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ISSUES PRESENTED FOR REVIEW Notwithstanding the other issues raised by the parties on appeal, Amicus limits its discussion to the following: Does an injunction in a trademark case requiring a defendant to remove material from a website violate the First Amendment where the district court has made no finding of fact related to the purposes of trademark law? STATEMENT OF THE CASE Amicus adopts the appellant’s statement of the case. STATEMENT OF FACTS Amicus adopts the appellant’s statement of the facts. ARGUMENT This case is about a former litigant’s right to discuss the events involved in a long since concluded case. The underlying litigation, which involved a dispute over the ownership of the Skippy trademark, ended in 1986. The district court’s September 4, 1986 order prohibited Skippy, Inc. and Joan Crosby Tibbett from interfering with CPC’s rights to use its registered trademark SKIPPY in connection with food products. That order further prohibited Skippy, Inc. and Tibbett from "communicating in any manner with anyone that [Skippy, Inc.’s] rights in the trademark SKIPPY include the right to use SKIPPY on peanut butter and food products and, conversely, that CPC has no rights in the SKIPPY trademark in connection with these products." J. App. at 9. In 1999, appellant Joan Crosby Tibbett posted information about the case on a website called skippy.com. The website provided biographical information about Mrs. Tibbett’s father, Percy Crosby, who created a cartoon character named Skippy in the 1920s. The site further described how, through a series of misdeeds beginning in the 1930s and culminating with the 1986 district court order, CPC and its predecessor corporations appropriated the Skippy name to make millions of dollars selling peanut butter. The district court’s September 9, 1999 order, from which appellants now appeal, required Ms. Tibbetts to remove approximately ten pages of text from this website. J. App. at 79-91 The deleted material mostly consists allegations of wrongdoing on the part of CPC and its predecessors. The court found that website "appears to" violate the 1986 district court order (J. App. at 66), and "defames the validity and integrity of C.P.C.’s right to the mark ‘Skippy’ on food products." J. App 107. Beyond these general statements, the district court made no finding of facts supporting the injunction against the website materials. The district court’s order prohibited Ms. Tibbetts from telling her side of this long and emotional saga. In so doing, the court failed to articulate any government interest that justified its wholesale suppression of speech. The order conflicts with several longstanding First Amendment doctrines. First, the order fails to meet the constitutional standard for injunctions that restrict speech set forth in Madsen v. Women’s Health Center, Inc., 512 U.S. 753 (1994). Second, the order is an unconstitutional prior restraint. Third, the order fails to meet the strict scrutiny required for content and viewpoint-based restrictions. I. THE SEPTEMBER 9, 1999 ORDER IS UNCONSTITUTIONAL
The First Amendment limits a district court’s power to issue an injunction restricting speech. In Madsen v. Women’s Health Center, Inc., 512 U.S. 753 (1994) the Court recognized that because injunctions are issued against individuals on a case-by-case basis, "[i]njunctions . . . carry greater risks of censorship and discriminatory applications than do general ordinances. There is no more effective practical guaranty against arbitrary and unreasonable government than to require that the principles of law which officials would impose upon a minority must be imposed generally." 512 U.S. at 764. In his concurrence, Justice Scalia also further noted that "the injunction is a much more power weapon than a statute," because "persons subject to a speech-restricting injunction who have not the money or not the time to lodge an immediate appeal face a Hobson’s choice: They must remain silent, since if they speak their First Amendment rights are no defense in subsequent contempt proceedings." Id. at 793-94. For these reasons, the constitutional evaluation of injunctions requires "a somewhat more stringent application of general First Amendment principles." Id. at 765. The Madsen Court held that the constitutionality of a content-neutral injunction depends on "whether the challenged provisions of the injunction burden no more speech than necessary to serve a significant government interest." Id. The September 9, 1999 order is unconstitutional under this standard.
