Can the Detroit Red Wings sue the Detroit Right Wings?
There are slight differences between the Red Wings and Right Wings logo (Photo via Crain's Detroit Business)
Of all the things I expected to see during the “Unite the Right” protest in Charlottesville, Virginia a few weeks ago, the Detroit Red Wings logo (or what appeared to be the logo) was at the bottom of the list. The logo was carried around by a Michigan based right-wing group called the “Detroit Right Wings.” As seen in the photo above, it is very similar to the famous Red Wings "wheel with wing" logo. The main difference can be seen in the wheel, where the spokes of the wheel resemble the Nazi Schutzstaffel SS logo.
The Red Wings and NHL immediately denounced the use of the logo by the Right Wings.
As a part of their statement, the Red Wings said that they would explore “every possible legal action as it pertain[ed] to the misuse of [their] logo in this disturbing demonstration.” There is a debate amongst some people that don’t think it’s worth it for the Red Wings to spend money to fight a small group (no registered corporation or reference to the group in federal court records) that appears to have gone into hiding. On the other hand, there are those who want the Red Wings to make a stand and use trademark law to fight Neo-Nazis.
While this could be an interesting debate, this post is a discussion about what legal action the Red Wings could take against the Right Wings. Even though the Right Wings didn’t use the exact trademarked Red Wings logo and/or profited from the logo, they can still face legal ramifications.
The first cause of action that popped into my head was “Trademark infringement,” which is defined by the United States Patent and Trademark Office (USPTO) as “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services” among consumers.
The main factors examined in these cases include:
The degree of similarity between the marks;
Whether the parties’ goods/services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source;
How and where the parties’ goods/services are advertised, marketed, and sold;
The purchasing conditions;
The range of prospective purchasers of the goods or services
Whether there is an evidence of actual confusion caused by; the allegedly infringing mark;
The alleged infringer’s intent in adopting the mark; and
The strength of the trademark holder’s mark.
While there are clearly some similarities between the Red Wing and Right Wing logos, it would be very difficult to prove that a consumer would be confused about any association between a professional hockey franchise and a Neo-Nazi group. It’s safe to say that the Red Wings and Right Wings are targeting two completely different groups of people, and a consumer would probably recognize whether they are purchasing merchandise from a professional sports franchise or fringe white nationalist group.
This current situation is very different from conflicts like the use of the “Pistol Pete” mascot between Oklahoma State University and New Mexico State University, or the pending issue with the Golden Knights moniker.
The stronger cause of action for the Red Wings would be “Trademark Dilution” under the 2006 Federal Antidilution Act, where an owner of a famous trademark claims that the use of their mark by unauthorized user “diminishes the strength or value of the [ ] mark by ‘blurring’ the mark’s distinctiveness or ‘tarnishing’ the mark’s image by connecting it to something distasteful or objectionable—even if there is no likelihood of confusion.”
(NOTE: The 2006 Act overturned Moseley v. V Secret Catalogue, Inc., which held that a trademark owner had to demonstrate “actual” dilution, while the Act states that an owner only has to show that the defendant’s use is “likely” to cause dilution.)
Basically, dilution occurs when the positive associations of a trademark intended by the owner are tarnished by negative associations created by the unauthorized user, which then lessens the value of the trademark to its owner. It doesn’t matter that the unauthorized use has little connection to or competes with the trademark owner.
For example, famous ice cream purveyor Ben & Jerry’s sued Rodax Distributors, a company that produced adult DVDs under the name “Ben & Cherry’s.”
In order to have a valid trademark dilution cause of action, the plaintiff must own a“famous trademark,” which is given special treatment by the law. Per Section 43(c) of the Lanham Act, “a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Factors a court would consider in determining whether a mark is famous includes:
(1) the duration, extent and geographic reach of advertising and publicity of the mark;
(2) the amount, volume, and geographic extent of sales of goods or services offered under the mark;
(3) the extent of actual recognition of the mark; and
(4) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
While this is a difficult standard to meet, the Red Wings logo likely qualifies as a famous mark. The Red Wings have used this logo continuously since the 1930s and is one of the most iconic and popular logos in hockey, as well as all of sports.
The situation at hand is an ideal trademark dilution scenario since the Red Wings logo is most likely a famous trademark, and the Right Wings are bastardizing it for a clearly reprehensible purpose. As trademark attorney Frank R. Jakes noted, “[t]here is probably no better example of dilution of your brand than when it is appropriated by Neo-Nazis. That is about as derogatory as it gets.” Thus, it could be easily argued that the “Right Wings” unauthorized use is diluting the strength of the mark and tarnishing the logo’s reputation.
If the Right Wings were to be sued (which could be a problem in itself since serving legal papers on a non-corporate structured group with no clue on who the individual members are), they would likely argue Fair Use and First Amendment defenses. However, a group doesn't have Fair Use or First Amendment rights to bootleg another group's merchandise or taint its trademark. Further, it does not appear that the Right Wings are intending to use this logo for parody or satirical purposes.
We'll see if the Red Wings end up bringing a lawsuit. While they wouldn't recover much in damages, the suit would send a positive message to its fans and the hockey community.
Johnson, Pope, Bokor, Rupell & Burns, LLP