Conduct Unbecoming

APOLLOMEDIA LETTER TO NAVY BY MICHAEL TRAYNOR

J.D. Scranton
Captain, JAGC, USN
Staff Judge Advocate
United States Naval Academy
Office of the Superintendent
Annapolis, MD 21402

Dear Captain Scranton:

We are writing on behalf of ApolloMedia in response to your letter to it of 24 February 1995, which states:

This is in response to your letter of February 14, 1995 in which you sought clarification of the basis for denying permission to use a United States Naval Academy recruiting poster in the CD ROM version of the book Conduct Unbecoming

The United States Naval Academy crest is a trademark registered with the United States Patent and Trademark Office (Reg. No. 1,810,681) pursuant to the Trademark Act of 1946, as amended (Lanham Act, 15 USC Chapter 22). The United States Naval Academy crest is predominately displayed on the poster in question which is an Academy advertisement. Its use, therefore, is subject to the approval of the United States Naval Academy.

Our understanding of the salient facts is as follows: The poster in question dates from about 1972 and has been in the public domain since then. It is not copyrighted and copyright protection "is not available for any work of the United States Government," 17 U. S. C. _105, i.e. , "a work prepared by an officer or employee of the United States Government as part of that person's official duties." 17 U.S.C. _101. It is a recruiting poster/advertisement with the heading "Be Something Special," below which are the photographs of two midshipmen, and underneath the photographs is the heading "Become a Naval Officer. " Some brief text follows, on the left side of which is the crest that you refer to. At the bottom are the words "United States Naval Academy Annapolis Maryland 21402." One of the two midshipmen depicted is Boyd E. "Eddie" Graves, whom we understand was the Academy's first black recruitment "poster boy" and received an honorable discharge from the Navy in 1977. Our client's CD ROM will contain other images of Mr. Graves and related text. The other midshipman depicted in the poster is not known to our client.

The CD ROM includes the text of the book Conduct Unbecoming by Randy Shilts; the text of the Executive Summary from National Defense Research Institute (1993), "Sexual Orientation and U.S. Military Personnel Policy: Options and Assessment," RAND, MR-323-OSD; and approximately 3,500 photographic and textual images, including photographs of gay and lesbian service members, past and present.

The CD ROM also includes images of your letter of 24 February 1995, quoted above, and your earlier letter to ApolloMedia, dated 8 February 1995, which reads as follows:

This is in response to your request for permission to use a United States Naval Academy recruiting poster in a CD ROM version of Randy Shilts' book, Conduct Unbecoming. The United States Naval Academy is unable to approve your request for use of the poster. We wish you success with finding other sources of illustration for your project.

In the CD ROM, the images of your two letters immediately follow the image of the poster. In addition, the inside front cover of the CD ROM container states:

None of the images, photographs, and reproductions, digitized or otherwise, displayed herein or on the packaging, promotional material, or advertising material imply or are intended to imply official U.S. Department of Defense approval or endorsement of the images or opinions expressed. These images, photographs, or reproductions, digitized or otherwise, are presented for journalistic purposes only.

ApolloMedia's CD ROM deals with a subject of intense public concern, namely, our country's policies regarding sexual orientation and U.S. military policy. That policy has been and is the subject of acute debate in the media and in all three branches of government, i.e., the Executive Branch and Department of Defense, Congress, and in the judiciary, in various court cases. The CD ROM constitutes both a reference work and a visual commentary that is relevant and important to the debate. It is speech entitled to the greatest and strictest protection under the First Amendment to the Constitution of the United States.

The protective aegis of the First Amendment is not limited to handbills or newspapers. It extends unquestionably to new forms of electronic communications such as CD ROMs no less than it does to newspapers, books, or phonograph records. The Supreme Court of the United States has stated emphatically that "the press in its historic connotation comprehends every sort of publication which affords a vehicle of information and opinion." Lovell v. Griffin, 303 U.S. 444, 452 (1938). As the United States Court of Appeals for the Ninth Circuit recently held in the context of investigative reporting, "The journalist's privilege is designed to protect investigative reporting, regardless of the medium used to report the news to the public." Shoen v. Shoen, 5 F.3d 1289, 1293 (9th Cir. 1993). "It makes no difference whether 'the intended manner of dissemination [is] by newspaper, magazine, book, public or private broadcast medium, [or] handbill. "' Id., citing von Bulow v. von Bulow, 81 1 F. 2d 136, 144 (2d Cir.), cert. denied, 481 U.S. 1015 (1987). See also Cantwell v. Connecticut, 310 U.S. 296 (1940) (record).

