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Media Alerts - Gerlich v. Leath - Eighth Circuit
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June 23, 2017
  Gerlich v. Leath - Eighth Circuit
Headline Eighth Circuit holds that district court properly granted permanent injunction against Iowa State University in suit concerning student group trademark licensing requests

Area of Law First Amendment

Issue(s) Presented Whether the district court properly found that Iowa State University's trademark licensing decisions violated students' right to free speech and school officials were not entitled to qualified immunity.

Brief Summary Iowa State University (ISU) is home to over 800 officially recognized student groups, one of which is a student chapter of National Organization for the Reform of Marijuana Laws (NORML ISU). Student groups regularly create merchandise, and ISU grants the groups permission to use its trademarks on such merchandise if certain conditions are met. In 2012, NORML ISU submitted a t-shirt design to ISU's Trademark Licensing Office, which contained an ISU trademark and a small cannabis leaf as part of the design. The Trademark Office approved the t-shirt design. Shortly after, a newspaper article concerning state referenda legalizing marijuana was published. The article discussed NORML ISU's political efforts to legalize marijuana in Iowa, and included a quote about ISU being supportive of the group, referencing approval of the t-shirt design.

The article generated concern within ISU administration, resulted in a formal legislative inquiry, and also received attention from the Iowa Governor's Office of Drug Control Policy. As a result, the Trademark Guidelines were changed to prohibit "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 unhealthy." When NORML ISU requested permission to use the previously approved t-shirt design for a second order, their request was put on hold, and was then denied following the change in Trademark Guidelines. Subsequent requests by NORML ISU to use ISU trademarks in merchandise designs also incorporating a cannabis leaf were also denied. NORML ISU was also singled out as the only student group to have a prior review procedure imposed upon it before its requests could go to the Trademark Office. As a result, two student leaders of NORML ISU sued various ISU officials stating claims for violation of their First and Fourteenth Amendment rights.

The district court determined that the defendant ISU officials were not entitled to qualified immunity and held that the defendants' trademark decisions violated the plaintiffs' right to free speech. The district court also entered a permanent injunction prohibiting defendants from enforcing trademark licensing policies against the plaintiffs in a viewpoint discriminatory manner.

On appeal, a panel of the Eighth Circuit affirmed. The panel first held that the plaintiffs had standing to sue because the student leaders of NORML ISU suffered an injury in fact by having their designs rejected and therefore being unable to spread NORML ISU's message. The panel next concluded that the defendants were not entitled to qualified immunity because ISU had created a limited public forum when it made its trademarks available for student organizations to use if they abided by certain conditions. Once a state university has created a limited public forum for speech, it may not discriminate against speech on the basis of its viewpoint, yet here the defendants' rejection of the NORML ISU designs discriminated against the group on the basis of the group's viewpoint as evidenced by the unique scrutiny and prior approval requirements placed on the group. The panel rejected the defendants' argument that they did not violate plaintiff's First Amendment rights because their trademark licensing decisions should be considering government speech. The government speech doctrine does not apply if a government entity has created a limited public forum, as ISU did here when it made its trademarks available for student organizations to use under certain conditions. The Court concluded that because defendants had violated the plaintiff's clearly established First Amendment rights, the district court did not err by denying qualified immunity to the defendants and granting plaintiffs summary judgment on their First Amendment claims. Finally, the court held that the injunctive relief ordered by the district court was not too broad and was not an abuse of the district court's discretion.

Circuit Judge Loken dissented from the court's decision to deny the defendants qualified immunity from the plaintiffs' claims for compensatory damages and attorneys' fees.

The full text of the opinion may be found at

Panel Circuit Judges Kelly, Loken, and Murphy

Date of Issued Opinion June 13, 2017

Decided Affirmed

Docket Number

Counsel Tyler Murphy for Appellants and Robert Corn-Revere for Appellees

Author Circuit Judge Murphy

Case Alert Circuit Supervisor Joelle Larson, University of Minnesota Law School

    Posted By: Joelle Larson @ 06/23/2017 10:24 AM     8th Circuit  

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