S. C. §1052(a)). 

The case generated three separate opinions, all ultimately concluding that the refusal to register "The Slants" as the name of an Asian-American rock group amounts to viewpoint discrimination. Five of the justices (Kennedy, Ginsburg, Sotomayor and Kagan, plus Thomas in a separate opinion) held that viewpoint discrimination always triggers heightened scrutiny.  Three others (Alito, Roberts and Breyer) said they need not reach the issue because the restriction does not pass even the lower hurdle for commercial speech. Justice Gorsuch did not participate.  New York Times reports on the decision.

The result of today's decision is that trademarks that disparage religious groups will also be able to be registered.  The rock group had argued that the Lanham Act language only applies to individuals, but in rejecting that, the Court (in a portion of the opinion joined by 7 justices) said:

[The statute] applies to the members of any group whose members share particular “beliefs,” such as political, ideological, and religious groups. It applies to marks that denigrate “institutions,” and on Tam’s reading, it also reaches “juristic” persons such as corporations, unions, and other unincorporated associations. See §1127. Thus, the clause is not limited to marks that disparage a particular natural person. 

In SCOTUS Oral Argument On Trademark Law, Blasphemy Becomes Relevant

The U.S. Supreme Court today heard oral arguments in Lee v. Tam (transcript of full oral argument).  At issue is whether the disparagement provision in the Lanham Act is an unconstitutional restriction on speech. The statute provides that the Patent and Trademark Office may refuse to register a trademark that disparages individuals, institutions, beliefs or national symbols, or brings them into contempt or disrepute.  In the case the PTO refused to register "The Slants" as the name of a rock band on the ground that the name is disparaging to Asians. SCOTUSblog's case page has links to a wealth of primary and secondary material on the case.

In his rebuttal in today's oral argument, Deputy Solicitor General Malcolm Stewart made an interesting reference to trademarks that may constitute illegal insults to religion under the law of a foreign country:

The preparation of the principal register is not just an ancillary consequence of this program. It's the whole point to provide a list of trademarks so other people know what has been approved, what's off limits.

And the consequence of Mr. Connell's position is that the government would have to place on a principal register, communicate to foreign countries the biased racial epithets, insulting caricatures of venerated religious figures. The test for whether the government has to do that can't be coextensive with the test for whether private people can engage in that form of expression.....

... [T]he government, at the very least, has a significant interest in not incorporating into its own communications words and symbols that the public and foreign countries will find offensive.

(See prior related posting.)

Amicus Says Trademark Case Impacts Religious Speech

Next month, the U.S. Supreme Court will hear oral arguments in Lee v. Tam (SCOTUSblog case page).  The case involves a free speech challenge to the Lanham Act which allows the government to deny trademark registration to a mark "which may disparage * * * persons, living or dead, institutions, beliefs,
or national symbols, or bring them into contempt, or disrepute." On Monday the Becket Fund filed an amicus brief in the case focusing on the impact of the disparagement clause on religious speech. The brief argued in part:

Disagreements about deeply important issues such as religion can often be experienced as disparaging.... [I]t would be wrong for the government to punish speech simply because it wants to protect some religious “institutions” and “beliefs” from criticism.

In fact, to its credit, the United States has for many decades led the fight to convince other countries and international bodies to allow disparaging speech, and to resist using the law to punish those who disparage religion or commit blasphemy.

Australian Agency Refuses to Approve Trademark For "McKosher"

Australia's ABC News reported last week that the Australian Trademark Office has refused to approve an application to trademark the name "McKosher" because of the danger of contextual confusion.  The application was submitted by New South Wales resident Mark Glaser who wants to open a Scottish-Jewish restaurant in Maclean, an Australian city with Scottish ties.  However the international McDonald's chain objected because it is in negotiations with Rabbinical leaders in Jerusalem to use the McKosher title as the name for kosher certified McDonald's restaurants in Israel.  Currently the Israeli rabbinate refuses to certify kosher branches of McDonald's for fear that the public will confuse the branches which are kosher with those that are not.

Long Arm Jurisdiction Upheld Against Churches Using Plaintiff's Men's Ministry Logo

In Mighty Men of God, Inc. v. World Outreach Church of Murfreesboro Tenn., Inc., (MD FL, April 6, 2015), a Florida federal district court ruled that it can exercise personal jurisdiction over two religious organizations in Murfreesboro, Tennessee who were sued by a Florida-based Christian educational service for improperly using its trademark.  Plaintiff offered conferences directed at Christian men using the trademarks "Might Men of God" and "Mighty Men."  Defendants, World Outreach Church and Intend Ministries, organized conferences in Tennessee using the same names. The court held that under Florida's long-arm statute which was used to obtain jurisdiction over defendants, the intentional trademark infringement claims constitute tortious acts within Florida.

4th Circuit Vacates Trial Court's Abstention In South Carolina Episcopal Diocese Trademark Litigation

In vonRosenberg v. Lawrence, (4th Cir., March 31, 2015), the U.S. 4th Circuit Court of Appeals vacated a federal district court's decision that declined to exercise jurisdiction over a trademark infringement case growing out of the ongoing controversy between a large break-away portion of the Episcopal Diocese of South Carolina and the smaller number of parishes that remain loyal to The Episcopal Church.  The district court held that the trademark dispute is part of a larger dispute over ownership of the Diocese's property which is being litigated in state court and concluded that it is "judicially impractical to retain jurisdiction over a fragmented claim that has been separated from the larger controversy." (See prior posting.)  The 4th Circuit held that the district court had applied precedents that apply to abstention when a plaintiff is seeking only declaratory relief.  Instead, where as here the plaintiff seeks an injuction as well as a declaratory judgment, the district court should have applied precedent that allows abstention only if "exceptional circumstances" justify the surrender of federal jurisdiction. The 4th Circuit remanded to case for the district court to determine whether exceptional circumstances are present. [Thanks to Will Esser via Religionlaw for the lead.]

Federal Circuit Denies Trademark Registration For "Stop the Islamisation of America"

In In re Geller, (Fed. Cir., May 13, 2014), the U.S. Court of Appeals for the Federal Circuit upheld the Trademark Office's refusal to register "Stop The Islamisation of America" as a trademark to be used in connection with understanding and preventing terrorism.  The appeals court agreed with the Trademark Trial and Appeal Board's conclusion that the phrase contains matter which may disparage a group of persons. Under 15 USC 1052(a), this is a basis for refusing registration. The court said in part:

The political meaning of Islamisation does not require violence or terrorism, and the Board properly found that associating peaceful political Islamisation with terrorism would be disparaging to a substantial composite of American Muslims.

Appellants in the case, Pamela Geller and Robert Spencer, are co-founders of the American Freedom Defense Initiative. [Thanks to How Appealing for the lead.]