The Lawletter Vol 38 No 9

Steve Friedman, Senior Attorney, National Legal Research Group

     The Trademark Act of 1946, 15 U.S.C. §§ 1051-1141n, commonly known as the "Lanham Act," is intended "to prevent individuals from misleading the public by placing their competitors' work forward as their own." Summit Mach. Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434, 1439 (9th Cir. 1993) (internal quotation marks omitted). The purpose of the Act is twofold.

First, it serves the general interest of the public by protecting consumers from false and misleading representations concerning the source, identity, or quality of a product or service. Secondly, the law protects the right of the owner of a trade or service mark to have his or her product or service identified by a distinct name or label. See Industrial Rayon Corp. v. Dutchess Underwear Corp., 92 F.2d 33, 35 (2d Cir. 1937), cert. denied, 303 U.S. 640, 58 S. Ct. 610, 82 L. Ed. 1100 (1938).

Birthright v. Birthright Inc., 827 F. Supp. 1114, 1133 (D.N.J. 1993).

     Accordingly, the Lanham Act permits persons to apply to the U.S. Patent and Trademark Office ("PTO") for federal trademark registration of their commercial mark(s), provided that certain parameters set forth therein are satisfied. The general rule is that a distinguishable mark on commercial goods can be trademarked unless the mark falls within one of five specified categories of marks. See 15 U.S.C. § 1052(a)-(e).

     One such exception is for a mark that "consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof." Id. § 1052(b). Despite the seemingly straightforward exception, the City of Houston, Texas, and the District of Columbia ("District") each sought to register its official seal. See In re City of Houston, Nos. 2012-1356, 2012-1418, 2013 WL 5433432 (Fed. Cir. Oct. 1, 2013). Whereas Houston sought to trademark its city seal in connection with various municipal services, including commerce, tourism, business administration, and public utility services, the District sought to trademark its official seal to cover various items such as shirts, pens, cups, and hats.

     The PTO had denied both applications, citing § 1052(b), and both decisions were affirmed by the Trademark Trial and Appeal Board. Both municipalities appealed their respective adverse decisions to the U.S. Court of Appeals for the Federal Circuit. The appellate court decided to address the two appeals together because they raised the same question of first impression in
the courts: Can a local government entity obtain a federal trademark registration for its official insignia? Notably, although both municipalities conceded that their subject marks were insignias and argued that § 1052(b) did not preclude their registration, each municipality presented distinct theories to reach the same conclusion. As detailed below, however, the court affirmed the PTO's rejection of both theories.

The Lawletter Vol 38 No 8

Brett Turner, Senior Attorney, National Legal Research Group

     The controlling federal statute on same-sex marriage is the Defense of Marriage Act ("DOMA"). DOMA has two operative provisions.  Section 3, codified at 1 U.S.C. § 7, provides that no same-sex marriage can ever be treated as a valid marriage under federal law.  This section was held unconstitutional in United States v. Windsor, 133 S. Ct. 2675 (2013).

     DOMA § 2, codified at 28 U.S.C. § 1738C, provides that "[n]o State . . . shall be required to give effect to any public act, record, or judicial proceeding of any other State . . . respecting a relationship between persons of the same sex."  In other words, no state shall ever be required to recognize a same-sex marriage from another state.

     Case law before Windsor upheld the constitutionality of § 2.  E.g., Wilson v. Ake, 354 F. Supp. 2d 1298 (M.D. Fla. 2005).  In light of Windsor, however, that position is being revisited.  The next big issue in federal constitutional law involving same-sex marriage may well be the constitutionality of § 2 of DOMA.

     The first post-Windsor case to address the issue is Obergefell v. Kasich, No. 1:13-CV-501, 2013 WL 3814262 (S.D. Ohio July 22, 2013).  The plaintiffs in that case were two men who ived together in a committed relationship.  One of the plaintiffs was terminally ill with amyotrophic lateral sclerosis, more commonly known as Lou Gehrig's disease.  Both plaintiffs lived in Ohio, which does not recognize same-sex marriage.

     On July 11, 2013, a specially equipped airplane flew the plaintiffs to Maryland, which allows same-sex marriage.  While the airplane sat on the tarmac, the plaintiffs were married.  They then immediately returned to Ohio.  Neither plaintiff was ever domiciled in Maryland.

