Opinion · Court of Appeals for the Tenth Circuit

Cardtoons, L.C., an Oklahoma Limited Liability Company v. Major League Baseball Players Association, an Unincorporated Association

Cardtoons, L.C., an Okla. Ltd. Liab. Co. v. Major League Baseball Players Ass’n, an Unincorporated Ass’n, 208 F.3d 885 (10th Cir. 2000)

Type
Opinion
Court
Court of Appeals for the Tenth Circuit
Jurisdiction
Federal
Date
2000-04-07
Topic
general

holding that immunity does not protect “prelitigation threats communicated solely between private parties” | "To the extent that Supreme Court precedent can be read to extend Noerr—Pennington outside of the antitrust context, it does so solely on the basis of the right to petition." | “[I]t is more appropriate to refer to immunity as Noerr-Pennington immunity only when applied to antitrust claims. In all other contexts . . . such immunity derives from the right to petition.” | communications between private parties are not protected

Citator

Cited by
26 opinions
CARDTOONS v. MAJOR LEAGUE BASEBALL PLAYERS,208 F.3d 885(10th Cir. 2000)
CARDTOONS, L.C., an Oklahoma Limited Liability Company, Plaintiff-Appellant,
v. MAJOR LEAGUE BASEBALL PLAYERS ASSOCIATION, an unincorporated
association, Defendant-Appellee.
No. 98-5061.
United States Court of Appeals, Tenth Circuit.
Filed April 7, 2000.
On Rehearing En Banc Appeal from the United States District Court for the Northern District of Oklahoma (D.C. No. CV-93-576-E)Page 886
James W. Tilly (and Craig A. Fitzgerald, with him on the briefs), Tilly Fitzgerald, Tulsa, Oklahoma, for Plaintiff-Appellant.

Russell S. Jones, Jr. (and William E. Quirk, Shughart, Thomson Kilroy, P.C., Kansas City, Missouri, and James W. Weger, Jones, Givens, Gotcher Bogan, Tulsa, Oklahoma, with him on the briefs), for Defendant-Appellee.
BeforeSEYMOUR, Chief Judge,TACHA,BALDOCK,BRORBY,EBEL,KELLY,HENRY,BRISCOE,LUCERO, andMURPHY, Circuit Judges.
KELLY, Circuit Judge.
[1] This case requires us to determine whether threats of litigation between purely private parties in a non-antitrust setting are immunized from liability under theNoerr-Penningtondoctrine or under the right to petition clause of theFirstAmendment. Because purely private threats do not constitute a petition to the government, we hold that they are not constitutionally protected.
Background
[2] The facts are undisputed. In 1992, Cardtoons, L.C. ("Cardtoons"), an Oklahoma limited liability company, took steps to produce parody baseball trading cards which contained the images of major league baseball players. After the cards were designed, Cardtoons contracted with Champs Marketing, Inc. ("Champs"), an Ohio corporation, to print the cards for a set fee.

[3] Major League Baseball Players Association ("MLBPA") is the exclusive collective bargaining agent for all active major league baseball players and is responsible for enforcing the publicity rights of the players. In a June 18, 1993 letter to Cardtoons ("Cardtoons letter"), the MLBPA claimed that by producing and selling the cards, Cardtoons was "violat[ing] the valuable property rights of MLBPA and the players." I R. at 8. The MLBPA threatened to "pursue its full legal remedies to enforce its rights" if Cardtoons did not immediately cease production of the cards.Id. at 9.

[4] On the same date, the MLBPA also sent a similar cease and desist letter to Champs (the Champs letter). It is this letter that is the source of the present controversy. In pertinent part, it stated:
We understand that you have and are in the process of printing color drawings of active Major League baseball players in baseball trading cards for individuals associated with Cardtoons. This is to notify you that we believe that the activities of those individuals violate the valuable property rights of publicity of the MLBPA and the players themselves. Further, we believe that by printing the baseball trading cards at the request ofPage 887Cardtoons, you are participating in Cardtoons' illegal activities.
Accordingly, we request that youimmediatelycease and desist the printing of baseball trading cards of active Major League baseball players at the request of Cardtoons or others who are not authorized to use the likeness of active Major League baseball players.
If I do not hear from you immediately confirming that you will agree to this request, I will have no alternative but to take all necessary action to enforce the rights of the players and the MLBPA against infringement of their rights.


[5]Id. at 10, 10A. Upon receiving the letter, Champs informed Cardtoons that it intended to stop printing the cards.

[6] On June 22, 1993, Cardtoons filed suit in federal district court seeking a declaratory judgment that its cards did not violate MLBPA's publicity rights and also seeking damages based on alleged tortious interference with the Champs contract. MLBPA moved to dismiss for lack of subject matter jurisdiction and filed counterclaims seeking declaratory and injunctive relief, as well as damages for violation of its publicity rights. The court bifurcated the proceedings to first resolve Cardtoons' declaratory judgment request, finding that the damages issues were dependent upon the legality of the parody cards.

[7] The district court initially adopted a magistrate judge's recommendations and ruled in favor of the MLBPA.SeeCardtoons,L.C. v. Major League Baseball Players Ass'n,838 F. Supp. 1501(N.D.Okla. 1993). However, following the Supreme Court's decision inCampbell v. Acuff-Rose Music, Inc.,510 U.S. 569(1994), the district court concluded that the parody cards were protected under theFirstAmendment. Accordingly, the court vacated its initial decision and entered judgment in favor of Cardtoons.SeeCardtoons, L.C. v. Major League Baseball Players Ass'n,868 F. Supp. 1266(N.D.Okla. 1994) ("Cardtoons I"). This court affirmed on appeal, determining that the cards were "an important form of entertainment and social commentary that deserveFirstAmendment protection."Cardtoons, L.C. v. Major League Baseball PlayersAss'n,95 F.3d 959,976(10th Cir. 1996) ("Cardtoons II").

[8] Cardtoons returned to the district court to pursue its damages claims against the MLBPA. The court allowed Cardtoons to amend its complaint and assert new claims for prima facie tort, libel and negligence. All of Cardtoons' claims stemmed from the allegations contained in the Champs letter. The district court concluded that the MLBPA was immune from liability under theNoerr-Penningtondoctrine and entered summary judgment for MLBPA on all of Cardtoons' claims.Cardtoons, L.C. v. Major League BaseballPlayers Ass'n, No. 93-C-576-E (N.D.Okla. Mar. 12, 1998) ("Cardtoons III").

[9] On appeal, a panel of this court upheld the grant of summary judgment.Cardtoons, L.C. v. Major League Baseball Players Ass'n,182 F.3d 1132(10th Cir. 1999) ("Cardtoons IV"). The panel majority determined that theNoerr-Penningtondoctrine applies apart from its roots in antitrust. In determining whether immunity for writing the letters was appropriate, the panel majority focused on the two part test enunciated inProfessional RealEstate Investors, Inc. v. Columbia Pictures, Inc.,508 U.S. 49,60-61(1993) ("PRE").

