Can an individual expect fair use protection when using a government trademark? That question lies at the heart of a dispute between a graphic artist named Dan McCall and the National Security Agency (NSA). McCall made t-shirts with the NSA’s seal and text that said “The NSA: The Only Part of the Government that Actually Listens.” The NSA then sent a cease and desist order, asking McCall to take his t-shirts off the market. The NSA also sent a takedown order to Zazzle (the company making the t-shirts at the time) over the use of their trademark.
This provides an interesting contrast with other sections of intellectual property law. The government can’t, for example, own copyrighted works (per section 105 of the Copyright Act), though it can receive them through assignment or bequest. However, the NSA is specifically authorized by statute to protect its symbol and name (in a manner similar to trademark law). Section 15 of the National Security Act (PL 86-36) allows the NSA to prevent people from “knowingly us[ing] the words ‘National Security Agency’, the initials ‘NSA’, the seal of the National Security Agency, or any colorable imitation of such words, initials, or seal in connection with any merchandise, impersonation, solicitation, or commercial activity in a manner reasonably calculated to convey the impression that such use is approved, endorsed, or authorized by the National Security Agency.” Section 15 then permits the Attorney General to begin court proceedings to enjoin the offending party. The major issue to point out is that the NSA’s seal is not protected by Lantham Act, like a normal trademark. The law protecting the NSA’s trademark is also (not surprisingly) much narrower in scope.
The first thing to look at is whether McCall violated section 15 in the first place. In order for a violation to exist, McCall’s shirt must be “reasonably calculated to convey the impression that such use is approved, endorsed, or authorized by the National Security Agency.” As Public Knowledge points out, McCall could make a reasonable argument that his shirt does not convey the impression of receiving any kind of approval from the NSA. In fact, it seems rather unbelievable that anyone would read a slogan like the one on the shirt (“The NSA: The Only Part of the Government that Actually Listens”) and think that the creator had the NSA’s approval or endorsement. The shirt even changed the NSA’s slogan on their seal to “Peeping While You’re Sleeping.” This defense even resembles the normal test for trademark infringement (likelihood of confusion) to a degree, which has factors that include: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent. It seems unreasonable that an individual stumbling on the shirt on Cafepress (its current home) would confuse it for something the NSA put out officially.
If this line of argument failed, McCall could argue that his t-shirt is protected by fair use. Now, it is not entirely clear that fair use would apply to the NSA in the way it applies to normal market actors. The NSA get its intellectual property protection from its own statute and, as far as I could tell, there isn’t a case clarifying whether a defendant can claim fair use if the NSA asserts these rights. In addition, there are differences between fair use in trademark law and fair use in copyright law (of which I won’t go into detail, since that is another post on its own). In either case, fair use finds its philosophical underpinnings in the First Amendment’s right to free speech. Preserving the right to criticize and parody is seen as a strong enough interest by the US legal system. Trademark fair use follows this logic, permitting individuals to use trademarks when citing or referring to other products for identification purposes (called nominative use) or in order to parody. In terms of parody, courts tend to favor protection for less commercial parodies of commercial marks but the limits of this defense are not entirely clear.
However, the introduction of a government actor introduces a significant wrinkle in this analysis: the First Amendment almost certainly protects political speech against government incursion. McCall could easily state that his purpose in making the t-shirt was to express his political beliefs regarding the NSA’s domestic information collection programs. That potentially changes a judge’s analysis greatly, since McCall could argue that the First Amendment exists for precisely this purpose (preventing the government from restricting criticism of its activities). While the government could cite the commercial nature of McCall’s shirts, McCall could argue that the commercial nature of his enterprise is minor compared to the harm inflicted by a government injunction limiting political speech. Finally, the standard in such a situation is strict scrutiny. Strict scrutiny requires that the government action be narrowly tailored to serve a compelling state interest. The government can receive a lower level of scrutiny in some situations (such as content neutral restrictions on rallies) but the government is generally seen as having no sufficiently compelling interest in cases involving speech discussing social, political, or economic matters (Casey v. Brown, 447 U.S. 455 (1980).). That First Amendment issue may give McCall a significantly more compelling case.
In some ways, this case provides an interesting nexus between intellectual property law and Constitutional analysis. McCall has decided to try his chances in court. It should be interesting to see what conclusions the judge will reach.