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.

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.

Although a rose “by any other name would smell as sweet,” (Romeo & Juliet, Act II, sc. 2, ln 48), there just aren’t any trademark registrations to be had in a person’s name, at least not without the person’s written consent.  So the U.S. Patent and Trademark Office recently reminded a trademark applicant who had applied for a trademark registration for the mark “LOVE TRUMPS HATE,” in connection with clothing.

Registered trademark in a red background
Copyright: silvia / 123RF Stock Photo

In an Office Action issued last week (Nov. 21, 2016), an examining attorney preliminarily rejected a trademark registration application filed for the mark “LOVE TRUMPS HATE” on the grounds that the mark identifies a particular living individual and the applicant had failed to make a part of his application a formal, written consent to the registration from that living person – in this case, president-elect Donald J. Trump.  (See Office Action, Nov. 21, 2016, Trademark Serial No. 87117865.)

The Trademark Office’s response to the application relies on Section 2(c) of the Lanham Act, 15 U.S.C. § 1052(c), which is among the many “statutory bars” that may trip up a business’ effort to secure trademark registrations.  In this case, the statutory bar for non-consensual registrations of marks that identify a living individual is one of the provisions of the Lanham Act intended to protect the personal rights of individuals whose names have become famous or otherwise may be the target of appropriation in the marketplace.  (The prohibition against false endorsements in Section 43(a)(1)(A) of the Lanham Act is another such area of protection for people with famous names.)  The statutory bar in Section 2(c) has been invoked in past cases as a barrier to registrations of marks such as “PRINCESS KATE,” and “BO JACKSON,” and “OBAMA PAJAMA.”

In this most recent case, an applicant from New York City sought to register the famous slogan from the Hillary Clinton presidential campaign, in connection with t-shirts, sweatshirts, and caps, on an intent-to-use basis, in an application that was filed with the Trademark Office on July 27, 2016.  At the time of the application, the Clinton campaign had begun using the slogan “Love Trumps Hate” in response to various statements made by the Republican nominee.  Indeed, the last words that Mrs. Clinton uttered in public on the last night of her campaign before Election Day were “Love trumps hate.”

Setting aside questions of whether the use of this slogan on t-shirts, sweatshirts, and caps would be a sufficient usage to designate the source or origin of the products – a question bearing on whether the phrase functions as an actual trademark, rather than merely an ornamental slogan – the Trademark Office issued its preliminary denial because, the examining attorney concluded, the phrase “LOVE TRUMPS HATE” “clearly references Donald Trump.”  The Trademark Office was not swayed by the fact that this phrase obviously conveys a meaning apart from a reference to Mr. Trump, in that it propounds a worldview in which the emotion of love overcomes those things we may despise.  The Trademark Office pointed out that the statutory bar precludes registration of any mark that identifies a living individual (where the person does not give formal, written consent) if the person identified in the mark “is so well known that the public would reasonably assume a connection between the person and the goods.”

Of course, this specific Office Action is only a preliminary refusal to register the mark, and the applicant may well attempt to bring to bear the gamut of First Amendment arguments that certainly protect the applicant’s right to criticize Mr. Trump.  Whether those First Amendment rights are sufficient to authorize a trademark registration in this context is a legal question that the Trademark Office likely would not find persuasive, especially in light of the Office’s positions in other cases involving the intersection of the Lanham Act’s statutory bars and the First Amendment.

Nevertheless, this little anecdote is a cautionary reminder to businesses that their trademarks may not be registrable if they identify a particular living individual, absent a formal written consent from that individual, where the mark’s use of a person’s name would cause the public to see a connection between the famous person and the goods for which the mark is used.  (Whether such protection of a celebrity’s right of publicity is a good or bad thing, or is overreaching, is a legislative question to be addressed to Congress, and in that regard, it is a question likely to go unresolved in this era celebrity-drenched politics.)  Thus, businesses seeking to appropriate the fame of a well-known person’s name in their trademarks – even in this context of a double entendre on Mr. Trump’s name – would be well advised to think twice, or certainly, to negotiate a consent agreement that avoids the difficulty of having an application for registration denied on the strength of this statutory bar.