United States District Court, D. New Jersey
For TINA RENNA, Plaintiff: F. MICHAEL DAILY, JR., SENTRY OFFICE PLAZA, WESTMONT, NJ; WALTER M. LUERS, LAW OFFICE OF WALTER M. LUERS, LLC, CLINTON, NJ.
For THE COUNTY OF UNION, NEW JERSEY, Defendant: NORMAN W. ALBERT, LEAD ATTORNEY, UNION COUNTY COUNSEL, FIRST DEPUTY COUNTY COUNSEL, ELIZABETH, NJ.
KEVIN MCNULTY, United States District Judge.
This matter comes before the Court upon cross motions for summary judgment brought by the Defendant, The County of Union, New Jersey, Docket No. 20, and by the Plaintiff, Tina Renna, Docket No. 23. All fact discovery has been completed, see Docket No. 13, the motions are fully briefed, and I heard oral argument on May 29, 2014. I find that there are no genuine material factual disputes and that Plaintiff is entitled to judgment as a matter of law. Defendant's motion is denied and Plaintiff's motion is granted (although not on all of the grounds she asserts).
Renna produces a public access television show in Cranford, NJ, called the " Union County Citizen's Forum." The show displays on-air a graphic illustration depicting
the Seal of the County of Union with a spotlight shining on it. The illustration symbolizes the self-proclaimed mission of the show to shine a critical light on the workings of the Union County Board of Chosen Freeholders.
The County responded through its attorneys. The County Attorney sent a cease-and-desist letter to the Township of Cranford warning it to stop displaying the County of Union seal, except in broadcasts of Freeholders' meetings. According to the County, Renna's use of the Seal infringes the County's trademark rights under the Lanham Act.
Whether the County has tried to bully a constituent is for the public to decide. The issues before me primarily involve the proper scope of trademark law. Renna has sued seeking a declaratory judgment pursuant to 28 U.S.C. § 2201  that: (1) Union County has no trademark rights with respect to its official Seal; (2) Renna's display of the seal in connection with her television show does not constitute trademark infringement; and (3) Union County deprived Renna of her First Amendment rights when it threatened to enforce trademark laws against her. Because I decide the first two issues in Renna's favor, it is unnecessary to rule definitively on the third, although I touch on it in the final section of this opinion.
A. Summary Judgment Standard
Federal Rule of Civil Procedure 56(a) provides that summary judgment should be granted " if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202; Kreschollek v. S. Stevedoring Co., 223 F.3d 202, 204 (3d Cir. 2000). In deciding a motion for summary judgment, a court must construe all facts and inferences in the light most favorable to the nonmoving party. See Boyle v. County of Allegheny Pennsylvania, 139 F.3d 386, 393 (3d Cir. 1998) (citing Peters v. Delaware River Port Auth. of Pa. & N.J., 16 F.3d 1346, 1349 (3d Cir. 1994)). The moving party bears the burden of establishing that no genuine issue of material fact remains. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). " [W]ith respect to an issue on which the nonmoving party bears the burden of proof . . . the burden on the moving party may be discharged by 'showing'--that is, pointing out to the district court--that there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 325.
Once the moving party has met that threshold burden, the non-moving party " must do more than simply show that there is some metaphysical doubt as to material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The opposing party must present actual evidence that creates a genuine issue as to a material fact for trial. Anderson, 477 U.S. at 248; see also Fed.R.Civ.P. 56(c) (setting forth types of evidence on which nonmoving party must rely to support its assertion that
genuine issues of material fact exist). " [U]nsupported allegations . . . and pleadings are insufficient to repel summary judgment." Schoch v. First Fid. Bancorporation, 912 F.2d 654, 657 (3d Cir. 1990); see also Gleason v. Norwest Mortg., Inc., 243 F.3d 130, 138 (3d Cir. 2001) (" A nonmoving party has created a genuine issue of material fact if it has provided sufficient evidence to allow a jury to find in its favor at trial." ). If the nonmoving party has failed " to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. . . . there can be 'no genuine issue of material fact,' since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." Katz v. Aetna Cas. & Sur. Co., 972 F.2d 53, 55 (3d Cir. 1992) (quoting Celotex, 477 U.S. at 322-23).
Cross-motions for summary judgment must be analyzed separately under those standards. The denial of one side's motion, for example, does not imply that the other's must be granted. See Pichler v. UNITE, 542 F.3d 380, 386 (3d Cir. 2008); Goldwell of N.J., Inc. v. KPSS, Inc., 622 F.Supp.2d 168, 184 (D.N.J. 2009); Clevenger v. First Option Health Plan of N.J., 208 F.Supp.2d 463, 468-69 (D.N.J. 2002) (citing Weissman v. U.S.P.S., 19 F.Supp.2d 254 (D.N.J. 1998)).
The facts are largely undisputed. I rely on factual contentions, supported by affidavits or documentary evidence, that are expressly admitted, or at least unopposed.
The defendant, Union County, is a governmental entity organized and existing under the laws of New Jersey. It has its principal place of business at the Union County Administration Building in Elizabeth, New Jersey. Docket No. 21, Defendant's Statement of Undisputed Material Facts (" Def. SUMF" ) ¶ 2. The County's governing body is the Union County Board of Chosen Freeholders (the " Board," or the " Board of Freeholders" ).
