Tushnet v. United States Immigration and Customs Enforcement

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
REBECCA TUSHNET,
Plaintiff,
v. Case No. 1:15-cv-00907 (CRC)
UNITED STATES IMMIGRATION AND
CUSTOMS ENFORCEMENT,
Defendant.
MEMORANDUM OPINION
Does a t-shirt with “Yankees Suck” emblazoned over the team’s iconic logo violate federal
trademark law? An Immigration and Customs Enforcement (“ICE”) spokesman appeared to
suggest so in a press conference touting the agency’s crackdown on counterfeit sports apparel
before the 2015 Super Bowl. Begging to differ, Harvard Law School professor Rebecca 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. See, e.g., Louis Vuitton Malletier S.A. v. Haute
Diggity Dog, LLC, 507 F.3d 252, 269 (4th Cir. 2007) (holding “Chewy Vuiton” dog toys not to
infringe on the venerable handbag maker’s trademark). And when ICE’s response failed to satisfy
her that the agency was not confiscating lawful parody merchandise, Tushnet lodged a FOIA
request seeking descriptions and photographs of seized apparel as well as documents instructing
ICE agents on how to distinguish authentic goods from knock-offs.
Tushnet brought this action in June 2015 challenging ICE’s failure to release records in
response to her request.1 Since then, ICE has reviewed and released approximately 3,197
1
Tushnet was a professor at Georgetown University Law Center when she filed suit and
was assisted by staff and students of the school’s Institute for Public Representation.
photographs and 1,475 pages of responsive records. With production complete as of June 2016,
both parties now move for summary judgment. The motions present two remaining issues: (1) the
adequacy of ICE’s search for records, and (2) the applicability of FOIA’s law-enforcement
exemption to certain material redacted from the released records. The Court heard oral argument
on the motions on December 21, 2016. For the reasons explained below, the Court cannot conclude
that ICE’s original search was adequate because it failed to justify its decision not to search one of
its internal records systems and to support the scope of its searches across the agency’s 26 field
offices. The Court will therefore deny ICE’s motion for summary judgment and reserve judgment
on Tushnet’s motion with respect to the adequacy of ICE’s search. As for ICE’s reliance on
FOIA’s law-enforcement exemption, Tushnet has raised colorable but unresolved questions
concerning the appropriateness of the challenged redactions. As a result, the Court will deny both
motions for summary judgment on this issue and order ICE to review the redactions in light of this
ruling.
I. Background
A. The FOIA Request
Prior to the 2015 Super Bowl, ICE held a press conference to publicize its efforts to seize
counterfeit sports-related apparel. Pl.’s Statement of Material Facts (“SMF”) ¶ 1; id., Ex. 1 (ICE’s
January 29, 2015 Press Release). 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.” Id., Ex. 2 (Nestor Ramos, U.S. Agents Tackle Fake Super
Bowl Items, Boston Globe, Jan. 31, 2015). The Globe article highlighted a “Yankees Suck” t-shirt
as an example of a piece of clothing that likely constituted trademark infringement and therefore
could be lawfully seized by ICE agents. See id. After reading the article, Professor Tushnet
immediately wrote to Modricker seeking clarification of ICE’s position on parody merchandise.
2
Pl.’s Mem. Supp. Cross-Mot. Summ. J. (“Cross-MSJ”) 3; see also id., Ex. 3. Modricker doubled
down in his reply: “if one logo [disparages] another logo than it would be infringement.” Id.
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. Id., Ex. 6 (email chain
between Modricker, Tushnet, and Liberta). And in a February 18, 2015 email, 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. Id., Ex. 7. He invited Tushnet to submit a
FOIA request to obtain more information about the number of counterfeit seizures ICE had made in
recent history. Id. Two weeks later, Tushnet took him up on his offer, submitting a request for:
(1) Images or descriptions of clothing seized by ICE as counterfeit from 2012 until present;
(2) Training or guidance ICE agents receive on how to distinguish counterfeit goods,
including explanations of legal doctrine and trademark-infringement defenses;
(3) Records containing the words “disparagement,” “parody,” “distortion” or “tarnishment,”
in connection with trademark rights holders’ requests;
(4) Records indicating an item was seized because it disparaged, parodied, distorted or
tarnished a trademark;
(5) Documents used in connection with the news conference ICE held in January 2015; and
(6) Records referencing spokesperson Modricker’s statements about contraband items.