[10] In critical part, the panel majority held thatNoerr-Penningtonimmunity covered threats of litigation as well as the actual litigation itself. "We adopt the legal and policy rationales that have informed other circuits' extension ofNoerr-Penningtonimmunity to prelitigation threats, and hold that whether or not they are consummated, such threats enjoy the same level of protection from liability as litigation itself."Cardtoons IV,182 F.3d at 1137. The panel majority went on to hold that the MLBPA had probable cause to threatenPage 888the lawsuit against Champs, thus satisfying thePREtest. "Accordingly, the Champs letter enjoyedNoerr-Penningtonimmunity as a threat of litigation."Cardtoons IV,182 F.3d at 1139.

[11] In dissent, Judge Ebel questioned whetherNoerr-Penningtonimmunity should be extended to cover purely private threats. Rather than apply the two-partPREtest designed for litigation, Judge Ebel espoused a three part test for threats of litigation. A party seekingNoerr-Penningtonimmunity must show that the threat was (1) made in good faith; (2) was objectively reasonable; and (3) was a "proximate prologue to actual or imminent litigation."Cardtoons IV,182 F.3d at 1142(Ebel, J., dissenting).

[12] Cardtoons sought rehearing en banc, arguing that the panel majority misapplied theNoerr-Penningtondoctrine, and the case should be governed solely by theFirstAmendment right to petition. In particular, it pointed to the decisions inMcDonaldv. Smith,472 U.S. 479(1985) andMartin v. City of Del City,179 F.3d 882(10th Cir. 1999) as contrary to the panel opinion. We granted rehearing en banc. For the reasons stated below, we reverse the panel and remand.

[13] I.Noerr-Pennington Immunity

[14] TheNoerr-Penningtondoctrine was first recognized in two antitrust cases:Eastern R.R. Presidents Conference v. Noerr MotorFreight, Inc.,365 U.S. 127(1961) andUnited Mine Workers v.Pennington,381 U.S. 657(1965). The present case does not involve antitrust claims, and therefore, we must first address the applicability ofNoerr-Penningtonoutside the antitrust context.1

[15]Noerrinvolved an extensive publicity campaign by the railroad industry aimed at changing state law to place various restrictions on trucking in the long-distance freight business. The trucking industry brought suit in antitrust, alleging violations of §§ 1 and 2 of the Sherman Act. The Court held that the railroads were immune from suit because "the Sherman Act does not apply to the activities of the railroads at least insofar as those activities comprised mere solicitation of governmental action with respect to the passage and enforcement of laws."Noerr,365 U.S. at 138.2

[16] This immunity was based upon two grounds.SeeCity of Lafayette v.Louisiana Power Light Co.,435 U.S. 389,399(1978) (noting the "two correlative principles" on whichNoerrimmunity was established);see alsoCalifornia Motor Transport Co. v. TruckingUnlimited,404 U.S. 508,510(1972). The first was a statutory interpretation of the Sherman Act.
To hold that the government retains the power to act in [a] representative capacity and yet hold, at the same time, that the people cannot freely inform the government of their wishes would impute to the Sherman Act a purpose to regulate, not business activity, but political activity, a purpose which would have no basis whatever in the legislative history of that Act.


[17]Noerr,365 U.S. at 137. The second basis for immunity was predicated on theFirstAmendment right to petition.
Secondly, and of at least equal significance, such a construction of the ShermanPage 889Act would raise important constitutional questions. The right of petition is one of the freedoms protected by the Bill of Rights, and we cannot, of course, lightly impute to Congress an intent to invade these freedoms.


[18]Id. at 137-38. The Court has referred to these two prongs as "[i]nterpreting the Sherman Act in the light of theFirstAmendment's Petition Clause."Federal Trade Comm'n v. Superior Ct.Trial Law. Ass'n,493 U.S. 411,424(1990).

[19] The logical dilemma in applyingNoerr-Penningtonoutside of the antitrust context is thatNoerr'sfirst rationale for immunity — an interpretation of the Sherman Act — is not present. Supreme Court precedent gives us scant guidance in resolving this issue. All of the cases in which the Supreme Court has appliedNoerr-Penningtonimmunity as such have involved antitrust claims.Seee.g.PRE,508 U.S. at 52;City of Columbia v. Omni OutdoorAdvertising,499 U.S. 365,369(1991);Superior Ct. Trial Law.Ass'n,493 U.S. at 422;Allied Tube Conduit Corp. v. IndianHead, Inc.,486 U.S. 492,497(1988);Pennington,381 U.S. at 659;Noerr,365 U.S. at 129.

[20] To the extent that Supreme Court precedent can be read to extendNoerr-Penningtonoutside of the antitrust context, it does so solely on the basis of the right to petition.SeeBill Johnson'sRestaurants, Inc. v. NLRB,461 U.S. 731,742-43(1983) (immunizing employer's law suit from NLRB injunction under the right to petition);NAACP v. Claiborne Hardware,458 U.S. 886,913-14(1982) (grantingFirstAmendment immunity to a nonviolent business boycott seeking to vindicate economic and equal rights).See alsoPRE,508 U.S. at 59(noting that the Court has "invok[edNoerr] in other contexts" and has referenced it "by analogy").But seeOmniOutdoor Advertising,499 U.S. at 384(grantingNoerrimmunity to federal antitrust claims but permitting liability under state law "trade libel" and other claims based on the same underlying conduct).

[21] The circuits have followed suit, eliminating the Sherman Act rationale outside of antitrust and focusing solely on the petition clause. For instance, the Third Circuit inWE, Inc. v. City ofPhiladelphia,174 F.3d 322,326-27(3d Cir. 1999) stated: "This court, along with other courts, has by analogy extended theNoerr-Penningtondoctrine to offer protection to citizens' petitioning activities in contexts outside the antitrust area as well. . . . [T]he purpose ofNoerr-Penningtonas applied in areas outside the antitrust field is the protection of the right to petition." The Fifth Circuit has noted that "[a]lthough theNoerr-Penningtondoctrine initially arose in the antitrust field, other circuits have expanded it to protectfirstamendment petitioning of the government from claims brought under federal and state laws. . . ."Video Int'l Production, Inc. v.Warner-Amex Cable Communications, Inc.,858 F.2d 1075,1084(5th Cir. 1988).3

[22] While we do not question the application of the right to petition outside of antitrust, it is a bit of a misnomer to refer to it as theNoerr-Penningtondoctrine; a doctrine which was based ontworationales. In our view, it is more appropriate to refer to immunity asNoerr-Penningtonimmunity only when applied to antitrust claims.4In all other contexts,Page 890including the present one, such immunity derives from the right to petition.

[23] This distinction is not completely academic. Antitrust cases that grantNoerr-Penningtonimmunity do so based uponboththe Sherman Act and the right to petition. These precedents, founded in part upon a construction of the Sherman Act, are not completely interchangeable with cases based solely upon the right to petition.

