Trademark Confusion Lawsuit Over “ASU: No Extra Social Distancing. No Extra Masks. It Is Time to Get together!” Posts

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From Judge Dominic W. Lanza (D. Ariz.) in today’s Arizona Board of Regents v. Doe:

This is an unusual case. On one side is a major public university that seeks to use our nation’s trademark laws in novel ways in an effort to combat the COVID-19 pandemic. On the other side is a deeply unsympathetic John Doe defendant (“Doe”) who posted a series of vulgarity-filled messages on Instagram in an attempt to persuade college students to attend maskless COVID-19 parties during the peak of the first wave of the pandemic, whose answer was stricken for litigation misconduct, who stopped participating in this action after his answer was stricken, and whose identify was never discovered during subsequent proceedings. All of this has culminated in the plaintiff, the Arizona Board of Regents (“ABOR”), filing a motion for default judgment that seeks the entry of a permanent injunction against Doe.

As discussed below, although ABOR’s motivations for bringing this lawsuit are understandable, ABOR has not established that Doe’s challenged conduct (however odious it may be) implicates the trademark doctrines identified in ABOR’s complaint. Accordingly, ABOR’s motion is denied and this action is dismissed….

On or about July 19, 2020, Doe (whose true identity and location are unknown) created an Instagram account under the username “asu_covid.parties.” Directly below the username, Doe identified his location as “Arizona State University.” In the profile associated with this account, Doe identified his full name as “ASU Coronavirus Parties,” identified his title as “Event Planner,” and then provided the following blurb:

“‘COVID-19 Parties because they’re during this pandemic era’ Not a contest to catch COVID. THROWING HUGE PARTIES AT ASU. Follow before we go private.”

Also on July 19, 2020, Doe posted the first message on the “asu_covid.parties” account. It provided as follows:

As the complaint notes, this post included “the ASU logo within the body of the message” and was formatted “in ASU’s maroon and gold color trade dress.”

At some unspecified time after he created this post, Doe wrote a comment in the public comment bar that appears next to the post. The comment provided as follows: “Those of you coming back to Phoenix. We about to get fucking lit.”

On July 20, 2020, Doe posted his second message on the “asu_covid.parties” account. Unlike the first message, this message was not formatted in maroon and gold (it was set against a black background, with neon pink and yellow text) and did not include the ASU logo. Its text provided as follows: “OUR FIRST PARTY WILL BE CALLED HOAX-19 BECAUSE THE IDEA THAT COVID IS ONLY RAMPANT IN AMERICA COMPARED TO OTHER COUNTRIES IS A HOAX! COME TO HOAX-19. POSTING ADDY SOON!”

Doe proceeded to post a series of additional messages on the “asu_covid.parties” account. Although the complaint only discusses some of those messages, more are provided in an attachment to the complaint. Notably, none of the later messages prominently featured the colors of maroon and gold and only one displayed the ASU logo. The text of each subsequent message is as follows:

  • Message Three: “I just spoke to the Vice-Consul of the Consulate of the Republic of Belarus. The consul couldn’t make it so I only spoke with the Vice Consul in person. They are both excited to host us. They are both awesome accomplished guys. We would like to thank them for letting us throw a party on consulate grounds so the party can’t get shut down by the police. The party will take place on the first Saturday of the semester.”
  • Message Four: “For security purposes, the consulate has asked us to prohibit masks so we can identify people. Also the drinking age in Belarus is 18 [emoji of Belorussian flag] since we will be on Belarus soil while in the consulate.”
  • Message Five: “We will party. We do not care what you snowflakes say. COVID-19 is a fat hoax.”

