A state statute prohibiting parties from using for advertising purposes the word “Texas” in combination with “workers' compensation” or “workers' comp” cannot be analyzed under the First Amendment through reference to legal paradigms established with respect to trademark infringement cases, the U.S. Court of Appeals for the Fifth Circuit held Oct. 30 (Gibson v. Texas Department of Insurance, 5th Cir., No. 11-11136, 10/30/12).
The Texas statute is attempting to prohibit the use of words than are in the public domain, the court said. As such, it determined that trademark infringement jurisprudence, which as a rule concerns confusion that could arise from the use of proprietary words and phrases, “is unique to the field of trademark infringement.” The court held:
[T]he regulation at issue is forward-thinking; intended to prohibit confusion for individuals seeking information from the government agency. It is not retrospective in the same way as most trademark litigation, which is generally intended to preserve the reputation that has been built upon a trade name.
The district court applied the First Amendment test for commercial speech as set forth by the Supreme Court in Central Hudson Gas and Electric Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980), which asks whether the speech is about lawful activity and not misleading, whether there is a substantial governmental interest at stake, whether the statute directly advances that interest, and whether it is narrowly tailored to serve that interest.
The district court found that the URL was misleading, a conclusion it arrived at only after looking to cases involving the use of trademarks in URLs, such as Coca-Cola Co. v. Purdy,382 F.3d 774, 72 USPQ2d 1305 (8th Cir. 2004). However, those cases concern likelihood of confusion and “No such risk is present here,” Judge Edith Brown Clement said.
“Therefore, the domain name at issue is entitled to some First Amendment protection,” the appeals court said. The constitutionality of the statute will thus hinge on an application of the remaining Central Hudson factors, the court said.
“However, Texas concedes that it has not yet compiled the record necessary to demonstrate satisfaction of theCentral Hudson test as a matter of law,” the court said. It accordingly remanded the case for further factual development.
Judges Thomas Morrow Reavley and James L. Dennis joined the court's opinion.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)