Trademark suit threats to shut down free speech? Shocking.

So far, so good. This is my issue, and it’s not solely a matter of whose ox is being gored, believe me — I have little use for eco-hippies and bicycling polar bears. So what’s the EFF — which didn’t do anything when this happened to my client, mind you, but — what’s the EFF doing about it now?

In a letter sent in response today, EFF reminded the auto show that trademark infringement must involve some commercial use, which is clearly not the case in this non-profit, community-organized protest.”Auto show organizers can’t stop thousands of citizens from attending the SHUTDOWN Festival. Instead, they have resorted to baseless trademark claims to silence critics and interfere with planning for an event that embarrasses them,” said EFF Staff Attorney Jason Schultz. “Both trademark law and the First Amendment won’t allow for that.”

Sounds great! And — wait a minute. Come again?

EFF reminded the auto show that trademark infringement must involve some commercial use, which is clearly not the case in this non-profit, community-organized protest.

Oh, dear. It seems EFF actually did say that, too. Too bad it’s wrong. Use of a trademark “in commerce” is not the same as “commercial use.” Non-profit uses are very much protected by and subject to the Lanham Act. Sure, courts have tripped over themselves over the issue of what is a use in commerce, even ruling in Jews for Jesus v. Brodsky that trademark uses “affecting commerce” even by merely using them as part of a critical statement is a “use in commerce” because it kind of sort of affects the commercial value of the trademark. But even with that increasingly isolated and obviously wrong opinion aside, judges are not shy about slamming non-commercial, or non-profit, uses of trademarks in commerce with sanctions for trademark infringement, nor should they be. There’s nothing in the Lanham Act suggesting that non-profits may infringe trademarks, or even that “non-profit uses” cannot be uses “in commerce” — they certainly can. This is different from uses that are simply, as defined under the case law, not “uses in commerce.”*

Now here there doesn’t seem to be a use in commerce at all, though there may be — this site is a clearinghouse, after all, not merely a “statement.” But even if there weren’t, it’s too bad the EFF overstated, or imprecisely stated the law — too bad for the next schnook who reads this official-sounding letter and gets the wrong idea of what is and isn’t allowed under the Lanham Act. Unless he reads, rather than experiences, LIKELIHOOD OF CONFUSION, of course.

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A trademark is “used in commerce” in connection with goods when “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and . . . the goods are sold or transported in commerce.” 15 U.S.C. §1127(1). A mark is “used in commerce” in connection with services “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.” 15 U.S.C. §1127(2). See Merck & Co. Inc. v. Mediplan Health Consulting Inc.