Yesterday, on February 13, 2017, the Eighth Circuit issued a resounding affirmation of First Amendment principles in a case raising the question of just how far a public university can go in preventing the use of its marks by student organizations whose views the university may oppose or object to. We previously discussed the dispute in early December, before the court heard arguments in the case.

ISU NORML t-shirtIn the opinion, the unanimous appellate panel held that the First Amendment trumps normal trademark licensing principles for public universities, ruling that Iowa State University violated the First Amendment rights of students at the ISU chapter of NORML, the National Organization for the Reform of Marijuana Laws, when ISU barred the chapter from using ISU’s marks in conjunction with images or messages that advocated in favor of marijuana.

In this case, Gerlich v. Leath (8th Cir., No. 16-1518), the court ruled that the university’s trademark licensing program for student organizations – which otherwise allows student groups at the university to use certain of the university’s marks on a royalty-free basis, subject to standard trademark licensing arrangements – constituted a “limited-purpose public forum” in which student organizations could take advantage of the university’s marks to advance their own causes.

The court then ruled, applying standard and well-settled First Amendment principles, that because the trademark licensing program is a public forum, the First Amendment prohibits the university from discriminating against or between speakers in that forum on the basis of the speakers’ viewpoints.

That conclusion necessarily means, the court held, that ISU violated the First Amendment when it prevented the NORML chapter at ISU from taking advantage of the university’s trademark licensing program in the wake of public controversy surrounding the chapter’s advocacy in favor of reforming marijuana laws:  “The defendants’ rejection of NORML ISU’s designs discriminated against that group on the basis of the group’s viewpoint. The state engages in viewpoint discrimination when the rationale for its regulation of speech is ‘the specific motivating ideology or the opinion or perspective of the speaker.’ . . . The defendants’ discriminatory motive is evidenced by the unique scrutiny defendants imposed on NORML ISU.”

Although ultimately unsurprising in terms of its application of First Amendment law, the Eight Circuit’s decision is likely to have a significant impact on public universities and colleges in how they handle trademark licensing requests.  The holding in this case means that when a university establishes a typical trademark licensing program, especially one for student organizations, the university may not distinguish between licensees (and potential licensees) on the basis of those licensees’ public statements or viewpoints.  The bottom line is that public unviersities and colleges may not do what any other trademark owner could otherwise do in controlling who gets to use the trademark owner’s marks, at least when the public institution has established a trademark licensing program that is otherwise available to certain classes of licensees, such as student groups.

The case stands as an important reminder that trademark licensing principles are different for governmental organizations because of the overarching constraints of the First Amendment.

What comes to mind when you hear the term “LifeProof”? Does it immediately make you think of something that protects from all of life’s hazards or does it merely suggest that something can withstand various accidents? That is what the Ninth Circuit in California is deciding in Seal Shield LLC v. Otter Products LLC, et. al. after hearing oral arguments on the topic in January. The issues central to the case hammer home the importance of using your trademarks in the right way—as a trademark identifying a brand—or a source—and not as term that merely describes the product.

In this case, Seal Shield and Otter Products both claim rights to the same term—LIFEPROOF. Seal Shield argues that it was the first to use it, so it should have the rights. Otter Products counters and argues that Seal Shield did not use it in the right way—that Seal Shield only used it to describe the product and not as a trademark.

Copyright: 91foto / 123RF Stock Photo
Copyright: 91foto / 123RF Stock Photo

Seal Shield sued Otter Products and TreeFrog Developments (which was acquired by Otter Products) after TreeFrog Developments obtained a federal trademark for LIFEPROOF in 2010. Seal Shield brought a suit in 2013 and argued that it had senior rights to the name LIFEPROOF and requested that the court cancel Otter Products’ trademark as a matter of law. In ruling in favor of Otter Products, the district court held that as a matter of law Seal Shield did not have proprietary rights to the LIFEPROOF name because the way Seal Shield used the name (as a tagline or slogan with its Klear Kase protective cases) was merely descriptive.

Seal Shield appealed the district court decision arguing that its use of LIFEPROOF is not merely descriptive but is suggestive. Specifically, Seal Shield argued that LIFEPROOF falls short of explicitly describing the various features that are included under the mark LIFEPROOF and it takes a mental leap to associate the word LIFEPROOF with a protective case that protects from all of the elements and human error, meaning the mark is suggestive. Seal Shield also argued the mere fact that the USPTO granted TreeFrog Developments federal registration of LIFEPROOF demonstrates that such mark is protectable.