[24] The Fifth Circuit antitrust decision inCoastal States Marketing,Inc. v. Hunt,694 F.2d 1358(5th Cir. 1983) is a classic example of the difficulties which can arise if this distinction is not made. MLBPA relies heavily upon this case for the proposition thatNoerr-Penningtonimmunity extends to prelitigation threats of suit. InCoastal States, the plaintiff argued that defendants' threats to litigate could not be immunized underNoerr. "[B]ecause threats of litigation are not directed to a government, they do not fall within the rationale of petitioning immunity."CoastalStates,694 F.2d at 1367. The Fifth Circuit rejected this argument.
Given that petitioning immunity protects joint litigation, it would be absurd to hold that it does not protect those acts reasonably and normally attendant upon effective litigation. The litigator should not be protected only when he strikes without warning. If litigation is in good faith, a token of that sincerity is a warning that it will be commenced and a possible effort to compromise the dispute.


[25]Id.

[26] If we were to refer to immunity based solely on the right to petition asNoerr-Penningtonimmunity, it would be very tempting to applyCoastal Statesin the present case. To do so, however, would be inappropriate. First,Coastal Statesrejected the right to petition as a basis forNoerr. "Noerrwas based on a construction of the Sherman Act. It was not afirstamendment decision."Coastal States,694 F.2d at 1364-65(footnote omitted). Second, and even more instructive, the Fifth Circuit specifically noted that its use of the term "petitioning immunity" wentbeyondthe guarantees of the petition clause. "We reject the notion that petitioning immunity extends only so far as thefirstamendment right to petition and then ends abruptly."Id. at 1366.Page 891

[27]Coastal States' grant of immunity to prelitigation threats was not based on the right to petition and, therefore, does not inform our decision in the present non-antitrust case.5This is not to intimate that right to petition principles can never be drawn fromNoerr-Penningtonantitrust cases. Rather, it is merely a precautionary distinction designed to avoid drawing constitutional principles from propositions founded upon statutory construction.

[28] II.Right to Petition

[29] We must now determine whether prelitigation threats communicated solely between private parties are afforded immunity from suit by the right to petition guaranteed by theFirstAmendment. We hold that they are not.

[30] TheFirstAmendment states: "Congress shall make no law respecting . . . the right of the people . . . to petition the Government for a redress of grievances." The right to petition "is implicit in `[t]he very idea of government, republican in form.'"McDonald v. Smith,472 U.S. 479,482(1985) (quotingUnitedStates v. Cruikshank,92 U.S. 542,552(1876)). "Certainly the right to petition extends to all departments of the Government. The right of access to the courts is indeed but one aspect of the right of petition."California Motor,404 U.S. at 510;seealsoCity of Del City,179 F.3d at 887.

[31] However, the right to petition is not an absolute protection from liability. InMcDonald, petitioner wrote a letter to President Reagan accusing respondent of fraud, blackmail, extortion, and the violation of various individuals' civil rights. Respondent was being considered for the position of United States Attorney but was not appointed. He brought a libel suit against petitioner, who claimed that the right to petition gave him absolute immunity in his statements to the president. The Supreme Court disagreed.
To accept petitioner's claim of absolute immunity would elevate the Petition Clause to specialFirstAmendment status. The Petition Clause, however, was inspired by the same ideals of liberty and democracy that gave us the freedoms to speak, publish, and assemble. TheseFirstAmendment rights are inseparable, and there is no sound basis for granting greater constitutional protection to statements made in a petition to the President than otherFirstAmendment expressions.


[32]McDonald,472 U.S. at 485(citations omitted). The Court affirmed the lower courts in allowing the libel action to proceed. "The right to petition is guaranteed; the right to commit libel with impunity is not."Id.See alsoCity of Del City,179 F.3d at 889(holding that right to petition is not absolute, and in state employment context, employee must demonstrate that petition for which he was fired involved matter of public concern).

[33] If MLBPA were being sued for libelous statements made in a litigation document filed with the court,McDonaldwould clearly allow the libel suit to continue as a matter of constitutional law.CompareRestatement (Second) of Torts § 587 (1977) ("A party to a private litigation . . . is absolutely privileged to publish defamatory matter concerning another in communications preliminary to a proposed judicial proceeding, or in the institution of or during the course and as a part of, a judicial proceeding in which he participates, if the matter has some relation to the proceeding."). Likewise, statements made in aPage 892letter threatening litigation are not absolutely protected by the petition clause of theFirstAmendment and are subject to the principles of state common law and state statutory law.

[34] However, even in the context of Cardtoons non-libel claims, it is clear that the right to petition simply does not grant MLBPA immunity from suit. The plain language of theFirstAmendment protects only those petitions which are made to "the Government."6As Judge Ebel noted in his dissent to the panel opinion:
The MLBPA's cease-and-desist letter to Champs threatening suit was never sent to the government; did not ask the government for any response or `redress of grievances'; was not even known to the government prior to Cardtoons' declaratory judgment action against the MLBPA; and did not ever result in any litigation.


[35]Cardtoons IV,182 F.3d at 1141. A letter from one private party to another private party simply does not implicate the right to petition, regardless of what the letter threatens. Even the antitrust text cited by the panel majority notes that "a mere threat directed at one's competitor to sue or to seek administrative relief does not involve or `petition' the government. . . ." Philip E. Areeda Herbert Hovenkamp,Antitrust Law, § 205e at 237.See alsoRodime PLC v. SeagateTechnology, Inc.,174 F.3d 1294,1307(Fed. Cir. 1999) (noting that meetings at which defendant persuaded potential licensees to end license negotiations with the plaintiff "had nothing to do with petitioning the government.").

[36] MLBPA asserts that the decisions of other circuits are to the contrary.SeeGlass Equip. Dev., Inc. v. Besten, Inc.,174 F.3d 1337(Fed. Cir. 1999);McGuire Oil Co. v. Mapco, Inc.,958 F.2d 1552(11th Cir. 1992);CVD, Inc. v. Raytheon Co.,769 F.2d 842(1st Cir. 1985);Coastal States Mktg., Inc. v. Hunt,694 F.2d 1358(5th Cir. 1983). These cases are distinguishable. First,CVDmerely held that "the threat of unfounded trade secrets litigation in bad faith is sufficient to constitute a cause of action under the antitrust laws, provided that the other essential elements of a violation are proven."769 F.2d at 851. We do not agree with MLBPA that the First Circuit thereby implied that good faith threats are immunized byNoerr-Pennington.

[37] Second, and most importantly, all four cases arise in the antitrust context. As discussed earlier, bothCoastal StatesandMcGuire Oilgrant immunity to prelitigation threats under a construction of the Sherman Act, not the right to petition. NeitherGlass Equip. Dev.norCVDeven mention the right to petition. AlthoughGlass Equip. Dev.does appear to treat both "actual or threatened infringement suits" the same for purposes ofNoerr-Penningtonimmunity,174 F.3d at 1344, we reject it, as well as the other three cases, to the extent they imply that the mere threat of suit between private parties constitutes a petition to the government.