See id., Ex. 8 (“FOIA Request”).2
B. ICE’s Search for Responsive Records
In a series of declarations, Fernando Pineiro, the ICE official responsible for handling all
FOIA requests submitted to the agency, detailed ICE’s search for responsive records. See Jan. 14,
2016 Decl. of Fernando Pineiro (“First Pineiro Decl.”) ¶¶ 1–3; Feb. 15, 2016 Decl. of Fernando
Pineiro (“Second Pineiro Decl.”) ¶ 1; April 29, 2016 Decl. of Fernando Pineiro (“Third Pineiro
2
The Court will use this numbering when referring to the different components of Tushnet’s
request. In the original request, item 2 was further divided into five sub-parts (numbered (a)-(e)),
which are summarized here for simplicity’s sake. See FOIA Request.
3
Decl.”) ¶ 1; June 30, 2016 Decl. of Fernando Pineiro (“Fourth Pineiro Decl.”) ¶ 1. For the portion
of request 1 related to descriptions of seized counterfeit items, ICE’s FOIA office delegated the
search to the agency’s Office of Homeland Security Investigations (“HSI”), which it determined
was most likely to have responsive records. First Pineiro Decl. ¶ 14. HSI in turn focused its search
on the Seized Asset and Case Tracking System (“SEACATS”), a database that tracks all property
seized by ICE from the time of the initial seizure. Id. at ¶¶ 17–18. Within SEACATS, every
“seizure incident”—which could include multiple seized items—is assigned a unique identifier and
a property category. The database also contains a summary of the circumstances surrounding the
seizure and a brief (under 40 character) description of the seized items. Id. at ¶¶ 19–21, 31. HSI
queried SEACATS and produced a 511-page table of all clothing seized by ICE as counterfeit
goods between 2012 and March 2015. Id. at ¶¶ 25, 27. This summary reveals approximately 5,564
seizure incidents within that time period. Id. at ¶ 31. And these incidents correspond to
approximately 1,085 investigative case files created by ICE agents. These case files are maintained
in a separate case management system, called TECS, which is used to store investigation reports
and other investigative records. Second Pineiro Decl. ¶¶ 11–13.3 Because ICE apparently has no
way of estimating how many pages of records are contained in these 1,085 TECS case files and is
incapable of isolating records that contain item descriptions, it decided not to manually review the
files to determine if they contained additional descriptions of seized items beyond those found in
the SEACATS database. Id. at ¶ 13.
3
TECS, which stood for the Treasury Enforcement Communication System, was originally
managed by U.S. Customs and Border Protection. It has since migrated to the Department of
Homeland Security and is no longer considered an acronym but is simply known as TECS. Second
Pineiro Decl. at 4 n.1.
4
For the remaining parts of Tushnet’s request, ICE identified several internal offices—
including the Office of Training and Development, the Office of the Principal Legal Advisor, the
Office of Public Affairs, and HIS—as likely locations of responsive records and tasked these
offices with conducting searches “based on their knowledge of the manner in which they routinely
keep records[.]” Third Pineiro Decl. ¶ 21. An ICE training office official searched shared
computer files and email records using the terms “disparagement,” “distortion,” “tarnishment,”
“parody,” “dist,” “dip,” “tarn,” and “Modricker.” Id. at ¶ 30. He also manually reviewed paper
files for any relevant documents. Id. The Chief of the Criminal Law section conducted a similar
search, using the search terms “Superbowl,” “trademark seizures,” “OPA,” “Modricker,” “Boston
Globe,” and “Tushnet.” Id. at ¶¶ 34–35. The Public Affairs office searched computer files and
email records using the terms “counterfeit,” “trademarks,” “distortion,” “disparagement,” “parody,”
and “Daniel Modricker.” Id. at ¶ 38. Lastly, an HSI unit chief searched hard drives, shared
network drives, and emails using the terms “Tushnet,” “Modricker,” and “counterfeit guides.” Id.
