IP Law Daily, TRADEMARK—D.N.M.: Qualified immunity did not apply to school superintendent in First Amendment retaliation claim, (Oct 26, 2022)

By Robert B. Barnett Jr., J.D.

The case will turn on First Amendment considerations, after the court rejected any argument that trademark infringement applied in the absence of the sale of goods or services.

In a suit by two parents who operate the Los Lunas School District Parent Discussion Page on Facebook alleging that the Los Lunas Schools Board of Education violated their First Amendment free speech rights by retaliating against them for comments made on the site, the New Mexico federal district court rejected the school superintendent’s efforts individually to obtain summary judgment on grounds of a qualified immunity because genuine issues of fact remain on whether her conduct violated the two parents’ constitutional rights. The Board of Education obtained a trademark on “Los Lunas Schools,” then sent the two parents cease-and-desist letters. Trademark infringement, however, was inapplicable and did not remove the case from First Amendment consideration because the Board did not use the term “Los Lunas Schools” in connection with the sale of goods or services (Tachias v. Los Lunas Schools Board of Education, October 25, 2022, Strickland, M.).

Background. Rowena Tachias and Monique Dereta, who reside in Valencia County, New Mexico, created a Facebook page titled “Los Lunas School District Parent Discussion Page.” Various parents and grandparents comment on the page on matters related to the Los Lunas School District. The comments include criticisms of various teachers and school district personnel.

The Los Lunas Schools Board of Education wanted to force the Facebook page to stop using “Los Lunas School District” for reasons that are still in dispute. The Board of Education stated that it wanted to stop the use of the school district name because parents looking for information, say, on school closings were being directed to the parents’ Facebook page, which sometimes contained wrong information, rather than the school website. In essence, the Board of Education wanted the Facebook page to stop using the name to stop potential parent and student confusion.

To that end, the Board of Education obtained trademark registration for “Los Lunas Schools.” It then sent cease-and-desist letters to the two Facebook page operators. They initially complied, and changed the name briefly, before returning to the original name.

Tachias and Dereta then sued the Los Lunas Schools Board of Education and various individuals for First Amendment retaliation. They alleged that the Board of Education’s efforts to threaten suit for trademark infringement, which were contained in the cease-and-desist letters, illegally sought to deprive them of their Free Speech rights under the First Amendment by retaliating against them for hosting the Facebook page.

One of the individuals who was sued, Dana Sanders, the school superintendent, filed a motion for summary judgment, seeking dismissal from the suit on the ground of qualified immunity.

Qualified immunity. The doctrine of qualified immunity protects officials from civil liability as long as their conduct does not violate established statutory or constitutional rights. When a claim for qualified immunity is asserted, the burden shifts to the plaintiff to establish that (1) the defendant violated a constitutional right and (2) the constitutional right was clearly established before the violation occurred.

Constitutional violation. The court found that the complaint plausibly established a constitutional violation of free speech rights. The two Facebook page operators not only had a free speech right in what was said on the page but they also had a free speech right to call the page what they wanted to call it. Thus, the First Amendment protects the hosting, the content, and the title. The court characterized the Board’s argument that the title was not speech as understood by the First Amendment as “erroneous.” A title is speech subject to First Amendment protection (Cliff’s Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 493 (2nd Cir. 1989)).

In fact, the Board further argued that the title was not protected speech because it constituted trademark infringement. The court rejected that argument because the Board did not use the term “Los Lunas Schools” in connection with the sale of goods or services. Thus, trademark infringement was inapplicable.

Moving on to the second element of a retaliation claim, the court concluded that a jury could determine that the Board caused injury by potentially chilling a person from continuing to engage in constitutionally protected behavior. The threats of a trademark infringement lawsuit could have had such an effect.

Finally, as for the third and final element of retaliation, the court concluded that factual questions remained on whether the effort to obtain the trademark was done for improper reasons, that is, in retaliation for the negative comments on the Facebook page. Several comments made by Board personnel in various emails suggested that retaliation may have been at the heart of the Board’s decision to obtain the trademark.

The court ruled, therefore, that the two Facebook page operators had sufficiently established the first of the two elements, that the Board had potentially violated a constitutional right.

Clearly established law. The other element was that the law be clearly established at the time of the constitutional violation. The court was able to fairly easily determine that the second element was also established because the Board and the school superintendent would have been aware that threatening to file a frivolous lawsuit in retaliation of an individual’s exercise of First Amendment right to free speech was unconstitutional. The “unlawfulness of Defendant’s actions was apparent in light of pre-existing law,” the court ruled. Thus, both prongs of the shifted burden were satisfied.

Summary judgment. After the Facebook page operators had satisfied both prongs of their burden, the burden shifted back to the school superintendent to prove that she was entitled to summary judgment under the same analysis as any summary judgment motion. The court determined that she was not, given the open factual questions yet to be resolved on all three elements of the First Amendment retaliation case.

The court, therefore, denied the motion for summary judgment.

The case is No. 1:21-cv-00085 MIS/JFR.

Attorneys: Matthew M. Beck (Peifer, Hanson, Mullins & Baker, P.A.) for Rowena Tachias. Jerry A. Walz (Walz and Associates) for Los Lunas Schools Board of Education.

Companies: Lunas Schools Board of Education

Cases: Trademark NewMexicoNews