[38] The Supreme Court's decision inAllied Tube Conduit Corp. v.Indian Head, Inc.,486 U.S. 492(1988) also lends support to our conclusion.7That case involved the National Fire Protection Association (NFPA), a private, voluntary organization which publishes the National Electrical Code. "Revised every three years, the Code is the most influential electrical code in the nation. A substantial number of state and local governments routinelyPage 893adopt the Code into law with little or no change."486 U.S. at 495. Changes in the Code could be approved by a simple majority vote of the members present at the NFPA's annual meeting. Respondent proposed amending the Code to include polyvinyl chloride conduit as an approved type of electrical conduit. Petitioner, the Nation's largest producer of steel conduit, feared that such approval would harm its business. It recruited over 150 people to attend the NFPA meeting and vote against the new proposal. Polyvinyl chloride conduit was rejected by a mere four votes, and respondent brought suit alleging violation of the Sherman Act.

[39] Petitioner argued that it was immune from suit underNoerr-Pennington. The Court disagreed. "In this case, the restraint of trade on which liability was predicated was the Association's exclusion of respondent's product from the Code, and no damages were imposed for the incorporation of that Code by any government."Allied Tube,486 U.S. at 500.
Here petitioner's actions took place within the context of the standard-setting process of a private association. Having concluded that the Association is not a `quasi-legislative' body, we reject petitioner's argument that any efforts to influence the Association must be treated as efforts to influence a `quasi-legislature' and given the same wide berth accorded legislative lobbying.


[40]Id. at 504. The Court specifically noted that communications with a private organization "did not take place in the open political arena, where partisanship is the hallmark of decision making."Id. at 506. Without a petition to the government, "[t]he issue of immunity in this case thus collapses into the issue of antitrust liability."Id. at 509.

[41] The present case is similar in many respects. MLBPA communicated with Champs in order to further its own business interests. Its efforts were successful when Champs refused to print the parody cards. Cardtoons brought suit alleging various violations of the law based upon MLBPA's action. MLBPA raisedNoerr-Penningtonas a defense. We hold, to paraphraseAllied Tube, that because there was no petition of the government in the present case, the issue of immunity collapses into the issue of state law liability.8

[42] While there are many persuasive policy arguments in favor of granting immunity to private threats of litigation, these do not override the clear language of theFirstAmendment. Such arguments are best addressed to the state legislative bodies which can craft state law accordingly.Seee.g.Gary,supranote 3, at 73-77 (noting that state common law typically shields certain litigation activity from defamation and tortious interference suits).

[43] In summary, we hold that when the basis for immunity is the right to petition, purely private threats of litigation are not protected because there is no petition addressed to the government.

[44] REVERSED and REMANDED.
[50]LUCERO, Circuit Judge, with whomBRORBYandBRISCOE, Circuit Judges, join, dissenting.
[51] I cannot agree with the majority's proposition that theFirstAmendment protects an owner of intellectual property rights who blindsides an adversary with a lawsuit claiming infringement of those rights, but fails to shield that same owner when a more civilized notice and demand letterPage 894is sent in advance. Put another way, there is no sound basis for the conclusion that a complaint will be afforded immunity while a "cease-and-desist" letter will not, when both documents contain identical allegations. The majority's ruling encourages, nay demands, more litigation; it requires intellectual property owners to bypass the post office on the way to the court house and avoid the letter carrier in a rush to get to the process server.

[52] Today's decision ignores the reality of intellectual property law, in which the enforcement of legal rights, and thus the invocation of the litigation process, is customarily commenced by a cease-and-desist letter. Consequently, the practical result of the majority's holding will be to force parties seeking to prevent the wrongful infringement of their intellectual property rights to ambush infringers with lawsuits or risk having to defend against retaliatory tort claims.Noerr-Pennington, as that body of jurisprudence has come to be known, has been applied to immunize from state tort claims objectively reasonable petitioning activity invoking the courts. In furtherance of theFirstAmendment interest in the vindication of legal rights and the constitutional requirement that the right to petition be given the breathing space necessary to survive, the same immunity should be afforded to objectively reasonable allegations of infringement and threats of litigation contained in cease-and-desist letters.
ITheFirstAmendment guarantees "the right of the people . . . to petition the Government for a redress of grievances." U.S. Const. amend.I. Although the Supreme Court has declared the right to petition to be "among the most precious of the liberties safeguarded by the Bill of Rights,"United Mine Workers v. Illinois State BarAss'n,389 U.S. 217,222(1967), the Court has provided only limited guidance as to the nature and scope of the protection the right affords.
A
[53] The Supreme Court has provided some guidance as to the application of the right to petition in cases developing theNoerr-Penningtondoctrine. As originally articulated by the Supreme Court, theNoerr-Penningtondoctrine provides general immunity from antitrust liability under the Sherman Act to private parties who petition the government for redress of greivances, notwithstanding the anti-competitive purpose or consequences of their petitions.SeeEastern R.R. Presidents Conference v. Noerr Motor Freight,Inc.,365 U.S. 127,135-38(1961) (establishing immunity for petitions to a state legislature);see alsoUnited Mine Workers v.Pennington,381 U.S. 657,670(1965) (extendingNoerrimmunity to petitions to public officials). The Court emphasized inNoerrthat "[t]he right of petition is one of the freedoms protected by the Bill of Rights, and we cannot . . . lightly impute to Congress an intent to invade these freedoms."Noerr,365 U.S. at 137-38.

[54] InCalifornia Motor Transport Co. v. Trucking Unlimited,404 U.S. 508(1972), the Court extended immunity to "the approach of citizens or groups of them to . . . courts."Id.at 510 (holding, in addition, that "[t]he right of access to the courts is indeed but one aspect of the right of petition") (citingJohnson v.Avery,393 U.S. 483,485(1969);Ex parte Hull,312 U.S. 546,549(1941)). In reaching this conclusion, the Court relied primarily on the constitutional underpinnings of the doctrine:
We conclude that it would be destructive of rights of association and of petition to hold that groups with common interests may not, without violating the antitrust laws, use the channels and procedures of statePage 895and federal agencies and courts to advocate their causes and points of view respecting resolution of their business and economic interests vis-a-vis their competitors.


