Rebecca Tushnet

HT Eric Goldman.
This is one of those cases that seems to be an extreme outlier, but then again
see United We Stand America v. United We Stand
America, New York, applying
the Lanham Act to similar but perhaps more limited effect.

 

Canegata v. Schoenbaum, 2016 WL 3212270, SX-16-CV-324 (V.I. Super. Ct. May 27, 2016)

In early May, the
Territorial Committee of the Republican Party of the U.S. Virgin Islands held a
special meeting setting a date for the territorial convention; adopting rules
for selection of nominees and party officers at that convention; and amending
the Party’s rules. A few days later, John Canageta, the State Chairman of the
Republican Party of the U.S. Virgin Islands, and Robert Schanfarber, the
Secretary, issued a “Call of the 2016 Republican Territorial Convention” to Republican
voters telling them about the territorial convention.

Then, an alleged
majority of the Territorial Committee demanding that Canegata issue a call for
the territorial convention to take place on a different day. This group then
appointed some individual defendants as the Territorial Convention Subcommittee.
Herbert Schoenbaum, the First Vice-Chairman, then issued a call consistent with
the Committee’s demand, based on the written refusal of Canageta to abide by
the Committee’s demand. The Territorial Convention Subcommittee set up a
Facebook page “to communicate with registered Republicans who want to
participate in the [May 28, 2016] Territorial Convention.” The title of the
page was “Territorial Convention of the Republican Party of the USVI” and
identified the date of the convention as May 28. The profile picture contained
“an image commonly associated with the Republican Party of the U.S. Virgin
Islands,” a variation on the USVI flag, with a red, white and blue elephant
logo, with three stars across its back, in the center of an eagle and “GOP” underneath the eagle.

Plaintiffs sought a
TRO enjoining defendants’ use of (1) any symbol, emblem and insignia of the Republican
National Committee, namely the Elephant; and (2) the “Republican Party of the
U.S. Virgin Islands” name. Defendants voluntarily took down the logo, replacing
it with a red, white and blue elephant logo upholding five stars across its
back, and left the title and description of the Facebook page the same.

The court stated the
issue clearly: “the extent to which a political party may prevent a dissident
group from using the descriptive name and the symbol, emblem, or insignia of
said political party.”  Plaintiffs and
defendants were all members of the Republican party, rivals for control of the
Territorial Committee.  But defendants
were in violation of V.I. law because they didn’t have plaintiffs’ consent to
use the name, symbol, emblem, or insignia of the Republican party.

Title 18 V.I.C. §
301(c) provides that:

Whenever a political party in the Virgin Islands affiliates with a national
political party, committee, convention or organization, regardless of when such
affiliation took place, no association, group, club, organization or
instrumentality shall use the symbol, emblem, or insignia, of the national
political party, convention, committee or organization which has affiliated
with a Virgin Islands political party, without the express consent in writing
from the chairman and secretary of the Virgin Islands political party filed with
the Supervisor of Elections.

Without a word about
the obvious constitutional questions here (for a start, unless “use” means
“confusing trademark use,” there’s no way this can survive even gentle
scrutiny), the court tried to figure out what constituted “a symbol, emblem, or
insignia of the Republican National Committee.”
Given the replacement image’s similarity to the GOP elephant—both are
red, white, and blue, with stars across their backs—“the average layman could
very well interpret this image as a symbol, emblem, or insignia of the
Republican National Committee, especially when used in the context to call a
territorial convention of the Republican Party of the Virgin Islands.”  Thus, plaintiffs showed a reasonable
probability of success on the merits.

But the law didn’t
cover the party’s “name.”  (Cf. Qualitex, holding that “symbol” covers
everything that can hold meaning to consumers.)
But, wait for it, because defendants aren’t the Republican Party of the
VI, plaintiffs can also prevent the [trademark] use of the Party’s name via a
misappropriation theory.  “Those in
control of the Republican Party of the U.S. Virgin Islands may lawfully prevent
the appropriation of their name by organizations not functioning under the
aegis of the Republican Party of the U.S. Virgin Islands.”

Irreparable harm:
Plaintiffs pointed to the confusion “that will certainly ensue with regard to
the actual date of the territorial convention.”
This would harm the Party’s reputation and credibility, including with
the RNC.  “Loss of control of reputation
and loss of good will are established grounds for irreparable injury.” As for
harm to defendants, they wouldn’t be harmed by being enjoined from using a name
and a symbol they’re not entitled to use, though they could continue their
vigorous opposition to the present party leadership:

Defendants can continue to operate their Facebook Page. The relief
would be limited to enjoining Defendants from the use of the symbol, emblem, or
insignia of the Republican National Committee, namely the image of a red, white
and blue elephant logo upholding stars across its back and the use of the
“Republican Party of the U.S. Virgin Islands” name to avoid potential confusions
among citizens. The injunction need not extend to the point of excluding
entirely the use of the descriptive word “Republican”, so long as Defendants
make it clear that the named group is in opposition to those currently in
control of the Republican Party of the U.S. Virgin Islands. [ed. note: whose
full name they can’t use, by those terms.] The purpose here is to avoid
potential confusion.

The public interest
also favored prevention of confusion about the Republican Party, which would
also protect voters’ rights. TRO granted.