For its part, in addition to a myriad of other arguments, Otter Products contends that Seal Shield’s use of the LIFEPROOF mark is merely descriptive and that it failed to show any consumer evidence of secondary meaning—such as a survey showing that consumers associate their use of LIFEPROOF with the goods of one maker rather than merely describing the product. And to address the seeming inconsistency, Otter Products contends that Seal Shield cannot rely on Otter Products’ federal registration as evidence that the mark LIFEPROOF is distinctive because, as Otter Products argues, it uses the mark as a trademark and not merely to describe the goods.

The court will rule on this appeal later this year. You may think it’s counter-intuitive for Otter Products to argue that Seal Shield’s use of the LIFEPROOF mark is merely descriptive while at the same time maintaining a federal registration for that same mark that is inherently distinctive and suggestive; however, this demonstrates that the way you use mark is a key component on whether a mark will obtain trademark protection.

This morning, the United States Supreme Court heard the long-anticipated oral argument in the Lee v. Tam trademark dispute. The issue in the case, as reported on the SCOTUS blog, is as follows:

“Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it ‘[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute’ is facially invalid under the Free Speech Clause of the First Amendment.”

Supreme Court
Copyright: mesutdogan / 123RF Stock Photo

Stated more simply, the issue facing the Supreme Court is whether section 2(a) of the Lanham Act, which bars the registration of disparaging trademarks, is constitutional. The Supreme Court is now primed to make that decision, which will not only have an impact on the Lee v. Tam dispute but also the Washington Redskins dispute and many others.

In making that decision, the justices will consider the parties’ oral argument and briefing as well as the numerous amicus briefs filed by numerous third party organizations and individuals interested in the outcome of the Lee v. Tam dispute. Demonstrating the significance of this dispute, numerous of the justices during oral argument today asked pointed questions to the attorneys representing the parties, particularly to the attorney arguing on behalf of the United States Patent and Trademark Office (in favor of the Lanham Act’s current prohibition). Today’s oral argument started and ended with questions related to differences in trademark law and copyright law and included questions on a whole range of topics relevant to section 2(a), its constitutionality, and its implications.

The Supreme Court will issue an order in the case later this year. Additional background regarding this dispute and the related Washington Redskins dispute can be found in prior blog posts as part of this blog’s ongoing coverage of developments in this landmark dispute.

Next week (12/14/2016), in a marble tiled courtroom in frosty St. Paul, Minnesota, a panel of judges of the Eighth Circuit Court of Appeals will wrestle with a question that is both as new as the campaign to legalize marijuana and as old as the First Amendment: When can a public university protect its brand, and its valuable trademarks, from being associated with viewpoints or messages that it rejects?

In the case of Gerlich v. Leath (8th Cir., No. 16-1518), a pair of students at Iowa State University are pursuing the provocative position that public universities have no power to discriminate in their trademark licensing practices so as to prevent their marks from being used by student groups that espouse positions the university regards as objectionable.  In that sense, the Gerlich case pits classic trademark rights – the power of a trademark owner to control how his mark is used – against the First Amendment’s prohibition of government discrimination based on a speaker’s viewpoint.

At Iowa State, as is the case at most public universities, student organizations are permitted to license various university trademarks to designate the organization’s involvement with ISU and the organization’s status as a registered student organization.  So long as these student groups comply with standard trademark usage guidelines, such as not altering or modifying the look of the university’s marks, the student groups are permitted to use the university’s marks under royalty-free licenses.  Iowa State has authorized trademark licenses to hundreds of student organizations, including those as varied as the Iowa State University Students for Life, an anti-abortion group, and the Iowa State Democrats, a group supporting abortion rights.  The university’s trademark licensing practices even extended to CUFFS, a sexual bondage student club that was a recognized student organization on campus and which used the university’s trademarks in conjunction with the club’s logo displaying a set of handcuffs.

