The Fifth Circuit Court of Appeals reversed a U.S. District Court’s dismissal of a lawsuit challenging the constitutionality of a Texas law stating that the subject domain name may be commercial speech entitled to some First Amendment, freedom of speech rights.  Gibson v. Texas Dept. of Insurance, Case No. 11-11136 (5th Cir. Oct. 30, 2012) (available here).  Gibson owned and used the domain TexasWorkersCompLaw.com.

Texas Department of Insurance issued a cease and desist letter to Appellant John Gibson, arguing that his use of the words “Texas” and “Workers’ Comp” in the domain name of his website violated § 419.002 of the Texas Labor Code.  The statute prohibited: “Any term using both ‘Texas’ and ‘workers’ Compensation’ or any term using both Texas and Workers’ Comp” § 419.002 Texas Labor Code.

Gibson was fined.  He then sued the State of Texas and argued that the statute violates various constitutional provisions including the First Amendment’s guarantee of freedom of speech, the Fourteenth Amendment’s guarantees of equal protection and due process, and the Fifth Amendment’s prohibition on takings.  Gibson argued that the regulation is not content-neutral, and therefore the appellate court should evaluate the regulation under the test traditionally reserved for content-based discrimination.

Texas’ law did not prohibit Gibson’s use of his domain name because of the viewpoint it expresses, nor did it prohibit all speech relating to workers’ compensation in Texas.  See Hill v. Colorado, 530 U.S. 703, 719, 722-23 (2000) (holding that a statute is content-neutral when it “places no restrictions on – and clearly does not prohibit – either a particular viewpoint or any subject matter that may be discussed by a speaker”).

The proper issue before the court was whether the district court erred in finding that the statute (a) prohibits commercial speech, and (b) is a valid prohibition of commercial speech under the test set forth in Central Hudson.  Cent. Hudson Gas v. Pub. Serv. Comm’n, 447 U.S. 557, 562-63 (1980).

The domain name and blog may do “more than propose a commercial transaction.”  Bolger v. Youngs Drug Prods. Corp.,, 463 U.S. 60, 66 (1983).  The domain name may nevertheless be considered commercial speech if (i) it is an advertisement of some form; (ii) it refers to a specific product; and (iii) the speaker has an economic motivation for the speech.

The court assumed that the domain name TexasWorkersCompLaw.com was  commercial speech without making a definitive ruling on the concept.  The Court then evaluated whether the statute presents a valid restriction on commercial speech under the test set forth in Central Hudson.  To answer this question, the Court looks to whether the speech restricted by the statute is “false, deceptive, or misleading.”  Bates v. State Bar of Ariz., 433 U.S. 350, 383 (1977).  If so, it is not entitled to First Amendment protection.  The Supreme Court and the 5th Circuit have distinguished between two types of misleading speech: that which is “inherently likely to deceive,” and that which is only “potentially misleading.”  Pub. Citizen, Inc. v. La. Attorney Disciplinary Bd., 632 F.3d 212, 218 (5th Cir. 2011) (citing In re R.M.J., 455 U.S. 191, 202-03 (1982)).  In order for speech to fall outside of the First Amendment’s protection, the speech must either be “inherently likely to deceive,” or “the record [must] indicate that a particular form or method of advertising has in fact been deceptive.” R.M.J,, 455 U.S. at 202.  Cases involving trademark infringement involve inherently deceptive speech because they contain a significant risk that an infringing party will freeload on the goodwill that has been created by the original trademark.  See Friedman, 440 U.S. at 11-16.

While Texas feared that Gibson’s domain name may confuse the public, there was no showing that the domain name is incapable of being viewed in a non-deceptive manner.  See Pub. Citizen, 632 F. 3d at 219.  Second, there has been no factual findings to support an allegation that the domain name is actually deceptive.  See, e.g., R.M.J., 455 U.S. at 202; Joe Conte Toyota, Inc. v. La. Motor Vehicle Comm’n, 24 F.3d 754, 756 (5th Cir. 1994).  Therefore, the domain name at issue was entitled to some First Amendment protection.

