Daily Dicta: Feds Hit ‘Outlaw’ Motorcycle Gang Where It Hurts: Their Trademarks
Los Angeles County Sheriff Lee Baca, at podium, speaks during a news conference Tuesday, Oct. 21, 2008, in Los Angeles. Dozens of burly, tattoo-covered Mongol motorcycle gang members were arrested Tuesday by federal agents in six states, including Washington, on warrants ranging from drug sales to murder after a three-year undercover investigation in which four agents successfully infiltrated the group. (AP Photo/Ric Francis)
Can an alleged motorcycle gang linked to drug dealing and murder be taken down by the power of trademark law?
That’s the unlikely premise behind a criminal case now before a federal jury in Los Angeles.
As reported by the Los Angeles Times, Justice Department lawyers have charged the Mongol Nation motorcycle club with racketeering violations, seeking criminal forfeiture of the group’s trademark insignia.
Can they do that? And if so, does it even make sense?
Both of those questions are still be answered, but the feds have fixated on seizing the predominately Hispanic club’s trademark rights as a way to de-fang them.
It’s a very … odd … case.
For starters, the indictment goes on and on about the group’s alleged illegal activities—selling methamphetamines and cocaine, stealing motorcycles and credit cards, weapons trafficking, hate crimes against African Americans, even kicking people to death with steel-toed boots for disrespecting them.
And yet, club leaders in 2005 also successfully registered two trademarks—an image of a sword-wielding motorcycle rider with a queue ponytail and sunglasses, and the word-image “Mongols”—that members wear on the back of their leather vests.
Why would an “outlaw gang” want trademark protection, as opposed to, say, just beating up anyone wrongly wearing their insignia? The court papers are largely silent on this point, but rival motorcycle club Hells Angels over the years has filed a
series of trademark infringement suits against entities including Marvel Entertainment and Paris-based design house Alexander McQueen. So maybe robust IP protection is just part of being a well-run gang these days?
In going after the Mongol trademarks, DOJ lawyers argue in court papers that various patches were “used as a reward system for Mongols members who committed illegal acts, including acts of violence against rival gang members and members of the general public. The marks were maintained during the entire course of conduct alleged in the indictment, and it is clear that they afforded a source of influence over the criminal enterprise.”
While the government is also seeking “substantial” fines against the club, attempting to take away the trademark rights is something new. "We're going after their very identity," said then-U.S. Attorney Thomas P. O'Brien in 2008, when the feds in a predecessor case first tried to seize the marks.
The Mongols are pushing back hard. Represented by Joseph Yanny of Yanny & Smith in Los Angeles, the club argues that the government’s forfeiture remedy “completely disregards constitutional rights.”
“The word mark and image are speech,” Yanny wrote. “The First Amendment protects the display of insignia by club members, because such display ‘communicates the fact of their association with this particular kind of organization.’ It is the essence of protected speech to proclaim one’s association or affinity with an organization by wearing or displaying distinctive clothing, words, or images.” (citations omitted)
He added, “It is beside the point whether any defendant used the marks in furtherance of illegal or violent acts. The First Amendment does not permit restrictions on an individual’s speech ‘merely because an individual belongs to a group, some members of which committed acts of violence.’”
But as far as the government is concerned, the trademarks are just another kind of intangible property that can be forfeited. In other instances, convicted criminals have had to give up medical licenses, voting rights in securities of an enterprise or the right to hold a union office.
Yanny also questioned why the government even wants the marks.
“Once a mark’s purpose is not being fulfilled, either because it is no longer being used to signify membership or the relationship between registrant and users is severed, then the mark is abandoned and cancelled,” he wrote. “Abandonment of a trademark results in unrestricted use in the public domain.”
It’s a safe bet that the Justice Department doesn’t plan to use the Mongols logo to start its own motorcycle club. (As amusing as that would be—picture a bunch of AUSAs in khakis, blue oxford shirts and black leather vests riding Honda Rebel 250s down Pennsylvania Avenue.)
So let’s say the marks do wind up in the public domain.
“Open public use of the marks by anyone, without restriction—would, standing alone, constitute a significant revocation of legal rights that the defendant currently enjoys,” wrote U.S. Attorney Nicola Hanna and AUSAs Lawrence Middleton, Steven Welk and Christopher Brunwin. “Under those circumstances, defendant would be stripped of any legal recourse against rival groups who might decide to freely and publicly use and display the Mongols marks in demeaning and insulting ways.”
Of course, there would still illegal recourse i.e. punching the person in the face. Somehow I doubt there’s going to be a stampede of wanna-be Mongols outfitting themselves in the vests.
As for the rival groups, was it really fear of trademark infringement that held them back from using the Mongol marks “in demeaning and insulting ways”? (Because nothing scares a motorcycle gang like trademark infringement?)
Before the forfeiture question gets decided, the jury first has to convict the Mongols of racketeering violations. And that still hasn’t happened—they just finished their fourth day of deliberations.
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