Are the Boy Scouts of America Above the Law?

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.

The Gloves are Off: Rawlings Sues Wilson for Trademark Infringement

In St. Louis, Missouri, Rawlings Sporting Goods has filed a federal lawsuit against competitor Wilson Sporting Goods for displaying a baseball glove with gold-colored webbing and stitching in its promotional materials.  Rawlings alleges the product violates its Gold Glove Award trademarks.

Wilson's 2012 promotional materials had shown Brandon Phillips, a second baseman with the Cincinnati Reds, holding a Wilson-brand baseball glove with metallic gold-colored webbing, stitching and lettering, according to Rawlings' Complaint.

After Phillips won a Gold Glove Award in 2011, Rawlings alleges Wilson supplied the Major League Baseball player with a glove made by Wilson with gold coloring that Rawlings alleges violates its trademarks.

Eighteen Gold Gloves are awarded each year (with the exception of 1957, 1985 and 2007), one at each of the nine positions in each league.

Rawlings claims that it owns the trademarks for the words "Gold Glove Award" and for the distinctive gold-colored baseball glove that is the centerpiece of the award.

In addition to the award, Rawlings supplies winners with baseball gloves with metallic gold distinguishing marks.  Since 1957, the Complaint notes that Rawlings has distributed 981 Gold Glove Awards.

"(Wilson's) unauthorized use of the Gold Glove Marks dilutes and is likely to dilute the distinctiveness of these marks by eroding the public's exclusive associations and reputation of the marks, and otherwise lessening the capacity of the marks to identify and distinguish Rawlings' good and services," Rawlings' Complaint alleges.

It is not clear if Wilson sold any of the allegedly infringing gloves in commerce, but its use of a copycat gold glove as a promotional item may be sufficient to violate the Lanham Act if the Court finds that such use was likely to cause confusion and/or dilute the famous Gold Glove Marks.