In the context of these licensing practices, when the university came under fire for publicity garnered by the Iowa State chapter of NORML (the National Organization for the Reform of Marijuana Laws), which was using the university’s marks in combination with NORML’s logo displaying a distinctive cannabis leaf, the university put its foot down.  The university revoked any prior authorization for the ISU NORML chapter to use the university’s marks on the student group’s t-shirts – which bore the slogan “Freedom is NORML at ISU” along with a cannabis leaf.  And thereafter, the university prohibited the use of the university’s marks in connection with “illegal” products.

ISU NORML t-shirt

In the face of these actions, the student leaders of ISU NORML brought a First Amendment civil rights suit against Iowa State’s university president and other university administrators, contending that their First Amendment rights were violated by the university’s trademark licensing actions.  The students argued – and Senior District Judge James E. Gritzner, in the trial court in Des Moines, Iowa, agreed – that the university’s exercise of standard trademark licensing powers violated the First Amendment because it constituted “viewpoint discrimination” based on the university’s objections to the student organization’s political views.

Under a robust and well-developed line of judicial decisions, courts have routinely held that one of the most hallowed functions of the First Amendment is to prevent the government from discriminating between speakers on the basis of what they say.  Such “viewpoint discrimination” is per se prohibited by the First Amendment because the essence of this constitutional provision is to prevent the government from favoring one speaker over another on the basis of agreement or disagreement with the content of the speaker’s messages.

In contrast, however, standard and equally well-settled trademark law requires a trademark owner to control a licensee’s use of the owner’s marks, and allows the trademark owner to discriminate in his selection of licensees for his marks on the basis of the trademark owner’s assessment of whether the licensee will undermine the reputation or goodwill of the trademark owner’s brand.

Confronted by these two doctrines, the district court sided with the students in a decision in January this year, issuing an injunction prohibiting the university from refusing to license its marks to the ISU NORML chapter.  Now, on appeal, the university is attempting to escape the strong First Amendment prohibitions against viewpoint discrimination by focusing on how the use of its marks by various student groups can reflect negatively on the university, and as a result, the university’s trademark licensing practices should be regarded as a form of government speech.  (If so, then there is no First Amendment violation because the government is entitled under the First Amendment to say whatever it likes.)

With a bevy of First Amendment scholars and advocacy organizations lining up against the university through various amicus briefs, as well as a vigorous argument on behalf of the students from noted Washington, D.C., First Amendment litigator Robert Corn-Revere, it seems likely that the Eighth Circuit will affirm the injunction and endorse the students’ position that the First Amendment trumps trademark licensing norms when dealing with a public university.

Such a ruling would be another cautionary tale for public institutions with regard to their trademarks, perhaps demonstrating once again that they are “damned if they do, and damned if they don’t.”

It would also be another instance in the perennial tension between the First Amendment and trademark law demonstrating that in such battles, it is usually the First Amendment that wins.

Stay tuned.  Literally.  The Eighth Circuit posts same-day audio of its oral arguments online.

The ongoing battle before the United States Supreme Court regarding the ability to register disparaging trademarks, prior details of which can be found in earlier blog posts here, here, and here, is heating up with a recent flurry of amicus brief filings. Earlier this month, the USPTO filed its opening brief in the case involving the rock band The Slants pending before the Supreme Court, urging the Court to uphold section 2(a) of the Lanham Act, the section that bans the registration of disparaging trademarks, and explaining why it believes the ban is not a restriction on free speech. Following that submission, numerous other groups have filed amicus briefs taking various positions on the issue.

The Native Americans who petitioned to cancel the Washington Redskins’ trademark registrations filed an amicus brief in favor of the USPTO’s position and arguing that there is no right under the First Amendment to use a disparaging trademark to silence others. Other Native American organizations also filed an amicus brief asking the Supreme Court to rule in favor of the USPTO and find section 2(a) of the Lanham Act constitutional in light of the government’s incentive to discourage discriminatory conduct. A collection of bar associations filed an amicus brief seeking the same result. The Washington Redskins, on the other hand, are expected to file an amicus brief arguing the opposite–in favor of allowing registration of allegedly disparaging trademarks.