[I’ve moved the remaining messages to the end of the post. -EV]

[ASU claims] that Doe engaged in the unauthorized use of “the ASU Marks” when creating posts and messages on the “asu_covid.parties” account concerning the “‘Hoax-19’ covid party” and, in doing so, “likely cause[d] confusion as to ASU’s affiliation, endorsement, and/or sponsorship of the event.” [It also claims] that Doe engaged in the unauthorized use “of the ASU Marks, school colors trade dress, and other false or misleading descriptions and/or representations of fact” when creating posts and messages on the “asu_covid.parties” and, in doing so, “likely … cause[d] confusion, … mistake, or [deception] as to the affiliation, connection, or association of the ‘asu_covid.parties’ account with ASU, or as to the origin, sponsorship, or approval of the Hoax-19 party event and related messaging by ASU.” …

[T]hese claims require a showing of a likelihood of confusion (or some variant thereof). “The ‘likelihood of confusion’ inquiry,” in turn, “generally considers whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin or source of the goods or services bearing one of the marks or names at issue in the case.”

Here, a reasonably prudent consumer would not be deceived or confused into believing that ASU was the “source or origin” of the posts and messages emanating from the “asu_covid.parties” account. Only one of the 19 posts (the first post) featured both ASU’s distinctive maroon and gold colors and ASU’s logo. The post itself only contained the words “No more social distancing. No more masks. It is time to party!” However, the “surrounding context on the user’s screen” is “important here.” Anyone viewing this post online would immediately see the string of comments accompanying the post. The “asu_covid.parties” accountholder posted the first two comments in the thread, the second of which was: “Those of you coming back to Phoenix. We about to get fucking lit.” Although it is not uncommon for universities to attempt to appeal to students by imitating their vernacular, no university would drop the f-bomb in an official party invitation. Also, the speaker (“we”) plans “to get … lit,” which, in context, clearly means “drunk.” A reasonably prudent consumer would not have construed this as an invitation from ASU to come to an ASU-sponsored party.

Many of the subsequent messages from the “asu_covid.parties” account affirmatively criticized—often in profane and vulgar terms—ASU’s leadership and official policies. For example, Message Six quoted from a newspaper article about ASU’s opposition to COVID parties, then stated that “[t]hey”—which, in context, obviously means ASU—”are trying to slander this account,” assured readers that “ASU will not be able to punish you” for attending a COVID party, and closed with the promise that “[w]e will not release the names of people who sign waivers to the University under any circumstance.” No reasonably prudent consumer would have thought the origin or source of these statements was ASU. Other messages followed the same pattern….

Then there are the Nazi analogies. Message Fifteen compares ASU unfavorably to “the USSR, Nazi Germany, North Korea, China or Venezuela” and then refers to ASU’s president, Michael Crow, as “Führer Crow.” Similarly, Message Seventeen warns readers that “Führer Crow … wants to track you with an app even when you’re off campus.” And Message Eighteen again includes a reference to “Führer Crow,” this time accompanied by a stream of vulgarities. Many things can be said about these offensive and outrageous statements, but it is not plausible (to put it mildly) that a reasonably prudent consumer would believe ASU was the source or origin of them….

ABOR’s arguments to the contrary are unavailing…. [T]he sole instance of [actual] confusion cited by ABOR is a typo-laden Twitter post from an unidentified individual who claimed to be an ASU graduate. Although the post called out “#ASU,” it’s not clear from the haphazardly worded tweet whether this individual was actually confused (e.g., believed ASU was sponsoring COVID parties) or simply disgusted that ASU students were sponsoring COVID parties…. The threatened actions (revoking alumni membership and sending back an alumni plate) might have been motivated by a desire not to be associated with such students.

At any rate, even assuming that one out of the “nearly 500,000 Sun Devils worldwide” … believed that the profanity-laden posts coming from the “asu_covid.parties” account were actually coming from ASU, this would not establish a likelihood of confusion…. “[A] showing of actual confusion among significant numbers of consumers provides strong support for the likelihood of confusion.” … Tellingly, the comments to the posts suggest that readers believed the “asu_covid.parties” account belonged to a student or group of students, not the university. (See, e.g., [“Since none of you learned critical thinking skills, drop out. [Y]ou don’t deserve to be in college.”]; [“They gon switch us to all online by September bc of you DUMB mfs.”]; [“This is embarrassing. I haven’t even started at ASU yet and you’re telling me I’m gonna have to go to school with idiots like you? Bye.”].)