A broken romantic relationship devolved into a pattern of harassment, email hacking, offensive letters, naked photographs sent to third parties from the plaintiff’s email contact list, creation of a website, use of plaintiff’s name for multiple purposes, efforts by defendant to pre-sell a tell-all book, and posting of allegedly defamatory statements about plaintiff. The lower court issued a preliminary injunction prohibiting Vrasic “[f]rom using the name or likeness of Leibel for commercial purposes”; “[f]rom using the words ‘Lorne’ together with ‘Leibel’ for any commercial purpose”; and “[f]rom publishing, selling, licensing, or leasing, or offering to publish, sell, license, or lease” Vrasic’s book “as previously published,” allowing Vrasic to publish a work only “so long as the work does not use the words ‘Lorne’ and/or ‘Leibel,’ alone or in any combination.”  The Appeals Court reversed the lower court’s ruling and mainly dissolved the injunction as violating Vrasic’s right of freedom of speech under the First Amendment.  Vrasic v. Leibel, case no. 4D12-1289 (4th DCA, Jan. 9, 2013)(available here).

Florida courts have long held that temporary injunctive relief is not available to prohibit the making of defamatory or libelous statements because there is an adequate remedy at law for libelous or defamatory statements, namely, an action for damages.  P. 2, citing Animal Rights Found. of Fla., Inc. v. Siegel, 867 So.2d 451, 454 (Fla. 5th DCA 2004); and Murphy v. Daytona Beach Humane Soc’y, Inc., 176 So.2d 922, 924 (Fla. 1st DCA 1965).

“Second, a temporary injunction directed to speech is a classic example of prior restraint on speech triggering First Amendment concerns. See Moore v. City Dry Cleaners & Laundry, 41 So.2d 865, 873 (Fla.1949) (recognizing First Amendment concerns triggered by temporary injunction); Murphy, 176 So.2d at 924 (same); see also Post–Newsweek Stations Orlando, Inc. v. Guetzloe, 968 So.2d 608, 610 (Fla. 5th DCA 2007) (recognizing temporary injunction forbidding speech constitutes a prior restraint) (citing Alexander v. United States, 509 U.S. 544, 550 (1993)). ‘[P]rior restraints on speech and publication are the most serious and the least tolerable infringement on First Amendment rights.’ Neb. Press Ass’n v. Stuart, 427 U.S. 539, 559 (1976). And, protection against prior restraints on speech extends to both false statements and to those from which a commercial gain is derived. See Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748, 761 (1976) ( ‘[S]peech does not lose its First Amendment protection because money is spent to project it· Speech likewise is protected even though it is carried in a form that is ‘sold’ for profit.’) (citations omitted); ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 924 (6th Cir.2003) (same); Town of Lantana v. Pelczynski, 290 So.2d 566, 569 (Fla. 4th DCA) (‘Freedom from prior restraint upon speech and press extends to false, as well as true statements.’) (citing Patterson v. Colorado, 205 U.S. 454, 462 (1907)), aff’d, 303 So.2d 326 (Fla.1974). ‘[A] free society prefers to punish the few who abuse rights of speech after they break the law than to throttle them and all others beforehand.’ Se. Promotions, Ltd. v. Conrad, 420 U.S. 546, 559 (1975).”  P. 2.

The Appeals court rejected plaintiff’s arguments that defendant engaged in tortious interference or a claim of specialized harm per Zimmerman v. D.C.A. at Welleby, Inc., 505 So.2d 1371 (Fla. 4th DCA 1987) and Murtagh v. Hurley, 40 So.3d 62 (Fla. 2d DCA), review denied, 51 So.3d 1155 (Fla.2010).

“The instant case involves neither a claim for tortious interference with a business relationship nor a claim of specialized harm. Indeed, in issuing the temporary injunction, the lower court expressly found that while Leibel had suffered embarrassment and emotional distress—the same harm suffered by all who are the subjects of defamatory statements—there was no evidence that he had been ‘shunned by society’ or had suffered any business or financial losses. We thus decline to extend Zimmerman and Murtagh to uphold the temporary injunction entered in this case.”  P. 3.

Therefore, Leibel’s case against his former lover Vrasic moves forward to trial leaving in place a “no contact” injunction but without the unconstitutional prior restraint of speech, confirming the age old adage “hell hath no fury like a woman scorned,” or, as penned by William Congreve in his poem “The Mourning Bride” (1697): “Heaven has no rage like love to hatred turned, Nor hell a fury like a woman scorned.”

