State University Not Permitted to Prevent Student-Run Group From Using Trademarks: S.D. Iowa | Practical Law

State University Not Permitted to Prevent Student-Run Group From Using Trademarks: S.D. Iowa | Practical Law

In Gerlich et al v. Leath et al, the US District Court for the Southern District of Iowa granted the plaintiffs' motion for summary judgment, finding that Iowa State University officials unlawfully violated the plaintiffs' right to free speech by denying requests to use university trademarks in conjunction with marijuana-related imagery.

State University Not Permitted to Prevent Student-Run Group From Using Trademarks: S.D. Iowa

by Practical Law Intellectual Property & Technology
Published on 26 Jan 2016 • USA (National/Federal)
In Gerlich et al v. Leath et al, the US District Court for the Southern District of Iowa granted the plaintiffs' motion for summary judgment, finding that Iowa State University officials unlawfully violated the plaintiffs' right to free speech by denying requests to use university trademarks in conjunction with marijuana-related imagery.
On January 22, 2016, in Gerlich et al v. Leath et al., the US District Court for the Southern District of Iowa found that Iowa State University officials engaged in viewpoint discrimination, against members of a student organization dedicated to the legalization of marijuana, by refusing to let the organization license and use the university's trademarks (No. 4:14-cv-00264 (S.D. Iowa Jan 22, 2016)).
The plaintiffs, Paul Gerlich and Erin Furleigh, were students at Iowa State University (the University) and members of a student chapter of the National Organization for the Reform of Marijuana Laws (NORML), a group that advocates for the reform of federal and state marijuana laws. The defendants are individual University officials that were directly involved in the licensing decisions at issue in the case.
Prior to November 2012, the University chapter of NORML (NORML ISU), along with other recognized student groups, were permitted to use the University's trademarks as long as the University determines that their use complies with the University's licensing guidelines. In particular, the University approved NORML ISU's request to use certain University trademarks on a t-shirt in conjunction with the NORML logo, which included a cannabis leaf.
In November 2012, NORML ISU's president stated in an article published in the Des Moines Register that the organization had received support from the University. Fearing political backlash, the defendants called a meeting where it was decided that:
The University would refrain from approving any reorder requests for the previously approved t-shirt.
Any further license requests from NORML ISU would require preapproval by certain defendants before submission to the University's licensing office.
The University's licensing guidelines would be revised to clarify that the University's trademarks could not be used to suggest promotion or endorsement of dangerous, illegal, or unhealthy products.
Between 2013 and 2014, the defendants rejected numerous NORML ISU t-shirt designs that referenced or included depictions of marijuana, finding the designs suggested promotion of dangerous, illegal, or unhealthy products, actions or behaviors, and that drugs and drug paraphernalia are illegal. Believing that NORML ISU was being treated differently than other student groups, the plaintiffs filed a complaint in the Southern District of Iowa alleging that the defendants' licensing decisions violated their rights to free speech and political expression under the First and Fourteenth Amendments.
The parties filed cross-motions for summary judgment. In deciding the motions, the district court focused on whether:
  • By denying the plaintiffs' license requests, the defendants engaged in viewpoint discrimination.
  • The University's licensing practices were protected under the government speech doctrine.

The Defendants Engaged in Viewpoint Discrimination

The district court found that the defendants' licensing decisions were based on NORML ISU's political views and a desire to maintain favor with Iowa political figures. Because the defendants did not demonstrate a compelling state interest, their conduct was unconstitutional viewpoint discrimination. The court based its determination on the following findings:
  • Several of the defendants' actions were politically-motivated and designed to make it more difficult for NORML ISU to receive trademark licenses for their designs, including their:
    • revision of its licensing guidelines in direct response to the article in the Des Moines Register and concern over political backlash; and
    • decision to subject NORML ISU's licensing requests to a pre-approval process not applied to license requests from other groups.
  • NORML ISU's desire to advocate for a change in federal and state marijuana laws was a driving factor in the defendants' decisions to deny trademark licenses to the group. Courts have repeatedly held that, under the First Amendment, student groups may not be denied benefits on the basis of their espoused views.
  • The defendants' claim that they denied licenses pursuant to the University's viewpoint-neutral trademark guidelines is unsupported by the record because:
    • the guidelines prohibit use of the University's marks to promote or endorse illegal activity, but NORML ISU merely advocates for a change in state and federal marijuana laws; and
    • the guidelines were applied with flexibility previously, allowing other groups with designs featuring guns and swords to use the University's trademarks.
  • The defendants cannot deny NORML ISU's use of its marks based on the group's political viewpoint, regardless of whether the University established a forum for student speech through its trademark licensing program.

The University's Licensing Practice Was Not Government Speech

The court also rejected the defendants' claims that their conduct was protected under the government speech doctrine, reasoning that:
  • The defendants failed to present any precedent applying the government speech doctrine in the context of a university licensing program.
  • There is significant precedent that speech by student organizations facilitated by a state university is not government speech.
  • University officials stated numerous times in the record that they did not intend to communicate any message by licensing University trademarks to student groups. Additionally, the University's history of design approvals shows that the University has approved designs for a wide range of conflicting interest groups, making it clear that the University does not only grant licenses to groups that endorse or express a particular viewpoint.

Outcome

The court granted summary judgment to the plaintiffs finding the defendants violated plaintiffs' rights to free speech and political expression under the First and Fourteenth Amendments with respect to their ability to produce and reorder t-shirts and other licensed apparel including images of cannabis leaves. The court enjoined the University from enforcing trademark licensing policies against plaintiffs in a viewpoint discriminatory manner.
The court also rejected:
  • The defendants' argument that the plaintiffs lacked standing.
  • The defendants ' argument that they are entitled to qualified immunity from the plaintiffs' claims.
  • The plaintiffs' claims that the University's revised trademark guidelines were unconstitutionally overbroad and vague.
Update: On February 13, 2017, the US Court of Appeals for the Eighth Circuit affirmed the district courts summary judgment grant in favor of the plaintiffs and permanent injunction against the defendants (Gerlich v. Leath, (8th Cir. Feb. 13, 2017).