     On the face of Ohio law, the Maryland marriage was not entitled to recognition in Ohio, which has both a statute and a constitutional provision barring recognition of same-sex marriage.  Ohio Rev. Code Ann. § 3101.01(C)(2)-(3); Ohio Const. art. XV, § 11.

     Upon their return to Ohio, the plaintiffs filed an action against the State of Ohio and various state officials, asking the court to order them to recognize the Maryland marriage.
The plaintiffs then sought a preliminary injunction.

     The court granted the injunction, finding a substantial likelihood that the plaintiffs would prevail at trial.  Ohio state law has traditionally held that the validity of a marriage depends upon the law of the jurisdiction in which it was created.  The rule has been applied to underage marriage, Hardin v. Davis, 16 Ohio Supp. 19, 1945 WL 5519 (C.P. 1945), and to marriage between relatives (e.g., first cousins), Mazzolini v. Mazzolini, 155 N.E.2d 206, 208 (Ohio 1958).  The court also cited a passage in 45 Ohio Jur. 3d Family Law § 11, stating that the rule applies to common-law marriage.

     The question then became whether Ohio could apply a different rule only to same-sex marriage. For two reasons, the court held not. First, the core reasoning of Windsor is that a rule violates equal protection if it was adopted out of prejudice against a minority group.  Windsor held that DOMA § 3 was enacted out of prejudice against gay people, and that it was therefore
unconstitutional.  The court saw no valid reason for the Ohio statute and constitutional provision at issue, other than similar prejudice against gay people.

     Second, a rule violates equal protection if it does not have a rational basis.  "Even if the
classification of same‑sex couples legally married in other states is reviewed under the least demanding rational basis test, this Court on this record cannot find a rational basis for the Ohio provisions discriminating against lawful, out‑of-state same sex marriages that is not related to the impermissible expression of disapproval of same‑sex married couples."  Obergefell, 2013 WL 3814262, at *6.

     Because the plaintiffs were likely to succeed on the merits, the court granted a preliminary injunction.

     Obergefell did not expressly consider the constitutionality of DOMA § 2.  But that provision is merely a federal version of the provisions that Obergefell held are likely unconstitutional.  If equal protection requires that the courts apply to same-sex marriage the exact same choice-of-law rules applied to opposite-sex marriages, then DOMA § 2 is unconstitutional and out-of-state same-sex marriages must generally be recognized.

     There is reasonable support in the majority opinion in Windsor for the result reached in Obergefell. Windsor stressed heavily a series of comments made by legislators enacting DOMA, suggesting prejudice against gay people.  Those comments cannot be limited to only one
section of DOMA.  If the prejudice shown by those statements is the controlling reason for invalidating DOMA § 3, it is likewise a strong reason for invalidating the rest of DOMA, including § 2.

     But there is also reason to hold otherwise.  At a practical level, Obergefell comes extremely close to forcing nationwide recognition of same-sex marriage.  Any same-sex couple wishing to be married can travel to a state recognizing same-sex marriage, get married, return to their
home state, and have a marriage that their home state must recognize for all purposes as a matter of federal law.

     It is highly significant that the facts of Obergefell show absolutely no Maryland domicile. The airplane landed, the marriage was conducted, and the airplane took off.  If that is a permissible procedure, then federal law is essentially forcing state recognition of all same-sex marriages, because it is very easy to obtain an out-of-state same-sex marriage.

     In addition, there are arguably valid reasons for imposing requirements upon recognition of out-of-state same-sex marriages that do not apply to other types of marriages. States have different rules on underage marriages and marriages among relatives, but none of these rules are matters of public policy.  People are not marching in the streets, demanding that the state not recognize underage marriages or common-law marriages or marriages between close relatives. These are matters on which the states agree that reasonable people can differ.

     But same-sex marriage is a fundamental public policy issue.  The presence of statutory and
constitutional provisions in many states shows that recognition of same-sex marriage is viewed by many as a fundamental public policy issue.  Obergefell held that one of the most serious and divisive disputes in modern American family law can be resolved by court action, because the judge believes that one side of the dispute is adopting an irrational position.  That is certainly not an example of judicial restraint.

The Lawletter Vol 38 No 8

Jim Witt, Senior Attorney, National Legal Research Group

   When Sopranos actor James Gandolfini died on June 19 of this year from a heart attack while he was on a vacation trip with his family in Italy, the media reported trivial facts surrounding his death, such as the details of his last meal and drinks. After a month or so had passed, however, attention turned to the details of Gandolfini's estate plan, with the focus on criticism of the plan.  The plan became open to comment because Gandolfini had left a 17-page will, which, like every will, had to be filed in probate court, thereby making it public. 

