After 3 years of litigation, on 29 June, a U.S. Federal Court judge has ruled that the notorious U.S. bikie gang, the Mongols Motorcycle Club, can keep their name and logo. The two registered trademarks of the club are the “verbal mark” which is the word Mongols, and the “visual mark” which is the logo. The club’s trade marked logo depicts a man with a ponytail riding a chopper (that’s a motorcycle to us bike unenthusiasts) which is synonymous with the persona of the club. The club was formed in the 1970s by members who allegedly were rejected for membership from the Hells Angels.
Prosecutors attempted to prevent the club from using, distributing or wearing the insignia as part of a criminal indictment filed in October 2008, which accused 79 members (including their leader Ruben Cavazos) of assault, robbery, murder, and drug offences. In a gutsy move, the U.S. Government, in addition to laying criminal charges on the indicted gang members, sought to have the gang’s intellectual property forfeited. The prosecutors suggested that the effect of a judge granting this order would be that the Government would gain ownership of this logo, requiring members to surrender materials bearing the Mongols trademark such as clothing, vehicles, merchandise, stationary and books. Their argument was based on the premise that by removing the clearly identifiable logo and name, the Mongols’ criminal operations would be hindered.
Following the indictment, Justice Cooper issued a preliminary injunction ordering Mongol club members to forfeit all items which contained the Mongols’ logo. In a statement to the media, the Mongols’ lawyer George Steele said that the logo is “not the government’s to seize”. Elaborating, he also noted that “it’s a motorcycle club… they may be bigger, tougher and more prone to have disputes [now that’s the understatement of the century!] the same as likeminded clubs”. Fair point George, except we’re unlikely to see the Saddle Club (they both ride things don’t they?) on indictment for murder, assault and drug offences.
The Mongols appealed the decision and finally, three years later, the case has been decided. The judgment handed down by U.S. District Jude Otis D Wright II sided with the Mongols “regrettably”, stating that the Government did not have the power to seize property from members of the club who were not on the indictment.
The Government’s attempt to seize the Mongols’ trademark was novel and aimed to strip the gang’s recognisable identity under which a small percentage of its members conducted criminal activities. It was a smart move considering that significant financial benefits can be derived from operating under a widely known mark. However, it is not surprising that the United States Government’s attempt to seize the Mongols’ intellectual property failed. Whenever the First Amendment “buzz word” is raised, prosecutors will be set for an uphill ride at best.