Does A 'Don't Mess With The Internet' Billboard Violate Texas' Trademark?

from the use-in-commerce? dept

We recently covered a plan, hatched at SXSW, to crowdfund a billboard in Lamar Smith's home district, with the statement "Don't Mess With The Internet" on it -- in response to Smith's sponsorship of a series of anti-internet bills, most notably, SOPA. First the good news: the crowdfunding campaign reached its $15,000 goal, so it was funded.

However, it's worth noting that the folks over at the Austinist blog have mocked the plan, insisting that it infringes on Texas' trademark on "Don't Mess With Texas" (also the Austinist article seems to go back and forth between trademark and copyright, not recognizing that the two are different). Texas' Department of Transportation (DOT) holds a trademark on the phrase as part of its anti-littering efforts. I had actually thought about this earlier, as we've written about how the state of Texas has been overly aggressive with the trademark, such as going after book authors who have used the title.

Of course, there's a big problem here if Texas does decide to challenge this particular billboard: trademark law covers use in commerce. The billboard in question is not selling anything, is not used in commerce and is pretty clearly protected political speech. The Austinist blog seems to assume, incorrectly, that a trademark is a blanket rule that blocks any such use by anyone ever. That's wrong. It wouldn't surprise me to see Texas still complain and maybe even file a lawsuit, but I can't see how it has any chance of winning at all. In fact, if it did go down that path, the state of Texas might quickly learn that you "don't mess with the internet."


Reader Comments (rss)

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    identicon
    [citation needed or GTFO], Mar 16th, 2012 @ 3:24pm

    Interesting...

    If they do happen to file a lawsuit, couldn't they just stall the net's billboard from going up long enough for Lamar to counter with a billboard of his own, effectively cock-blocking?

     

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      eee_eff, Mar 16th, 2012 @ 4:59pm

      Re: Interesting...

      No, because they would have to file for an injunction, and they would have a high bar the meet to have a restraining order granted. Moving party has to show high propalbility of sucess and irreparable harm unless the injuction be granted

       

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    identicon
    MrWilson, Mar 16th, 2012 @ 3:29pm

    I'm pretty sure "don't mess with Texas" was genericized before it even became a trademark.

    How many people had said, "don't mess with me!" before Texas adopted the phrase?

    How many people had said the exact phrase, "don't mess with Texas" before Texas adopted the phrase?

    Further, why do they imagine that they own a trademark on "don't mess with..." instead of the full phrase?

    It's silly for states to be granted trademarks anyway. The state isn't involved in commerce with their litter campaign either!

     

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      Anonymous Coward, Mar 16th, 2012 @ 5:19pm

      Response to: MrWilson on Mar 16th, 2012 @ 3:29pm

      The slogan with the campaign was created in 1985. There is legal precedent as they have sued people before that have used it and won. However those were cases that were clearly in commerce. Mike is right here. Futhermore, since this billboard is clearly parody for political commentary it also qualifies as fair use.

       

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        Richard (profile), Mar 16th, 2012 @ 5:24pm

        Re: Response to: MrWilson on Mar 16th, 2012 @ 3:29pm

        The slogan with the campaign was created in 1985.

        Err no actually - the slogan goes a LOT further back than this.

         

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          identicon
          Anonymous Coward, Mar 16th, 2012 @ 6:28pm

          Re: Re: Response to: MrWilson on Mar 16th, 2012 @ 3:29pm

          I meant the specific slogan, not the various former ones from which it was a derivative.

           

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    identicon
    Anonymous Coward, Mar 16th, 2012 @ 3:43pm

    How much did Sergei kick in?

     

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    Mr. Smarta** (profile), Mar 16th, 2012 @ 3:45pm

    Do the math...

    "Don't Mess With Texas" contains 21 letters. If the word 'Texas' is removed, that changes approximately 24% of the slogan (removal). Adding the new phrase (12 letters) changes the slogan again with an approximate change of 57%. Combine those values and you have a mean delta of 33% total.

    BUT...

    According to copyright law, the percentage of change required varies. In reference to Circular 14, Copyright Registration for Derivative Works, page 1 (http://www.copyright.gov/circs/circ14.pdf), the document states that "Titles, short phrases, and formatting are not copyrightable."(third paragraph, last sentence). So this is probably all moot anyway.

     

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      Chosen Reject (profile), Mar 16th, 2012 @ 3:50pm

      Re: Do the math...

      I also don't think Texas would have a valid legal argument, but trademark is not the same as copyright. So while your conclusion might be correct, how you got there most certainly is not.

       

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        Mr. Smarta** (profile), Mar 16th, 2012 @ 4:49pm

        Re: Re: Do the math...