American Bar Association Stamp
Copyright: alzam / 123RF Stock Photo

The American Bar Association (“ABA”) filed a procedurally interesting amicus brief, in which it declined to take a position on whether section 2(a) of the Lanham Act is constitutional and instead focused on a procedural issue. The ABA argued that if the Supreme Court holds that disparaging marks are not registerable (i.e. that section 2(a) is constitutional), it should also hold that such marks are still enforceable under the common law and the federal unfair competition provision of the Lanham Act. The ABA believes that the Federal Circuit’s underlying decision is too vague on this point and that it should be clarified at the Supreme Court level. Were the Supreme Court to follow the ABA’s thinking, the implication may be that trademark users (including The Slants and the Washington Redskins) continue to use disparaging marks but rely upon common law protection or federal unfair competition protection for enforcement purposes.

Other amicus briefs have also been filed with the Supreme Court and can be read on the SCOTUS blog website.  The Slants’ brief is forthcoming, and a decision from the Court is not expected until next year.

The U.S. Olympic Committee, like many other major sports organizations, does not shy away from enforcing its trademarks. In addition to enforcing use of the words “Olympic,” “Olympics,” and “Olympiad” and any use of the interlocking rings logo, the Olympic Committee also enforces the use of names and years in the particular convention used by the Olympics (e.g. “Sochi2014” or “Rio2016”).  For example, last year the Olympic Committee sued an individual who had registered 177 websites using the Olympic Committee’s naming convention.  In addition, the Olympic Committee aggressively pursues users of its naming convention and other trademarks as hashtags on social media websites (such as #Rio2016 and #TeamUSA).  This year, a Minnesota company who sought to post about the 2016 Olympics on social media pages filed a declaratory judgment against the Olympic Committee in an attempt to assert its right to do so.  That suit has not been resolved and has instead been plagued by a recent procedural dispute.

Although the Olympic Committee may not always be successful in all of its trademark enforcement efforts, the Olympic Committee shows no sign of letting up. One reason may be that the Olympic Committee has more trademark protection under the Lanham Act than other organizations.  In fact, under the Olympic and Amateur Sports Act of 1978, the Olympic Committee has the exclusive right to use some of its trademarks even where another’s use does not result in a likelihood of customer confusion. This is different than other enforcers of trademarks, who are required to show that another’s use of a trademark (or variation thereof) results in a likelihood of confusion.  Since the Olympic Committee is not required to jump over that particular hurdle, it arguably has a unique ability to enforce certain of its trademarks.

When is a trademark not a trademark?  When it no longer performs the source identification function for which it was adopted.  In a recent decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, the Board cancelled the trademark registration (and refused a currently pending application) for the logo “I♥DC” covering various merchandise ranging from clothing to tote bags to stuffed animals.

I (Heart) DC 1

I (Heart) DC 2

As grounds for the cancellation, the Board found that the mark no longer served its purpose of identifying the source of the goods, but instead was perceived as an expression of enthusiasm rather than a source indicator for the goods. In finding the wording no longer functioned as a trademark, the Board relied upon widespread ornamental use of the logo by third parties for a long period of time and evidence showed that consumers associated the slogan “as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.” – even despite extensive use of the slogan on product hang tags (traditional indicators of trademark use).  Here the Board went so far as to recognize that many other “I ♥…” expressions also fail to function as a trademark (but instead simply imply an expression of enthusiasm).

Of course, the trademark owner did herself no favors, admitting that she did not create the design, that she was aware of other third party vendors using the slogan when she originally filed; that her rational for filing the application was to prevent copying of the products affixed (not necessarily the trademark); and when asked what the logo meant, she responded that “they love D.C” and that the customers buy the goods “to remember that they’ve been there”.  All candid responses, and all overwhelming support for a finding that “I♥DC” failed to function as a trademark.

Curiously, while no love exists for I♥DC trademarks, some 200 miles up I-95, we find ourselves in an alternate universe, where I♥NY has for decades stood as the focal marketing piece and perhaps one of the most famous brands associated with the State of New York.  In fact, the brand is so well known, aggressively enforced, and strategically licensed, that its owner, the New York State Department of Economic Development has its own website dedicated to the brand and licensing opportunities.  What a difference!

Although the facts overwhelmingly tipped against I♥DC (and its individual owner), the decision raises questions about “I♥[insert geographic location]” trademarks generally.  Don’t they all act as an “expression of enthusiasm, affection or affiliation with respect to the [insert geographic location]” – New York being no different?  And apparently affixing the logo onto hang tags is not enough to show “trademark use”.  So where is the line?

