Case 3:14-cv-00150-SDD-SCR Document 29 04/07/14 Page 1 of 8
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`UNITED STATES DISTRICT COURT
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`MIDDLE DISTRICT OF LOUISIANA
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`CIVIL ACTION
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`14-00150-SDD-SCR
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`JAY DARDENNE
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`VERSUS
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`MOVEON.ORG CIVIL ACTION
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`RULING
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`BACKGROUND AND PROCEDURAL POSTURE
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`I.
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`Sticks and stones may break bones but words can never hurt, or so the adage
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`goes. However, in this case, the Lieutenant Governor’s office (as the Chief of
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`Louisiana’s tourism industry) argues that MoveOn.org’s use of a Louisiana trademark
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`on a billboard is causing irreparable injury to the State. The State of Louisiana, through
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`the Office of the Lieutenant Governor, has spent almost $70 million developing and
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`using the following state registered service mark.
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`This “service mark” was registered with the Louisiana Secretary of State’s office
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`in January of 2011. In 2014, MoveOn.org erected the following billboard on the
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`eastbound side of Interstate 10 in West Baton Rouge Parish:
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`The State, through its Motion for Preliminary Injunction1, asks this Court to
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`compel MoveOn.org to immediately remove the billboard and prohibit MoveOn.org from
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`using Louisiana’s service mark in any other advertising or media.
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`On the one hand is the State’s claim of trademark infringement, on the other is
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`MoveOn.org’s right to free speech. The subject Billboard is critical of the State’s health
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`care policies.2 MoveOn.org has a First Amendment Constitutional Right to criticize the
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`State with respect to any of its public policies, including its health care policies. The
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`issue is whether MoveOn.org may use the State’s registered service mark as part of its
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`means and manner of criticizing the State or the Governor.
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`As observed by the United States Supreme Court, “[s]peech is an essential
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`mechanism of democracy, [for] it is the means to hold officials accountable to the
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`people.”3 “The right of citizens to inquire, to hear, to speak, and to use information to
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`reach consensus is a precondition to an enlightened self-government and a necessary
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`1 Rec. Doc. 2.
`2 The subject billboard is actually critical of Governor Bobby Jindal, but Jindal is the Chief policy maker for
`the State.
`3 Citizens United v. Federal Election Commission, 558 U.S. 310, 312 (2010).
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`means to protect it.”4 For these reasons, “political speech must prevail against laws that
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`would suppress it, whether by design or inadvertence.”5 The United States Supreme
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`Court has held that laws which burden political speech are “subject to strict scrutiny”
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`requiring the government to prove that the “restriction ‘furthers a compelling interest and
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`is narrowly tailored to achieve that interest’.”6 Thus, the question before this Court is:
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`Does the enforcement of trademark laws7 burden MoveOn.org’s constitutional right to
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`free political speech. If so, the state must demonstrate that its interest in protecting its
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`service mark from unauthorized use by MoveOn.org is compelling and that the
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`injunctive relief sought is narrowly tailored to achieve that interest.
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`A preliminary injunction is an extraordinary remedy that may be used only upon a
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`clear showing of the substantial likelihood of success on the merits and irreparable
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`injury. Not only must the State demonstrate a likelihood of success on the merits and a
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`likelihood of irreparable harm, the State must also show that the balance of equities tips
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`in its favor and that an injunction is in the public’s best interest.8
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`At that outset, the Court notes that the people of Louisiana have an interest in
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`protecting the propriety of their service mark; but, is that interest so compelling as to
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`require that MoveOn.org be prohibited from using it as a parody to criticize the State’s
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`healthcare policies?
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`II.
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`TRADEMARKS GENERALLY
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`“A trademark is a word, phrase or symbol that is used to identify a manufacturer
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`or sponsor of a good or provider of a service. It’s the owners’ way of preventing others
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`4 Id. at 339. 
`5 Id.
`6 Id. citing Federal Election Com’n v. Wisconsin Right to Life, Inc., 551 U.S. 449, 464 (2007).
`7 15  U.S.C. § 1114 and La. R.S. § 51:222. 
