Almost four years after the Rutherford Institute filed a free speech lawsuit against Union County government over its efforts to censor a local TV show aired on Cranford’s local channel 35, in April 2015 a Judge approved my attorney’s fees in a total amount of $40,085.6S stating in part: This declaratory action was a direct result of the County’s baseless threats in its letters. Indeed, the very purpose of a cease-and-desist letter is to set the scene for litigation if the recipient does not obey…..
Attorneys for The Rutherford Institute, including Walter Luers, filed the lawsuit in 2011 after county officials ordered me to stop displaying the Union County Seal in the background of my public information show “Union County Citizen’s Forum” because it allegedly infringed on the County’s trademark rights.
My show, The Citizen’s Forum, simply featured me mostly reading county resolutions in which they appropriated funds. I did this because the county, unlike most municipalities, does not read their agenda items therefore people watching the meetings at home have no idea what they are voting to spend millions of dollars on.
My show made the county ballistic. In addition to threatening me with legal action they shamelessly harassed Cranford officials and its cable station staff. At one point County Attorney Norman Albert called the station and screamed at them. Freeholder B.J. Kowalski lied when she read false statements about the station during her comments at public meetings. And when democrats took control of the Cranford government body, they added political hacks to the Cable Station Advisory Board.
The county managed to intimidate Republican Councilman Mark Dugan as well. Dugan, an attorney, wrote an indemnity agreement which anyone producing a show on the cable station would be forced to sign in order to be aired. The agreement was poorly written from a legal standpoint, extremely restrictive, and would have left me vulnerable to being sued by the county. I put the show on hiatus.
In May 2014 in a resounding victory for the First Amendment, especially as it relates to freedom of the press, a federal court ruled in favor of my right to display Union County’s seal in the background of my public access television show. Ironically the seal features Hannah Caldwell, a hero of the American Revolution. Rejecting Union County’s claim that I was infringing on trademark protections associated with the seal, U.S. District Court Judge Kevin McNulty asserted that my use of the seal is protected by the First Amendment and that the County’s infringement claims were a baseless attempt to impede my free expression in the pursuit of increased government transparency.
On April 21, 2015 a judge approved attorney’s fees in a total amount of $40,085.65.
Excerpts from the Opinion:
Judge Hammer found that there was an unusual discrepancy in the merits of the positions taken by the County and Renna. The County, Judge Hammer said, had asserted trademark rights that it knew, or should have known, did not exist. (R&R, 14). It had relied on federal and state trademark law, neither of which provide trademark protection to the “insignia” of a municipality. (Id. at 15) Attorneys’ fees, he therefore found, were appropriate……
……. True, the County did not file this action. It was, however, the aggressor: it sent a cease and desist letters with respect to Renna’s use of the seal. Renna’s counsel replied, stating inter alia that the Seal was not registrable and did not implicate commercial activity. Counsel for the County replied with a second letter that very misleadingly implied that the trademark was now registered (in fact it had been rejected). That letter also falsely implied that Renna might face criminal prosecution if she continued to use the County Seal.
…. The County’s threats seemingly intimidated the television station, which demanded an agreement of indemnity as a condition of continuing to carry Renna’s program. Under those circumstances, Renna
was not required to continue her alleged infringement (assuming the station would have permitted it) and wait for the County to sue her….
….The County argues that its pre-litigation conduct should not be considered in deciding a motion for attorneys’ fees. I disagree. The Third Circuit has explained that culpable conduct, while not required, may contribute to a case’s being considered “exceptional.” …..
…. In addition, the Supreme Court has emphasized that courts should consider the totality of the circumstances in deciding whether to award attorneys’ fees….
…Surely the relevant “circumstances” would include the events related in the complaint. This declaratory action was a direct result of the County’s baseless threats in its letters. Indeed, the very purpose of a cease-and-desist letter is to set the scene for litigation if the recipient does not obey. Finally, I note that virtually no facts were in dispute; the dispositive issues were legal ones……
There was not much question as to whether the plaintiff could marshal evidence to prove the facts she was asserting. Indeed, many of the relevant facts were stated or implied in the County’s own letters. The County’s defense was limited to assertion of its erroneous legal position. For several reasons, then, I reject the argument that an award of attorneys’ fees would not be proper because the County is a defendant…..
… I will adopt Judge Hammer’s Report and Recommendation with respect to the award of fees of $39,535.00, plus cots of $550.65 under the Lanham Act.
Kevin McNulty, United States District Judge
An ethics grievance I filed is pending against Norman Albert, Esq., formerly Union County’s First Assistant County Counsel. Albert has since been promoted to Director of Personnel, salary $120,566, while maintaining a private law firm in Cranford, NJ.