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IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF IOWA
CENTRAL DIVISION
PAUL GERLICH and ERIN FURLEIGH,
Plaintiff(s),

No. 4:14-CV-264

PLAINTIFFS’ RESISTANCE TO
MOTION TO STAY

vs.
STEVEN LEATH, WARREN MADDEN,
THOMAS HILL, and LEESHA
ZIMMERMAN,
Defendant(s).

The Defendants’ Motion to Stay this Court’s Order on the parties’ motions for summary
judgment is procedurally confused and conflates issues in a manner that attempts to mask what
Defendants actually seek. They move to stay “all proceedings to enforce the partial judgment,”
“all proceedings on damages and attorney fees” and – most tellingly – “enforcement of the
injunctive relief granted” on summary judgment. Stripped to its core, Defendants’ motion asks
that the Court stay an injunction that bars them from applying trademark policies in ways that
discriminate based on viewpoint and/or speaker. As the injunction rests on settled First Amendment principles – and the motion seeks to allow continued violations of rights protected thereby –
Defendants cannot satisfy the “heavy burden” that seeking a stay pending appeal imposes. 1
ARGUMENT
Defendants offer one unified argument for all aspects of their motion, but it is useful and
important to identify, in practical terms, what they have asked. As a threshold matter, Defendants

1

See B.K. ex rel. Kroupa v. 4-H, 877 F.Supp.2d 804, 824 (D.S.D. 2012) (“Because the
burden of meeting this standard is a heavy one, more commonly stay requests will not meet this
standard and will be denied.”) (quoting Brady v. NFL, 779 F.Supp.2d 1043, 1046 (D. Minn. 2011)
(quoting 11 Charles Alan Wright et al., Federal Practice & Procedure, § 2904 at 503-05 (2d ed.
1995)), stay granted on other grounds, 640 F.3d 785, 789 (8th Cir. 2011)).

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seek a stay of proceedings on damages and fees. But Defendants have filed a notice of appeal and
a supplemental notice of appeal, both seeking judicial review as of right of the summary judgment
order’s denial of qualified immunity. Dkts. 64, 70. Doing so divests this Court of jurisdiction to
conduct further proceedings on the merits until the appeal is decided, e.g., Ahlberg v. Chrysler
Corp, 481 F.3d 630, 638 (8th Cir. 2007); accord Mot. 4 (“Jurisdiction has then been vested in the
court of appeals ….”), and a damages trial in any event makes little sense while a qualified
immunity appeal is pending, where the sole issue is whether Defendants are shielded from
damages. And any proceedings on attorney fees were already suspended in view of the appeal.
See Dkt. 69. Thus, on these points, Defendants’ motion is a nullity, 2 which requires neither a
grant nor a denial in this regard.
Properly paring that from Defendants’ motion boils it down to a request that the Court
“stay all proceedings to enforce the partial judgment … and … the injunctive relief granted”
thereby. Mot. 1. Thus reducing the motion to its essence, it is clear the criteria for granting a stay
are not met.
This Court’s summary judgment order “permanently enjoined [Defendants] from
enforcing trademark licensing policies against Plaintiffs in a viewpoint discriminatory manner and
from further prohibiting Plaintiffs from producing licensed apparel on the basis that their designs
include … a [] cannabis leaf.” Gerlich v. Leath, __ F.Supp.3d ___, 2016 WL 360673, at *20
(S.D. Iowa Jan. 22, 2016). With a trial on damages still to come (presuming no reversal on
qualified immunity), this is the only relief Plaintiffs have been granted thus far that they might
seek to “enforce,” and the only “injunctive relief granted.” Mot. 1. Thus properly viewed, the
2

There is no reason for Plaintiffs to either oppose or consent to a stay on these points.
Plaintiffs had already indicated that a damages trial would have to await resolution of any
qualified immunity appeal, and that any pursuit of fees, costs and expenses is most efficiently
addressed after the damages claim is fully resolved. See Dkt. 69.

