by Paul Alan Levy
I am pleased to announce that, in a response to public outcry as well as the prospect of a declaratory judgment, the Republican National Committee has renounced the vast majority of the trademark claims that it advanced with a threat of litigation against CafePress for allowing its users to sell Tshirts and other items displaying images that included the acronym “GOP” and the “official elephant logo” in which it has a registered trademark.
Under the terms of the agreement, the RNC agreed to drop most of the claims it had advanced against CafePress and its users. Those CafePress users who do no more than put the “official elephant logo” or the initials “GOP,” on a tshirt, will use a licensing provision on the RNC web through which, the RNC has represented, permission is freely given. While the request for a licence is being considered, the products will remain on the CafePress site. CafePress has not agreed to remove them even if the license is refused. At the same time, the RNC admits that it has no claim against anybody who combines either an elephant or the acronym GOP with expressive words or design elements (whether positive or negative toward the Republicans.
Immediately after the public release of the RNC’s trademark demands, the RNC began dropping many of the strong claims it had made in its original demand letter. The RNC told Politico reporter Ben Smith: “If you want to say ‘GOP’ and design an elephant that’s similar, want to design an elephant that’s not precisely the same as ours, that’s fine. Our elephant is specific. It’s stylized, it’s blue and red, it has three stars across its back that are tilted. They’re using that precise elephant.” The RNC's concessions to CafePress continue the refinement of its position, because CafePress users will be free to use even its “precise elephant” so long as it is combined with other expressive elements.
CafePress (and Public Citizen) looked forward to litigating the issue of whether the use of the acronym or the trademarked elephant alone would infringe or dilute the RNC’s mark, in light of the fair use doctrine and the strong protection accorded by the First Amendment to political speech. However, it became apparent that even though CafePress had announced its intention to defend its users’ rights, several users were worried about the prospect of trademark litigation over their designs. The agreement with the RNC eliminates the chilling effect of the RNC’s threats as quickly as possible.
We commend the RNC for its willingness to compromise in this manner, while at the same time encouraging its own supporters (and allowing its critics) to continue the use of the RNC’s trademarks to express their views on the Republican party and the election.
In this regard, however, as a result of the coverage of this dispute, we have been in contact with other Tshirt sellers. It appears that, in the period before we spoke out against the RNC’s demands to CafePress, the RNC was engaged in a campaign of sending out threatening letters to sellers of Tshirts that combine its trademarked elephant logo with words of criticism. We trust that the lessons that the RNC has drawn from its controversy with CafePress will be promptly applied to these other demand letters. We call upon the RNC to write to the citizens whom it has threatened to sue for using its logo in a critical context, and tell them that it is withdrawing its threat to sue them. We will assume that the RNC intends to follow through on any such threat that has not been withdrawn within two weeks, and after that two-week period has elapsed, we reserve the right to seek declaratory relief on behalf of the targets of such threats without further notice to the RNC.