IP Law Daily University violated NORML chapter’s rights by refusing to approve cannabis leaf t-shirts
Monday, January 25, 2016

University violated NORML chapter’s rights by refusing to approve cannabis leaf t-shirts

By Thomas Long, J.D.

Two Iowa State University students who were president and vice president of the campus chapter of the National Organization for the Reform of Marijuana Laws (NORML) established that university officials violated their First Amendment rights by refusing to approve t-shirt designs incorporating the university’s trademarks, the federal district court in Des Moines has decided (Gerlich v. Leath, January 22, 2016, Gritzner, J.). As applied, the university’s policy on trademark use violated the plaintiffs’ rights to free speech and political expression, with respect to t-shirts and other apparel bearing an image of a cannabis leaf.

NORML ISU. NORML was a national advocacy group that supported the legalization of marijuana for responsible use by adults. The Iowa State University chapter of NORML (NORML ISU) was an approved campus organization that produced apparel to promote its cause. Like other approved campus student groups, NORML ISU had been allowed to use the school’s logos and marks in connection with the group’s activities, subject to compliance with university design standards.

Original trademark approval. Uses of the university’s marks had to be approved by the university’s Trademark Office, which was headed by defendant Leesha Zimmerman. In October 2012, NORML ISU submitted a t-shirt design to the Trademark Office with a design featuring the word “NORML” on the first of the shirt, with the “O” replaced by an image of the school’s mascot, Cy the Cardinal. The back of the t-shirt read “Freedom is NORML at ISU” and included a small image of a marijuana leaf. The Trademark Office approved the design, and NORML ISU produced and sold 100 t-shirts.

Rescission of approval. The Des Moines Register published an article on November 19, 2012, about the legalization of marijuana in Iowa, which included a picture of the current president of NORML ISU wearing the organization’s t-shirt. Defendant Thomas Hill, Senior Vice President for Student Affairs, and defendant Warren Madden, Senior Vice President of Business & Financial Affairs, contacted representatives of NORML ISU and informed the students that the university had rescinded approval of the t-shirt design because the design suggested that the university itself supported the legalization of marijuana.

Revised trademark guidelines. On January 16, 2013, the university enacted revised Trademark Guidelines to provide that no designs would be approved that suggested promotion of (1) dangerous, illegal, or unhealthy products, actions, or behaviors, or (2) illegal or unhealthful drugs and drug paraphernalia.

Approved t-shirt designs. On February 12, 2013, the Trademark Office approved a t-shirt design submitted by NORML ISU that stated “NORML ISU” on the front and “We are NORML” across the back. This design did not include the image of the marijuana leaf that was on the previous design. On April 15, 2013, the Trademark Office approved another t-shirt design that simply stated “NORML ISU Student Chapter” on the front.

Refused marijuana leaf designs. In May or June 2013, NORML ISU submitted a t-shirt design that had the slogan “NORML ISU Supports Legalizing Marijuana” on the front, with a marijuana leaf graphic. Approval for this design was denied, purportedly because the message could be misconstrued as the university’s position on marijuana. In March 2014, NORML ISU submitted a t-shirt design that displayed “NORML ISU” on the front in ink that was stylized to resemble the outline of a marijuana leaf. The design also was denied.

Free speech claims. On July 1, 2014, plaintiffs Paul Gerlich and Erin Furleigh—respectively, president and vice president of NORML ISU—filed suit against Madden, Hill, Zimmerman, and ISU President Steven Leath, under 42 U.S.C. §1983 for alleged violations of their First and Fourteenth Amendment rights. Both sides moved for summary judgment. The defendants argued that they were entitled to qualified immunity.

Viewpoint discrimination. A public university may not discriminate among student groups on the basis of their espoused views, the court said. Although ISU did not establish a forum for student speech with its trademark licensing program, the defendants were nonetheless forbidden from denying a license to NORML ISU on discriminatory grounds. The court rejected the defendants’ argument that ISU rejected the NORML designs because they did not conform with viewpoint-neutral guidelines, pointing out that those guidelines prohibited use of ISU’s marks on designed that promoted “dangerous, illegal or unhealthy products,” but ISU had allowed its marks to be used with guns and swords, and in other instances with cannabis leaves, indicating that it applied its guidelines “flexibly.” The record showed that NORML’s political message was a driving factor behind the defendants’ actions. Moreover, the court said, the defendants did not demonstrate a compelling state interest for engaging in viewpoint discrimination against the plaintiffs. The plaintiffs were entitled to summary judgment on their claim that their free speech rights were violated by the trademark licensing policy, as applied.

Government speech. ISU’s licensing practices were not immune from First Amendment scrutiny under the government speech doctrine, the court said. Speech by collegiate organizations facilitated by a state university was not government speech. The record was “replete” with statements by the defendants that they did not intend to communicate any message to the public by licensing ISU marks to student groups. The Trademark Office’s past practice of granting licenses to disparate groups made it clear that ISU did not grant licenses as a means of endorsing or expressing a particular view. There was no indication that the public believed that ISU promoted marijuana law reform.

Clearly established rights. The First Amendment’s prohibition on viewpoint discrimination in the university context was well-established, the court said. The fact that the defendants consulted with counsel did not immunize them; their attorneys’ advice could not transform patently unlawful activity into objectively reasonable conduct. Accordingly, the defendants’ motion for summary judgment on the ground of qualified immunity was denied.

Overbreadth and vagueness. The court denied the plaintiffs’ motion for summary judgment, and granted the defendants’ motion, with respect to the claims that the trademark licensing policies was unconstitutionally overbroad and vague. Because there was nothing in the record to indicate that the policies involved punishments that would effectively criminalize submitting a design that was later rejected, there was no realistic danger that the guidelines would chill expression. Although the guidelines were unconstitutionally discriminatory as applied to the plaintiffs, they did not pose such a substantial risk to the public at large that invalidation of the guidelines themselves was justified.

Remedy. The defendants were permanently enjoined from enforcing trademark licensing policies against the plaintiffs in a viewpoint-discriminatory manner and from further prohibiting the plaintiffs from producing licensed apparel on the basis that their designs include the image of a cannabis leaf.

The case is No. 4:14-cv-00264-JEG-HCA.

Attorneys: Robert Corn-Revere (Davis Wright Tremaine LLP) and Joseph B. Martin (Quinn Emanuel) for Paul Gerlich. Tyler Murray Smith, Attorney General of Iowa, for Steven Leath.

MainStory: TopStory Trademark IowaNews

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