1. Nature of the government’s interest. The governmental interests involved in the enforcement of trademark law are to encourage investment in goodwill and product differentiation, and to prevent fraud and provide consumers with information relevant to purchase decisions. See e.g., Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163-64 (1995). These interests are implicit in the definition of "trademark," a symbol used "to identify and distinguish . . . goods . . . from those manufactured or sold by others and to indicate the source of the goods . . ." 15 U.S.C.S. § 1127 (1988). The key to trademark law is "use" in conjunction with a product (see e.g. 15 U.S.C.S. § 1051 (b), (d) (1998)), and the rights to a trademark are limited to the trade for which it has been used. "[T]he adoption of a trade-mark does not . . . project the right of protection in advance of the extension of the trade, or operate as a claim or territorial rights over areas into which it thereafter may be deemed desirable to extend the trade." United Drug Co. v. Rectanus Co., 248 U.S. 90, 98 (1918). Because of the close connection between trademarks and products, "the likelihood of consumer confusion is the ‘keystone of infringement.’" Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 462 (4th Cir. 1996) citing 3 J. Thomas McCarthy, Mccarthy on Trademarks and Unfair Competition, §31.02 (3d ed.1995). See generally, 15 U.S.C.S. § 1114(1) (1992) (Prohibiting unauthorized trademark use "in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive." ). Where a likelihood of confusion can be shown, several remedies are available to a trademark holder, including damages, profits and attorney’s fees (15 U.S.C.S. § 1117 (1996)) as well as injunctive relief. 15 U.S.C.S. § 1116 (1996). However, the power to grant an injunction is limited by the general constraints of equitable relief. 2. The injunction’s excessive suppression of speech. The injunction against the material on the Mrs. Tibbet’s website does not serve the government interest in preventing consumer confusion and promoting expenditures on goodwill. At no point does the web site challenge CPC’s ownership of the trademark, or CPC’s right to use it. In short, she does not represent that her "rights in the trademark Skippy include the right to use Skippy on peanut butter and food products" or "conversely, that CPC has no rights in the SKIPPY trademark in connection with these products." A reader encountering the site would know from the very beginning that the site did not belong to CPC, was not authorized by CPC, and had nothing to do with food or food products. Furthermore, although the site suggests that those wishing to make use of the Skippy mark in connection with the cartoon character must contact Tibbetts, it does not "advertise or promote a caramel corn and peanut product or any other food product under the trademark Skippy." No reader could confuse the Skippy character or any part of the website with CPC’s "Skippy" used in conjunction with food. Instead, the material ordered to be removed from the web site is an account of Ms. Tibbett’s experiences and opinions regarding the trademark dispute with CPC over the Skippy mark. It is an attempt to commemorate her father and his cartoon character, and to tell her side of this decades-long story. The web site tells the story of a giant, greedy corporation that misappropriated a name "Skippy" from a popular cartoon, took advantage of its creator’s confinement in an institution, lied to federal agencies and courts to obtain rights to the name, and made a fortune using the trademark to sell peanut butter. Amicus takes no position on whether the above represents an accurate version of events. The accuracy of the statements on the website is emphatically beside the point. Rather, the only question for purposes of the Madsen analysis is whether suppression of those statements was necessary to serve the government’s interest in preventing trademark abuses. Because the website did not attempt to claim the trademark or derogate CPC’s ownership of it, its suppression was unwarranted. Furthermore, the district court made no findings of fact supporting its injunction against the website materials. The Supreme Court has repeatedly held that courts must undertake an intensive scrutiny of the particular utterances at issue to determine whether punishment of the speech is justified under First Amendment principles. See, e.g., Landmark Communications, Inc. v. Virginia, 435 U.S. 829, 844 (1978) (citing Bridges v. California, 314 U.S. 252, 271 (1941)). Here, the district court did not give any explanation as to why any of the particular statements on the website violated the 1986 order or derogated CPC’s trademark. Instead, the court made blanket statements condemning the content of the website, using language such as "defames," "undermines" and "abuse." This simply is not sufficient to justify the court’s wholesale deprivation of speech in this case.