[55]Id.at 510-11;see alsoCity of Lafayette v. Louisiana PowerLight Co.,435 U.S. 389,399n. 17 (1978) (noting that "[c]ases subsequent toPenningtonhave emphasized the possible constitutional infirmity in the antitrust laws that a contrary construction would entail in light of the serious threat toFirstAmendment freedoms that would have been presented") (citations omitted). When applying theNoerr-Penningtondoctrine in the antitrust context, this Circuit has placed similar emphasis on theFirstAmendment rights the doctrine is designed to protect.See,e.g.,Zimomra v. Alamo Rent-A-Car, Inc.,111 F.3d 1495,1503(10th Cir. 1997);Instructional Sys. Dev. Corp. v. Aetna Cas. Sur.Co.,817 F.2d 639,650(10th Cir. 1987).9

[56] Because of its foundation in theFirstAmendment right to petition, the Supreme Court has applied theNoerr-Penningtondoctrine, by analogy, outside of its aborigine roots in antitrust law. InNAACP v. Claiborne Hardware Co.,458 U.S. 886,889-91(1982), for example, merchants brought claims of common law malicious interference with business and violations of state statutory labor and antitrust laws against participants in a civil rights boycott. Comparing by analogy those common law and statutory claims to the economic regulation at issue inNoerr, the Court concluded that nonviolent boycotting activities were entitled to similarFirstAmendment protections because "a major purpose of the boycott . . . was to influence governmental action," and, unlike the petitioning activity inNoerr, the purpose was to vindicate importantFourteenthAmendment rights.Seeid.at 914-15. The following year, the Court again applied theNoerr-Penningtondoctrine outside of the antitrust context. InBill Johnson's Restaurants, Inc. v. NLRB,461 U.S. 731,734(1983), a restauranteur filed a civil suit seeking to enjoin employees from picketing his restaurant. The employees responded by filing a complaint with the National Labor Relations Board alleging the civil suit was a retaliatory action in violation of the National Labor Relations Act ("NLRA"),29 U.S.C. § 158(a)(1) (4).Seeid.at 734-35. The question before the Supreme Court was whether, under the NLRA, the Board could enjoin the civil suit against the employees.Seeid.at 740-43. Based on the right to petition recognized inCalifornia Motor Transport, as well as a line of cases holding that the NLRA does not preempt state civil remedies for conduct deeply rooted in local concerns, the Court held that the Board could not enjoin a well-founded lawsuit.Seeid.

[57] In light ofClaiborne HardwareandBill Johnson's Restaurants, there can be little doubt thatNoerr-Penningtonimmunity, as amplified byCalifornia Motor Transport, is mandated by theFirstAmendment right to petition, irrespective of any independent statutory basis it might also have, and "Noerr-Penningtonimmunity" has evolved into an umbrella term forFirstAmendment petitioning immunity.Cf.First Nat'l Bank of Boston v. Bellotti,435 U.S. 765,792n. 31 (1978) (citingCalifornia Motor TransportandNoerrfor the proposition that "theFirstAmendment protects the right of corporations to petition legislative and administrative bodies");NAACPPage 896v. Button,371 U.S. 415,430-31(1963) (citingNoerr'sFirstAmendment protection of the railroads' governmental solicitations to support the proposition that theFirstAmendment also protects associating for litigation purposes).10Consistent with the Supreme Court's constitutional characterization of the doctrine, numerous other courts have appliedNoerr-Penningtonimmunity, either directly or by analogy, to shield defendants from state tort claims.See, e.g.,CheminorDrugs, Ltd. v. Ethyl Corp.,168 F.3d 119,128-29(3d Cir. 1999);Video Int'l Prod., Inc. v. Warner-Amex Cable Communications,Inc.,858 F.2d 1075,1082-84(5th Cir. 1988);Havoco of Am., Ltd.v. Hollobow,702 F.2d 643,649-50(7th Cir. 1983);Missouri v.National Org. of Women,620 F.2d 1301,1319(8th Cir. 1980);Pennwalt Corp. v. Zenith Lab., Inc.,472 F. Supp. 413,423-24(E.D.Mich. 1979),appeal dismissed,615 F.2d 1362(6th Cir. 1980);Sierra Club v. Butz,349 F. Supp. 934,937-39(N.D.Cal. 1972);Pacific Gas Elec. Co. v. Bear Stearns Co.,791 P.2d 587,595-98(Cal. 1990);Protect Our Mountain Env't, Inc. v.District Court,677 P.2d 1361,1364-69(Colo. 1984) (en banc).

[58] I agree with the Fifth Circuit that "[t]here is simply no reason that a common-law tort doctrine can any more permissibly abridge or chill the constitutional right of petition than can a statutory claim such as antitrust."Video Int'l Prod.,858 F.2d at 1084. Therefore, I would conclude that the MLBPA is shielded from Cardtoons's state tort claims insofar as those claims arise from its protected petitioning activity.11This conclusion requires the resolution of two further questions: Does the Champs letter constitute petitioning activity within the scope of theFirstAmendment; and if so, to what extent does the Petition Clause protect MLBPA from state tort claims premised on the Champs letter?
B
[59] TheFirstAmendment refers to "petitions to the government." The paradigmatic petition to the courts is a complaint.Cf.McDonaldv. Smith,472 U.S. 479,484("[F]iling a complaint in court is a form of petitioning activity."). At issue in this case, however, is a cease-and-desist letter between private parties alleging infringement of intellectual property rights and threatening a lawsuit. Based on the interests served by the Petition Clause and the requirement thatFirstAmendment rights be given "breathing space," the concept of petitioning activity must embrace such a cease-and-desist letter.

[60] The Supreme Court has not considered this precise issue, but has suggested that the application of immunity to activities,Page 897such as threats of litigation, incidental to the normal processes of litigation would be consistent with its holdings.SeeAllied TubeConduit Corp. v. Indian Head, Inc.,486 U.S. 492,503(1988) (holding a "claim ofNoerrimmunity cannot be dismissed on the ground that the conduct at issue involved no `direct' petitioning of government officials, forNoerritself immunized a form of `indirect' petitioning") (citation omitted);cf.Continental Ore v. Union Carbide Carbon Corp.,370 U.S. 690,707(1962) (distinguishingNoerrbecause the defendant in the case at bar was "engaged in private commercial activity, no element of which involved seeking to procure the . . . enforcement of laws"). More significantly, "[t]hefirstamendment interests involved in private litigation" as articulated inBill Johnson's Restaurants,461 U.S. at 743, support a concept of petitioning activity that includes actions incidental to litigation. These interests include "compensation for violated rights and interests, the psychological benefits of vindication, [and] public airing of disputed facts."Id.So conceived, the right to petition the courts serves, in the context of private litigation, the purpose of vindicating legal rights. Put another way, conduct inducing administrative and judicial action "is protected by the firmly rooted principle, endemic to a democratic government, that enactment of and adherence to the law is the responsibility of all."BrownsvilleGolden Age Nursing Home, Inc. v. Wells,839 F.2d 155,160(3d Cir. 1988) (applying petitioning immunity to the defendant's notification to government agencies and mobilization of public awareness concerning violations of the law at a nursing home).

