Submitted: December 14, 2016
from United States District Court for the Southern District
of Iowa - Des Moines
LOKEN, MURPHY, and KELLY, Circuit Judges.
MURPHY, Circuit Judge.
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 court granted plaintiffs'
summary judgment motion in part and entered a permanent
injunction against defendants. Defendants appeal, and we
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.
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.
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.
AM on November 19, Zimmerman provided ISU's public
relations office with the following statement regarding the
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
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.
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."
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."
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."
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."
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
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.
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.
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."
the Trademark Guidelines were revised, the Trademark Office
rejected every NORML ISU design application that included the
image of a cannabis leaf. The Trademark Office also rejected
designs that spelled out the NORML acronym but replaced
"Marijuana" with either "M********" or
"M[CENSORED]." The Trademark Office however
approved several designs which did not use a cannabis leaf,
but simply stated the group's name, and fully spelled out
the NORML acronym.
2014 Paul Gerlich and Erin Furleigh filed this action against
Leath, Madden, Hill, and Zimmerman stating claims under 42
U.S.C. § 1983 for alleged violations of their First and
Fourteenth Amendment rights. At the time the complaint was
filed, Gerlich was the president of NORML ISU and Furleigh
was the group's vice president. Count I alleged that
defendants' trademark licensing decisions, as applied to
plaintiffs, violated their right to free speech. Counts II
through IV alleged that the trademark guidelines were
unconstitutional on their face and unconstitutionally vague.
After the district court concluded that defendants were not
entitled to qualified immunity, it granted plaintiffs'
motion for summary judgment on
I but dismissed Counts II through IV. The district court also
entered a permanent injunction that prohibits defendants
"from enforcing trademark licensing policies against
Plaintiffs in a viewpoint discriminatory manner and from
further prohibiting Plaintiffs from producing licensed
apparel on the basis that their designs include the image of
a . . . cannabis leaf."
argue that the district court improperly concluded that
plaintiffs have standing to bring this action. We review de
novo "the district court's conclusion that the
plaintiffs had standing." Jones v. Gale, 470
F.3d 1261, 1265 (8th Cir. 2006). Standing is a
"jurisdictional prerequisite that must be resolved
before reaching the merits of a suit." Hodak v. City
of St. Peters, 535 F.3d 899, 903 (8th Cir. 2008)
(quoting Medalie v. Bayer Corp., 510 F.3d 828, 829
(8th Cir. 2007)). Under Article III of the Constitution, a
plaintiff must demonstrate three elements to establish
standing: "(1) injury in fact, (2) a causal connection
between that injury and the challenged conduct, and (3) the
likelihood that a favorable decision by the court will
redress the alleged injury." Young Am. Corp. v.
Affiliated Computer Servs. (ACS), Inc., 424 F.3d 840,
843 (8th Cir. 2005). Plaintiffs bear the burden of proving
these elements. See id.
argue that plaintiffs lack an injury in fact because
plaintiffs are asserting NORML ISU's right to free
speech, not their own. To establish an injury in fact, a
party must "show that he personally has suffered some
actual or threatened injury as a result of the putatively
illegal conduct of the defendant." Valley Forge
Christian Coll. v. Ams. United for Separation of Church &
State, Inc., 454 U.S. 464, 472 (1982). An injury is
defined under 42 U.S.C. § 1983 as a "deprivation of
any rights, privileges, or immunities secured by the
Constitution and laws."
conclude that plaintiffs suffered an injury in fact in their
individual capacities, and that they therefore have standing
to bring this action. Plaintiffs' attempts to obtain
approval to use ISU's trademarks on NORML ISU's
merchandise amounted to constitutionally protected speech.
See, e.g., Rosenberger v. Rector & Visitors
of Univ. of Va., 515 U.S. 819, 828-37 (1995).
Plaintiffs' allegations that ISU violated their First
Amendment rights by rejecting their designs and therefore
preventing their ability to spread NORML ISU's message
are sufficient to establish an injury in fact. Moreover, in
both Widmar v. Vincent, 454 U.S. 263 (1981), and
Rosenberger, 515 U.S. 819, individual students sued
universities on behalf of their student organizations and the
Supreme Court did not conclude that it lacked subject matter
jurisdiction over the students' actions. We therefore
conclude that plaintiffs have standing to bring this action.
next argue that the district court erred by denying them
qualified immunity and granting plaintiffs summary judgment
on their as applied First Amendment claim. We review a
district court's "grant of summary judgment de novo
and consider the facts in the light most favorable to the
nonmoving party." Nichols v. Tri-Nat'l
Logistics, Inc., 809 F.3d 981, 985 (8th Cir. 2016). A
district court's grant of "[s]ummary judgment is
only appropriate when 'there is no genuine dispute as to
any material fact and the moving party is entitled to
judgment as a matter of law.'" Id. (quoting
Pinson v. 45 Dev., LLC, 758 F.3d 948, 951-52 (8th
review the denial of qualified immunity, we examine "(1)
whether the facts shown by the plaintiff make out a violation
of a constitutional or statutory right, and (2) whether that
right was clearly established at the time of the
defendant's alleged misconduct." See Foster v.
Mo. Dep't of Health & Senior Servs., 736 F.3d
759, 762 (8th Cir. 2013) (quoting Winslow v. Smith,
696 F.3d 716, 731 (8th Cir. 2012)). We may take up these
questions in either order. Id. at 763.
begin with plaintiffs' claim that defendants violated
their First Amendment rights by engaging in viewpoint
state university creates a limited public forum for speech,
it may not "discriminate against speech on the basis of
its viewpoint." Rosenberger, 515 U.S. at 829. A
university "establish[es] limited public forums by
opening property limited to use by certain groups or
dedicated solely to the discussion of certain subjects."
Christian Legal Soc. Chapter of the Univ. of Cal.,
Hastings Coll. of the Law v. Martinez, 561 U.S. 661, 679
n.11 (2010) (internal quotation marks and citation omitted).
A university's student activity fund is an example of a
limited public forum. See Rosenberger, 515 U.S. at