        Oops... Ah well. The laws of trademark and copyright both suck. And I don't live in Texas anyway. Let them ride their horses on the range or whatever. Oh, and let them know "Don't mess with my junk." Or touch it. Or whatever. Unless she's a hot TSA agent...

        ... I need beer.

         

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      identicon
      Anonymous Coward, Mar 16th, 2012 @ 4:09pm

      Re: Do the math...

      This is a trademark issue, not a copyright issue.

       

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    identicon
    Anonymous Coward, Mar 16th, 2012 @ 4:02pm

    Don't mess with me!!!

    Oops, I just violated trademark.

     

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    Richard (profile), Mar 16th, 2012 @ 4:52pm

    Derivative

    Don't mess with Texas is merely a pale imitation of the orginal Scottish motto "Nemo me impune lacessit" which may go back as far as Julius Caesar.

    Texas has no claim!

     

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      Anonymous Coward, Mar 16th, 2012 @ 11:24pm

      Re: Derivative

      Umm... That doesn't even translate CLOSE to 'Don't mess with...' so I think you might be barking up the wrong kilt. Err, tree.

       

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        JayTee (profile), Mar 17th, 2012 @ 1:19am

        Re: Re: Derivative

        No one attacks me with impunity - roughly equates to don't mess with me pal

         

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          Richard (profile), Mar 17th, 2012 @ 2:32am

          Re: Re: Re: Derivative

          I remember when the Scots version of the pound coin came out we all joked that the English version said stuffily (puts on best upper class accent "An ornament and a safeguard", whilst the Scottish version said "d ni mess wi me". That was the popular translation at the time (before Texas adopted it).

           

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        Richard (profile), Mar 17th, 2012 @ 2:27am

        Re: Re: Derivative

        Read the link I gave - the Scots rendering is

        "Wha daur meddle wi' me?"

         

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    Ben (profile), Mar 16th, 2012 @ 5:48pm

    Crowdfund the defense?

    I wonder if Texas does sue if these guys will need to crowdfund the defense fund?

     

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    identicon
    Anonymous Coward, Mar 16th, 2012 @ 9:05pm

    I recently attended a Kelly Clarkson concert. At one point her keyboardist was playing a small piano covered with a myriad of stickers. Among them was one that said,"Don't Mess With Texas Women".
    She was excellent, BTW.

     

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    Anonymous Coward, Mar 16th, 2012 @ 9:33pm

    Over the years a LOT of musicians have appeared in the TxDOT PSAs.

     

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    Anonymous Coward, Mar 17th, 2012 @ 1:01am

    It's laughable that Texas got a trademark on such a general and widely-used phrase in the first place.

     

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    Anonymous Coward, Mar 17th, 2012 @ 3:29am

    I hope Texas tries to stop that billboard from going up so they hand over the proof needed to anyone who wants to know why IP law is such a dangerous law today, because it is a exclusionary tools and can and will be used to censor others.

     

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      Anonymous Coward, Mar 17th, 2012 @ 5:33am

      Response to: Anonymous Coward on Mar 17th, 2012 @ 3:29am

      Will TxDOT like it? No.
      Will they have their lawyers send a cease and desist letter? Probably.
      Will they sue to try to get it taken down? Probably not.

      It only supposed to be up for a month anyway.

       

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    Ninja (profile), Mar 17th, 2012 @ 10:42am

    Well, that's an epic win. And if they sue it's gonna be twice as epic. Streisand Effect, any1?

     

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      Anonymous Coward, Mar 18th, 2012 @ 8:55am

      Response to: Ninja on Mar 17th, 2012 @ 10:42am

      Yeah but since when has THAT basic common sense stopped anyone. Their usual tactic is to posture and threaten first to try to pressure the people to stop using it. For instance, they used that tactic to get the University of Texas in Austin to stop selling t-shirts with the slogan on it. I doubt that will work here though.

       

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        btr1701, Mar 18th, 2012 @ 3:29pm

        Re: Response to: Ninja on Mar 17th, 2012 @ 10:42am

        > For instance, they used that tactic to get the University of Texas
        > in Austin to stop selling t-shirts with the slogan on it.

        UT just got a taste of its own medicine, since they seem to think they own the letter 'T'. They threatened to sue some kids who were selling t-shirts with nothing but a capital letter 'T' on the front and the university claimed it violated their IP and threatened to sue them.

        What goes around comes around.

         

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    Kevin (profile), Mar 18th, 2012 @ 7:45am

    I was first

    The term "Don't Mess With ...." has some million or more copyright holders such as anyone who has used the term in a book, movie, comic of TV show.
    Sue happy USA

     

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    identicon
    Anonymous Coward, Mar 19th, 2012 @ 2:10pm

    the ad campaign was created for the anti litter movement

     

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