The City of Mesa is upset that Whittaker is using its three-tiered logo.Jeremy Whittaker for Mesa
A well-known First Amendment lawyer has formally responded on behalf of a city council candidate in Mesa, Arizona, who is accused of abusing the city’s trademarked logo in his campaign literature.
In his Monday response letter, lawyer Paul Alan Levy informs the City of Mesa’s lawyer that “not every use of a trademark constitutes infringement, and the First Amendment protects Whittaker’s use of these logos for purposes of noncommercial political expression.” Levy represents political hopeful Jeremy Whittaker.
The dispute represents yet another seemingly overzealous attempt at restricting speech using intellectual property laws. Levy has proven successful at halting such cases: earlier this year he defended an anonymous YouTube user when the subject of the user’s video, a Georgia dentist, attempted to reveal the user’s identity.
Whittaker received a demand letter last week from Kenneth Booth, an IP lawyer who represents the City of Mesa Municipal Development Corporation.
Booth argued that because Whittaker was using and continues to use the City of Mesa’s three-tiered logo on his campaign materials, that it “implies an endorsement of [his] candidacy by the City of Mesa and must stop immediately.”
Levy blasted Booth’s legal arguments and concluded that “Whittaker is not going to give in to your demand on behalf of the incumbent city officials, who apparently hope to use trademark bullying to run up the costs of an independent candidate challenging a longtime city employee whom the incumbents prefer.”
In his own five-page letter, Levy outlined a three-part argument: firstly, that under the First Amendment, government entities cannot halt “truthful political speech.” Secondly, he pointed out that the Ninth Circuit Court of Appeals has ruled in Bosley Medical Center v. Kremer that trademark infringement law is primarily designed to prevent confusion of potential customers, not to prevent political speech.
Finally, Levy warns that the “threat of litigation” is “taking your client down a very dangerous and costly road,” as it could result in the loss of the trademark for the City of Mesa.
In my letter so far, I have indulged the assumption that your client has consistently made, and on which your letter rests: that the three-tier logo is effectively Mesa’s city insignia.
But your demand letter performs a clever sleight of hand—you say that you are writing on behalf of the “City of Mesa Municipal Development Corporation,” which you say will be referenced as “City of Mesa”; then you go on to talk about how the logo belongs to the City of Mesa.
But it does not, and it cannot.
Section 2(b) of the Lanham Act, 15 U.S.C. 1052(b), provides that no mark may be registered if it “consists of or comprises the flag or coat of arms or other insignia of … any State or municipality.” That is no doubt why, instead of seeking to register the three-tier logo on behalf of the City of Mesa as a city insignia, you secured Registration No. 4,073,776 as counsel for the City of Mesa Municipal Development Corporation, and only for such specialized services as construction planning, library services, utility services and the like. You made no claim that this would be a mark for political campaign purposes, and no claim that it would be a general city logo.
Booth did not respond to Ars’ request for comment.