Arizona State University (ASU) and the Arizona Board of Regents (ABOR) cannot sue the owner of an Instagram account over trademark infringement claims. The Ninth Circuit upheld the lower court decision in May 2022, throwing out ABOR-ASU’s lawsuit. The University’s ire was directed at an Instagram content creator. He used the ASU logo and other marks to promote “COVID parties” and other misinformation postings, which risk public health.
The reason for the dismissal was implausibility. The 9th Circuits judges estimated that no person would confuse these rebel Instagram postings with an official communication.
Social Media and the Lawsuit
In August 2020, ABOR sued on behalf of Arizona State University against the anonymous creator of “asu_covid.parties” and Facebook for creating and allowing the posts, respectively.
Facebook deleted the account shortly after ABOR filed the suit. The Regents later dismissed Facebook as a defendant.
According to the State Press, the account’s July 2020 first post included ASU’s logo and had “No more social distancing. No more masks. It is time to party!” written in gold on a maroon background.
In his ruling, U.S. District Judge Dominic W. Lanza wrote that ABOR did not show the “asu_covid.parties” Instagram account violated trademark law.
The judge ruled the initial post, “we about to get f—ing lit,” was “too profane. The post didn’t lead students to believe ASU was behind the post.”
“Although it is not uncommon for universities to attempt to appeal to students by imitating their vernacular, no university would drop the f-bomb,” Judge Lanza wrote.
Judge Lanza stated the content of the posts was such that “a reasonably prudent consumer would not be deceived. The post could not be from the University.”
Trademarks Avoid Confusion
These situations illustrate how the doctrine of creating confusion in the minds of the consumer works. If you have two products with equal or similar names from two different companies and the consumers confuse one product for the other, it is considered a trademark infringement. But in this case, the judges estimated that the communications via Instagram were so far out of line that immediately someone could see it was a spoof of the official trademark owners.
The intellectual property laws sometimes are nuanced. The trademark threshold for determining infringement is the possibility of creating confusion in the consumer’s mind.
This threshold is because, although trademarks protect business owners’ intellectual property, they also protect the public against copycats.
Spoofs and satirical comments that pretend to come from an official source are often dismissed for trademark violations because of the unlikelihood of confusion in the minds of the intended audiences.
This consideration is essential information trademark owners need to understand.
Attorney Marcos E. Garciaacosta is a business, trademark, branding, and intellectual property attorney. He practices with the United States Patent and Trademark Office (USPTO). Attorney Marcos is a proud ASU alumnus with a Master of Engineering.
Contact attorney Marcos for a consultation at (480) 324-6378.