by Paul Alan Levy
Over the years I have blogged several times about corporate abuses of trademark law to use litigation, or the threat of litigation to block criticism. Because they have so many other tools to deploy against citizens, government agencies usually do not stoop to this level – the City of Memphis aside – but we have today filed suit against two government agencies, whose abuses of the public are in the news for other reasons, for using that tactic against a critic.
Dan McCall, a Minnesota man who creates politically-relevant designs for imprinting on Tshirts, mugs and other paraphernalia, was inspired to play with the official seals of the National Security Agency and the Department of Homeland Security to express his critical views about them. One design juxtaposed the official seal of the NSA with the words “Spying on You Since 1952”;
another altered the seal to add the words, “Peeping While Your Sleeping,” while placing this legend below the seal: “The NSA: the only part of government that actually listens.” Still a third design replaced the name of the DHS in its official seal with the name “Department of Homeland Stupidity.”
McCall has neither his own printing equipment nor the resources to pre-print and store an extensive inventory of wares displaying his designs. To enable others to join in his expression, he arranged with a third-party printer, Zazzle, to imprint the designs on order by members of the public. Zazzle allows anybody to create designs for order by others; each seller’s designs are displayed on the seller’s own virtual storefront within the Zazzle web site; in McCall’s case, here. The designs are then printed on particular items and mailed to consumers in response to specific orders.
Takedowns by Federal Agencies That Should Know Better
In 2011, however, both NSA and DHS took steps to shut down the use of their seals. NSA warned Zazzle that several different sellers, including McCall, were using the NSA’s name and official seal in violation of Public Law 86-36, 50 U.S.C. § 3613, and if Zazzle didn’t stop using the name, initials, or seal, NSA would take “appropriate legal action to protect its rights.” DHS was even more threatening, invoking a series of provisions in the federal criminal code that bar use of its official agency seals or even, in the case of one statute, 18 U.S.C. § 506, makes it a crime to “mutilate or alter the seal of any department or agency of the United States.” DHS warned Zazzle that use of its seal is “punishable by fines and/or imprisonment,” providing a link to a general search that called up every DHS design on the Zazzle web site (The letters themselves are not linked here because, for reasons that I don’t understand, Zazzle was unwilling to give me a copy of the original cease-and-desist letters; it was willing only to read them to me over the telephone, although I am certainly grateful for that cooperation).
Zazzle complied with alacrity, taking down the “Spying on You” and “Homeland Stupidity” designs and, when McCall posted his “Peeping While You’re Sleeping” design earlier this year, Zazzle removed that as well in compliance with NSA’s threat of litigation.
In a lawsuit filed today McCall has challenged both the cease-and-desist letters, arguing that statutes should not be construed to forbid his parodies because nobody could think that they reflect endorsement by NSA or DHS, and that, if the statutes are not construed narrowly, their application to McCall violates the First Amendment. We also argue that the statutory prohibition against “alter[ing] or mutilat[ing]” the official seal of any government is unconstitutionally overbroad because it can too easily be construed, as Zazzle plainly did after receiving a threat of prosecution under that law, as criminalizing parody or expressive conduct that is protected by the First Amendment.
Although I place the blame for this problem squarely on poor judgment at the NSA and DHS — it is the government, after all, to which the First Amendment applies, and the government that should know better than to send dumb IP-based takedown threats — Zazzle, too, bears some responsibility as well. To be sure, it is just a stakeholder here, and particularly when faced with the threat of prosecution for violations of criminal statutes, I can understand why it would not want to place its staff at risk if having to hire criminal defense lawyers.
On the other hand, it is inconceivable that the First Amendment might not protect these uses of the agencies’ shields, and the NSA’s trademark-like statute applies, by its terms, only when the challenged use “convey[s] the impression that such use is approved, endorsed, or authorized by the National Security Agency.” Although the NSA’s cease-and-desist letter specifically identified McCall's “Spying Since 1952" design as violating this statute, we should be able to expect a substantial commercial operation to push back against the implicit suggestion that somebody looking at that mug could have believed that NSA endorses it. Even though the cease-and-desist letter warned Zazzle against “any” future use of its name, initials or seal, it is even more farfetched to think that NSA would have endorsed a version of its seal that says, “Peeping While You’re Sleeping.” Consumers have a right to expect companies like Zazzle to have a thicker skin when faced with preposterous demands, and to wait for specific trademark challenges, rather than policing its service for other uses of the letters NSA, and proactively removing this sort of design in response to a cease-and-desist letter received two years before.
Happily, Zazzle faces commercial competition from others that do get tough on frivolous threats. After Zazzle removed McCall’s designs in response to threats of litigation, McCall posted them to a virtual storefront at CafePress.com. We don’t know whether CafePress has received similar threats from NSA or DHS, but based on previous experiences dealing with CafePress on trademark issues, I would expect CafePress to be more resistant to cease and desist letters.
For example, a few years ago, CafePress stood up to the Republican National Committee when it tried to prevent CafePress users from using the RNC's elephant logo in conjunction with materials opposing or endorsing various candidates or, indeed, praising or condemning the Republican party. And indeed, when the City of Memphis went after an anonymous blogger and sent a bogus takedown letter to Zazzle over the sale of parody Tshirts making fun of its police department, Zazzle’s immediate response was to cave in while CafePress was willing to stand up to the pressure, although Zazzle did restore the images after I urged it to do so.
Still, until Zazzle shows itself to be more energetic in responding to threats against political humor, parodists speaking about controversial subjects should consider voting with their feet by using other vendors.