The Freedom of Speech clause of the First Amendment was cited in declaring unconstitutional a Florida statute that made it unlawful for any person in a motor vehicle to produce sound from a soundmaking device (for example, a CD player) which is “plainly audible at a distance of 25 feet or more from the motor vehicle.” Fla. Stat. 316.3045(1)(a).  The Statute was “unconstitutionally overbroad, but not unconstitutionally vague” because the statute exempts “motor vehicles used for business or political purposes, which in the normal course of conducting such business use soundmaking devices.”  Since the Statute treats commercial and political speech more favorably than noncommercial speech the Statute is unconstitutionally overbroad.  State of Florida v. Catalano, Case No. SC 11-1166 (Fla. S.Ct., Dec. 13, 2012) (available here).  The Statute provided:

Operation of radios or other mechanical soundmaking devices or instruments in vehicles; exemptions.— (1) It is unlawful for any person operating or occupying a motor vehicle on a street or highway to operate or amplify the sound produced by a radio, tape player, or other mechanical soundmaking device or instrument from within the motor vehicle so that the sound is: (a) Plainly audible at a distance of 25 feet or more from the motor vehicle; or (b) Louder than necessary for the convenient hearing by persons inside the vehicle in areas adjoining churches, schools, or hospitals. Fla. Stat. 316.3045(1)(a).

Additionally, the Statute exempted (a) law enforcement and emergency vehicles; and (b) “motor vehicles used for business or political purposes” from the “too loud at 25 feet” provision. Fla. Stat. 316.3045(1)(a). The Department of Highway Safety and Motor Vehicles was to promulgate rules defining “plainly audible” and establish standards.

Catalano argued that the “plainly audible” language is unconstitutionally vague on its face because whether a police officer can hear amplified sound beyond twenty-five feet is necessarily subject to each particular police officer’s auditory faculties, leading to arbitrary enforcement based on whether a police officer personally finds the amplified sound disturbing.

“Applying the rationale from Grayned and Broadrick, the ‘plainly audible’ standard provides persons of common intelligence and understanding adequate notice of the proscribed conduct: individuals operating or occupying a motor vehicle on a street or highway in Florida cannot amplify sound so that it is heard beyond twenty-five feet from the vehicle. Although it is true that each police officer may have different auditory sensitivities, the ‘plainly audible’ beyond twenty-five feet standard provides fair warning of the prohibited conduct and provides an objective guideline—distance—to prevent arbitrary and discriminatory enforcement so that basic policy matters are not delegated to policemen, judges, and juries for resolution on an ad hoc and subjective basis.” P. 9, citing Grayned v. City of Rockford, 408 U.S. 104, 110 (1972) and Broadrick v. Oklahoma, 413 U.S. 601, 608 (1973).

Although not unconstitutionally vague, the Statute is overbroad in that it favors one type of speech over another.

“Here, the State argues that Catalano … do[es] not have a constitutionally recognized right to play loud music, thus the statute is not subject to an overbreadth analysis. However, the right to play music, including amplified music, in public fora is protected under the First Amendment.”  P. 13, citing Ward v. Rock Against Racism, 491 U.S. 781, 788-90 (1989).

“‘The principal inquiry in determining content neutrality, in speech cases generally and in time, place, or manner cases in particular, is whether the government has adopted a regulation of speech because of disagreement with the message it conveys.’ Ward, 491 U.S. at 791. If the government’s purpose has no relation to the content of the speech, the statute will be deemed neutral even if the restriction affects some speakers or messages and not others. See id. Initially, it would appear that section 316.3045(1)(a) does not regulate expression based on the content of the message as it bans all amplified sound coming from within the interior of a motor vehicle that is ‘plainly audible’ beyond twenty-five feet from the source. In short, the statute proscribes excessive sound emanating from vehicles on public thoroughfares. Subsection (3), however, excepts ‘motor vehicles used for business or political purposes, which in the normal course of conducting such business use [sound-making] devices’ from this broad proscription.”  Pp. 14 – 15.