[61] Cease-and-desist letters threatening recourse to the judicial process if the alleged infringement of intellectual property rights continues, no less than complaints seeking redress for such an infringement, promote the interests served by the right to petition the courts: They vindicate legal rights and promote adherence to important laws of commerce. Cease-and-desist letters are frequently used by businesses and individuals to protect and vindicate their intellectual property rights.See generallyRonald B. Coolley,Notifications of Infringement and Their Consequences, 77 J. Pat. Trademark Off. Soc'y 246, 246 (1995) (describing notification to suspected intellectual property infringers as a "common reaction" of rights holders). While the immediate purpose of cease-and-desist letters may not be compensation or psychological benefit,cf.Bill Johnson's Restaurants,461 U.S. at 743, they nonetheless seek vindication and financial gain through the protection of significant economic interests. They do so by demanding adherence to the law, a demand every citizen has the right to assert.Cf.Brownsville,839 F.2d at 160. And although this demand is made directly, rather than via a governmental mechanism, its significance and efficacy are derived from the existence of laws creating and protecting intellectual property rights and the existence of courts to enforce those laws, not the brooding threat of force. Nothing could better demonstrate this point than the fact that the notice of wrongdoing provided by the Champs letter is a condition precedent to MLBPA bringing a colorable claim against Champs for contributory infringement of publicity rights.See, e.g.,Misut v. Mooney,475 N.Y.S.2d 233,236(N.Y.Sup.Ct. 1984);Maynard v. Port Publications, Inc.,297 N.W.2d 500,507(Wis. 1980). In sum, the Champs letter constitutes a use of "the channels and procedures of state and federal . . . courts to advocate [the author's] causes and points of view respecting resolution of [its] business and economic interests vis-a-vis [its] competitors."California Motor Transport,404 U.S. at 511.

[62] Applying petitioning immunity to widely-used methods of enforcing legal rights that precede any direct communication with the courts is also compelled by the Supreme Court's pronouncement thatPage 898FirstAmendment rights require "breathing space" to survive.SeeNewYork Times Co. v. Sullivan,376 U.S. 254,272(1964);Button,371 U.S. at 433. That principle was applied, although not by name, inBrotherhood of R.R. Trainmen v. Virginia Bar Ass'n,377 U.S. 1(1964). Rejecting the Bar Association's effort to enjoin a union from advising members to obtain legal counsel before settling injury claims and referring them to selected attorneys, the Court held that "[t]he State can no more keep these workers from using their cooperative plan to advise one another than it could use more direct means to bar them from resorting to the courts to vindicate their legal rights. The right to petition the courts cannot be so handicapped."Id.at 7;seealsoUnited Trans. Unionv. State Bar,401 U.S. 576,585-86(1971);Feminist Women's HealthCtr., Inc. v. Mohammad,586 F.2d 530,543(5th Cir. 1978). The application of the concept of "breathing space" to the right to petition the courts is not limited to situations in which actions incidental to litigation implicate associational rights.SeePacific Gas Elec.,791 P.2d at 595-98(applying the concept of "breathing space" without reference to associational rights in reaching the conclusion that the Petition Clause prohibits premising tort liability on the defendant's conduct inducing another to bring a meritorious lawsuit);cf.South Dakota v.Kansas City Southern Indus., Inc.,880 F.2d 40,53(8th Cir. 1989) (holding, without reference to associational rights, that the defendant's assumed assistance to litigants in the underlying suit "did not, as a matter of law, constitute `sham' petitioning and was fully protected by thefirstamendment").

[63] Like the incidental litigation activity in the cases just cited, cease-and-desist letters notifying the recipient of the infringement of intellectual property rights and threatening legal action, "must also be protected if the right of access to the courts is to have significance."The Consortium, Inc. v. KnoxvilleInt'l Energy Exposition,563 F. Supp. 56,59(E.D.Tenn. 1983) (citingPennwalt Corp.,472 F. Supp. at 413). As discussed, such letters are often the first formal step in the process of enforcing the law of intellectual property and vindicating economic interests. Frequently this step is quickly followed by the filing of a complaint with a court, be it by the rights holder for damages and injunctive relief or the recipient for declaratory judgment.SeeCoolley at 246. That is precisely what occurred in this case. Upon receiving the Cardtoons letter and notice of the Champs letter, Cardtoons preempted the threatened litigation by filing an action for declaratory relief, and MLBPA responded with counterclaims. By permitting liability under state common law for allegations and threats contained in cease-and-desist letters, while prohibiting liability for identical allegations made in a complaint filed with a court, the majority ignores the central role cease-and-desist letters play in the enforcement of intellectual property rights. The resulting bright-line rule chills the right to petition the courts by handicapping activity immediately precedent to, and intimately associated with, recourse to the judicial process.12It isPage 899just such a result that the concept of "breathing space," born of the practical reality of the environment in whichFirstAmendment rights are exercised, is meant to prevent.

[64] In addition to sustaining the vitality of the fundamental right to petition and furthering the interests that right is intended to serve, the acknowledgment that Petition Clause immunity applies to cease-and-desist letters such as the one before us is consistent with sound public policy. As commentators have observed, this acknowledgment facilitates efforts to resolve disputes before resort is had to litigation.SeePhillip E. Areeda Herbert Hovenkamp,Antitrust Law§ 205e at 237 (rev. ed. 1997) (arguing that withholding immunity from prelitigation communication would curb practices that "provide useful notice and facilitate the resolution of controversies"); Herbert Hovenkamp,FederalAntitrust Policy§ 18.3d at 644 (1994) (immunizing prelitigation threats is vital to "[o]ur entire dispute resolution process[, which] is designed to encourage people to resolve their differences if possible before litigating").

[65] Applying petitioning immunity to a cease-and-desist letter is not novel. Within the antitrust context, numerous courts have appliedNoerr-Penningtonimmunity to claims arising from cease-and-desist letters, threats of litigation, and other pre-litigation enforcement efforts.See, e.g.,Glass Equip. Dev., Inc. v. Besten,Inc.,174 F.3d 1337,1343-44(Fed. Cir. 1999);CVD, Inc. v.Raytheon Co.,769 F.2d 842,850-51(1st Cir. 1985);MillerPipeline Corp. v. British Gas PLC,69 F. Supp.2d 1129,1138(S.D.Ind. 1999);Prime Time 24 Joint Venture v. National Broad. Co.,Inc.,21 F. Supp.2d 350,356(S.D.N.Y. 1998);The Consortium,563 F. Supp. at 59;Outboard Marine Corp. v. Pezetel,474 F. Supp. 168,174(D.Del. 1979);cf.Alexander v. National Farmers Org.,687 F.2d 1173,1200(8th Cir. 1982) (noting that there may be situations in which threats of litigation against a competitor's customers would be protected underNoerr-Pennington). Likewise, outside of the antitrust context, federal district courts have afforded immunity from state common law claims based on similar pre-litigation efforts to enforce legal rights.See, e.g.,Matsushita Elec. Corp. v. Loral Corp.,974 F. Supp. 345,359(S.D.N.Y. 1997);Aircapital Cablevision, Inc. v. StarlinkCommunications Group, Inc.,634 F. Supp. 316,325(D.Kan. 1986);Pennwalt Corp.,472 F. Supp. at 424.