   A general point of the criticism was that Gandolfini had left a $70 million probate estate, with only 20% of the bulk of the estate's value passing to his widow tax-free under the Internal Revenue Code's unlimited marital deduction and 80% passing to his sisters and his infant daughter.  This plan resulted in a federal estate tax liability of approximately $30 million.

   Criticism of the plan can itself be questioned:  (1) The belief that the estate is worth $70 million is speculative; (2) it may well be that Gandolfini had other substantial assets that he placed in estate planning devices such as trusts and corporations (which might serve as a receptacle for future royalties received by the estate from the Sopranos); it is believed that there is a $7 million life insurance trust fund for Gandolfini's 13-year-old son from a prior marriage; and (3) it is unfair to criticize the disposition of an estate solely on the basis that the estate tax liability is not minimized:  A decedent should not necessarily allow the objective of tax savings to have precedence over the disposition that he or she desires.

   Yet some of the points of criticism made in regard to Gandolfini's estate plan are valid. First, there is the matter of privacy.  If Gandolfini's assets had been placed in a revocable trust, with the trust spelling out the disposition of the assets at Gandolfini's death, the trust would not have been filed with the probate court and could have been kept private.  A simple pour-over will could have been used to transfer assets not subject to the trust to the revocable trust.

   Additionally, a tax calculation problem is created by the fact that the will, after bequeathing $1.6 million worth of assets to friends, used percentages to divide the estate among Gandolfini's widow, two sisters, and daughter.  The problem is that because the 20% passing to the widow is not subject to federal estate tax, the calculation of the tax on the remaining 80% becomes complicated.

   Also, the will does not include a trust to govern the disposition of the share of the estate that Gandolfini's daughter will receive.  She is not to receive her share until age 21, but the prospect of having her receive a multimillion dollar sum outright at that age raises questions.  A trust under the will could have protected her share by setting ages (such as 30, 35, and 40) at which she would receive percentages of the principal, with the trustee having discretion over the distribution of principal and income to her for her current needs.

The Lawletter Vol 38 No 7

John Stone, Senior Attorney, National Legal Research Group

     A first grade teacher in a public school brought an action against the New York City Department of Education, her school principal, an assistant principal, and police officers, alleging under 42 U.S.C. §§ 1981 and 1983 that she had been subjected to racial discrimination and retaliation and that she had been falsely imprisoned and unlawfully strip-searched.  In a lengthy opinion, the trial court granted the defendants' motion for summary judgment on all claims and denied the plaintiff's motion to amend her complaint. Blythe v. City of New York, No. 08-CV-2843(RRM)(CLP), 2013 WL 3990772 (E.D.N.Y. Aug. 5, 2013).

     Regarding the false imprisonment claim, the court ruled that probable cause existed for the teacher's arrest for endangering the welfare of a child, thus precluding her false imprisonment claims against the police officers under § 1983 and New York state law.  The key facts as
to this claim were as follows:   Because the first grader was being disruptive and repeatedly leaving the classroom, the teacher requested that the school's parent coordinator contact the student's father or mother.  The father came to the school and met with the teacher and his child, who told her father in the teacher's presence that the teacher had scratched her when putting her back in her seat.  The student's mother was then contacted by the father and, independently, by another teacher, both of whom indicated that the student was crying because the teacher had thrown her into a chair earlier that day.  The mother went to the school, where she saw that her daughter's shirt was ripped. In a heated conversation, she accused the teacher of harming her child.

     After learning of the allegations against the teacher, the school principal reported the allegation of corporal punishment through the proper channels, resulting in the principal's being informed that the mother could call 911 because of the seriousness of the incident and the age of the student.  The principal and the student's mother then called 911 and reported the incident.  (The mother also later filed with the New  York Police Department a formal complaint against the teacher for, among other things, endangering the welfare of a child.)

     When police officers arrived at the school shortly thereafter, the mother, who was still at the school, informed the officers that the teacher had "'put her hands on the child and forced her back into her seat'" numerous times.  Id. at *4.  One police officer saw "'a little bit of redness'" on the student.  Id.  He then arrested the teacher and transported her to a police station, where she was detained and strip-searched.  About four hours later, after the teacher had been further questioned by a police detective and a social services agency representative, the arrest was voided and the teacher was released.

