A federal judge has dealt a major blow to Carnival Committee VI’s effort to stop the government from using any variation of the trademarked term “St. Thomas Carnival” and “Virgin Islands Carnival”.
Chief U.S. District Court Judge Robert Molloy filed a 12-page opinion Monday denying the Carnival Committee’s motion for a preliminary injunction, which sought to bar employees of the VI government’s Department of Tourism and Division of Festivals from using either from trademarks.
The committee registered the trademarks with the US Patent and Trademark office in 2007, but Molloy found that the phrases “are generic, and therefore neither valid nor legally protectable.”
While Molloy’s opinion does not end the litigation, it found that the Carnival Committee is “highly unlikely” to succeed on the claim “because its marks are not valid and actionable,” according to the opinion filed Monday .
The Carnival Committee filed a lawsuit March 28, in which the group’s attorney, Terri Griffiths, argued that other entities — including the government of the Virgin Islands — are prohibited by federal law from using closely related or “confusingly Similar”.
Committee members have argued that the non-profit corporation has always organized and run the beloved cultural festival and the government is trying to illegally take over the event.
But the government has always provided the funds and infrastructure needed to run the Carnival, and Assistant Attorney General VI Venetia Velasquez argued during a hearing in April that “the government paid for everything” and the committee has no authority to stop the Department of Tourism from organizing and organizing carnival events in St. Thomas – or to use those words to describe the activity.
Carnival “is a catch-all term and St. Thomas is where we’re standing today,” so banning the government from using those terms when organizing carnival events “would be so absurd and such a denial of the public interest, Velasquez said. .
While the Committee had traditionally organized the event – with government funding and support – in 2019, the Legislature passed Act 8153, which established the Division of Festivals under the Department of Tourism and tasked the division with promoting and executing Carnivals and Festivals in all three islands.
“This Act and subsequent government action is the driving force behind VICC’s appeal and motion for preliminary injunction,” Molloy wrote.
The March 28 complaint alleged causes of action including “unconstitutional taking under the Fifth Amendment” and trademark violations of the Lanham Act.
The committee then dismissed the Department of Tourism as a defendant leaving only Tourism Commissioner Joseph Boschulte, Festivals Division Director Ian Turnbull and Assistant Director Halvor Hart as defendants in their official capacities.
Molloy began the thought by quoting lyrics from Trinidadian soca artist Destra Garcia: “Carnival at T and T is so special to all ah’we. Just like we need blood in our veins, that’s how we feel about Port of Spain.”
“Carnival is deeply rooted in Caribbean culture. The modern carnival tradition has continued since at least 1834, following the limited abolition of slavery in Trinidad and Tobago in 1833,” Molloy wrote. “This is not to say that carnival celebrations were no longer held, 1834 only marks the point when freed slaves were no longer arrested for engaging in carnival celebration.”
He told the story of the Trinidadian Canboulay or Cannes Brulees, a re-enactment of the sugarcane fires that destroyed the plantation crops, which “eventually incorporated the African tradition of masquerade,” such as “Moko Jumbies standing as foot dancers of Yorubaland, Toma, Guinea and Senegal portraying ancestral spirits that watched over and protected villages and villagers,” according to the opinion.
“This is not to say that carnivals are limited to Trinidad and Tobago – almost every Caribbean island has its own history and tradition that permeates their respective celebrations,” including the Junkanoo Carnival in the Bahamas, the Crop Over Festival in Barbados.
In the US Virgin Islands, events include the Festival of St. John in July and the Crucian Christmas Festival in December, and Carnival is usually reserved to depict the feast of St. Thomas in April.
The origins of the St. Thomas Carnival date back to at least 1912. However, the St. Thomas Carnival has not been held continuously since that time. After an indefinite delay, then-radio host (later Virgin Islands Senator and United States Congressman) Ron de Lugo organized a group to revive the St. Thomas Carnival in 1952, forming a carnival committee. de facto,” wrote Molloy. “The Virgin Islands Carnival Committee as a legal entity was incorporated on February 27, 1976 and carried out activities directly related to the organization of the St. Thomas Carnival continuously until 2019.”
The committee applied for trademarks in 2004, which were initially rejected “due to the phrase ‘Carnival’ being a generic term and the terms ‘St. Thomas’ and ‘Virgin Islands’ are geographic descriptors of a general term,” Molloy wrote.
The commission appealed and received service marks for “St. Thomas Carnival” and “Virgin Islands in 2007”, “based on a finding that VICC had made substantial and continuing use of the marks”.
Molloy found that “there was no exclusivity of use” according to the opinion. “On the contrary, numerous witnesses testified that as long as the VICC as an entity was involved in the St. Thomas Carnival, it was always a joint venture with the GVI. Indeed, this is evidenced by the fact that organizing the Carnival was financially impossible for VICC without GVI providing its venues, police support, free power and water supply, EMT services, the lion’s share of the budget and other services. .
Generic trademarks are not protected by the Lanham Act, and Molloy found that committee trademarks “are not unchallenged” under the law.
