Gerlich v. Leath, 4:14–cv–00264–JEG

• Decision Date: 22 January 2016
• Docket Number: No. 4:14–cv–00264–JEG,4:14–cv–00264–JEG
• Citation: 117 U.S.P.Q.2d 1917,152 F.Supp.3d 1152
• Parties: Paul Gerlich and Erin Furleigh, Plaintiffs, v. Steven Leath, Warren Madden, Thomas Hill, and Leesha Zimmerman, Defendants.
• Court: U.S. District Court — Southern District of Iowa

152 F.Supp.3d 1152

117 U.S.P.Q.2d 1917

Paul Gerlich and Erin Furleigh, Plaintiffs,

v.Steven Leath, Warren Madden, Thomas Hill, and Leesha Zimmerman, Defendants.

No. 4:14–cv–00264–JEG

United States District Court, S.D. Iowa, Central Division.

Signed January 22, 2016

Robert Corn-Revere, Lisa B. Zycherman, Ronald G. London, Davis Wright Tremaine LLP, Washington, DC, Michael A. Giudicessi, Faegre Baker Daniels, LLP, Des Moines, IA, for Plaintiff.

Tyler Murray Smith, Attorney General of Iowa, Des Moines, IA, for Defendants.

ORDER

JAMES E. GRITZNER

, Senior Judge, UNITED STATES DISTRICT COURT

This matter comes before the Court on a Motion for Summary Judgment filed by Defendants Steven Leath (Leath), Warren Madden (Madden), Thomas Hill (Hill), and Leesha Zimmerman (Zimmerman), which Plaintiffs Paul Gerlich (Gerlich) and Erin Furleigh (Furleigh) resist, and a cross-Motion for Summary Judgment filed by Plaintiffs, which Defendants resist. A hearing on both Motions was held on November 18, 2015. Attorney Robert Corn–Revere was present representing Plaintiffs, and attorney Tyler Murray Smith was present representing Defendants. The Motions are fully submitted and ready for consideration.

I. BACKGROUND

A. Factual Background¹

1. The Parties

Iowa State University (ISU or the University) is a state institution of higher education governed by the Iowa State Board of Regents. Plaintiffs Paul Gerlich and Erin Furleigh are residents of Ames, Iowa, and students at ISU. NORML ISU is the ISU student chapter of the National Organization for the Reform of Marijuana Laws (NORML), a political group that advocates for reform of federal and state marijuana laws.² Gerlich has been a member of NORML ISU since late 2012 or early 2013 and served as the president of NORML ISU. Furleigh has been a member of NORML ISU since the spring of 2012, has served as the group's president, and served as the vice president on the date the Complaint was filed.

At all relevant times, Leath was President of ISU; Madden was Senior Vice President, Division of Business & Financial Affairs responsible for enactment and enforcement of ISU trademark licensing policies; Hill was Senior Vice President for Student Affairs responsible for implementing the Division of Student Affairs' mission and managing the division's personnel and resources; and Zimmerman was Program Director of the Trademark Licensing Office with delegated authority to interpret and implement the ISU's trademark licensing policies, procedures, and guidelines. The Trademark Office is indirectly supervised by Madden. It is agreed all Defendants acted under color of state law.

2. ISU Student Groups

ISU encourages students to create student organizations as part of their educational experience. Since 2012, NORML ISU has been a recognized campus organization at ISU. The group hosts events to educate the public about its mission to reform marijuana laws, engages in law reform advocacy, participates in university activities to spread awareness of its mission, and engages in community service.

3. ISU Trademark Licensing

ISU owns federally registered trademarks, including word marks such as “Iowa State University,” “Iowa State,” “ISU,” “Cyclone,” and “Cy,” as well as logos, such as Cy the Cardinal (Cy) graphics and Cy the mascot. ISU student and campus organizations may use ISU's trademarks, including “ISU,” “Iowa State University,” and other marks, consistent with their recognized status with the University, if the Trademark Office determines that their use complies with the University's licensing guidelines. The licensing guidelines were approved in 1996 and revised in 2001, 2004, 2005, and 2011. The guidelines state that designs using ISU marks “must ... appropriately portray the image of Iowa State University,” that an ISU “[m]ark cannot be incorporated into or dominated by the marks of others,” and that “[n]o products considered dangerous or offensive will be approved, including but not limited to products ... promoting firearms, drugs, alcohol, gambling, gaming or tobacco.” Licensing Program Guidelines, D.App. 65–66, ECF No. 48–8. The Trademark Office will not license ISU marks for certain items it considers a liability risk or as inappropriately portraying the University's image, including sex toys, alcohol products, ashtrays, condoms, drug-related items, weapons, knives, toilet paper, and diapers. There are no penalties for student organizations that submit trademark licensing requests that are rejected.