We appreciate your identifying the United States Naval Academy's trademark rights as the source of your concern. Our client acknowledges those rights. However, protection for trademark rights under the Lanham Act is limited to protection against another's use of a designation to identify its business or in marketing its goods or services in a way that causes a likelihood of confusion. Such trademark rights do not override First Amendment rights.

There is no likelihood of confusion presented by ApolloMedia's use of an image of the poster in its CD ROM. It is not making any trademark use of the Academy's crest. It is not using the Academy's trademark to suggest any association between itself and the Academy or that the CD ROM is produced, sponsored, certified, or approved by the Academy. Our client's placement of the images of your two letters in immediate sequence after the poster image and its disclaimer will make clear beyond question that its use of that image is not produced, sponsored, certified, or approved by the Academy.

ApolloMedia is a publisher of CD ROMS. It is not in the business of recruiting naval officers. It has no connection with the Academy or the military or the activities conducted by either. It is not competing with the Academy. It is not using the Academy's trademark to suggest any association with the Academy. The services rendered by the Academy and the services rendered by ApolloMedia are different and distinct. ApolloMedia, as part of its publishing services, is using the image of a poster that has been in the public domain for over twenty years. For purposes of the CD ROM, the presence of the Academy crest therein is merely referential. Accordingly, ApolloMedia is not infringing the Academy's trademark. Instead, it is making fair use and protected First Amendment use of the poster for a vital public purpose.

We respectfully suggest that the Academy's reliance on federal trademark law is not consistent with applicable authority. We invite your attention to the following authorities that support ApolloMedia's use of the poster image as a noninfringing fair use protected by the First Amendment: Lanham Act, 15 U.S.C. _1114(l) (requirement that "use is likely to cause confusion, or to cause mistake, or to deceive"); Lighthawk, Environmental Air Force v. Robertson, 812 F.Supp. 1095 (W.D. Wash. 1993) (federal statute granting the Forest Service exclusive use of the SMOKEY BEAR designation held unconstitutional as applied against use in a political advertisement); Stop the Olympic Prison v. United States Olympic Committee, 489 F.Supp. 1112 (S.D.N.Y. 1980) (protected political use of poster containing the word "Olympic"); Girl Scouts of the United States v. Personality Posters Mfg. Co., 304 F. Supp. 1228 (S. D. N. Y. 1969) (protected parody of Girl Scout image and motto "Be Prepared"); WCVB-TV v. Boston Athletic Assn, 926 F. 2d 42 (1st Cir. 1991) (protected referential nonconfusing reference by TV station to the trademark "Boston Marathon"); New Kids on the Block v. New America Pub., Inc., 971 F.2d 302 (9th Cir. 1992) (protected nominative fair use by newspapers in conducting polls); Restatement (Third) of Unfair Competition _20 (1995) (likelihood of confusion test); id., comment b (the "confusion must present a significant risk to the sales or good will of the trademark owner"); id., Reporter's Note, p. 220 ("use of another's trademark merely to refer to the trademark owner or its products is not an infringement"); id. _25(2) (use of designation to comment on or parody the other or the other's goods or services is subject to liability without proof of a likelihood of confusion "only if the actor's conduct meets the requirements of a cause of action for defamation, invasion of privacy, or injurious falsehood"). For additional cases involving protected First Amendment use of U.S. government items or symbols, see the decisions of the Supreme Court of the United States in Texas v. Johnson, 491 U.S. 397, 407 (1989)(flag); Regan v. Time, Inc., 468 U.S. 641, 644 (1984) (currency); Schact v. United States, 398 U.S. 58, 62-3 (1970)(military uniform).

If the Academy were simply asserting its federal trademark right as a ground for refusing permission, the matter could probably end there since our client acknowledges and is not infringing the Academy's trademark. The Academy does not have to grant permission and ApolloMedia does not need it. However, our client informs us that following your first letter and before your second letter, in a telephone conversation between you and Clinton Fein, President of ApolloMedia, you warned ApolloMedia to halt production or be "in big jeopardy" if the poster was reproduced in the work. I would appreciate your letting me know your version of the conversation. If you indeed made such statements and thereby intended to threaten litigation and such threats represent the official position of the U.S. Naval Academy, then we respectfully suggest that you retract them immediately. (See, for example, the plaintiff's summary judgment in the Lighthawk case, supra.) Can it really be in the interests of the Academy to threaten litigation over an old recruiting poster in the context of the current debate over military policy? Will candidates who want to "be something special" be attracted to an institution that treats its crest as more important than the First Amendment?

We look forward to hearing from you.

Sincerely,

COOLEY GODWARD CASTRO HUDDLESON & TATUM