at ¶ 40. In addition to conducting these central-office searches, HSI provided Tushnet’s FOIA
request to its twenty-six regional field offices, which oversee sub-offices and supervise
investigations into intellectual-property-rights violations, so that they could craft searches based on
their documentation practices and local databases. Each field office employed its own search
methods, with some offices using just one or two search terms and others up to twenty four. See
Fourth Pineiro Decl. ¶¶ 11–12.4
4
For example, the Boston field office only used the search terms “counterfeit” and “IPR,”
whereas the Houston office performed a broader search using the following terms: “jerseys,”
“NFL,” “shamrock,” “Baltimore,” “pong,” “hoodies,” “Steelers,” “trademark,” “sucks,” “hat,”
“soccer,” “jersey,” “disparagement,” “parody,” “tarnishment,” “distortion,” “Rockets,” “Texans,”
“ball caps,” “Nike,” “Adidas,” “sports,” “counterfeit,” and “IPR.”
5
Based on the results of these searches, ICE made “five rolling productions of material
totaling 4,539 pages, consisting of 1,457 pages of text documents and 3,082 photographs of seized
items.” Pl.’s SMF ¶ 9. In response to request 1, which sought images or descriptions of seized
items, ICE produced the 511-page table of item descriptions and 3,082 photographs. Id. at ¶ 17.
Tushnet’s counsel represented at oral argument though that the majority of these photographs were
multiple images of the same item taken from different angles, so that the number of unique items
shown in the photographs totaled a few hundred. In response to request 2(a), which sought training
materials on how ICE agents could distinguish counterfeits, ICE produced 24 guides provided to
ICE by various sports leagues and companies in the sports apparel industry, totaling 503 pages. Id.
at ¶ 20. None of the documents produced were responsive to request numbers 2(b)-(e) (guidance on
trademark-infringement defenses, the fair-use doctrine, and circuit-specific case law on trademark
infringement), 3, and 4. Id. at ¶ 15. The last of the five rolling productions occurred in April 2016.
Id. at ¶ 14. After it discovered that two of its field offices (Newark and San Antonio) had not yet
completed their searches, ICE made one additional production of 133 pages to Tushnet in June
2016. Fourth Pineiro Decl. ¶ 10. In total, then, ICE has produced 1,475 pages of text documents
and 3,197 photographs of seized items, along with a Vaughn index documenting its withholdings.
Pl.’s Reply Cross-MSJ (“Reply”) 2. ICE has partially redacted approximately 300 pages of the
industry guides on the grounds that the undisclosed material is protected law-enforcement material
under FOIA Exemption 7(E). See Third Pineiro Decl. ¶ 71. In addition, the agency originally
withheld eight pages from the industry guides in their entirety pursuant to FOIA Exemption 4, but it
has since released those documents with more limited redactions under Exemption 7(E). See
Fourth Pineiro Decl. ¶ 15.
During the course of the search, Tushnet expressed concerns about the adequacy of ICE’s
search methods. Pl’s SMF, Ex. 10. ICE clarified that its search was ongoing, but indicated that it
6
believed that several of the searches would be unduly burdensome. See id., Ex. 11. Tushnet
responded by offering to narrow the scope of the search. Id., Ex. 12 at 1. With respect to request 1,
Tushnet advised ICE that she sought only images and descriptions of items seized during the
months of January and December of 2012 through 2014 and any images and descriptions associated
with a list of 25 seizures reflected in the SEACATS summary table. See id. at 2. Likewise,
Tushnet sought only documents pertaining to sports apparel for request 2 and excluded from
requests 3 and 4 “any seizure case files that are not being reviewed in response to Request No. 1.”
Id. at 5. Tushnet estimated that the revised requests would result in a “narrowing of over 80% from
the original request.” Id. ICE nonetheless declined to change its search methodology to
accommodate the narrowed requests. See Pl.’s SMF, Ex. 13.
II. Legal Standard
FOIA requires that each “agency, upon any request for records which (i) reasonably
describes such records and (ii) is made in accordance with published rules ... shall make the records
promptly available to any person.” 5 U.S.C. § 552(a)(3)(A). To fulfill its disclosure obligations, an
agency must conduct a comprehensive search tailored to the request and release any responsive
material not protected by one of FOIA’s enumerated exemptions, see § 552(b). While an agency’s
search must be adequate, Congress did not intend “to reduce government agencies to full-time
investigators on behalf of requesters.” Judicial Watch v. Export-Import Bank, 108 F. Supp. 2d 19,
27 (D.D.C. 2000).
