Hacker Scouts? Yeah, Hacker Scouts! – UPDATED

Hacker ScoutsIt’s like, this, see:

The Hacker Scouts is an organization “that focuses on STEAM (science, technology, engineering, art, and math) education, skill building and community engagement with the aspiration to help our children develop skills in the areas they are truly interested in, abilities that would allow them to dream big and create big.” They filed for a trademark [registration] on the name “Hacker Scouts” and got a legal threat from lawyers for the Boy Scouts of America. After a protracted back-and-forth by mail, the Hacker Scouts have gone public, because the BSA won’t soften its position: call yourselves the ____________ Scouts, and we’ll sue.

Bad Boy Scouts, bad!  And now, say the Hacker Scouts:

Our board will be making a decision soon, based on advice from our lawyers and our own sense of duty. Our primary responsibility is to act in service of our mission and the kids we serve. We have been thinking a lot about our core values and what path models those values to the community we care so deeply about; moving on when it is necessary or standing up for what is right. Thinking about this situation in that context has been powerful and meaningful for us.

I like these Hacker Scouts.  Not just because they’re victims of trademark bullying, but because they seem to be reacting thoughtfully and maturely to the situation they are facing.  As Popehat says, they’re being smart.

I would love to see that cease and desist letter, because that’s going to be where the really soft spots are — as with all phony-baloney threats.  In particular, I’d like to see exactly what Hacker Scouts means by this, from their post:

The BSA’s main argument is that they have a constitutional charter that they interpret to mean they have the right to use and trademark any word they choose.

I wish the BSA’s lawyer letter really said something that stupid.  But we’re looking for smart here.  Can you give us a little more, Hacker Scouts?

UPDATE:

Hunh.  Thanks, Jay Wolman!  And here’s what that law says:

The corporation [i.e., the BSA] has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts. This section does not affect any vested rights.

Yeah, pretty broad.  Pretty too broad, no? Let’s do some research on this statute and see what we scare up.  True, way back in 1960 it was read and applied quite literally, though, in a case involving a group called the “Safety Scouts” — as applied to an infringement claim by the Girl Scouts.  In that case, the Eastern District of New York held:

The words, ‘Safety Scout,’ when applied to the articles of clothing, merchandise and products upon which the defendant has placed or intends to place the emblem, ‘Safety Scout,’ suggests, if it does not actually indicate, that these articles are sponsored by the plaintiffs.

Girl Scouts of U.S. of Am. v. Hollingsworth, 188 F. Supp. 707, 715 (E.D.N.Y. 1960).  And, as Jay points out in a subsequent tweet, this rule was applied in a far more recent (unpublished) case, Wrenn v. BSA, 2008 U.S. Dist. LEXIS 91913 / 2008 WL 4792683 (N.D. Cal. Oct. 28, 2008), in which the court wrote ruled that “BSA need not demonstrate the likelihood of confusion because it has been granted special protection by Congressional charter,” citing The Last Best Beef, LLC v. Dudas, 506 F. 3d 333, 339 (4th Cir. 2007) and S.F. Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 531 (1987).  (See discussion here.)  AccordBoy Scouts of Am. v. Teal, 374 F. Supp. 1276, 1278 (E.D. Pa. 1974) (enjoining use of “Sea Scouts”).

Well, folks, once you throw away LIKELIHOOD OF CONFUSION… indeed, what do I know?  The phrase “they have a constitutional charter that they interpret to mean they have the right to use and trademark any word they choose” was itself confusing, but it now appears that, yes, Congress has given the Boy Scouts a statutory license to be trademark bullies.

And that is the way it is — not the way it has to be, mind you, but the way it is.

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Ron Coleman

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15 thoughts on “Hacker Scouts? Yeah, Hacker Scouts! – UPDATED

  1. I don’t want to make any more changes to the post at this point, but the issue is discussed more explicitly, and authoritatively, in a case brought by another non-profit organization that also had a Congressional charter, and which sought relief similar to that obtained by the BSA under its statute. The Southern District of New York rejected the claim and wrote, in an opinion that was affirmed by the Second Circuit Court of Appeals, as follows:

    The Boy Scouts case involved a charter that granted the Boy Scouts “the sole and exclusive right to have and to use,” among other things, the “words and phrases now or heretofore used by the Boy Scouts of America in carrying out its program.” Boy Scouts of Am., 374 F.Supp. at 1278 (citing 36 U.S.C. § 27). In contrast to ANTA’ s charter, the Boy Scout’s charter extended the exclusive naming right to “words and phrases,” thus creating substantially broader protection for the Boy Scouts’ name.

    Am. Nat. Theatre And Acad. v. Am. Nat. Theatre Inc., 472 F. Supp. 2d 487, 492 (S.D.N.Y. 2006) aff’d sub nom. Am. Nat. Theatre & Acad. v. Am. Nat. Theatre Inc., 535 F.3d 123 (2d Cir. 2008).

    That’s a tough hand to beat.

    Good thing, eh, Scott Greenfield?, that blogging and legal representation are not the same thing!

  2. Well, one more thought.

    If the law explicitly gives you the right to be a trademark bully, arguably you are not a bully at all: You’re entitled to what you are demanding.

    You may be greedy, piggish or mean, but I think you are not a bully.

  3. Ron, it appears you have retracted the term “bully” from the article, but I see the Boy Scouts’ point here.

    The “Hacker Scouts” state that the term “Scouts” was used to mean “youth organizations” before the Boy Scouts came into existence. I disagree, and I would challenge Hacker Scouts to provide such organizations.

    It is obvious to even the casual observer that the “Hacker Scouts” are using the term “Scouts” precisely because it conjures the Boy Scouts/Scouting experience. It would go a long way in my mind to getting them some sympathy if the Hacker Scouts admitted this was their thought when they developed the program.

    1. I think there is one, in the sense that the Supreme Court hasn’t rejected it — but every court that has heard it until now has done so. And it’s probably a strained one anyway.

  4. I know this is an old post, but just out of curiosity, if someone were to make a movie titled “Hacker Scouts” that would be allowed, right? Fair use and all that. Or a documentary about Hacker Scouts and their peculiar court battle? Or would BSA’s special protection extend that far?

    1. I don’t know! Does fair use apply to this statute? It’s really not clear. I think it might because at a certain point fair use is has been applied to trademark and copyright at the “statutory level” by way of constitutional principle, where I believe it originates. Therefore even though these special statutes don’t carve out a fair use defense as, for example, the Copyright Act does, the First Amendment still applies.

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