Therefore, the Statute was not unconstitutionally vague because ordinary persons could understand the scope of the prohibited acts but was unconstitutionally overbroad because it exempted certain speech and thereby favoring one speech (political and business) over another (for example, playing loud rock music).

The U.S. Supreme Court in U.S. v. Alvarez, Case No. 11-210 (June 28, 2012) (available here) ruled that the Stolen Valor Act, 18 U.S.C. sec 204(b) and (c) was an unconstitutional abridgement of Free Speech under the First Amendment. The Act made criminal false claims about receipt of military decorations or medals, such as the prestigious Congressional Medal of Honor.

Lying was Defendant Alvarez’s habit. He “lied when he said that he played hockey for the Detroit Red Wings and that he once married a starlet from Mexico. But when he lied in announcing he held the Congressional Medal of Honor, respondent ventured onto new ground; for that lie [was alleged to] violate[] a federal criminal statute, the Stolen Valor Act of 2005. 18 U. S. C. §704.” Slip opn. p. 1 (herein “P. 1″).

As a general matter, the First Amendment “means that government has no power to restrict expression because of its message, its ideas, its subject matter, or its content… Instead, content-based restrictions on speech have been permitted, as a general matter, only when confined to the few ‘historic and traditional categories [of expression] long familiar to the bar,’ Id., at ___ (slip op., at 5) (quoting Simon & Schuster, Inc. v. Members of N. Y. State Crime Victims Bd., 502 U. S. 105, 127 (1991) (KENNEDY, J., concurring in judgment)). Among these categories are advocacy intended, and likely, to incite imminent lawless action, see Brandenburg v. Ohio, 395 U. S. 444 (1969) (per curiam); obscenity, see, e.g., Miller v. California, 413 U. S. 15 (1973); defamation, see, e.g., New York Times Co. v. Sullivan, 376 U. S. 254 (1964) (providing substantial protection for speech about public figures); Gertz v. Robert Welch, Inc., 418 U. S. 323 (1974) (imposing some limits on liability for defaming a private figure); speech integral to criminal conduct, see, e.g., Giboney v. Empire Storage & Ice Co., 336 U. S. 490 (1949); so-called ‘fighting words,’ see Chaplinsky v. New Hampshire, 315 U. S. 568 (1942); child pornography, see New York v. Ferber, 458 U. S. 747 (1982); fraud, see Virginia Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U. S. 748, 771 (1976); true threats, see Watts v. United States, 394 U. S. 705 (1969) (per curiam); and speech presenting some grave and imminent threat the government has the power to prevent, see Near v. Minnesota ex rel. Olson, 283 U. S. 697, 716 (1931), although a restriction under the last category is most difficult to sustain, see New York Times Co. v. United States, 403 U. S. 713 (1971) (per curiam). These categories have a historical foundation in the Court’s free speech tradition. The vast realm of free speech and thought always protected in our tradition can still thrive, and even be furthered, by adherence to those categories and rules.” P. 5.

Falsity alone does not normally suffice to bring the speech outside the First Amendment. In “some instances of defamation and fraud, moreover, the Court has been careful to instruct that … [t]he statement must be a knowing or reckless falsehood.” P. 7. See Sullivan, supra, at 280 (prohibiting recovery of damages for a defamatory falsehood made about a public official unless the statement was made “with knowledge that it was false or with reckless disregard of whether it was false or not”); see also Garrison, supra, at 73 (”[E]ven when the utterance is false, the great principles of the Constitution which secure freedom of expression . . . preclude attaching adverse consequences to any except the knowing or reckless falsehood”); Illinois ex rel. Madigan v. Telemarketing Associates, Inc., 538 U. S. 600, 620 (2003) (”False statement alone does not subject a fundraiser to fraud liability”). P. 7.

“Were the Court to hold that the interest in truthful discourse alone is sufficient to sustain a ban on speech, absent any evidence that the speech was used to gain a material advantage, it would give government a broad censorial power unprecedented in this Court’s cases or in our constitutional tradition. The mere potential for the exercise of that power casts a chill, a chill the First Amendment cannot permit if free speech, thought, and discourse are to remain a foundation of our freedom.” P. 11. 