`8 Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008).
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`from duping consumers into buying a product they mistakenly believe is sponsored by
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`the trademark owner.”9 Thus, the main purpose of trademark laws is to “secure the
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`owner of the trademark the good will of his business and to protect the ability of
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`consumers to distinguish among competing products.”10 The goal of the federal
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`trademark law, upon which the State’s trademark law is patterned, is to protect from
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`unfair trade competition. That is, to protect from counterfeits, copies, and colorable
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`imitations of registered marks.11 In short, claims of trademark infringement are intended
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`“to protect persons engaged in… commerce against unfair competition.”12
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`To prevail on a trademark infringement claim the State must show two things.
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`First, the State must establish ownership and a legally protectable mark and, second,
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`the State must show infringement by demonstrating that the unauthorized use of the
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`mark creates a likelihood of confusion in the minds of the consumer.13 Likelihood of
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`confusion is synonymous with a probability of confusion, which is more than a mere
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`possibility of confusion.14 A determination of a likelihood of confusion under federal law
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`is the same as the determination of a likelihood of confusion under Louisiana law for a
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`trademark infringement claim.15
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`Louisiana is using its service mark to encourage and promote tourism, a form of
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`commerce. The Parties do not dispute that the State has a legally protectable mark.
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`The critical issue is whether MoveOn.org’s use of the State’s service mark “creates a
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`9 Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002)(internal citations omitted). 
`10 Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355 (5th Cir. 2002).
`11 15 U.S.C. § 1114(1)(b).
`12 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992).
`13 Board of Supervisors for Louisiana State University v. Smack Apparel Company, 550 F.3d 465, 474 (5th
`Cir. 2008); Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 235-236 (5th Cir. 2010).
`14 Elvis Presley Enters. v. Capece, 141 F.3d 188, 193 (5th Cir. 1998). 
`15 Blue Bell Bio–Med. v. Cin–Bad, Inc., 864 F.2d 1253, 1260 (5th Cir.1989); see also 3 J. Thomas McCarthy, McCarthy 
`on Trademarks and Unfair Competition § 23:3 (4th ed.1997). 
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`probability of confusion in the minds of the viewers of the billboard as to the ‘source,
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`affiliation or sponsorship’ of the message.” The burden of proving infringement is on the
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`State and, in this preliminary injunction context, the State must demonstrate that it is
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`substantially likely to prove at a subsequent trial on the merits that MoveOn.org’s use of
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`the State’s service mark creates a probability of confusion in the minds of the viewers of
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`the billboard.
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`III.
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`THE FIRST AMENDMENT
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`This case “involves the tension between the protection afforded by the Lanham
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`Act to trademark owners and the protection afforded by the First Amendment to
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`expressive activity.”16 “When the unauthorized use of another’s mark is part of a
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`communicative message and not a source identifier, the First Amendment is implicated
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`in opposition to the trademark.”17 “[T]rade rights do not entitle the owner to quash an
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`unauthorized use of the mark by another who is communicating ideas or expressing
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`points of view.”18 While the “First Amendment may offer little protection for a competitor
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`who labels its commercial good with a confusingly similar mark,”19 the First Amendment
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`is implicated when a trademark is used by someone other than the mark owner for the
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`purposes of “communicating ideas or expressing points of view”.20
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`MoveOn.org contends that it used Louisiana’s service mark as a parody to
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`express a political point of view. MoveOn.org argues that it is employing parody21 by
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`poking fun at the State’s logo and slogan in order to criticize the State. According to
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`16 Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 664 (5th Cir. 2000).
`17 Mattel, 296 F.3d at 901. 
`18 L.L.Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987), citing Lucasfilm Ltd. v. High
`Frontier, 622 F.Supp. 931, 933-35 (D.C.D.C. 1985).
`19 Mattel, 296 F.3d at 900. 
`20 Id. , quoting L.L.Bean, 811 F.2d at 29.
`21 Parody is an artistic work or message that uses at part of its composition, the mark of another to
`ridicule the author of that mark. Campbell v. Acuff-Rose Music, 510 U.S. 569, 580 (1994).