The district court’s remarks during the September 15, 1999 telephone hearing (J. App. at 107-09) suggest that the court’s concern in issuing the injunction was to preserve the integrity of its earlier order. The court stated, "The 1986 case was not appealed, and the defendants are now trying to circumvent the finality of the Court’s September 4, 1986 order. It makes a mockery out of justice when a disgruntled litigant can compromise the integrity of a valid order by publicly undermining the finality of the order, and that is exactly what the highlighted schedule A material does." Id. at 107. The district court did not explain how the web site "undermined the finality of the order." Certainly, the website did nothing to change the fact that CPC owns the Skippy trademark for the sale of peanut butter and other food products. Nor does the website attempt to convince readers that CPC does not own the trademark, or make any misleading statements in this regard. Thus, the website did nothing to change the effect of the court’s prior orders. At most, the website expressed vehement disagreement with the district court’s order. Unquestionably, the website takes the position that the district court’s 1986 ruling in the trademark matter was wrong. The narrative explains this position using strong rhetoric and poignant descriptions of characters and events stretching back over decades. But disagreement with the court’s orders is not a legitimate basis for the suppression of speech. In the context of contempt proceedings, Supreme Court has held that criticism of judges may not be punished unless the speech presents a clear and present danger to the administration of justice. Craig v. Harney, 331 U.S. 367 (1947); Pennekamp v. Florida, 328 U.S. 331 (1946); Bridges v. California, 314 U.S. 252 (1941). Bridges and its progeny concerned newspaper articles virulently criticizing judicial actions. In each of the three cases, the Court held that the danger that the articles would impermissibly influence the courts was too tenuous to outweigh the grievous harm to the newspapers’ free speech rights that would result from contempt sanctions. Nor does the tendency of critical speech to create public disrespect for the judiciary justify punishment of the speech. Indeed, "an enforced silence, however limited, solely in the name of preserving the dignity of the bench, would probably engender resentment, suspicion, and contempt much more than it would enhance respect." Bridges, 314 U.S. at 271. This Court has also recognized that criticism of judges is protected by the First Amendment. Baugh v. Judicial Inquiry and Review Comm’n., 907 F.2d 440 (4th Cir. 1990) ("It is clear that Virginia could not, consistent with the first amendment, punish a person for publicly criticizing a judge . . .") Here, there was no showing that the speech at issue could cause any danger to the administration of justice, much less a clear and present one. In contrast to Bridges, there were no pending proceedings which might be unduly influenced by the website. Nor did the website have the effect of subverting the court’s prior orders by denying CPC’s legal right in its trademark. The record demonstrates no necessity for suppressing the content of the website. And, again, the district court made absolutely no findings of fact to support its statement that the web site "undermined" its previous order.
The district court’s September 9, 1999 order operates as a prior restraint on appellant’s speech. "In the generally accepted sense, a prior restraint is one imposed by a judicial decree, a violation of which is summarily punishable as a contempt." Hirschkop v. Snead, 594 F.2d 356 (4th Cir. 1979). The Supreme Court has recognized that one of the prime purposes of the First Amendment was to prevent such preemptive removal of ideas from the public forum. The Court explained the special dangers of prior restraints in Nebraska Press Assoc. v. Stuart, 427 U.S. 539 (1976):
427 U.S. at 559. Because prior restraints are so particularly harmful to the freedom of speech, any prior restraint bears "a heavy presumption against its constitutional validity," and the government "thus carries a heavy burden of showing justification for the imposition of such a restraint." New York Times Co. v. United States, 403 U.S. 713, 714 (1971) (the Pentagon Papers case), citing Bantam Books, Inc. v. Sullivan, 372 U.S. 58, 70 (1963), Near v. Minnesota, 283 U.S. 697 (1931), and Organization for a Better Austin v. Keefe, 402 U.S. 415, 419 (1971). The present case is to be distinguished from Madsen, in which the Court declined to apply a prior restraint analysis to an injunction prohibiting abortion protesters from picketing within a 36-foot buffer zone around a clinic:
