The US Court of Appeals for the Eighth Circuit maintained its prior decision, holding that defendants violated the First Amendment when refusing to approve use of university trademarks on t-shirts incorporating a marijuana leaf design. Gerlich et al. v. Leath et al.,Case No. 16-1518 (8th Cir., June 13, 2017) (Murphy, J) (Loken, J, dissenting in part).

An Iowa State University (ISU) student organization calling itself the National Organization for the Reform of Marijuana Laws (NORML ISU) produced t-shirts, among other things, to promote the organization’s cause. The t-shirts incorporated the university’s trademark and a marijuana leaf design. ISU initially approved the use of its trademark, but after receiving backlash, revised its policies on use of its trademarks and later rejected two t-shirt designs submitted by NORML ISU because of the incorporation of the marijuana leaf design. NORML ISU filed a complaint against the administrators of ISU, alleging, among other things, violations of its First Amendment rights.

The district court concluded that ISU’s trademark licensing practice discriminated against NORML ISU based on the organization’s pro-marijuana views, finding that ISU “took action specifically directed” at NORML ISU. The administrators of ISU appealed.

In February 2017, the Eighth Circuit affirmed the district court’s decision, concluding that “ISU created a limited public forum when it made its trademarks available for student organizations to use if they abided by certain conditions” (IP Update, Vol. 20, No. 3). The Court further held that ISU’s “rejection of NORML ISU’s designs discriminated against that group on the basis of the group’s viewpoint.”

The ISU administrators asked for a panel rehearing. In its current decision, the Eighth Circuit panel reaffirmed its original ruling, finding that ISU violated NORML ISU’s First Amendment rights and that the district court did not err by denying qualified immunity to ISU and granting NORML ISU summary judgment on its First Amendment claims. The Court stated that ISU’s “discriminatory motive is evidenced by the unique scrutiny defendants imposed on NORML ISU after the Des Moines Register published an article about marijuana legalization and quoted NORML ISU’s president.” As an example of such scrutiny, NORML ISU was required to obtain approval of its designs from the administrators before submitting the designs to ISU’s trademark licensing office, the Court noted.

The Eighth Circuit was split, however, on the issue of qualified immunity, which excludes government officials acting in their official capacity (such as the ISU administrators) from civil lawsuits unless they violate a “clearly established” constitutional or statutory right. The dissent argued that the ISU administrators “were neither plainly incompetent nor knowing lawbreakers” when they rejected a string of proposed t-shirt designs. The dissent argued that ISU’s “trademark licensing policy already prohibited products causing health risks such as tobacco.” Therefore, “it was far from clear prior to this litigation that ISU’s trademark licensing program was not a form of government speech.”