The plaintiff, Tina Renna, is a resident of the Township of Cranford, which is within Union County. Docket No. 23-2, Plaintiff's Statement of Undisputed Material Facts (" Pl. SUMF" ). Renna, a citizen activist, has been an outspoken critic of the Board of Freeholders. Pl. SUMF ¶ 7. Since December 2009, she has produced a local cable television show called " Union County Citizen's Forum." Pl. SUMF ¶ 3.
Union County Citizen's Forum focuses on the governance and political activities of Union County. Def. SUMF ¶ 3. The show airs on Cranford's public access cable television channel, Channel 35. Def. SUMF ¶ 6. A " news and information show," it features " reading[s] of the resolutions presented at meetings of the Union County Board of Chosen Freeholders," as well as discussions. Pl. SUMF ¶ 3.
Union County, as authorized by State law, has a registered official Seal. The Seal is displayed at County and Freeholder
meetings and on all County buildings and cars. The Seal is used on County correspondence, on every official County document, and on commercial contracts with vendors to signify the County's involvement. Docket No. 24-2, Defendant's Supplemental Statement of Undisputed Material Facts (" Def. Supplemental SUMF" ) ¶ 1.
Starting at the inception of her local public access television program in 2009, Renna used on-air a graphic illustration containing the Union County Seal. Pl. SUMF ¶ 3. Broadcasts of Union County Citizen's Forum would display a representation of the Seal with a theatrical spotlight shining on it. That graphic illustration was intended to symbolize the show's mission to illuminate the workings of County government. It would appear in the background as Renna read Board resolutions or interviewed guests on the air. Def. SUMF ¶ 7; Pl. SUMF ¶ 4. ( See appendix to this opinion at " A" for a copy of the illustration.)
On July 10, 2010, Union County submitted an application to the United States Patent and Trademark Office (" USPTO" ). The application sought to register the Union County Seal as a trademark. Pl. SUMF ¶ 18, Exhibit 1.
On September 17, 2010, Union County Counsel Robert E. Barry sent a letter to the Township of Cranford (the " cease-and-desist letter" ). That cease-and-desist letter informed Cranford that it was using the Union County Seal without proper authorization and that such use infringed the County's trademark. Def. SUMF ¶ 8; Pl. SUMF ¶ 8; Compl. Exhibit A (September 17, 2010 Letter). Here is the pertinent language from the letter:
Re: Unauthorized usage of the seal of the County of Union Union County Citizens Forum
To Whom It May Concern:
It has come to the attention of the County of Union that your entity is using the Seal of the County of Union without proper authorization. The County of Union demands that your entity cease and desist use of the Seal of the County of Union in any way including, but not limited to, displaying it in the background of all television shows with exception of the prerecorded unedited meetings of the Board of Chosen Freeholders. Please be advised that the County Seal is also a pending trademark, therefore you are committing trademark infringement.
September 17, 2010 Letter ( italic emphasis added in re: line).
This cease-and-desist letter is addressed to the Township of Cranford, and its wording is somewhat general. There can be no doubt, however, concerning the " unauthorized usage" to which the letter refers. The re: line announces that the subject of the letter is unauthorized usage by " Union County Citizens Forum," Renna's television program. Pl. SUMF ¶ 9; see quotation from letter, above. And the letter carefully exempts from its scope the benign (from the County's point of view, that is) and authorized use of the Seal in broadcasts of Board meetings. In short, although Renna is not the addressee of the letter, the alleged infringing use is clearly Renna's.
Sometime after September 17, 2010, Renna discussed the County's cease-and-desist letter with Ed Davenport, the Channel 35 station manager. Davenport asked Renna not to use the Seal graphic any longer. Pl. SUMF ¶ 11. At the time of the letter, Renna was not taping new episodes of the show anyway, because the station was undergoing renovations. Pl. SUMF ¶ 11.
On October 18, 2010, the USPTO issued an Office Action addressing the County's pending trademark registration application. The Office Action provided that registration was " refused because the applied-for mark consists of an insignia of a U.S. municipality." The USPTO cited 15 U.S.C. § 1052(b) as an " absolute bar" to registration on the Principal and Supplemental Registers. Pl. SUMF ¶ 19, Exhibit 2.
In January 2011, renovations to the station were completed, and Renna resumed taping her show. Because the cease-and-desist letter caused her to fear liability, Renna replaced the old logo. Instead of a spotlight shining on the County Seal, the graphic now consisted of a depiction of a spotlight shining on a photograph of the Union County Manager. Pl. SUMF ¶ 13. On February 8, 2011, Renna received an e-mail message from the station manager, Davenport, relaying a request from the Cranford Township attorney that Renna stop using the new logo with the image of the County Manager. Pl. SUMF ¶ 14. ( See appendix to this opinion at " B" for a copy of the new logo.)
In about February 2011, Channel 35's management requested that Renna sign a " Producer Agreement and Indemnification Agreement." That Agreement would have required Renna to indemnify the Township of Cranford for any claims, demands, or lawsuits arising from her television show. Pl. SUMF ¶ 25. The execution of that indemnification agreement, says Renna, was presented to her as a precondition to further airing of her show. Pl. SUMF ¶ 26. Fearing personal ...