IP Law Daily, TRADEMARK—5th Cir.: Injunction aimed at stopping the dissemination of misleading information was overly broad, (Apr 8, 2025)

By Deirdre Kennedy, J.D.

The injunction both prohibited speech irrespective of its potential for prejudice and impermissibly compelled speech.

The U.S. Court of Appeals for the Fifth Circuit vacated and remanded the district court’s injunction against a company that provides scholarships, finding that the injunction to prevent trademark infringement was overly broad, prohibiting non-commercial and non-prejudicial speech, and also impermissibly compelling speech (Phi Theta Kappa Honor Society v. HonorSociety.org, No. 24-60452, (5th Cir. April 7, 2025)).

PTK is an international academic honor society that recognizes academic excellence and provides opportunities for members to develop professional and leadership skills. It alleges having more than 3.8 million members and is active on nearly 1,300 community college campuses in eleven nations. HonorSociety.org, a competitor, is a Nevada corporation, seeking to (1) provide scholarships to high achievers, (2) create values-driven educational content, and (3) preserve the distinguished history of honor societies.

In 2022, PTK sued HonorSociety asserting claims under the Lanham Act for trademark and trade-dress infringement and Mississippi state-law claims for unfair competition and trade-dress infringement. It later added several claims, including Mississippi state-law claims for tortious interference with contract and with prospective business advantage.

In March 2024, PTK obtained a preliminary injunction that enjoined HonorSociety from circulating six survey questions that contained “misleading” information to PTK members and from soliciting information on PTK from college campuses.

A few months later, PTK again requested a preliminary injunction, this time on the basis that HonorSociety had continued to disseminate misleading claims against PTK, albeit in new ways. PTK claimed that HonorSociety had used generative artificial intelligence to create approximately 5,000 websites and articles to “mislead readers about the lawsuit”; spread misinformation about a former PTK chapter advisor and the organization’s former executive director, Rod Risley; created a “Directory” of PTK chapters that actually redirected users to HonorSociety’s websites; edited PTK’s Wikipedia page; and circulated a cartoon image of an “East Asian woman,” which, according to the district court’s findings, depicted Dr. Tincher-Ladner. The district court later held an evidentiary hearing on the motion in June 2024 and granted the motion two months later, finding that PTK was likely to succeed on its Mississippi state law claim for tortious interference.

The injunction. The district court’s injunction was sweeping. It prohibited HonorSociety from engaging in several forms of online speech targeted at PTK and ordered it to include a disclaimer on any website or social media post that referenced the pending litigation. The disclaimer reads:

“Disclaimer: The author of this article is not a neutral party in the referenced litigation. HonorSociety.org Inc., Honor Society Foundation Inc., and its president Michael Moradian were sued in federal court by PTK on April 20, 2022 for False Designation of Origin, Trade Dress Infringement, and Unfair Competition. Honor Society and Michael Moradian countersued and are presently defendants/counter-plaintiffs in this litigation. Litigation is still ongoing and all claims made regarding this case are just allegations against the parties.”

HonorSociety timely appealed the second injunction, arguing that: (1) the district court erred in concluding that PTK was substantially likely to succeed on the merits of its claims for tortious interference, (2) the injunction is an overbroad and vague prior restraint, and (3) the injunction compels speech in violation of the First Amendment.

Neither party disputed that this injunction constitutes a prior restraint which “face a well-established presumption against their constitutionality.”. PTK asserted, however, that the prior restraint was justified because the district court concluded that HonorSociety’s speech constituted false commercial speech, which does not enjoy the First Amendment’s full protections. The court noted, however, that edits to PTK’s Wikipedia page cannot, in any sense, be viewed as proposing a commercial transaction. Nor could the cartoon image, which is protected under the First Amendment.

Even if some of the enjoined speech constituted commercial speech, the injunction’s sweeping prohibitions were overbroad because the injunction also prohibited non-commercial speech and instances of speech not found to be prejudicial to PTK, the court stated, such as the prohibition of HonorSociety from making any future edits to PTK’s Wikipedia page—whether true or untrue, prejudicial or innocuous. An injunction that prohibits speech irrespective of its potential for prejudice is overbroad.

The court also concluded that the disclaimer constituted impermissible compelled speech. Generally, the government may not compel a person to speak the government’s preferred message. The court also noted that the district court did not analyze whether the disclaimer was uncontroversial, justified by a state interest, or posed undue burdens on HonorSociety.

Having found that the injunction was an overbroad prior restraint and impermissibly compelled speech, the court vacated the injunction and remanded the case to the district court.

The Case is No. 24-60452.

Judge: Per Curiam.

Attorneys: Michael Brunson Wallace (Caraway, P.A.) for Phi Theta Kappa Honor Society. Derek Newman (Newman, L.L.P.) for Honor Society Foundation, Inc.

Companies: Honor Society Foundation, Inc.

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