Gerlich v. Leath

• Decision Date: 13 June 2017
• Docket Number: No. 16-1518,16-1518
• Citation: 861 F.3d 697
• Parties: Paul GERLICH; Erin Furleigh, Plaintiffs-Appellees v. Steven LEATH ; Warren Madden ; Thomas Hill; Leesha Zimmerman, Defendants-Appellants Student Press Law Center; Ratio Christi ; Students for Life of America ; Christian Legal Society; Young America's Foundation; Young Americans for Liberty, Amici on Behalf of Appellee(s)
• Court: U.S. Court of Appeals — Eighth Circuit

861 F.3d 697

Paul GERLICH; Erin Furleigh, Plaintiffs-Appellees

v.Steven LEATH ; Warren Madden ; Thomas Hill; Leesha Zimmerman, Defendants-Appellants

Student Press Law Center; Ratio Christi ; Students for Life of America ; Christian Legal Society; Young America's Foundation; Young Americans for Liberty, Amici on Behalf of Appellee(s)

No. 16-1518

United States Court of Appeals, Eighth Circuit.

Submitted: December 14, 2016

Filed: June 13, 2017

Rehearing and Rehearing En Banc Denied August 9, 2017^*

Counsel who represented the appellants at argument was Tyler Murray Smith, who later withdrew from the case. George A. Carroll, AAG, Des Moines, IA, then entered his appearance as counsel for appellants. Also representing appellants was Jeffrey S. Thompson, Solicitor General of the State of Iowa.

Counsel who represented the appellees at argument was Robert Corn-Revere of Washington, DC. Also on appellees' brief were Michael Giudicessi, of Des Moines, IA, Ronald London, of Washington, DC, and Lisa Beth Zycherman of Washington, DC.

Counsel who appeared on the amicus brief of Student Press Law Center was Eugene Volokh, of Los Angeles, CA.

Before LOKEN, MURPHY, and KELLY, Circuit Judges.

MURPHY, Circuit Judge.

Iowa State University (ISU) grants student organizations permission to use its trademarks if certain conditions are met. The ISU student chapter of the National Organization for the Reform of Marijuana Laws (NORML ISU) had several of its trademark licensing requests denied because its designs included a cannabis leaf. Two members of the student group subsequently filed this 42 U.S.C. § 1983 action, alleging various violations of their First and Fourteenth Amendment rights. The district court¹ granted plaintiffs' summary judgment motion in part and entered a permanent injunction against defendants. Defendants appeal, and we affirm.

I.

ISU is a land grant university that has an enrollment of over 36,000 students and approximately 800 officially recognized student organizations. Student groups often create merchandise that contains the group's name and ISU insignia to generate awareness about the group's cause or attract members. Student groups may use ISU's trademarks on merchandise if ISU's Trademark Licensing Office (Trademark Office) determines that the use complies with ISU's Guidelines for University Trademark Use by Student and Campus Organizations (Trademark Guidelines). ISU's trademarks include word marks like "ISU" and "Iowa State," as well as logos, such as the school's mascot (Cy the Cardinal). At all relevant times, Leesha Zimmerman was the director of ISU's Trademark Office and reported to Warren Madden, Senior Vice President of the Division of Business & Financial Affairs.

NORML ISU is an officially recognized student organization at ISU. It is a student chapter of the national NORML organization and its purpose is to reform federal and state marijuana laws. The group was refounded in 2012. In October 2012, NORML ISU submitted a t-shirt design (T-Shirt Design #1) to the Trademark Office that had "NORML ISU" on the front with the "O" represented by Cy the Cardinal. On the back the shirt read, "Freedom is NORML at ISU" with a small cannabis leaf above "NORML." The Trademark Office approved T-Shirt Design #1.

On November 19, 2012, the Des Moines Register published a front page article about the marijuana legalization referenda in Colorado and Washington and pending legislative efforts in Iowa to legalize recreational and medicinal marijuana. The article quoted NORML ISU President Josh Montgomery regarding the group's political efforts to change Iowa's marijuana laws. The article then stated "Montgomery said his group has gotten nothing but support from the university. He even got approval from the licensing office to make a NORML T-shirt with the ISU logo; the red shirt features Cy the Cardinal on the front, and a pot leaf on the back...." The article also contained a photograph of the front and back of T-Shirt Design #1.