FOIA cases are appropriately resolved at summary judgment. See Brayton v. Office of U.S.
Trade Rep., 641 F.3d 521, 527 (D.C. Cir. 2011). Summary judgment can be awarded to the
government if “the agency proves that it has fully discharged its obligations under the FOIA, after
the underlying facts and inferences to be drawn from them are construed in the light most favorable
to the FOIA requester.” Gatore v. DHS, 177 F. Supp. 3d 46, 50 (D.D.C. 2016) (internal quotation
7
omitted). An agency must show “beyond material doubt that its search was reasonably calculated
to uncover all relevant documents.” Ancient Coin Collectors Guild v. U.S. Dep’t of State, 641 F.3d
504, 514 (D.C. Cir. 2011) (quoting Valencia-Lucena v. U.S. Coast Guard, 180 F.3d 321, 325 (D.C.
Cir. 1999)) (internal quotation marks omitted). A search is judged by the individual circumstances
of each case. See Truitt v. Dep’t of State, 897 F.2d 540, 542 (D.C. Cir. 1990). The central question
is whether the search itself was reasonable, regardless of the results. See Cunningham v. DOJ, 40
F. Supp. 3d 71, 83–84 (D.D.C. 2014). Agencies need not scour every file cabinet and electronic
database, but rather should conduct a “good faith, reasonable search of those systems of records
likely to possess requested records.” Id. (quoting SafeCard Servs., Inc. v. SEC, 926 F.2d 1197,
1201 (D.C. Cir. 1991)). Agency declarations, especially from individuals coordinating the search,
carry “a presumption of good faith, which cannot be rebutted by purely speculative claims about the
existence and discoverability of other documents.” SafeCard, 926 F.2d at 1200.
III. Discussion
Tushnet challenges both the adequacy of ICE’s search for responsive records and its
application of Exemption 7(E) in redacting pages of the industry guides used by agents to detect
counterfeit apparel.5 The Court turns to each challenge below.
A. Adequacy of the Search
For a search to be adequate, “the agency must show that it made a good faith effort to
conduct a search for the requested records, using methods which can be reasonably expected to
produce the information requested.” Campbell v. DOJ, 164 F.3d 20, 27 (D.C. Cir. 1998).
Adequacy is “generally determined not by the fruits of the search, but by the appropriateness of the
5
Initially, Tushnet also challenged ICE’s invocation of Exemption 4 to withhold parts of the
industry guides. But because ICE has since released the documents previously withheld under
Exemption 4, this issue is moot and need not be addressed here.
8
methods used to carry out the search,” which an agency can establish by presenting affidavits and
declarations that are submitted in good faith and are “relatively detailed and non-conclusory.”
Iturralde v. Comptroller of Currency, 315 F.3d 311, 315 (D.C. Cir. 2003). “An agency affidavit can
demonstrate reasonableness by ‘setting forth the search terms and the type of search performed, and
averring that all files likely to contain responsive materials (if such records exist) were searched.’”
Cunningham, 40 F. Supp. 3d at 83 (quoting Valencia–Lucena, 180 F.3d at 326). “An affiant who is
in charge of coordinating an agency’s document search efforts is the most appropriate person to
provide a comprehensive affidavit in FOIA litigation.” Id. at 84 (internal citation omitted). But a
plaintiff can rebut an agency declaration by raising “substantial doubt[s] as to the reasonableness of
the search, especially in light of ‘well-defined requests and positive indications of overlooked
materials.’” Cunningham, 40 F. Supp. 3d at 84 (quoting Founding Church of Scientology of
Washington, D.C. v. NSA, 610 F.2d 824, 837 (D.C. Cir. 1979)).
1. Pineiro Declarations
ICE supports the adequacy of its searches with a series of declarations from its Deputy
FOIA Officer, Fernando Pineiro. Mr. Pineiro avers that he is familiar with Tushnet’s request and
outlines ICE’s general process for responding to FOIA requests: The agency begins by reviewing
the request and identifying which of its program offices are likely to have responsive records.
