One of the more interesting pieces of "trademark trivia" is
that the Boy Scouts of America (the BSA) were granted a special protection by
Congress nearly a century ago, and can now threaten and accuse targets of perceived trademark infringement without having to demonstrate any likelihood of
confusion whatsoever.
The BSA
is one of the nation's largest and most prominent values-based youth
development organizations. According to its website, the BSA provides a program for
young people that builds character, trains them in the responsibilities of
participating citizenship, and develops personal fitness.
Recognizing
the unique position that the BSA offers to American youth, in 1919, Congress
codified a special protection for the Boy Scouts of America, making it “a body
corporate and politic of the District of Columbia with perpetual
existence.” The law further provides that “[the BSA] has the
exclusive right to use emblems, badges, descriptive or designating marks, and
words or phrases [it] adopts.”
Because
the Boy Scouts' "exclusive right to use" these marks is not part of the federal
Lanham Act that governs trademarks (which was passed by Congress in 1946), the
BSA is not governed by the "likelihood of confusion" standard that
applies to virtually everyone else.
Indeed,
in Wrenn v. BSA,
2008 U.S. Dist. LEXIS 91913 / 2008 WL 4792683 (N.D. Cal. Oct. 28, 2008), a
California District Court ruled that the “BSA need not demonstrate the
likelihood of confusion because it has been granted special protection by
Congressional charter,” citing The Last Best Beef, LLC v. Dudas,
506 F. 3d 333, 339 (4th Cir. 2007) and S.F. Arts & Athletics, Inc.
v. U.S. Olympic Committee, 483 U.S. 522, 531 (1987), accord, Boy
Scouts of Am. v. Teal, 374 F. Supp. 1276, 1278 (E.D. Pa. 1974) (enjoining
use of “Sea Scouts”).
This piece of trivia
is not purely academic. Ask the “Hacker Scouts,”a non-profit organization
that was recently threatened after receiving an overt
cease and desist letter from the BSA that cited the special Congressional
charter.
To be sure, the use of special Congressional exemptions from ordinary law is not unique to the Boy Scouts. Major League Baseball, another storied American institution, enjoys an odd exemption from federal antitrust laws, and of course, Congress itself is exempt from most laws that apply to everyone else, such as the Fair Labor Standards Act, the Civil Rights Act, and laws against insider trading.