2

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Defendants’ motion, in practical effect, is solely about ensuring they can continue enforcing their
trademarking policies in a viewpoint- or content-based manner.
Defendants simply cannot show they are entitled to such relief on the asserted grounds
that they are likely to succeed on the merits, that they will be irreparably harmed absent a stay,
that a stay will not substantially injure Plaintiffs, and that the public interest favors a stay. See
Mot. 2 (citing Brady v. NFL, 640 F.3d at 789). Indeed, Defendants’ motion founders on the very
first prong of this standard, in that they cannot demonstrate either likelihood of success on the
merits, or even a substantial ground for difference of opinion on the merits. Id. 3. This is so for
several reasons – some of which this Court has already cited in prior rulings following on its
summary judgment order. Indeed, two days before Defendants’ latest motion, this Court denied
their motion for certification, finding “no substantial ground for difference of opinion” and that
“review of established First Amendment doctrine and the recent Walker decision demonstrates
that a public university’s trademarks are not government speech.” Dkt. 68 at 3-4.
At the outset, given the scope of judicial review open to Defendants, they cannot show a
likelihood of prevailing on the merits of their appeal on any aspect of the injunctive relief the
Court granted. The only issue Defendants may appeal as of right, and thus have appealed, is the
denial of qualified immunity, see, e.g., Percefull v. Claybaker, 211 F. App’x 521 (8th Cir. 2006),
and the Court has denied Defendants’ request to certify any other issues for appeal. Dkt. 68.
Defendants recite the pat government-defendant maxim that “qualified immunity is immunity
from suit,” Mot. 4 (citing Peters v. Woodbury Cnty., 979 F.Supp.2d 901, 927 (N.D. Iowa 2013)),
aff’d sub nom, 786 F.3d 1095 (8th Cir. 2015), but as a matter of settled law, qualified immunity
does not preclude injunctive or declaratory relief. E.g., Mead v. Palmer, 794 F.3d 932, 937 (8th
Cir. 2015). As the only thing the stay motion seeks to avoid is the enforcement of injunctive
relief, there is no way Defendants can prevail in having that relief vacated or reversed on judicial
3

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review of a denial of qualified immunity, which at most concerns whether they are liable for
damages. Therefore, given the present procedural posture and the black letter law on qualified
immunity, Defendants cannot show a likelihood of success on the merits of appeal vis-à-vis the
injunctive relief they seek to have stayed. This alone dooms their stay motion. E.g., McLeod v.
General Mills, Inc., 2015 WL 7428548, at *2 (D. Minn. Nov. 20, 2015) (“The most important
factor in the stay analysis is the appellant’s likelihood of success on the merits.”) (quoting Brady
v. NFL, 640 F.3d at 789) (internal quotation marks omitted).
Even were that not a bar to satisfying the standard for a stay pending appeal, Defendants
are not likely to succeed on the merits for substantive reasons as well. Defendants stake their
entire success-on-the-merits showing on “whether … [ISU] trademarks … constitute government
speech that is not subject to First Amendment analysis[.]” Mot. 3 (citing Walker v. Texas Div. of
Sons of Conf. Vets., Inc., 135 S. Ct. 2239 (2015); Mech v. School Bd. of Palm Beach Cnty., 806
F.3d 1070 (11th Cir. 2015)). See also generally id. 3-4. As such, there can be no likelihood of
success on this argument, for at least two reasons.
First, as this Court has already held, the issue in this case is not whether student-group use
of ISU trademarks constitutes government speech (it does not – see infra 5-6; see also Gerlich, at
*13-15). Rather, the issue is whether the manner in which the University goes about allowing use
of the trademarks, based on agreement or disagreement with the accompanying message, and
other steps taken to interfere with speech, violate the First Amendment. Gerlich, at *11-13. See
also id. at *16 (“[T]his case does not present a novel issue of trademark law, but rather [] a
familiar issue of whether a university may discriminate among student groups on the basis of
viewpoint.”). Proscriptions against such viewpoint-based regulation by public university officials