ICE’s FOIA Office then contacts liaisons within the relevant offices and provides them with a copy
of the request, along with case-specific instructions if necessary. “Based on their experience and
knowledge of their program office practices and activities, [the liaisons] forward the request and
instructions to the individual employees or component offices within the program office that they
believe are reasonably likely to have responsive records, if any.” Third Pineiro Decl. ¶ 21. Any
potentially responsive records are then turned over to the central FOIA office for processing. Id.
Given ICE’s size and breadth, this approach aims to locate the individuals most familiar with the
9
subject-matter of the request and permits them to customize their searches based on the way the
particular office maintains its files. Id. at ¶¶ 22–26. As noted above, ICE followed this process
when responding to Tushnet’s request by delegating the search to the four ICE offices most likely
to have responsive records: the Office of Training and Development, the Principal Legal Advisor’s,
the Office of Public Affairs, and HSI. Id. at ¶ 27. Pineiro maintains that each office conducted a
search based “on [its] experience and knowledge of [its] . . . practices and activities[.]” Id. at ¶¶ 30,
33, 38, 42. Moreover, the declarations set out in detail the type of search each office performed
(manual or digital), the types of records searched (paper, email, shared drives, or databases), and the
search terms used, and they further assert that all locations reasonably likely to house relevant
documents were searched. See id. at ¶¶ 29–47. The granularity of detail provided by Mr. Pineiro’s
declarations is far from conclusory and, if unrebutted, sufficiently establishes the adequacy of ICE’s
search.
Tushnet attempts to rebut the presumption of good faith accorded to agency declarations by
pointing to a series of errors and inconsistencies found across Pineiro’s multiple declarations.
These errors include misstating the column headings contained in the agency’s Vaughn index, the
number of pages ICE produced by a certain date (2,749 as opposed to 2,784), and the dates ICE’s
FOIA Office tasked different offices with performing searches. Pl.’s Reply 3–4. Tushnet also
points out that ICE initially failed to document the searches conducted by two of its 26 field offices
or release responsive material they might have uncovered. See id. Although misstatements in an
agency’s FOIA response can portend an inadequate search, “[m]istakes alone do not imply bad
faith.” Leopold v. DOJ, 130 F. Supp. 3d 32, 42 (D.D.C. 2015) (citing Fischer v. DOJ, 723 F. Supp.
2d 104, 109 (D.D.C. 2010)). ICE is a complex organization and this particular request involved
multiple parts, rolling productions, and coordinated searches across approximately 30 offices. A
handful of inconsistencies is, therefore, unsurprising. Moreover, when notified that it had not
10
included the searches performed by two field offices, ICE’s counsel stated at oral argument that the
agency promptly rectified its mistake by reaching out to the Newark and San Antonio offices and
producing additional records, which it described in a supplemental affidavit. See Fourth Pineiro
Decl. ¶ 10. “[An] agency’s cooperative behavior of notifying the court and plaintiff that it had
discovered a mistake, if anything, shows good faith.” Leopold, 130 F. Supp. 3d at 42 (internal
quotation omitted). Accordingly, the Court finds that the Pineiro declarations remain entitled to a
presumption of good faith.
2. Reasonableness of Search
Tushnet also argues that “positive indications of overlooked materials” undermine the
reasonableness of ICE’s search. The Court considers each of these “indications” below.
i. Internal Training Guides
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. Pl.’s
Reply 7. 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. Apart from Tushnet’s unsupported claims to the contrary, then, she has not offered any
evidence that ICE has internal training guides that it failed to disclose or that the searches
conducted by its training and development office were not reasonably calculated to uncover
responsive documents. If anything, the fact that the agency’s searches uncovered private industry
guides on identifying counterfeits validates that the search terms they used adequately captured the
substance of the FOIA request. Therefore, Tushnet’s “[m]ere speculation that as yet uncovered
11
documents may exist does not undermine the finding that the agency conducted a reasonable search
for them.” SafeCard, 92 F.2d at 1201 (quoting Weisberg v. DOJ, 745 F.2d 1476, 1486–87 (D.C.