[66] In order to provide breathing space to theFirstAmendment right to petition the courts, further the interests that right was designed to serve, and promote the public interest in efficient dispute resolution, I would follow other federal courts and accord cease-and-desist letters alleging infringement of intellectual property rights and threatening legal recourse the same level of immunity from tort liability as a complaint making the same allegations.
C
[67] That immunity is not, of course, absolute. In determining the proper scope of petition clause immunity for activities invoking the judicial process, theNoerr-Penningtondoctrine once again provides the starting point. While broad and extensive,Noerr-Penningtonimmunity is not a shield for a petitioner whose conduct, although "ostensibly directed toward influencing governmental action, is a mere sham to cover what is actually nothing more than an attempt to interfere directly with the business relationships of a competitor."Noerr,365 U.S. at 144. The Supreme Court has established a two-part definition of sham litigation:Page 900
First, the lawsuit must be objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits. If an objective litigant could conclude that the suit is reasonably calculated to elicit a favorable outcome, the suit is immunized underNoerr, and an antitrust claim premised on the sham exception must fail. Only if challenged litigation is objectively meritless may a court examine the litigant's subjective motivation. Under this second part of our definition of sham, the court should focus on whether the baseless lawsuit conceals "an attempt to interfere directly with the business relationships of a competitor,"Noerr,365 U.S. at 144, through the "use [of] the governmental process — as opposed to the outcome of that process — as an anti-competitive weapon,"Columbia v. Omni OutdoorAdvertising, Inc.,499 U.S. 365,380(1991). This two-tiered process requires the plaintiff to disprove the challenged lawsuit's legal viability before the court will entertain evidence of the suit's economic viability.
Professional Real Estate Investors, Inc. v. Columbia PicturesIndus., Inc.,508 U.S. 49,60-61(1993). To ascertain "baselessness," a court must consider whether the litigant had "probable cause" to initiate the legal action.Id.at 62. If there is probable cause, the defendant automatically enjoysNoerr-Penningtonimmunity, and the second, subjective motivation prong of theProfessional Real Estatetest becomes irrelevant.Seeid.at 63. Probable cause to sue may exist when the law is unsettled or when an "action [is] arguably `warranted by existing law' or at the very least [is] based on an objectively `good faith argument for the extension . . . of existing law.'"


[68]Id.at 65 (quoting Fed.R.Civ.P.11).

[69] In establishing the requirements for the sham exception to theNoerr-Penningtondoctrine, the Court emphasized that "[w]hether applyingNoerras an antitrust doctrineor invoking it in othercontexts, we have repeatedly reaffirmed that evidence of anti-competitive intent or purpose alone cannot transform otherwise legitimate activity into a sham."Professional RealEstate,508 U.S. at 59(emphasis added). As an example of the emphasis on objective reasonableness as the linchpin of petitioning immunity outside the antitrust context,ProfessionalReal EstatecitesBill Johnson's Restaurants,461 U.S. at 743. In that case, the Court held "[t]he filing and prosecution of a well-founded lawsuit may not be enjoined as an unfair labor practice, even if it would not have been commenced but for the plaintiff's desire to retaliate against the defendant for exercising rights protected by the [National Labor Relations] Act."Bill Johnson's Restaurants,461 U.S. at 743.13Thus, the Supreme Court has consistently held that petitioning activity invoking the judicial process is deserving of protection unless it is objectively baseless and motivated by an unlawful purpose.

[70] In accordance withProfessional Real Estate, I would conclude that MLBPA is entitled to immunity from all of Cardtoons's state tort claims arising from the Champs letter unless the allegations of wrongdoing and threats of litigation contained in the letter were objectively baseless, in the sense of lacking probable cause, and employed primarily for improper purposes.

[71] Such a holding would be consistent withMcDonald v. Smith,472 U.S. 479(1985), in which the Court addressed whether petitioning activity directed to the executive branch of government — specifically, a letter to the President — should be immune from a statePage 901tort claim of libel. Relying onWhite v.Nicholls,44 U.S. 266(1845), andNew York Times Co. v. Sullivan,376 U.S. 254(1964), the Court held that the petitioning activity was not immune from liability for libel if carried out with actual malice, that is, "`falsehood and the absence of probable cause.'"McDonald,472 U.S. at 484(quotingWhite,44 U.S. at 291);seealsoNew York Times,376 U.S. at 279-80(defining actual malice as "with knowledge that it was false or with reckless disregard of whether it was false or not"). In a statement of particular relevance to this case, the Court noted that its conclusion that theFirstAmendment does not provide absolute immunity for petitions to the government was consistent with the principle at the heart of theNoerr-Penningtonsham litigation test: "`[B]aseless litigation is not immunized by theFirstAmendment right to petition.'"McDonaldat 484 (quotingBill Johnson'sRestaurants,461 U.S. at 743; citingCalifornia Motor Transport,404 U.S. at 513).14

[72] To the extent there are any practical differences betweenMcDonald's "actual malice" standard andProfessional RealEstate's "objectively baseless" standard, I would find the latter more applicable to petitioning activity invoking the judicial process through allegations of wrongdoing. Moreover, I reject Cardtoons's suggestion that at the very least theMcDonaldstandard should be applied in determining whether MLBPA is immune from the libel claim. Applying different standards to determine a defendant's immunity from different tort claims arising from the same petitioning activity would inject unnecessary confusion into the analysis of Petition Clause immunity, and perhaps even undermine such immunity by producing conflicting results. In this case, for example, Cardtoons labels as libelous the assertion in the Champs letter that "[MLBPA] believe[s] that the activities of [Cardtoons] violate the valuable property rights of publicity of the MLBPA and the players themselves." (Appellant's App. at 10.) This statement is coextensive with the allegations of wrongdoing — participating in those activities — on which the threats of litigation are based. Doctrinal consistency requires that the issue of whether these statements will be afforded Petition Clause immunity be determined by a single standard — the objectively baseless standard.15
II
[73] Applying this analytical framework to the case at bar, I agree with the district court's conclusion that the allegations of infringement and threats of litigation contained in the Champs letter were objectively reasonable. Therefore, I would affirm.Page 902
  1. This Court was faced with the issue but did not decide it inQuark, Inc. v. Harley, Nos. 96-1046, 96-1048, 96-1061, 1998 WL 161035, at **7 (10th Cir. March 4. 1998) (unpublished order and judgment) ("Assuming, without deciding, that this circuit would extend the doctrine beyond the realm of antitrust litigation. . . .") ↩
  2. Penningtonextended this immunity to the right to petition the executive andCalifornia Motor Transport Co. v. TruckingUnlimited,404 U.S. 508(1972), further extended the doctrine to cover petitioning the courts, the third branch of government. ↩
  3. See alsoAaron R. Gary,FirstAmendment Petition ClauseImmunity from Tort Suits: In Search of a Consistent DoctrinalFramework, 33 Idaho L. Rev. 67, 95 (1996) ("Innumerable federal and state courts have concluded that theNoerr-Penningtondoctrine is rooted in theFirstAmendment right to petition and therefore must be applied to all claims implicating that right, not just to antitrust claims."). ↩
  4. Bill Johnson'sis a good example of the need to distinguish between antitrust cases based upon the two prongs ofNoerr-Penningtonand non-antitrust cases based solely on the right to petition. The dissent characterizesBill Johnson'sas a direct application ofNoerr-Pennington. However, such a characterization would lead to a direct conflict betweenBillJohnson'sandProfessional Real Estate Investors, Inc. v. ColumbiaPictures, Inc., (PRE),508 U.S. 49(1993).Noerr-Penningtonimmunity, as defined in all of theNoerrantitrust line of cases, is immunity fromliability.PRE, in the context of antitrust, held that a lawsuit is immune from liability unless it is a sham (i.e. objectively unreasonable or reasonable but brought in bad faith).See508 U.S. at 60. However, inBill Johnson's, the Supreme Court specifically declared, in the context of an NLRA dispute, that an employer who brought a non-sham suit could still be heldliable, even though the right to petition protected the suit from beingenjoined.461 U.S. at 748-49.

