District Court Finds Political Attack Video Uploaded to YouTube Not a Commercial Use of the RON PAUL Mark; Denies Motion for Expedited Discovery
Jessica McKinney | Bloomberg Law
In a lawsuit brought by the Ron Paul 2012 Presidential Campaign Committee, Inc. against John Doe defendants who allegedly uploaded a video on YouTube that attacks former Republican primary nominee Jon Huntsman and ends with the text “American Values and Liberty—Vote Ron Paul,” the U.S. District Court for the Northern District of California denied plaintiff’s motion for expedited discovery. The court concluded that, no matter which test for expedited discovery was applied, plaintiff failed to meet the common requirement of establishing that its Lanham Act claims could survive a motion to dismiss. Specifically, plaintiff failed to show that defendants’ use of the RON PAUL trademark was commercial in nature.
Political Attack Video Uploaded on YouTube by Anonymous Defendants
Plaintiff alleged that on January 4, 2012, the Doe defendants—using the pseudonym “NHLiberty4Paul”—uploaded a video on YouTube, entitled “Jon Huntsman’s Values,” from a Twitter account. Ron Paul at 1. According to the complaint, the video begins by displaying the text “Jon Huntsman – American Values? / The Manchurian Candidate – What’s He Hiding?”, followed by Huntsman (who was a former ambassador to China) speaking to his adopted daughter in Mandarin. Ron Paul 2012 Presidential Campaign Committee, Inc. v. Does, No. 12-CV-00240, Complaint, at 4 (N.D. Cal. Jan. 13, 2012). The video questions whether Huntsman is “weak on China,” his religious faith, whether his daughters are “even adopted,” and refers to him as “China Jon.” Id. The video concludes “with a fictitious depiction of Mr. Huntsman in a Mao Zedong uniform and the text ‘American Values and Liberty – Vote Ron Paul.’” Id.
Plaintiff—which claims to have the exclusive right to use the RON PAUL trade name and mark in connection with “political consulting and information dissemination services,” including “the creation, publication and distribution of printed, audio video and online information of interest to the media and the general public”—filed suit against the Doe defendants on January 13, 2012. Id. Plaintiff asserted common law libel and defamation claims, as well as Lanham Act claims for false designation of origin and false description and representation, in violation of 15 U.S.C. § 1125(a). In an effort to discover the identities of the Doe defendants, plaintiff filed a motion for expedited discovery, which the court denied without prejudice due to plaintiff’s failure to address the proper legal standard. Plaintiff then filed an amended motion for expedited discovery.
Court Declines to Decide Which Legal Standard Should Be Used
A number of amici (including the Electronic Frontier Foundation and the Public Citizen Litigation Group) opposed plaintiff’s amended motion, arguing, among other things, that the proper legal standard for evaluating such motions is set forth in Dendrite Int’l, Inc. v. Doe, 775 A.2d 756 (N.J. Super. Ct. App. Div. 2001), and Highfields Capital Mgmt. L.P. v. Doe, 385 F. Supp. 2d 969 (N.D. Cal. 2005), rather than Columbia Insurance Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999). Amici urged the court to “reaffirm [that] the Dendrite/Highfields Capital standard is the applicable rule in this [D]istrict for deciding whether to grant early discovery to identify anonymous non-commercial speakers.” Ron Paul at 2. The court found it unnecessary to endorse any one standard, however, because each contained a requirement that plaintiff failed to meet in the instant case—namely, that a plaintiff’s complaint be able to withstand a motion to dismiss.
Trademark Claims Not Viable
The court explained that an actionable Lanham Act claim requires proof that the defendant used the plaintiff’s mark in commerce. Plaintiff argued that the commercial use requirement was satisfied for two reasons: “(1) Defendants used a Twitter account to post the video on YouTube and both of these websites are commercial in nature; and (2) the video was intended to frustrate Plaintiff’s fundraising efforts and increase the amount of money contributed to Presidential nominees other than Ron Paul.” Ron Paul at 4. The court found the first argument to be meritless, noting that for the Lanham Act to apply, a defendant’s conduct must have some connection to the sale of goods or services. The alleged commercial nature of the Twitter and YouTube websites was thus irrelevant to the question of whether “Defendants’ own use of Plaintiff’s trademark was in a commercial or competitive context.” Id. (quotations and citations omitted).
The court also rejected plaintiff’s second argument, though acknowledging that it presented a closer question. The court framed this question as “whether an individual who improperly uses the trademarked name of another politician to express an opinion has done so in a commercial context that satisfies the requirements of the Lanham Act.” Id. at 4-5. Citing various decisions in both the Ninth Circuit and other districts, the court found that these cases, though not entirely analogous, “establish that a critical issue in this analysis is whether the trademark infringer is alleged to have offered any competing services.” Id. at 6 (citing Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 679 (9th Cir. 2005); Stanislaus Custodial Deputy Sheriff’s Association v. Deputy Sheriff’s Association of Stanislaus County, No. 09-CV-01988, 2010 BL 78494 (E.D. Cal. Mar. 9, 2010); Koch Industries, Inc. v. Does, No. 10-CV-01275, 2011 BL 122670 (D. Utah May 9, 2011)). The court noted that plaintiff did not address this issue in its motion, but that its own review of the video showed that defendants did not solicit contributions or identify themselves as a competing organization. “More importantly, and why Plaintiff’s request for expedited discovery is denied, the complaint does not contain any allegations that Defendants released the video to compete with Plaintiff.” Ron Paul at 6. Accordingly, the court denied plaintiff’s amended motion for expedited discovery without prejudice.
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