Cir. 1984). Accordingly, the Court concludes that ICE has established the adequacy of its search
for training and guidance documents.
ii. The TECS Database
Tushnet’s next argument centers on ICE’s failure to search the investigative TECS case
management system for more detailed descriptions of the seized items catalogued in the SEACATS
database. Second Pineiro Decl. ¶ 11. Pineiro avers that there are 1,085 TECS case files associated
with the 5,564 seizures recorded in SEACATS, and that the files generally contain “reports of
investigation . . . and other records related to an investigation.” Id. at ¶¶ 12–13. Without discussing
whether these reports would contain additional item descriptions, Pineiro implies that TECS was
not searched because it would be unduly burdensome for the agency to manually review these files
for responsive documents. See id. at ¶¶ 13–14. Months later, however, ICE claimed that the reason
it did not search TECS was because all locations reasonably likely to uncover relevant descriptions
had already been searched. Def.’s Reply MSJ (“Reply”) 10–11.
The Court is not persuaded by either justification offered by ICE for not searching the TECS
system. As for burdensomeness, Tushnet offered to narrow the scope of her request to 25 specific
seizures listed in SEACATS as well as all seizures made in December or January. According to
Tushnet, this would have reduced the volume of materials for ICE to review by roughly 80%. ICE
insists that it was under no obligation to accept the offer in the first place because it “occurred only
after ICE had conducted the search” and therefore had no bearing on its reasonableness. Id. at 11.
But the record says otherwise. Tushnet made her offer in October 2015. See Pl.’s Cross-MSJ, Ex.
12. ICE did not contact many of the offices that would be searching for documents until a month
later. See Fourth Pineiro Decl. ¶ 8 (ICE tasked field offices with searching for responsive records
12
on November 10, 2015). And ICE admits that it was willing to accept Tushnet’s offer as part of its
settlement negotiations, which implies that the narrowed search would not be unduly burdensome.
ICE therefore has failed to support its burdensomeness objection.
As to ICE’s assertion that the TECS system is unlikely to contain additional responsive
records, the agency has not explained why a full-length investigation report would not contain a
more detailed description of seized items than a 40-character database summary. The Court is
therefore left unconvinced by the agency’s conclusory justification for not searching for records
stored in the TECS system. Because ICE “cannot limit its search to only one record system if there
are others that are likely to turn up the information requested[,]” Campbell, 164 F.3d at 28, the
Court will deny ICE’s motion for summary judgment on this issue and order ICE to review the
TECS case files associated with the limited list of seizures that Tushnet has specified.6 ICE shall,
within 60 days, either release any responsive material or renew its summary judgment motion with
respect to the TECS search along with a supplemental declaration justifying its position.
iii. Field Office Search Terms
Tushnet also challenges the adequacy of ICE’s search on the grounds that widely varying
search terms were used across the twenty-six field offices tasked with searching for responsive
records. Agencies generally have “discretion in crafting a list of search terms” as long as they are
“reasonably tailored to uncover documents responsive to the FOIA request.” Bigwood v. DOD,
132 F. Supp. 3d 124, 140–41 (D.D.C. 2015) (quoting Agility Public Warehousing Co. K.S.C. v.
NSA, 113 F. Supp. 3d 313, 339 (D.D.C. 2015)) (internal quotation marks omitted). “Where the
agency’s search terms are reasonable, the Court will not second guess the agency regarding whether
6
There appears to be some dispute as to whether the TECS system contains photographs of
seized apparel. To the extent it does, reviewing the TECS system might alleviate Tushnet’s
concern that ICE’s search failed to reveal a sufficient number of photographs.
13
other search terms might have been superior.” Liberation Newspaper v. Dep’t of State, 80 F. Supp.
3d 137, 146 (D.D.C. 2015).