In seeming anticipation of this conclusion, ABOR argues that “even if a consumer were to conclude, after reading one or more posts by ‘asu_covid.parties’ that the account may not be affiliated with ASU, there is nevertheless actionable initial interest confusion in the sense that ‘asu_covid.parties’ improperly benefits in the first instance by using the goodwill developed in the ASU Marks to drive consumers to its account.” Although it is true that “initial interest confusion” may qualify as infringement “even though no actual sale is finally completed as a result of the confusion,” that doctrine is factually inapplicable here. Admittedly, Doe’s initial post on the “asu_covid.parties” account was written in maroon and gold and included a logo that potentially could be confused with ASU’s logo, but as discussed above, the accompanying comment—”Those of you coming back to Phoenix. We about to get fucking lit.”—was too crude and profane to create initial confusion as to its source and origin. More broadly, it cannot be the case that every social media post written by a college student that happens to use the school’s colors and/or logo in the post, and identifies the school’s location as the location of the poster, creates initial interest confusion and qualifies as an actionable trademark violation….

ABOR’s remaining claim … is for trademark dilution under A.R.S. § 44-1448.01. “The elements necessary to prove a state law trademark dilution counterclaim are basically identical” to a federal trademark dilution claim. A federal dilution claim, in turn, has the following elements: “(1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by blurring or dilution by tarnishment.”

“[T]he injury from dilution usually occurs when consumers aren’t confused about the source of a product.” “Whereas trademark law targets ‘interference with the source signaling function’ of trademarks, dilution protects owners ‘from an appropriation of or free riding on’ the substantial investment that they have made in their marks.” Put another way, “[d]ilution … does not require a showing of consumer confusion.” As a result, the likelihood-of-confusion analysis set forth above is not controlling here.

Rather than conduct an independent analysis of the sufficiency of Count Four, the Court will decline to exercise jurisdiction over that claim…. Because all of ABOR’s federal claims have now been dismissed, the Court may decline to exercise such jurisdiction.

Here are the remaining messages:

