Court mashes up Dastar and commercial speech doctrine to protect book from Lanham Act

Keel v. Axelrod, No. 15-1507, 2015 WL 7733973 (E.D. Pa. Dec.
1, 2015)
Political operative David Axelrod wrote a book, Believer: My
Forty Years in Politics. Frank Keel, a political and media consultant, sued
under state and federal law for reverse passing off, claiming that Axelrod
falsely took credit for political consulting during the 2003 reelection
campaign of former Philadelphia Mayor John F. Street, which Keel identified as
a pivotal moment in his consulting career. 
Street was in a close race with his Republican challenger, Katz, when members
of the Philadelphia Police Department discovered an FBI listening device in
Mayor Street’s City Hall office, reportedly placed there as part of a “federal
investigation into City Hall corruption.”  The media wanted to know why Street was the
target of an FBI investigation, and Street held an impromptu press conference,
where he assured the public he had “done nothing wrong.”
In the hours after this press conference, Keel allegedly
proposed, “[a]s part of the consulting services he was providing to Mayor
[Street],” that the campaign “publicly announce that the bug was part of a ‘Republican
dirty-tricks’ strategy” from high in the George W. Bush administration.  Keel alleged that he “conceived and
implemented” the “Republicans Did It” strategy on his own, without any “input
or involvement” from Axelrod.
Axelrod’s book, by contrast, says:
As we approached the final month of
the campaign, I got a call from George Burrell, Street’s savvy political deputy
at City Hall.
“I think we have a problem.”
“Problem?” I asked warily.
“Yes, it seems we’ve found a bug in
the mayor’s office.” “A bug?”
“Yes, a listening device.”
“And who do we think this bug
belongs to?” I said. I really didn’t have to ask, but was hoping against hope
for an unexpected explanation.
“It appears to belong to the United
States government,” Burrell said, slamming the door on my wishful thinking.
Four weeks before the election, the
news would be filled with headlines about a federal investigation of the mayor
and his administration. It struck me, as I thought about it, that this was our
problem but also our opportunity. In an overwhelmingly Democratic town, a probe
launched by the Republican Justice Department in Washington would surely be
greeted with skepticism, perhaps even outrage. I called Burrell back. “We need
to hold a press conference on the steps of City Hall and accuse John Ashcroft
of trying to steal this election.” (Attorney General Ashcroft, a well-known
conservative ideologue, was highly unpopular among Democrats.) When Street
confronted reporters, frantic over the news, he came armed with a line I had
written for him: “I’m happy to speak into a microphone I can see!”
Keel alleged that, in fact, right after the press conference,
Axelrod demanded that Keel “immediately” stop implementing the “Republicans Did
It” strategy. Keel also alleged that Axelrod “plainly also intended the book to
provide advertising for promoting his political consulting business,” which was
still active, and that he and Axelrod competed for potential clients.  The publisher was allegedly contributorily
liable for failing to fact-check.
Why not just Dastar
this?  The court mentions Dastar, but uses its general rationale
that there’s a need to limit the scope of the Lanham Act to harmonize with the
requirement of a majority of circuits that there be a “threshold commercial
element” to the defendant’s activity. 
True, the Second Circuit has indicated that “use in commerce” is broader
than “commercial speech,” United We Stand America, Inc. v. United We Stand,
America New York, Inc., 128 F.3d 86, 92–93 (2d Cir. 1997) (Lanham Act isn’t
limited to “profitmaking activity”).  But
all the relevant cases “involve trademark name infringement or the direct solicitation
of clients, neither of which have been pleaded here.” Apparently, uses on the
front cover of a magazine and online “present a much greater risk of deceiving
potential customers as to the proper origin of the slogan than the facts
presented in this case.”   Direct
solicitations to potential customers can be “use in commerce,” but “a single
passage in a nationally marketed book cannot be viewed as a direct solicitation
of services to specific clients,” and anyway the book didn’t refer to any
trademarked services of Keel, so even in the Second Circuit this claim wouldn’t
work.  [This reasoning is extremely
shaky, because it doesn’t explain why trademark infringement gets to cross the
commercial speech barrier but other causes of action don’t. Not to mention its
indifference to the head of §43(a) under which this claim is brought—either
reverse passing off is actionable or it’s not, and if passing off would be
actionable under the same circumstances I can’t see why the court’s logic works–nor, of course, should passing off be actionable even if the passage had stated that Axelrod was endorsed/sponsored by Keel.] 
The Third Circuit has yet to impose an explicit commercial
use requirement, but the allegedly misleading use “must have a clear,
promotional purpose to attract customers.” Also, a number of district courts in
the circuit have found that “[t]he Lanham Act regulates only commercial
speech.” Other district courts in the Third Circuit have also found that claims
under the Lanham Act must concern commercial speech.  Here, there wasn’t “quasi-commercial
activities such as trademark infringement or the direct solicitation of clients,”
so Keel needed to plead commercial use.