Here, ICE apparently presented its twenty-six field offices with Tushnet’s FOIA request and
no further instructions, giving them full discretion to search their records “based on their
operational knowledge and subject matter expertise[.]” Def.’s SMF ¶ 16. The result was widely
divergent searches, with several offices using one or two search terms and others conducting more
comprehensive searches using 15 or more terms. See Third Pineiro Decl. ¶ 46 (reporting that the
New York office used a single search term, the Miami office did not specify which or how many
search terms it used, and the Houston office used twenty four). After comparing the terms used by
these offices with Tushnet’s FOIA request, the Court finds the selection of terms by many of the
field offices to be facially lacking, with some not even including terms explicitly called out in
Tushnet’s request. Compare id. (New York only searched records for “counterfeit goods”) with
FOIA Request 2 (“All records that use the words “disparagement,” “parody,” “distortion,” or
“tarnishment,” . . . in connection with trademark rights holders’ requests[.]”). And ICE’s
declarations fall short of explaining why such disparate searches were reasonable for particular
offices. The Court is left wondering, for example, why the Boston Office’s choice to query its
electronic files using solely the terms “counterfeit” and “IPR” was “reasonably tailored” to uncover
documents responsive to all parts of Tushnet’s request. Or why field offices with seemingly similar
law enforcement responsibilities and activities would store records so differently that there would
be little consistency among their searches. ICE’s claim of “subject matter expertise” alone cannot
resolve these questions. While FOIA might not require complete uniformity, it does require
reasonable explanations for the scope of agency-wide searches. The wide and unexplained
variances in the field offices’ search parameters fall short of this standard. The Court will therefore
order ICE to re-evaluate the searches conducted by its field offices, determine which were
14
inadequate in light of the discussion above, and provide those offices with additional guidance to
conduct further searches.7 Within 60 days, ICE shall either release any newly uncovered responsive
material or renew its summary judgment motion with respect to this issue.
B. Application of Exemption 7(E)
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.”
5 U.S.C. § 552(b)(7)(E). “Satisfying the exemption is a ‘relatively low bar’ in this Circuit.”
Bigwood, 132 F. Supp. 3d at 152 (quoting Blackwell v. FBI, 646 F.3d 37, 42 (D.C. Cir. 2011)).
“An agency need only demonstrate logically how the release of the requested information [may]
create” a risk of circumvention. Id. And “where an agency specializes in law enforcement, its
decision to invoke [E]xemption 7 is entitled to deference.” Barnard v. Dep’t of Homeland Sec., 598
F. Supp. 2d 1, 14 (D.D.C. 2009) (quoting Campbell, 164 F.3d at 32).
Invoking Exemption 7(E), ICE redacted over 300 of the 521 pages of the industry guides it
released to Tushnet in response to part 2 of her request. See Third Pineiro Decl., Ex 12 (“Vaughn
Index”) Entry Nos. 4–8, 10–12, 19, 21–22, 25–28, 33, 35–37, and 39–43; see also Fourth Pineiro
Decl. ¶ 17. ICE made the redactions on the grounds that the guides “were created specifically for
the purpose of assisting law enforcement in the identification of counterfeit clothing items [by] . . .
describ[ing] in detail through photographs, diagrams and descriptions, the features included in
authentic authorized merchandise that indicate whether products are authentic.” Third Pineiro Decl.
7
Enhancing the consistency of the field office searches might also resolve Tushnet’s
concerns around the relatively low number of photographs and documents produced in response to
parts 2(b)-4 of her request.
15
¶ 71. Therefore, according to the agency, “[d]isclosure of this information, which is not readily
known by the public, could reasonably be expected to allow persons to circumvent the law and
avoid detection of the sale of counterfeit merchandise by concealing the features that indicate
products are counterfeit or attempting to imitate product features that indicate authenticity.” Id. On
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.
Tushnet nonetheless raises four objections to ICE’s justification of the exemption: (1) ICE’s
use of a general, categorical description in its Vaughn index to describe the 7(E) redactions are
inappropriate;8 (2) the redacted information is already known to the public; (3) the guides are not
internal agency materials and therefore are not protected by 7(E); and (4) there is no legitimate law
enforcement purpose in detecting non-counterfeit goods. See Pl.’s Reply 12–17.
To Tushnet’s first point, courts “have never required repetitive, detailed explanations for
each piece of withheld information—that is, codes and categories may be sufficiently particularized
to carry the agency’s burden of proof.” Judicial Watch, Inc. v. Food & Drug Admin., 449 F.3d 141,
147 (D.C. Cir. 2006) (internal citation omitted). “Especially where the agency has disclosed and
withheld a large number of documents, categorization and repetition provide efficient vehicles by
which a court can review withholdings that implicate the same exemption for similar reasons.” Id.
