Opinion in my suit against ICE

Tushnet v. U.S. Immig. & Customs Enforcement, No. 1:15-cv-00907 (D.D.C. filed Mar. 31, 2017)

Thanks to my able counsel Michael Kirkpatrick of Public Citizen, initially assisted by Georgetown students from the Institute for Public Representation.  Here, the district court denies ICE’s motion for summary judgment in my FOIA suit, ordering ICE to do further searches/explain why it can’t and to review its redaction of certain elements of industry guides to detecting counterfeits supplied to ICE.

I particularly appreciated the court’s wry summary of how this dispute began, including “Tushnet explained to ICE that an irreverent parody of a recognized trademark does not infringe because it creates no confusion over the item’s provenance.”  A bit more:

As reported in the Boston Globe, ICE spokesman Daniel Modricker announced that any item that “debas[es] a mascot—and really anything that denigrates a team—is guaranteed to be contraband.” Nestor Ramos, U.S. Agents Tackle Fake Super Bowl Items, Boston Globe, Jan. 31, 2015).… After reading the article, Professor Tushnet immediately wrote to Modricker seeking clarification of ICE’s position on parody merchandise. Modricker doubled down in his reply: “if one logo [disparages] another logo than it would be infringement.”

When pressed further on ICE’s legal basis for seizing parody items, Modricker looped in attorney Joseph Liberta, Chief of the agency’s Criminal Law section. … Liberta attempted to assuage Tushnet’s concerns by noting that ICE, in consultation with agency and Department of Justice attorneys, relies on “potential fair use provisions and federal circuit-specific case law” when determining whether probable cause supports a seizure. He invited Tushnet to submit a FOIA request to obtain more information about the number of counterfeit seizures ICE had made in recent history.  Two weeks later, Tushnet took him up on his offer ….

How do ICE agents determine what to seize? The court explained:

As noted above, the only material that ICE produced in response to Tushnet’s request for training or guidance documents given to ICE agents were 25 instructional guides provided to ICE by various sports leagues and sports apparel companies.  Tushnet finds it is “implausible that ICE has no documents of its own” that instruct officers on how to distinguish counterfeit marks.  The Court does not share Tushnet’s skepticism on this score. It seems entirely logical that ICE would rely on apparel licensers and manufacturers to point out the unique features of their branded clothing, rather than to expend the resources necessary to develop those guidelines internally. 

But that fact makes it quite important that such guides be legally accurate, rather than overclaiming trademark owners’ rights.  It also suggests that Mr. Liberta's initial claims to me about relying on fair use and federal circuit-specific case law were, let's say, unfounded, which is really too bad.

I also partially prevailed on my challenge to the adequacy of ICE’s search, given the disparity in search terms used by field offices, some of which didn’t even use the terms I specifically identified in my request, such as “dilution.”

FOIA Exemption 7(E) authorizes agencies to withhold “records or information compiled for law enforcement purposes [that] would disclose techniques and procedures for law enforcement investigations or prosecutions, or would disclose guidelines for law enforcement investigations or prosecutions if such disclosure could reasonably be expected to risk circumvention of the law.”  This creates a relatively low bar for agencies, who must only show logically how releasing information would create a risk of circumvention.  On the basis of this exemption, ICE redacted over 300 of the 521 pages of the industry guides it released.

The court reasoned: “[o]n its face, ICE’s justification appears sound:  If ICE agents use these guides to distinguish counterfeit goods, revealing the features they look for could help black market manufacturers improve the ‘authenticity’ of their products and potentially avoid detection. This explanation provides a straightforward link between disclosure and potential violations of the law.” Though the court rejected several of my objections, however, it agreed that “there is no legitimate law enforcement purpose in detecting non-counterfeit goods”:

[Tushnet] maintains that some of the material redacted from industry guides might incorrectly characterize clothing as counterfeit when in fact it is a lawful parody. Withholding such material would therefore serve no “legitimate law enforcement purpose” because ICE has no legal authority to seize these items. Tushnet points to a “No Flyers Zone” t-shirt that features the Philadelphia Flyers logo with the Chicago Blackhawks logo imposed over it as one example of an item that was mislabeled as counterfeit in one NHL product guide. The use of the Flyers logo is lawful, according to Tushnet, “because there is no confusion as to whether the Flyers sponsored the shirt.”  In addition, Tushnet presents evidence that ICE has seized other items in this same vein, which suggests a potential misunderstanding within the agency as to what constitutes trademark infringement. The examples offered by Tushnet give the Court pause because 7(E) redactions would be inappropriate if there is no risk that a law could be violated, and successful parodies do not violate trademark laws…. Given the evidence Tushnet has produced and the agency’s apparently exclusive reliance on industry guidance to discern trademark infringement, the Court finds that ICE has not sufficiently justified its 7(E) redactions and that a material factual dispute remains regarding the applicability of this exemption.