Lanham Act disputes between nonprofits are actionable, but “commercial use”
doesn’t depend on the legal status of a defendant.  Instead, it requires promotional use of the
plaintiff’s proprietary material. Trademark infringement or the direct
solicitation of customers “are clear, promotional and advertising
activities.”  [This is the wrong way to
the right result, because trademark infringement is only “clearly” promotional
if you (a) sufficiently constrain what you’re willing to call infringement (a
desideratum in itself, but achieved via Rogers
or some other means that itself requires application of commercial speech
doctrine), or (b) adopt a circular definition: that which causes confusion is
by definition promotional.  (b) should
lead you to the same holding with respect to other kinds of falsity with
commercial effects, though.]
So, was the book passage in question commercial speech?  Under Third Circuit precedent, this question
involves a “commonsense distinction between speech proposing a commercial
transaction…and other varieties of speech.” Compared to the special on an
upcoming NFL video game that the Third Circuit found was an ad in Facenda, the passage in Axelrod’s book
didn’t note the availability of his consulting services, nor did it describe
unique features of his services.
Keel argued that the unique nature of political consulting
made false credit claims actionable, citing Gensler v. Strabala, 764 F.3d 735
(7th Cir. 2014).  Though both political
consultants and architects rely on their records to acquire customers, “Gensler is distinguishable from the
facts of this case because of the defendant’s commercial use of proprietary
material.”  [Again, this is a classic
example of letting property rhetoric distort analysis—yet so unnecessary to the
outcome!  It doesn’t even work,
conceptually: since Axelrod is describing the services he provided (according
to him), then to the extent that his services also have a reputation he is using “proprietary material” in the
sense that the court means it.  It’s
“commercial” that’s doing the work here, because Gensler involved the
defendant’s use of claims on his business website and associated Flickr account.]  Thus, it was unnecessary to reach the
question of whether a reverse passing off claim based on services survived Dastar.
“[C]ommunications made primarily for expressive purposes,
like the political and narrative purposes of Believer, enjoy broad First Amendment protection, and therefore,
are generally not actionable under federal statutes such as the Lanham Act”
[citing, among others, Citizens United].
 Only if Axelrod plausibly wrote Believer to promote his consulting
services to potential clients would his speech be actionable.  Although Axelrod had an economic motivation
to sell as many copies as possible, that doesn’t make the contents of the book
commercial speech.  The specific disputed
passage also lacked an obvious economic motivation to further Axelrod’s
political consulting services.  (The
court expressed doubt whether the passage even referred to Axelrod’s services,
though I think it did; the passage did not, of course, refer to Keel’s services.)
Most troublesome, however, was that the excerpt simply
wasn’t an ad: “a message with a clear, promotional purpose.” Believer didn’t explicitly tout the
availability of Axelrod’s consulting services, and couldn’t fairly be
characterized as an “infomercial.”  This
contrasted to “the unauthorized use of a trademarked name in a prominent
location, such as the front cover of a magazine, or in the domain name for a
business website,” which could be deemed ads. 
Instead, Believer expressed
Axelrod’s political views, and the challenged excerpt was a biographical
Keel also didn’t allege other facts linking Believer to the promotion of Axelrod’s
consulting services. He didn’t allege that Axelrod solicited clients at his
book signing or otherwise stated that Believer
was a marketing tool.  And now we’re
back to Dastar, mushing together the
predicate “commercial advertising and promotion” with the substance of the
claim: if attending book signings were enough to trigger a Lanham Act claim,
then any number of authors could be held liable for mischaracterizations of
past events; but requiring “this degree of accuracy in crediting strategies,
ideas, and/or services mentioned in a larger expressive work” would be the Dastar-barred “search for the source of
the Nile and all its tributaries.”

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