SHELLY D. DICK, District Judge.
I. BACKGROUND AND PROCEDURAL POSTURE
Sticks and stones may break bones but words can never hurt, or so the adage goes. However, in this case, the Lieutenant Governor's office (as the Chief of Louisiana's tourism industry) argues that MoveOn.org's use of a Louisiana trademark on a billboard is causing irreparable injury to the State. The State of Louisiana, through the Office of the Lieutenant Governor, has spent almost $70 million developing and using the following state registered service mark.
This "service mark" was registered with the Louisiana Secretary of State's office in January of 2011. In 2014, MoveOn.org erected the following billboard on the eastbound side of Interstate 10 in West Baton Rouge Parish:
The State, through its Motion for Preliminary Injunction
On the one hand is the State's claim of trademark infringement, on the other is MoveOn.org's right to free speech. The subject Billboard is critical of the State's health care policies.
As observed by the United States Supreme Court, "[s]peech is an essential mechanism of democracy, [for] it is the means to hold officials accountable to the people."
A preliminary injunction is an extraordinary remedy that may be used only upon a clear showing of the substantial likelihood of success on the merits and irreparable injury. Not only must the State demonstrate a likelihood of success on the merits and a likelihood of irreparable harm, the State must also show that the balance of equities tips in its favor and that an injunction is in the public's best interest.
At that outset, the Court notes that the people of Louisiana have an interest in protecting the propriety of their service mark; but, is that interest so compelling as to require that MoveOn.org be prohibited from using it as a parody to criticize the State's healthcare policies?
II. TRADEMARKS GENERALLY
"A trademark is a word, phrase or symbol that is used to identify a manufacturer or sponsor of a good or provider of a service. It's the owners' way of preventing others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner."
To prevail on a trademark infringement claim the State must show two things. First, the State must establish ownership and a legally protectable mark and, second, the State must show infringement by demonstrating that the unauthorized use of the mark creates a likelihood of confusion in the minds of the consumer.
Louisiana is using its service mark to encourage and promote tourism, a form of commerce. The Parties do not dispute that the State has a legally protectable mark. The critical issue is whether MoveOn.org's use of the State's service mark "creates a probability of confusion in the minds of the viewers of the billboard as to the `source, affiliation or sponsorship' of the message." The burden of proving infringement is on the State and, in this preliminary injunction context, the State must demonstrate that it is substantially likely to prove at a subsequent trial on the merits that MoveOn.org's use of the State's service mark creates a probability of confusion in the minds of the viewers of the billboard.
III. THE FIRST AMENDMENT
This case "involves the tension between the protection afforded by the Lanham Act to trademark owners and the protection afforded by the First Amendment to expressive activity."
MoveOn.org contends that it used Louisiana's service mark as a parody to express a political point of view. MoveOn.org argues that it is employing parody
It is clear to the Court that MoveOn.org did not use Louisiana's service mark for the purpose of gaining attention to products and services associated with mark, but as a parody for the purpose of expressing an idea, opinion, or criticism. However, parody does not provide an absolute cloak of protection from a claim of trademark infringement claim. Parody notwithstanding, if reader confusion is likely, an action for trademark infringement lies.
The State argues that viewers of the billboard will be confused into thinking that the Lieutenant Governor, as the alleged owner of the service mark, is being critical of the Governor. In this Court's view, the Lieutenant Governor underestimates the intelligence and reasonableness of people viewing the billboard.
The State's argument that viewers of the billboard may be confused into believing that the Lieutenant Governor is criticizing the Governor is strained. First, viewers would have to know that the service mark in question is a creation of and sponsored by the Lieutenant Governor's Office. There is no evidence of this. Furthermore, neither the Lieutenant Governor himself, nor the Office of the Lieutenant Governor as an agency of the State, is the owner of the mark. The owner of the mark is the State, and more specifically its citizens.
In Lamparello v. Falwell,
The Court concludes that the State has not demonstrated a substantial likelihood of prevailing on its burden of proving confusion by viewers of the billboard. Furthermore, the State has failed to demonstrate a compelling reason to curtail MoveOn.org.'s political speech in favor of protecting of the State's service mark. Finally, the State failed to demonstrate that injunctive relief is required to ameliorate irreparable injury. There has been no showing of irreparable injury to the State. Accordingly, the Motion for Preliminary Injunction filed by Jay Dardenne is DENIED.