     Notwithstanding that the arrest was voided a few hours after it had been made, the teacher's claims for false imprisonment under federal civil rights law and state tort law failed because of the presence of probable cause at the time when the arrest was made. Under the alleged facts, taken to be true by the court, the student's mother called 911 and reported that the teacher had put her hands on the student and forced her back into her seat numerous times, and after the police officers arrived, they corroborated the information contained in the 911 call.  Moreover, the court observed that the teacher was precluded from challenging the fact that she had grabbed the child, based on a hearing officer's prior determination that "'[plaintiff] grabbed a first grade child with sufficient force that she tore the collar of her shirt and popped the buttons.  She grabbed the child with sufficient intensity that she left marks on the student's shoulder.'"  Id. at *19 n.10.  This factual determination also contributed to the existence of probable cause for the arrest and brief imprisonment.  Id. at *17.

The Lawletter Vol 38 No 7

Alistair Edwards, Senior Attorney, National Legal Research Group

     Going all the way back to the Woodstock Festival held at Max Yasgur's 600‑acre dairy farm in New York state in 1969, outdoor music concerts have regularly been held on farmlands.  Naturally, these concerts can cause certain inconveniences for the neighbors of the farms.

     Recently, in Shore v. Maple Lane Farms, LLC, No. E2011‑00158‑COA‑R3CV, 2013 WL 4428904 (Tenn. Aug. 19, 2013) (not yet released for publication), a farmer's neighbor filed suit against the farmer for holding outdoor concerts on his farm, asserting a claim for nuisance.  The farmer defended, in part relying on the Tennessee Right to Farm Act, which purports to insulate farm operations from nuisance suits and provides in pertinent part that "it is a rebuttable presumption that a farm or farm operation . . . is not a public or private nuisance."  Tenn. Code Ann. § 43‑26‑103(a).  As used in the Act, "farm operation" is a broad term intended to include all activities connected "with the commercial production of farm products or nursery stock."  Id. § 43-26-102(2).

     However, the court refused to apply the Act to the amplified  music concert being held at the farm.  In its analysis, the court explained that "the Tennessee Right to Farm Act would apply to the noise generated by the concerts at Maple Lane Farms if these concerts are somehow connected 'with the commercial production of farm products or nursery stock.'" 2013 WL 4428904, at *12. Although the court considered the concerts to be a clever "marketing and promotion effort to further the income of the farming operation," it did not consider this marketing activity to be the "commercial production of farm products or nursery stock."  Id. 
The court explained:

     We find it significant that the General Assembly chose to use the word "production" alone in its definition of "farm operation." It did not include "marketing," as other states have done in similar contexts. Marketing activities are not mentioned elsewhere in the Tennessee Right to Farm Act, and we have found no reference to marketing in the legislative history of the Act or any of its amendments. Based on the text and the legislative history of the Tennessee Right to Farm Act, no conclusion can be reached other than that, when it enacted the Act, the General Assembly was focused on the activities related to the production of farm products—that is to say, growing or raising these products. The General Assembly was not focused on the marketing of farm products for sale.

*             *             *

     Despite our diligent search, we have found nothing that suggests the General Assembly
considered noise from amplified music concerts held on a farm to necessarily have a connection with producing farm products. Nor have we found any basis to conclude that the General Assembly considered music concerts to be some sort of farm operation. The plain language of the Tennessee Right to Farm Act reflects a close connection between producing farm products and the conditions or activities shielded by the Act.

Id. at *12, *14 (footnotes omitted).

     Finally, the court concluded not only that the Act did not bar the neighbor's nuisance claim but also that the evidence was sufficient to establish a prima facie case of nuisance.  For example, the neighbor testified that the concerts had an adverse effect on her health,
including quickened pulse, headaches, and nausea, and that they affected her ability to sleep at night. Another neighbor testified that the concerts were so loud that he could not hear television or have telephone conversations, even when his home was completely shut, and that he escaped the noise by leaving his home.  A third neighbor testified that the concerts bothered her and were so loud that she could feel vibrations in her chest, and that the concerts interfered with her ability to read in her own home.  Therefore, the supreme court reversed the judgments of the trial court and the court of appeals and remanded the case for further proceedings, charging the costs of the appeal to the farmer.