“The remedy for speech that is false is speech that is true. This is the ordinary course in a free society. The response to the unreasoned is the rational; to the uninformed, the enlightened; to the straight-out lie, the simple truth… The First Amendment itself ensures the right to respond to speech we do not like, and for good reason. Freedom of speech and thought flows not from the beneficence of the state but from the inalienable rights of the person. And suppression of speech by the government can make exposure of falsity more difficult, not less so. Society has the right and civic duty to engage in open, dynamic, rational discourse. These ends are not well served when the government seeks to orchestrate public discussion through content-based mandates.” PP. 15-16.

In summary, the Court ruled that such statutes, like the Stolen Valor Act must include an element of fraud or misrepresentation, not just falsity, to pass muster under the First Amendment. P. 7 (fraud), 11 (material gain), 13 (casual link between restriction and injury to be presented).

The Eleventh Circuit Court of Appeals has held that a famous artist (Daniel Moore) who painted highly realistic scenes of the University of Alabama football team (fearsomely promoted as ROLL TIDE) has a First Amendment right as an artist which “clearly outweigh[s] whatever consumer confusion that might exist on these facts” over Alabama’s right to control its highly recognized football uniform and colors (crimson and white). University of Alabama Bd. Of Trustees v. New Life Art, Inc., Case No. 09-16412 (11^th Cir. June 11, 2012). (available here). Although artist Moore (and his company New Life) had multiple licenses in the 1990s, the critical aspect of the case involves Moore’s copyrighted paintings of Alabama’s sports team and sales of merchandise bearing his art (mugs, calendars, etc.).

The University claimed that Moore’s unlicensed paintings, prints and calendars and coffee mugs infringe the University’s trademarks because the inclusion in Moore’s products of the University’s football uniforms (showing the University’s crimson and white colors) creates a likelihood of confusion on the part of buyers that the University sponsored or endorsed the product. Slip opn. p. 16 (herein “p. #”). Avoidance of confusion is the purpose behind the federal trademark act, the Lanham Act. 15 U.S.C. sec. 1125. The University’s claim of trademark rights to its uniforms was not well established. The court rejected its consumer survey results because the survey used only one of Moore’s prints. P. 18.

“As our discussion below indicates, we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act with respect to the paintings, prints, and calendars. The First Amendment’s protections extend beyond written and spoken words. ‘[P]ictures, films, paintings, drawings, and engravings . . . have First Amendment protection[.]’ Kaplan v. California, 413 U.S. 115, 119-20, 93 S. Ct. 2680, 2684 (1973); see also Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Bos., 515 U.S. 557, 569, 115 S. Ct. 2338, 2345 (1995) (‘[T]he Constitution looks beyond written or spoken words as mediums of expression.’).” P. 18-19.

Like other expressive speech, Moore’s paintings, prints, and calendars were entitled to full protection under the First Amendment. P. 16, see also ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 925 (6th Cir. 2003). 

The court discussed the leading case of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), involved a film of two Italian dancers called “Ginger and Fred.” Ginger Rogers, a famous dancer who often worked with Fred Astaire, sued claiming violation of their trademark rights.

 ”Thus, the court adopted a balancing test: ‘We believe that in general the Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless the title explicitly misleads as to the source of the work.’ Id. at 999 … Accordingly, the court ruled in favor of the movie’s producers because the title was artistically relevant to the film, there had been no evidence of explicit misleading as to source, and the risk of confusion was ‘so outweighed by the interests in artistic expression as to preclude application of the Lanham Act.’ Id. at 1001.” P. 21. the same result was obtained in ESS Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), where a scene in the defendant’s video game featured the trademark of the plaintiff’s entertainment club. See also ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 918-19 (6th Cir. 2003)(involving an artist painting a collage of Tiger Woods images).

 ”Therefore, we have no hesitation in joining our sister circuits by holding that we should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark. This requires that we carefully ‘weigh the public interest in free expression against the public interest in avoiding consumer confusion.’ Cliffs Notes, 886 F.2d at 494. An artistically expressive use of a trademark will not violate the Lanham Act ‘unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.’ ESS Entm’t, 547 F.3d at 1099 (quotations and alterations omitted); see also Rogers, 875 F.2d at 999.” P. 24.

 Although the 11^th Circuit Court permitted Moore’s use of his art in paintings and calendars, it remanded to the trial court the issue of use of the art on mugs.