The Trademark Office licenses ISU marks to recognized student organizations that espouse controversial ideas, activities, or lifestyle choices without the assumption that the University supports or endorses any of those ideas, activities, or lifestyle choices. Defendants acknowledge that licensing a trademark to a student group does not mean that ISU takes a position on what the group represents.

The record includes illustrations of groups and related issues that some may view as controversial. The Trademark Office has approved designs submitted by CUFFS, a sexual bondage student club and recognized student organization at ISU, to license University marks on their apparel. ISU's recognition of CUFFS as a student group was controversial, as was CUFFS' use of the University's marks.

Consistent with Defendants' view that licensing a mark does not imply ISU's endorsement, neither Madden nor Hill believed licensing the marks to CUFFS demonstrated University support for sexual bondage or other expressions of alternative sexuality. Trademark Office has also approved designs by the LGBTAA, a recognized student organization that supports the rights of gay, lesbian, bisexual, and transgender people, which Madden did not view as an endorsement of the group's views.

In addition to designs for CUFFS and LGBTAA, the Trademark Office has approved designs for groups including: Iowa State University Students for Life, an anti-abortion group; ISU College Republicans; Iowa State Democrats; ISU Tea Party; the Navy Marine Corps Drill Team, including designs with Cy the Cardinal holding a rifle; the American Society of Biosystem Engineers, including designs with Cy the Cardinal holding a sword; the Iowa State University Fencing Club, including designs with Cy the Cardinal leaning on an epee; the Rifle and Pistol Club; and the ISU Trap and Skeet Club, including designs with Cy the Cardinal holding a shotgun.

4. NORML ISU T–Shirt Design #1

In October 2012, NORML ISU submitted a design (T–Shirt Design #1) to the Trademark Office that displayed the name of the organization on the front, with the “O” in “NORML” represented by the head of the ISU mascot, Cy the Cardinal. The shirt's back read “Freedom is NORML at ISU” with an image of a small cannabis leaf above “NORML.” The group planned to use the shirts for publicizing their message and fundraising. Plaintiffs and fellow NORML ISU members believed including Cy the Cardinal on the shirt would attract other students and alumni to the group's political cause and that the combination of Cy and a cannabis leaf (routinely used by the national organization) made the shirt more marketable and recognizable. The Trademark Office approved T–Shirt Design #1 for production and sale.

5. November 19, 2012, Des Moines Register Article

On November 19, 2012, a front page article appeared in the Des Moines Register discussing the legalization of marijuana (the Article). The Article focused on recent political activities pertaining to marijuana legalization, including ballot initiatives and petition drives, and included a statement by NORML ISU's then-president, Josh Montgomery, that NORML ISU had received support from ISU. In the Article, Montgomery was pictured wearing the organiza-tion's T–Shirt Design #1. At 8:11 a.m. that morning, John McCarroll (McCarroll), head of ISU's public relations office, asked Zimmerman for information about the approval of T–Shirt Design #1 in case he received calls about the Article. At 8:50 a.m., Zimmerman gave McCarroll a prepared statement that included the following response to Montgomery's assertion that ISU had given support to NORML ISU:

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, 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.

11/19/2012 Email, Pls. Dep. Ex. 67, J.App. 105–107, ECF No. 46–1. At 8:57 a.m., McCarroll replied to Zimmerman, stating in part, “Thanks, that's what I was looking for. I wasn't questioning their rights as a student organization, just wanting to know about the process.” Id. Later that morning, Leath's office was contacted by Brad Trow (Trow) from the Iowa House Republican Caucus Staff, who asked whether ISU had approved NORML ISU's use of ISU marks on the t-shirt pictured in the Article. Madden reported to Hill, Zimmerman, and other ISU administrators, including ISU counsel Paul Tanaka (Tanaka) and Keith Bystrom, that they were “getting some push back regarding the Register article,” and that the issue was to be discussed at an upcoming meeting. Id.

That afternoon, Leath asked his Chief of Staff Miles Lackey (Lackey) whether the University could “revoke” permission for T–Shirt Design #1 “without more damage.” 11/19/2012 Email, Pls. Dep. Ex. 72, J.App. 138,...