Trademark infringement and injunction affirmed in church dispute
In Community of Christ Copyright Corp v Devon Park Restoration Branch of Jesus Christ’s Church (Case 10-1707, March 21 2011), the US Court of Appeals for the Eighth Circuit has affirmed a decision by the District Court for the Western District of Missouri in a case involving trademark infringement and false designation of origin under the Lanham Act, and common law trademark infringement and dilution under Missouri law.
The district court had granted summary judgment in favour of the plaintiff. The defendant appealed, arguing that the district court had erred in finding that the plaintiff’s marks were valid and enforceable and that the defendant’s use of the marks created a likelihood of confusion. Additionally, the defendant appealed from the order enjoining it from using the marks and challenged the award of attorney’s fees ($348,000) to the plaintiff.
The plaintiff, Community of Christ Copyright Corporation; Community of Christ Church, also known as Reorganized Church of Jesus Christ of Latter Day Saints (COC), owns various US trademark registrations for the following religious services marks:
- REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS;
- PEACE; and
- REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS PEACE.
It also owns the common law mark REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINT PEACE (and design).
The defendant, Devon Park Restoration Branch of Jesus Christ’s Church, was originally founded by members of COC and had been using the marks on seals, flags and exterior signs for years.
COC sent a cease and desist letter and, when Devon Park did not respond, filed a lawsuit alleging trademark infringement and false designation of origin under Sections 32 and 43 of the Lanham Act, as well as common law infringement, state unfair competition law violations and dilution. COC also sought injunctive relief. Devon Park filed a counterclaim seeking cancellation of COC's trademark registrations on grounds of abandonment and genericness. Devon Park also raised estoppel and laches defences. The district court dismissed these defences and Devon Park did not appeal.
Both parties filed for summary judgment and the district court granted COC’s motion, dismissing Devon Park’s counterclaims and permanently enjoining it from using COC’s marks. Furthermore, the district court found the case exceptional and ordered Devon Park to pay COC's attorneys’ fees.
Devon Park appealed the district court’s decision and the Eighth Circuit reviewed the grant of summary judgment de novo.
In reviewing the likelihood of confusion factors, the Eighth Circuit concluded that:
- COC’s marks were distinctive;
- Devon Park’s marks were highly similar, as the only difference between the marks was Devon Park’s addition of the word 'branch';
- the services offered under the marks were in the same category; and
- consumers, although they might use considerable care in choosing the services, could be confused as to their source because of the use of similar marks for highly similar services in a close geographical proximity.
The court thus affirmed the lower court’s finding of trademark infringement and false designation of origin.
In reviewing Missouri law, the court came to the conclusion that COC’s state law claims for common law infringement, unfair competition and trademark dilution were justified because:
- common law trademark infringement and a violation of unfair competition laws under Missouri law are assumed when trademark infringement under the federal statute is proven; and
- a likelihood of dilution exists when the owner can show that its mark is valid and distinctive and that the alleged infringer’s mark is likely to dilute the distinctiveness of the holder’s mark.
The court found that, due to the likelihood of confusion finding, a finding of likelihood of dilution is justified.
In addition, the Eighth Circuit affirmed the district court’s denial to cancel the marks on the bases of genericness or abandonment. The court determined that Devon Park had acknowledged that COC’s marks have not become the exclusive descriptors of the services and, therefore, could not be categorised as generic. In addition, although COC changed its name to Community of Christ in 2000, various parishes did not change their name and have been continuing to use the marks. This negated the abandonment claim.
With respect to Devon Park’s challenge of the issuance of the permanent injunction, the Eighth Circuit determined that the district court had not abused its discretion because Devon Park could not show that it would be harmed by using alternative marks and that there was a public interest in enforcing valid trademarks.
Lastly, in reviewing the district court’s award of attorneys’ fees to COC, the Eighth Circuit determined that the existence of bad faith is not necessary for finding a case “exceptional” within the meaning of the Lanham Act. The court also disregarded Devon Park’s argument that the fee award would be a grave financial burden on the non-profit organisation and concluded that, since Devon Park had failed to specifically point out how the claimed fees were excessive, the district court had not abused its description in granting the requested fee amount.
Katrin Lewertoff, Arent Fox LLP, New York
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