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date back nearly half a century. 3 Succeeding on the merits on this, in particular, is especially
unlikely given this Circuit’s precedent in Gohn. See Gerlich, at *12-13 (citing same).
Further, even if government speech were involved, viewpoint discrimination still would
not stand. For example, if instead of implicating ISU trademarks, this case involved monuments
the University placed around campus, compare Pleasant Grove City v. Summum, 555 U.S. 460
(2009), and instead of discriminatory trademark licensing the Defendants allowed only certain
student groups to hold events near those monuments, while denying access to others, all based on
viewpoint, their actions would no more comport with the First Amendment than those held
unconstitutional in this case. In short, it cannot be said that the (qualified immunity) appeal based
on whether Defendants engaged in government speech is likely to prevail on the merits of overturning an injunction that was granted because Defendants engaged in viewpoint discrimination.
Second, Defendants’ argument on the merits regarding government speech is neither
likely to prevail, nor does it present a “substantial ground for difference of opinion.” Mot. 3. As
on summary judgment, Defendants’ entire position is that the jurisprudence is “[a]bsent cases
holding a university’s federally registered trademarks are not government speech[.]” Id. It almost
need not be said, of course, that if there are no cases establishing this point, Defendants are not
“likely” to prevail on it. And as this Court already recently held on another of Defendants’ postsummary judgment motions, “substantial ground for difference of opinion does not exist merely
because there is a dearth of cases” or, as here, no cases. Dkt. 68 at 3 (quoting White v. Nix,
43 F.3d 374, 378 (8th Cir. 1994)) (internal edit omitted). As the Court also held, echoing its summary judgment ruling, “review of established First Amendment doctrine and the recent decision
3

See id. (citing Police Dep’t of Chicago v. Mosley, 408 U.S. 92 (1972); Healy v. James, 408
U.S. 169 (1972); Tinker v. Des Moines Indep. Cmty. Sch. Dist., 393 U.S. 503 (1969); Rosenberger
v. Rector & Visitors of Univ. of Va., 515 U.S. 819 (1995); Gay & Lesbian Students Ass’n v. Gohn,
850 F.2d 361 (8th Cir. 1988)).

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in Walker demonstrates that a public university’s trademarks are not government speech,” id., a
point also recently reinforced by the Federal Circuit’s decision in In re Tam, 808 F.3d 1321 (Fed.
Cir. 2015). As this Court thus correctly held: “There is no substantial ground for difference of
opinion” when it comes to Defendants’ sole argument here. Dkt. 68 at 4.
Once Defendants’ motion is placed in its proper context, and their success-on-the-merits
argument is laid bare, it necessarily follows that they cannot satisfy the remaining elements for a
stay pending appeal. 4 Defendants claim irreparable harm to ISU’s trademarks absent a stay
(without citation to precedent), Mot. 5, but nothing in the case law holds that being unable to continue engaging in viewpoint discrimination constitutes irreparable harm. Cf. Gerlich, at *14
(“ISU does not license its trademarks to student groups to announce its political views, because
the office has approved designs for an inchoate set of interest groups”).
Quite to the contrary, enabling Defendants to continue infringing Plaintiffs’ First
Amendment rights in that manner irreparably harms the Plaintiffs. Johnson v. Minneapolis Park
& Rec. Bd., 729 F.3d 1094, 1101-02 (8th Cir. 2013) (“a loss of First Amendment freedoms, for
even minimal periods of time, unquestionably constitutes irreparable injury”) (quoting Elrod v.
Burns, 427 U.S. 347, 373 (1976)) (internal quotation marks omitted); accord Gerlich, at *19
(citing Elrod). Contra Mot. 6. The fact that it “has now been more than three years” since ISU
engaged in viewpoint discrimination against Plaintiffs, Mot. 6 – mostly because the futility of
seeking approval for T-shirt designs that would be withheld for viewpoint-based reasons led
Plaintiffs to stop applying – does not change that fact. And Defendants’ public interest showing