512 U.S. at 763 n. 2. These observations do not apply to the case at hand. Here, the district court’s injunction did not "incidentally affect" speech, but was wholly directed to suppressing speech. Unlike the injunction at issue in Madsen, which suppressed speech only within a narrowly defined physical space, the injunction here completely foreclosed all avenues for appellants to express the ideas set forth in the website. The court not only ordered deletion of the materials on the website, but enjoined any republication of the material or distribution of it to others, and required appellants to demand retraction from any third parties who may have republished the material. Furthermore, the order is explicitly content-based. In Madsen, the place and manner of the speech (picketing in front of a clinic) was what made it objectionable. The injunction was intended to ensure access to the clinic and protect the health of patients, concerns unrelated to the content of the speech. Here, the place and manner (posting on a website) did not cause any kind of harm or constitute any unlawful conduct per se. Instead, the district court objected to the ideas expressed in the website, its purported tendency to undermine the court’s prior order. Because the injunction at issue here is a content-based prior restraint that effectively forecloses any expression of the ideas involved, the injunction is unlawful unless it meets the "heavy burden" described in the Pentagon Papers case. In that case, the Supreme Court refused to sustain an order enjoining the New York Times and Washington Post from publishing classified military documents, despite findings that the disclosure of the documents could result in "the death of soldiers, the destruction of alliances, the greatly increased difficulty of negotiation with our enemies, the inability of our diplomats to negotiate . . . ." 403 U.S. at 762 (Blackmun, J. dissenting). In contrast, there has been no showing in this case that any harm whatsoever is likely to result from the speech presented on Mrs. Tibbett’s website. CPC did not put forth any evidence showing that the website tended to create any confusion in the public mind as to the ownership of the Skippy trademark. The court made no findings of fact linking any of the statements on the website to any governmental interests. Under these circumstances, the constitutional presumption against prior restraints cannot be overcome. If, as CPC alleged in its show-cause motion, the material in the website is "defamatory," then its remedy is to bring a separate defamation action and prove the elements of defamation, including damages. Invoking the equitable powers of the court to impose a prior restraint on speech is not an appropriate remedy for defamation, and it is unconstitutional. See Organization for a Better Austin v. Keefe, 402 U.S. 415, 420 (1971) ("No prior decisions support the claim that the interest of an individual in being free from public criticism of his business practices in pamphlets or leaflets warrants use of the injunctive power of a court.")
It is a commonplace of First Amendment jurisprudence that "the government may not regulate use based on hostility-or favoritism-towards the underlying message expressed," and, for that reason, "[c]ontent-based regulations are presumptively invalid." R.A.V. v. St. Paul, 505 U.S. 377, 386 (1992). Therefore, restrictions based on content are subject to strict scrutiny; the regulation must be "necessary to serve a compelling state interest and . . . narrowly drawn to achieve that end." Perry Educ. Ass’n. v. Perry Local Educators’ Ass’n., 460 U.S. 37, 45 (1983). As noted above, the district court injunction was explicitly based upon the content of the statements on the website. The court made this clear during the telephone hearing on September 15, 1999, when the court stated that the website:
J. App. 107-109. The district court’s order constitutes not merely content, but viewpoint discrimination. The court did not enjoin all discussion of the Skippy trademark controversy on the internet. Instead, it enjoined only the views expressed by Mrs. Tibbetts: that CPC had acquired the Skippy trademark through deceit and subterfuge, and that the court had erred in ruling in CPC’s favor in the trademark dispute. As discussed above, the court made no findings that the speech involved in the Skippy website endangered any governmental interest. The injunction cannot stand under the strict scrutiny required of content and viewpoint based restrictions. CONCLUSION Joan Crosby Tibbetts has fought a long, hard battle over the Skippy trademark against a major corporate food manufacturer. She has lived to tell the tale, but the district court’s order enjoins her from doing so. The district court made no particularized findings of fact explaining why any of the enjoined statements should be enjoined. The district court’s use of its enormous contempt power to prohibit the broadcast of this story on the internet violates the First Amendment. For the foregoing reasons, Amicus respectfully urges this Court to reverse the district court’s September 9, 1999 order. Respectfully submitted, _____________________________ Rebecca K. Glenberg Dov Szego 327 Merrimac Trail, #19E Williamsburg, Virginia 23185 (757) 564-8120 Rebecca K. Glenberg Virginia State Bar # 44099 American Civil Liberties Union of Virginia Foundation, Inc. 6 North Sixth Street, Suite 400 Richmond, Virginia 23219 (804) 644-8080 (804) 649-2733 (Fax) Counsel for Amicus Curiae
1 In addition, the district court required deletion of the following material added after CPC filed its show-cause motion:
J. App. 90. 2 As discussed below, the injunction here is not content-neutral. Because the order here does not meet the standard for a content-neutral injunction, it does not, a fortiori, meet the standard for a content-based injunction. 3 Furthermore, the fact that the speech at issue here takes place on the internet provides no additional justification for its suppression. See Reno v. American Civil Liberties Union, ___ U.S. ___, 117 S. Ct. 2329 (1997): |
"Taking the Bully by the Horns" at http://members.aol.com/kthynoll/bully.htm .
Skippy is a registered trademark of Skippy Inc.
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Ronald J. Riley
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