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`MoveOn.org, its “intent was to communicate… the message that, whereas the
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`Louisiana tourism campaign is promoting the State as a desirable place to visit, the
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`State might be considered an undesirable place to visit because of its [health care
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`policies]”.22
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`It is clear to the Court that MoveOn.org did not use Louisiana’s service mark for
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`the purpose of gaining attention to products and services associated with mark, but as a
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`parody for the purpose of expressing an idea, opinion, or criticism. However, parody
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`does not provide an absolute cloak of protection from a claim of trademark infringement
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`claim. Parody notwithstanding, if reader confusion is likely, an action for trademark
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`infringement lies.
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`The State argues that viewers of the billboard will be confused into thinking that
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`the Lieutenant Governor, as the alleged owner of the service mark, is being critical of
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`the Governor. In this Court’s view, the Lieutenant Governor underestimates the
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`intelligence and reasonableness of people viewing the billboard.
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`The State’s argument that viewers of the billboard may be confused into
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`believing that the Lieutenant Governor is criticizing the Governor is strained. First,
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`viewers would have to know that the service mark in question is a creation of and
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`sponsored by the Lieutenant Governor’s Office. There is no evidence of this.
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`Furthermore, neither the Lieutenant Governor himself, nor the Office of the Lieutenant
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`Governor as an agency of the State, is the owner of the mark. The owner of the mark is
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`the State, and more specifically its citizens.23 Hence, the Court is being asked to find
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`22 Rec. Doc. 17, p. 14.
`23 It is well established that the property of agency of the State is the property of the State itself. Board of
`Commissioners of New Orleans Levee District v. Department of Natural Resources, 496 So.2d 281, 288
`(1986).
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`that viewers of the billboard are likely to believe that the State, as the owner of the
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`service mark, is being critical of the Governor. The State argues that MoveOn.org’s
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`billboard does not criticize the owner of the mark, the State of Louisiana, but rather it
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`criticizes Governor Bobby Jindal. Essentially, the State argues that the target of
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`MoveOn.org’s parody (Governor Jindal) is not the holder or owner of the mark (the
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`State). The question is whether the disconnect between the owner of the mark and the
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`target of the parody creates viewer confusion. In other words, is a motorist viewing the
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`billboard likely to conclude that the State of Louisiana is criticizing Governor Jindal. The
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`Court thinks not.
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`In Lamparello v. Falwell,24 the defendant in a trade mark action used a domain
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`name which incorporated the Reverend Jerry Falwell’s name for the purposes of
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`criticizing Falwell’s views. The Fourth Circuit found that “[n]o one would believe
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`Reverend Falwell sponsored a cite criticizing himself, his positions….”25 Like the Falwell
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`case, it is inconceivable to this Court that a reasonable person reading the subject
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`billboard would likely be confused into believing that the State or the Lieutenant
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`Governor are sponsoring a billboard critical of the elected Governor of the State.26
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`IV.
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`CONCLUSION
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`The Court concludes that the State has not demonstrated a substantial likelihood
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`of prevailing on its burden of proving confusion by viewers of the billboard. Furthermore,
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`the State has failed to demonstrate a compelling reason to curtail MoveOn.org.’s
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`political speech in favor of protecting of the State’s service mark. Finally, the State failed
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`24 420 F.3d 309 (4th Cir. 2005).
`25 Id. at 315. 
`26 In an effort to show confusion, the State offered a survey of 200 motorists which the State contends
`demonstrates confusion. The Court places little weight on the survey results for the reason that the
`survey’s methodology was fundamentally flawed in both its sampling and the questions employed.
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`to demonstrate that injunctive relief is required to ameliorate irreparable injury. There
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`has been no showing of irreparable injury to the State. Accordingly, the Motion for
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`Preliminary Injunction filed by Jay Dardenne is DENIED.
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`SO ORDERED.
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`Signed in Baton Rouge, Louisiana, on April 7, 2014.
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` S
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`JUDGE SHELLY D. DICK 
`UNITED STATES DISTRICT COURT 
`MIDDLE DISTRICT OF LOUISIANA 
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