4

And this cannot be avoided through any “balancing” of the factors, given that Defendants’
showing on one of them – the first and most important – is not only not “strong,” but wholly
inadequate. See Mot. 2. Compare also id. at 3 n.1 (arguing that it is enough to raise a “serious
legal question”) (citing cases), with supra at 5-6 (Defendants’ government speech argument does
not present a substantial ground for different of opinion) (citing Dkt. 68).

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based on government speech fails for the same reasons their government speech-based successon-the-merits arguments fail. See supra 4-6. Conversely, “the public interest favors protecting
core First Amendment freedoms,” Iowa Right to Life Comm., Inc. v. Williams, 187 F.3d 963, 970
(8th Cir. 1999); Gerlich, at *19 (“it is axiomatic that protection of First Amendment rights serves
the public interest”), which is exactly what this Court accomplished in granting the injunctive
relief that Defendants now seek to avoid through a stay pending appeal.
CONCLUSION
Defendants are correct that “the power to stay proceedings is … inherent in every court”
and calls for “an exercise of judgment,” Mot. 8 (quoting Landis v. North Am. Co., 299 U.S. 248,
254-55 (1936)), but they are not just asking the Court to stay “proceedings.” Rather, they ask the
Court to stay “an[] injunction [that] would [] compel Defendants to license ISU trademarks to be
co-branded with other non-university trademarks,” id. 5, in a non-viewpoint-discriminatory
manner. Put differently, Defendants ask the Court to stay an injunction designed to ensure that
ISU cannot continue to violate Plaintiffs’ First Amendment rights. See Gerlich, at *19.
The injunction embodies the “straightforward principle that a public university may not
discriminate among student groups on the basis of their espoused views.” Id. at *12. Insofar as
Defendants assertedly seek to “preserve the status quo,” Mot. 1, that status quo had Defendants
violating the Constitution. The instant stay motion thus does not just “place[] [Defendants] in the
uncomfortable position of asking a district court to determine whether its decision is likely to be
overturned,” id. 3 n.1, but rather assigns them the unenviable burden of claiming they are likely to
prevail despite decades of settled law that speaker- and viewpoint-based regulation of speech
violates the First Amendment. This the Defendants cannot do, and for that reason, their motion to
stay must be denied.

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Respectfully submitted,
By
MICHAEL A. GIUDICESSI
michael.giudicessi@faegrebd.com
FAEGRE BAKER DANIELS LLP
801 Grand Avenue, 33rd Floor
Des Moines, IA 50309-8011
Telephone: (515) 447-4701
Facsimile: (515) 248-9010

/s/ Robert Corn-Revere

ROBERT CORN-REVERE (admitted pro hac vice)
bobcornrevere@dwt.com
RONALD G. LONDON (admitted pro hac vice)
ronnielondon@dwt.com
LISA B. ZYCHERMAN (admitted pro hac vice)
lisazycherman@dwt.com
DAVIS WRIGHT TREMAINE LLP
1919 Pennsylvania Avenue, NW, Suite 800
Washington, DC 20006
Telephone: (202) 973-4200
Facsimile: (202) 973-4499
Attorneys for Plaintiffs
Paul Gerlich and Erin Furleigh

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Certificate of Service
The undersigned hereby certifies that a true copy of the Plaintiffs’ Opposition to
Motion to Stay was served upon the Defendants through the Court’s CM/ECF filing system on
the 22nd day of February 2016.

/s/ Robert Corn-Revere
Robert Corn-Revere
Copy to:
Thomas J. Miller
Tyler M. Smith
tyler.smith@iowa.gov
George A. Carroll
george.carroll@iowa.gov
Attorneys for Defendants