  • Message Six: In the sixth message, in lieu of drafting his own text, Doe provided what appears to be a picture of an article from a newspaper entitled The State Press. The headline of the article is “University plans to punish partying on and off campus.” The text of the article begins (before being cut off): “In response to questions about an Instagram page promoting ‘COVID parties,’ the University said it will not tolerate behavior that disregards health protocols.” In a lengthy comment appearing next to this post, Doe wrote the following:
  • They are trying to slander this account. They don’t report the threats people have made to purposely come to the party with COVID. I gave a fake consulate so there is no political backlash for said country. Our company will not name the consulate our party will be at. Just the address when the time comes. CDC Guidelines, Arizona jurisdiction and ASU on campus rules do not apply to foreign soil. We will be violating nothing. ASU will not be able to punish you. There will be security at the party. EXPRESS YOUR FREEDOM. LET’S PARTY. FIRST SATURDAY OF 2020 FALL SEMESTER. (These parties are hosted for students to have fun like how a normal frat party would work. These parties are not designed to disregard public health protocols because they will not be public. These parties will be like parties if COVID never existed. There will be a list where you can RSVP in advance) Prohibiting masks is for the safety of everyone at parties. We do not want people committing crimes because they feel empowered by anonymity. We don’t think COVID itself was a hoax. We believe the idea that COVID was especially bad in the United States is a hoax. Our company has an excellent insurance policy. Anything broken in the consulate will be replaced. We will pay the medical bills of any of the Consulate staff who catch COVID-19 within 14 days of the party. Partygoers, however, will have to sign a waiver before entry. We will not release the names of people who sign waivers to the University under any circumstance.
  • Message Seven: This message included two different statements, set off from each other. One provided: “For people telling me that I’m responsible for all the people who die from COVID at our parties. That means the guy who ate a bat in Wuhan or the Chinese Government (however you think the virus started) has the greatest kill count of us all.” The other provided: “You’re not pissed at those people?!”
  • Message Eight: “ASU being a public institution that receives state funding cannot legally suspend students for off campus partying. You are protected by the 1st Amendment of the constitution of the United States of America. Your right to peaceably assemble is being violated by ASU.”
  • Message Nine: “As a CA in a dorm, I will not snitch on anyone who parties off campus or even has dorm parties. It is not my job to get you in trouble. It is my job to be there when you need me and to make sure college can be enjoyable for everyone. I hope other CAs can pledge to this at ASU.”
  • Message Ten: “Due to increasing concerns regarding security from the Consulate, please bring your school ID. Undercover police are not allowed into a consulate without explicit permission under the Vienna Convention on Diplomatic Relations. ASU Faculty are not allowed on the premises. Only students. The party has been registered as a protest with the city. If ASU takes any action against the attendees, it is a 1st amendment violation.”
  • Message Eleven: “We have partnered with an Israeli company to distribute hydrochloroquine! All Profits of the party will go to helping people in other countries get hydrochloroquine to treat COVID-19!” Doe also wrote the following comment in the public comment bar that appears next to this post: “Thank you to our friends from Israel! We have partnered with Teva Pharmaceutical.”
  • Message Twelve: “Reminder: No masks allowed at parties for security reasons. We have received several threats. If you wear a mask, you will be removed from party.”
  • Message Thirteen: “If there’s enough problems enforcing the mask mandate on ASU campus, the campus will give in and rescind the idiotic policy of thinking it’s healthy to block your oxygen. If you repost this and send us a dm, we will offer you free drinks at the party.” Doe also wrote the following comment in the public comment bar that appears next to this post: “Be as brave as the huge anti-mask protests in Germany this week. Stand up for your freedom and don’t wear a mask. It is not the university’s job to baby you. It is their job to teach you and let you become your own person. Do not let them control you. Millions of people around the world are with you standing up to tyranny. Do not let the University intimidate you. ASU wants you to wear a mask outside even and even while you workout. They do not care if you pass out while working out. How ridiculous for them to act like they care about your health. Stand up for your right to choose.”
  • Message Fourteen: “Who[‘]s ready for the moshpit!!!”
  • Message Fifteen: “Arizona State University cannot legally coerce you into testing against your will!” Doe also wrote the following comment in the public comment bar that appears next to this post: “This is ASU, not the USSR, Nazi Germany, North Korea, China or Venezuela, etc. Do not let Führer Crow force you to wear a mask or test. They will use false positives to push their agenda to control you. The administration is filled with rich power hungry corrupt fascists.”
  • Message Sixteen: “GOOD NEWS! We won the battle in court and we’re back! We want to thank everyone who supported us and all of the ASU students and alumni who donated to our legal defence [sic] fund! Because of you, ASU now not only has to cover our legal fees but they also have to pay out $500,000 to cover our sponsorship losses. We expect to have the money in 2 weeks. See you all back on campus and let’s party!” Additionally, in the margins surrounding this text, Doe included the hashtags “#GoSunDevils,” “#ASU,” and “#GodBlessAmerica.” {The claims in Message Sixteen about a lawsuit against ASU were false.}
  • Message Seventeen: In the seventeenth message, Doe posted what appears to be a screenshot of a posting that appeared on the official ASU Instagram page. The posting, which is entitled “Fall 2020 Daily Health Check,” includes a picture of a student wearing a mask. The following text appears below the picture: “Starting August 17, @arizonastateuniversity students and employees will need to submit a daily health check to reduce the spread of #COVID19 and promote well-being among our #SunDevil community.” In a comment written directly below this screenshot, Doe wrote: “Führer Crow [swastika symbol] wants to track you with an app even when you’re off campus. Don’t download it.” And in a comment appearing next to this post, Doe wrote the following: “And this isn’t too much? The app uses location services and your IP Address to track you. This app should be banned like TikTok.”
  • Message Eighteen: “‘Tell us your symptoms every single day. Let us track your location for your safety. Wear a mask. Don’t get too close to your friends. No visitors in your dorm room…. No parties. No sports. No going outside without a mask. No No concerts. No international travel without quarantining before coming to campus. No working out without a mask even though that’s more likely to hurt you than the chance of catching COVID-19. No frat parties. No Trump rallies but protesting BLM is okay. No singing in church. No clubbing.’ Fuck Führer Crow. We are going to party ….”
  • Message Nineteen: “Masks and restrictions don’t work. New Zealand has had cases for weeks without knowing it.”