The Court finds that ICE has met its burden here. ICE’s Vaughn index clearly identifies the
8
Tushnet specifically challenges ICE’s use of the following statement when describing
redactions in training guides: “The withheld information includes depictions and descriptions
related to stitching, labeling, tagging, application of holograms, packaging, serial numbers, team
and league logos, and brand logos that assist law enforcement in identifying counterfeit
merchandise.” See generally Vaughn index.
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redacted record, the exemption applied, the type of document at issue, the types of redactions made,
and the underlying justification. See Vaughn Index. Although the descriptions do not specify what
particular feature (e.g., stitching, holograms, serial numbers, or spelling) is discussed in each
redaction, they provide enough information for the Court “to identify the records referenced and
understand the basic reasoning behind the claimed exemptions[,]” which is all that is required.
Morley v. C.I.A., 508 F.3d 1108, 1123 (D.C. Cir. 2007).
Second, Tushnet contends that the exemption cannot apply to information already available
to the public, pointing specifically to images of authentic jerseys, which are obviously visible to the
public in stores and online. While this may be true, “[t]here is no principle of which the Court is
aware that requires an agency to release all details concerning . . . [law enforcement techniques]
simply because some aspects of them are known to the public.” Barnard, 598 F. Supp. 2d at 23.
One could imagine ICE reasoning, for instance, that revealing a publicly available image along with
a discussion of the features that distinguish authentic apparel from counterfeits would specifically
highlight information to a black market manufacturer that an ordinary consumer might not notice.
And given ICE’s law enforcement expertise, its judgment on this issue is entitled to deference. See
Am. Immigration Council v. U.S. Dep’t of Homeland Sec., 950 F. Supp. 2d 221, 245 (D.D.C. 2013)
(“ICE is an agency specializing in law enforcement, and, consequently, its decision to invoke
Exemption 7(E) is entitled to a measure of deference.”). The Court likewise finds Tushnet’s third
objection unavailing because ICE has plainly stated that the industry guides were “created
specifically for the purpose of assisting law enforcement in the identification of counterfeit clothing
items,” which clearly qualifies them as “guidelines for law enforcement investigations” under
Exemption 7(E) regardless of whether they were created by the agency itself. 5 U.S.C.
§ 552(b)(7)(E).
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Tushnet’s final objection fares better. Returning to the genesis of her request, she 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. Pl.’s
Reply 14–15. 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. Id. The use of the Flyers logo is lawful,
according to Tushnet, “because there is no confusion as to whether the Flyers sponsored the shirt.”
Id. at 15. 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. Id. 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, see Am. Immigration
Council, 950 F. Supp. 2d at 245; Campbell, 164 F.3d at 32, and successful parodies do not violate
trademark laws.
To prove trademark infringement, the trademark owner must show “(1) that it owns a valid
and protectable mark; (2) that [the alleged infringer] uses a ‘re-production, counterfeit, copy, or
colorable imitation’ of that mark in commerce and without [the trademark holder’s] consent; and
(3) that [the alleged infringer’s] use is likely to cause confusion.” Haute Diggity Dog, 507 F.3d at
259 (quoting 15 U.S.C. § 1114(1)(a)). A parody, on the other hand, “relies upon a difference from
the original mark, presumably a humorous difference, in order to produce its desired effect.”
Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987). Therefore, a
successful parody—one that is not likely to be confused for the trademark it parodies—would not
violate a trademark holder’s rights. See id. Given the evidence Tushnet has produced and the
agency’s apparently exclusive reliance on industry guidance to discern trademark infringement, the
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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. The Court will, accordingly, deny
both motions for summary judgment on this issue and order ICE, within 60 days, to review its
redactions in light of this ruling, release to Professor Tushnet any materials that it deems no longer
protected by Exemption 7(E), and/or renew its summary judgment motion with respect to the
redactions it continues to maintain.
IV. Conclusion
For the foregoing reasons, the Court will deny ICE’s motion for summary judgment in its
entirety and reserve judgment in part and deny in part Tushnet’s cross-motion for summary
judgment. An Order accompanies this Memorandum Opinion.
CHRISTOPHER R. COOPER
United States District Judge
Date: March 31, 2017
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