While the New York State Department of Economic Development may withstand challenges based on historic policing efforts, use on a wide range of goods and services, and developing an entire licensing program; owners (public and private) with smaller budgets and shorter histories likely face the same dangers and attacks as I♥DC.  Police your mark, keep ornamental use to a minimum and have a documented history of how you use your mark as an indicator of source of the product, not just as a cute slogan that you love a particular city.  And for those looking to enter the “I♥[insert geographic location]” branding market (whether entrepreneur or local government), check the registry, investigate your marketplace for preexisting use, and study this case for what to do (and not to do) in your use of the brand – as opportunities exist as both first adopter or simply on the coattails of prior owners failing to treat their brand as anything more than a slogan showing “enthusiasm” for the location.

Trademark infringement disputes are not limited to those between for-profit companies.  Indeed, charities also own trademarks and they can and do enforce their trademarks against other organizations (charitable or not) through cease and desist letters, lawsuits, etc.

volunteers with donation
Copyright: wavebreakmediamicro / 123RF Stock Photo

Case in point:  Last week, Mothers Against Drunk Driving (“MADD”), a non-profit founded in 1980, sued the founders of a relatively new charity, Mothers Of Drunk Drivers (“MODD”), for trademark infringement and dilution of MADD’s trademarks and service marks.  MADD’s complaint, filed in the District of South Carolina, claims that MODD’s use of the marks MOTHERS OF DRUNK DRIVERS and MODD is confusingly similar to MADD’s federally-registered MOTHERS AGAINST DRUNK DRIVING and MADD marks and that the MADD and MOTHERS AGAINST DRUNK DRIVING marks are famous in South Carolina and throughout the United States.  Among other claims, MADD’s complaint also asserts a cybersquatting claim based upon MODD’s use of the domain name mothersofdrunkdrivers.org.

MADD claims that MODD’s actions have injured MADD’s fundraising efforts and goodwill and that any money MODD’s founders have raised due to their use of confusingly similar marks is money that could have gone to MADD to support MADD’s mission.  MODD’s gofundme.com page, attached as an exhibit to MADD’s complaint and available online, indicates that MODD has raised $555 in 5 months.  In terms of damages, MADD seeks to recover all revenues and charitable contributions raised by MODD’s founders as a result of their claimed unlawful conduct.  In addition to damages, MADD seeks an order enjoining MODD’s founders from using the MOTHERS OF DRUNK DRIVERS and MODD marks, requiring the destruction of any marketing materials containing such marks, and ordering the cancellation or transfer of the mothersofdrunkdrivers.org domain name.

Today the Supreme Court announced that it will not hear the Washington Redskins’ trademark dispute, despite the fact that the Supreme Court announced last week that it will hear the related trademark dispute involving the rock band, The Slants.  As referenced in an earlier blog post, the Washington Redskins filed a request last spring asking the Supreme Court to hear its case even though the case is currently pending before the Fourth Circuit.  Although the Supreme Court rejected the Redskins’ request, it is likely that the Supreme Court’s decision regarding The Slants will impact the Redskins’ dispute as well.

rock band illustration
Copyright: bakelyt / 123RF Stock Photo

This morning, the United States Supreme Court granted certiorari to hear the trademark dispute involving the rock band, The Slants.  The United States Patent and Trademark Office (“USPTO”) previously denied The Slants’ trademark registration on the basis of section 2(a) of the Lanham Act, which prohibits the registration of disparaging trademarks.  In 2015, the Federal Circuit held that section 2(a) is itself an unconstitutional restriction on the right to free speech guaranteed by the First Amendment.  The USPTO appealed that decision to the Supreme Court earlier this year, and the Supreme Court announced today that it will hear the case, thus signaling that it will determine whether or not the Lanham Act’s prohibition on offensive trademarks is constitutional.

An earlier blog post described the related dispute over whether the Washington Redskins will lose their federally-registered trademarks in the Redskins name.  The Supreme Court has not indicated whether it will also hear the Redskins’ dispute, which is currently pending before the Fourth Circuit.  However, the Supreme Court’s decision regarding The Slants will very likely impact the Redskins’ dispute as well as the USPTO’s registration of other potentially disparaging trademarks.