    The conflict is apparent. Under thePREstandard, a plaintiff is immune from liability based upon a simple showing of objective reasonableness. UnderBill Johnson's, objective reasonableness is not enough and a court must further determine whether the plaintiff violated the law in bringing the suit. The only way to reconcile these cases is to limit them to the contexts in which they arose.PREis an antitrust case;Bill Johnson'sis not.

    This distinction is important for two reasons. First, it cautions against describingBill Johnson'sas an application ofNoerr-Penningtonimmunity rather than Petition Clause immunity. Second, and more importantly, it demonstrates thatPREmust be limited to the antitrust context. Outside of that context, the Petition Clause protects objectively reasonable lawsuits from being enjoined, but requires a court to look at the underlying statute to determine whether the initiator of the suit can be held liable. Therefore, given the non-antitrust context of this case, the dissent's reliance onPREin Part II, C is inapposite. ↩
  5. The same is true ofMcGuire Oil Co. v. Mapco, Inc.,958 F.2d 1552(11th Cir. 1992), an antitrust case which relied uponCoastalStatesin granting immunity to threats of litigation. Although the Eleventh Circuit mentioned the right to petition as one basis forNoerr-Penningtonimmunity, it specifically protected the threats of litigation under an interpretation of the Sherman Act.SeeMcGuire Oil,958 F.2d at 1560(holding that "threats, no less than the actual initiation of litigation, do not violate the Sherman Act"). ↩
  6. The dissent does not address this plain language, but instead relies upon the concept of "breathing space," the interest of private parties in vindicating their legal rights, and public policy arguments in arguing that such private threats should be constitutionally protected. ↩
  7. We acknowledge thatAllied Tubeis an antitrust case applyingNoerr-Penningtonand are therefore careful to distinguish between propositions grounded solely on the Sherman Act and those also grounded in the right to petition. ↩
  8. We also note in passing that an almost identical claim to that raised in this case was presented inContinental Ore Co. v. UnionCarbide Carbon Corp.,370 U.S. 690,695(1962) (plaintiffs claimed that "[d]efendants in 1943, by open threats of reprisals, allegedly frustrated certain arrangements which Continental had with the Climax Molybdenum Corporation for the manufacture of ferrovanadium.").Noerrimmunity was discussed by the Court but was not mentioned in regard to this claim. ↩
  9. I therefore reject the Fifth Circuit's assertion thatNoerr"was not afirstamendment decision."Coastal States Mktg., Inc.v. Hunt,694 F.2d 1358,1364-65(5th Cir. 1983). Indeed, the Fifth Circuit itself has taken inconsistent positions.SeeVideo Int'lProd., Inc. v. Warner-Amex Cable Communications, Inc.,858 F.2d 1075,1083(5th Cir. 1988) (holding that the purpose of theNoerr-Penningtondoctrine is to protect theFirstAmendment right to petition the government). ↩
  10. Nor is the application of petitioning immunity limited to associational or political activity. The Court has long held that "[t]he grievances for redress of which the right of petition was insured, and with it the right of assembly, are not solely religious or political ones."Thomas v. Collins,323 U.S. 516,531(1945);see alsoIllinois State Bar Ass'n,389 U.S. at 223(rejecting the contention that "the principles announced inButtonwere applicable only to litigation for political purposes") (citingBrotherhood of R.R. Trainmen v. Virginia,377 U.S. 1,8(1964)). For example, inBill Johnson's Restaurants,461 U.S. at 743, the Court afforded immunity to an individual litigant seeking to vindicate private economic interests. Although inMartin v.City of Del City,179 F.3d 882,886(10th Cir. 1999), we held that a government employee alleging he was terminated in retaliation for petitioning for the redress of grievances must show that the petition touches on matters of public concern,Martin's public concern requirement is inapplicable here because it was developed in light of the government's substantial interest in maintaining an efficient workplace. ↩
  11. To the extentGrip Pak, Inc. v. Illinois Tool Works, Inc.,694 F.2d 466,471-72(7th Cir. 1982), holds to the contrary, I would reject the holding of that case. We also note that another panel of that circuit overlooked or ignored theGrip Pakdecision in reaching a result consistent with our own.SeeHavoco of Am.,Ltd.,702 F.2d at 649-50. ↩
  12. This immediate association with the judicial process distinguishes the Champs letter from the activity at issue inAllied Tube and Conduit Corp.,486 U.S. at 492. The Court inAlliedheld that efforts to influence the standard-setting process of a private trade association did not enjoyNoerrimmunity.Seeid.at 509-10. However, it "expressly limited [its holding] to cases where an economically interested party exercises decision making authority in formulating a product standard for a private association that comprises market participants,"id.at 511 n. 13 (citation and internal quotations omitted), indicating that this holding wouldnotencompass, and therefore not preclude from immunity, efforts to influence "all private standard-setting associations."Id.With such repeated and explicit limitations, it is clear the Court did not foreclose the application of immunity to all indirect petitioning activities, such as to non-governmental associations as inAllied, or, as here, to cease-and-desist letters. On the contrary, as discussed, the Court emphasized a "claim ofNoerrimmunity cannot be dismissed on the ground that the conduct at issue involved no `direct' petitioning of government officials, forNoerritself immunized a form of `indirect' petitioning."Id.at 503 (citation omitted). ↩
  13. Bill Johnson's Restaurantswent on to hold that the employee could proceed with his or her unfair labor practices case if the employer did not prevail in its state law claim.461 U.S. at 747. ↩
  14. Contrary to the majority's suggestion,McDonald's conclusion that individuals do not enjoy absolute immunity from state common law claims arising from statements made in petitions to the government does not mean that there is no constitutional protection from such claims. Rather,McDonaldmakes it clear that state libel actions arising from petitioning activity cannot proceed unless the elements of libel are consistent with the constitutionally-mandated actual malice standard.472 U.S. at 484-85. ↩
  15. To the extent a libel claim is based on assertions in a cease-and-desist letter other than the legal and factual bases for the allegations of infringement and threats of litigation, theMcDonaldstandard might be appropriate. ↩