Occupied Oakland Tribune faces lawsuit threat over trademark issues

The idea came to Scott Johnson while he was having dinner with his wife shortly after the first police raid on Occupy Oakland on October 25.

Inspired by the “Occupied Wall Street Journal” spinoff at the original Occupy Wall Street protest—a newspaper and website counter-narrative to mainstream media coverage—within 48 hours Johnson and two others created a freshly printed, four-page newspaper ready for Oakland’s November 2 general strike. He called the publication the “Occupied Oakland Tribune.”

Like the Occupied Wall Street Journal, the publication covers events that transpire within Oakland’s Occupy community, including first-person accounts of people’s experiences and conversations about issues facing the protesters, such as which tactics to use when protesting. The print version is published irregularly, and it’s typically only given out during protests.

“We acted quickly and put it out,” Johnson recalled of the publication’s first issue. “It was an amazing experience.”

Now, Johnson is being threatened with lawsuit by the Bay Area News Group because of his use of their trademarked Oakland Tribune name and logo on both his website and print newspaper.

On January 6, Andrew Huntington, general counsel for Bay Area News Group (BANG), sent a letter to Johnson asking him to cease and desist from using the words “Oakland Tribune” or “Oakland Trib” in any of his print and web content.

Specifically, Huntington wrote in his email to Johnson, the unauthorized use of the name and logo “tarnishes and diminishes the value” of the Oakland Tribune name and also “creates confusion in the marketplace” about the source of materials in the Occupied Oakland Tribune.

“The Oakland Tribune has expended considerable time, money and effort in the development and promotion of its trademarks,” he wrote.

No lawsuit has been filed yet by BANG. When reached by phone, Huntington was unable to comment on the cease and desist order. “I’m not in a position to comment on anything at this time,” he said.

BANG is a part of Media News Group, one of the country’s largest newspaper corporations, which owns 58 newspapers in 13 states — 29 of which are in California. In the Bay Area, the company owns 16 newspapers, including the Oakland Tribune, Contra Costa Times, San Jose Mercury News and the East County Times.

Johnson, a Temescal-based computer programmer who finances the Occupied Oakland Tribune out of pocket and through Kickstarter donations, said he quickly contacted Michael Siegel, a local attorney who has been involved in defending the alleged gang members named in the Fruitvale gang injunction, for legal advice after receiving the letter.

Siegel, whose father Dan Siegel quit serving as unpaid legal adviser to Mayor Jean Quan because of his disapproval of her handling of the first Occupy Oakland raid, said he took on the case pro bono because he respects what the Occupied Oakland Tribune does and considers the Oakland Tribune’s cease and desist order to be “intimidation.”

“[Johnson] is totally in the right,” he said, “and the courts would frown on what the Oakland Tribune is doing because it’s suppressing First Amendment-protected speech.”

Siegel argues that the Occupied Oakland Tribune falls under the “fair use” defense, an exception in the law that allows the use of a trademark for certain First Amendment-protected activities, such as parody and satire. In this case, Siegel said, the use of the logo should be protected because it has “cultural and artistic relevance” and is a commentary on the state of mainstream media and its portrayal of the Occupy protests.

According to the American Bar Association, the central issue in trademark infringement cases revolves around marketplace confusion. Tests to determine marketplace confusion include strength and similarity of marks, proximity of goods in marketplace, evidence of actual confusion and defendant’s intent.

But Siegel said that he feels there is no way the Occupied Oakland Tribune would confuse customers, because the spin-off uses a completely different layout and graphics than the Oakland Tribune, including a large “Occupied” box over the word “Oakland” in its masthead, and the flag raised on a pole on the City Hall graphic reads “99 percent.” Also, the Occupied Oakland Tribune is neither sold nor distributed at newsstands, he added. Instead, it is available for free online and given out at protests.

“There’s no likelihood that a customer is going to confuse this,” Seigel said.

Peter Scheer, executive director of the San Raphael-based First Amendment Coalition, a non-profit focused on advancing free speech and open government, said that on the surface, the fair use defense could apply to the Occupied Oakland Tribune in this situation. The problem, he said, is that the Oakland Tribune’s owners may not care at all about the actual infringement. Rather, the law may compel them to take action because if they don’t, they risk losing their exclusive right over the trademark by giving the Occupied Oakland Tribune a pass.

“If they don’t do anything, they may find themselves in situation where someone else makes use of the trademark in a way they don’t like,” he said. “I can see how that might be the situation they find themselves in.”

Also, Scheer added, just because the Occupied Oakland Tribune doesn’t sell its newspaper doesn’t afford it any more defense; it could actually strengthen the argument over marketplace confusion. Offering the product freely “can damage the value of the [Oakland Tribune] brand” by confusing customers who otherwise expected to pay for the product, he said.

Both Scheer and Siegel pointed to recent court cases that have been further elaborating on the issue of fair use in trademark law, which isn’t as established as it is in copyright law, which covers textual and cultural materials, rather than company logos.

In a 2010 ruling in the U.S Ninth Circuit Court of Appeals case Toyota Motor Sales, U.S.A., Inc. v. Tabari, the court found that the use of a trademark to refer to the trademarked product is nominative fair use, and the plaintiff in that case has to prove marketplace confusion for it to be considered infringement. The case involved the use of domain names that have the word “Lexus” in them to direct people to websites run by the Tabari family, which was using those websites to sell cars. Toyota claimed that the use of “Lexus” in the URL amounted to trademark infringement. The appeals court disagreed.

But the important aspect of the ruling was in its elaboration of nominative fair use by establishing a test: Is the product “readily identifiable” without the trademark, how prevalent is the mark used, and does the defendant falsely claim sponsorship of the trademark’s use? If the answer is no to all these questions, then fair use stands, according to the ruling.

The Occupied Oakland Tribune is not alone when it comes to “occupied” versions of established newspapers. An autonomous Occupy Wall Street affinity group started the Occupied Wall Street Journal as a way to share stories among supporters and in protest of what Occupy supporters say is skewed, neglectful or even hostile mainstream media coverage of the Occupy protests.

The idea quickly spread, with many of the larger occupations creating spin-off publications based off of a mainstream publication in their area: Occupy DC had the Occupied Washington Post, Occupy L.A. had the Occupied L.A. Times and Occupy Chicago the Occupied Chicago Times.

To date, no other lawsuit threats have been filed against other “occupied” newspapers, but the Occupied Chicago Tribune and the Chicago Tribune had a conversation that voluntarily led to the placement of disclaimers on the protesters’ publication, said Siegel.

Johnson said his goal was to keep the Occupy community informed about the going-ons of the protests. When the first issue was distributed to protesters at the general strike, Johnson recalled how a copy of the newspaper was on display at the Marriott Hotel where the Oakland Tribune reporters had their command center. He recalled that he had jokingly asked a Tribune reporter on Twitter not to sue him.

Now, he said, he feels that the cease and desist letter represents “the one percent” trying to scare him through the threat of a lawsuit.

“We are not intimidated,” Johnson said. “Actually, I think they’re just embarrassing themselves.”

You can see Oakland North’s complete coverage of Occupy Oakland here. 

Updated: We mistakenly identified the San Jose Mercury News as the San Jose Mercury.