At 8:50 AM on November 19, Zimmerman provided ISU's public relations office with the following statement regarding the article:

The university's Trademark Policy and Student Use Guidelines allow officially recognized student organizations the ability to use Iowa State's trademarks as long as they observe the proper procedures and follow specified design standards. Groups, including NORML, may use any of the university's indicia (names, graphics, logos, etc.) as long as they seek review and approval from the Trademark Licensing Office, which they did for the T-shirts. This does not mean that we take a position on what any of the organizations represent. We have 800 groups from The ISU Line Dancer's [sic], CUFFS, the ISU Baseball Club, LGBTAA, John Paul Jones Society, Game Renegades, ROTC, and many more. I believe that the statement in the article indicating "his group has gotten nothing but support from the university" is a bit misleading. He may be confusing recognition of the group as the university "supporting" it.

Later that morning, an Iowa House Republican caucus staff person sent a formal legislative inquiry to ISU's State Relations Officer asking whether "ISU's licensing office approve[d] the use of the ISU logo on the NORML t-shirt" pictured in the article. This request was forwarded to ISU President Steven Leath and his chief of staff, Miles Lackey, at 1:08 PM.

At 2:00 PM Madden told Thomas Hill, Senior Vice President for Student Affairs, Zimmerman, and other ISU administrators that Lackey indicated that ISU was "getting some push back regarding the Register article," and that "[h]e wants to place this on" the president's cabinet meeting discussion agenda. Leath later testified that "the reason it was on the agenda is because we were getting pushback. If nobody'd ever said anything, we didn't know about it, it didn't appear in The Register, we'd probably never raised the issue."

At 3:00 PM Leath emailed Lackey to ask whether ISU could "revoke" the approval of T-Shirt Design #1 "without more damage." Leath explained this email at his deposition by stating "[i]f we gave approval to something that was inappropriate, we might want to consider revoking it, but we could just make the problem worse, and I was asking for his advice."

At 3:19 PM Leath stated in an email to Madden "[w]e need to deal with this.... What were they thinking?" Leath explained at his deposition that because T-Shirt Design #1 "had some political public relations implications," someone should have "run it up the chain" because "there are some issues that are clearly going to cause controversy and it's better to manage them on the front end." Leath also testified that "my experience would say in a state as conservative as Iowa on many issues, that" T-Shirt Design #1 "was going to be a problem."

On November 20, Dale Wollery of the Governor's Office of Drug Control Policy emailed and called the head of ISU's government relations office about the article. Wollery's email indicated that he was "curious about the accuracy of the student's statement cited in the report, and perhaps the process used by ISU to make such determinations." Wollery's concerns were shared with Zimmerman, Lackey, and Leath on November 21. Leath testified at his deposition that "anytime someone from the governor's staff calls complaining, yeah, I'm going to pay attention, absolutely." Leath further elaborated, "we are a state entity and he's the chief executive of the state, and so directly or indirectly we're responsible to the governor."

On November 21, the head of ISU's public relations office responded to Wollery's messages by stating that NORML ISU's use of ISU's trademarks was "permitted under the policies governing student organizations." The email went on to say, "[h]owever, this procedure is being reviewed."

On November 24, NORML ISU requested permission from ISU's Trademark Office to use T-Shirt Design #1 for another order. Madden decided to place this reorder on hold until after the president's cabinet meeting. Madden testified that he did not order the Trademark Office to hold reorder approvals for any other campus group. Zimmerman testified that she could not think of any other time that the Trademark Office had placed a student group request on hold. The president's cabinet meeting took place on November 26. After discussing the Des Moines Register article and NORML ISU's reorder request, the group agreed that ISU's Trademark Guidelines had to be changed.

Madden and Hill met with members of NORML ISU on November 29. Madden and Hill referenced the Des Moines Register article and expressed concern that the group's use of ISU's trademarks on T-Shirt Design #1 caused confusion as to whether ISU endorsed the group's views regarding the legalization of marijuana. They then informed the group that the Trademark Office would not approve of any t-shirt design that used ISU trademarks in conjunction with a cannabis leaf. They also told the group that it was required to obtain approval for any future designs from Madden and Hill prior to submitting the designs to the Trademark Office. Zimmerman testified that to her knowledge this was the first time ISU had imposed a prior review procedure to a student group's trademark design application process.

NORML ISU's reorder of T-Shirt Design #1 was rejected by ISU's Trademark Office on December 3. On January 16, 2013 the Trademark Guidelines were revised. The new Trademark Guidelines prohibited "designs that suggest promotion of the below listed items ... dangerous, illegal or unhealthy products, actions or behaviors; ... [or] drugs and drug paraphernalia that are illegal or unhealthful." Madden indicated that this revision to the Trademark Guidelines "was done as the result of a number of external comments including interpretations that the t-shirt developed indicated that Iowa State University supported the NORMAL [sic] ISU advocacy for the reform of marijuana laws."

After the Trademark Guidelines were revised, the ...