Opinion
1:99cv148-T.
March 29, 2000
MEMORANDUM AND RECOMMENDATION
THIS MATTER is before the court upon plaintiffs' Motion for Summary Judgment, Default Judgment and Judgment on the Pleadings and defendants David E. Robinson's and the Roan Mountain Institute of Christian Science Health's Motion for Summary Judgment, Supplemental Motion for Summary Judgment, Motion to Postpone Judgment Pending Answers to Interrogatories, and Motion to Submit One Copy of Videocassette Exhibit H/v of Exhibit H/a. Having carefully considered those motions and reviewed the pleadings, the undersigned enters the following findings, conclusions, and recommendation.
Defendants Robinson and Roan Mountain Institute of Christian Science Health have filed a number of motions, including a "Motion for Summary Judgment and Dispositive Relief," citing the alleged Supreme Court of the Dominion of Melchizedek as authority for the relief sought. Docket Entry 26. The purported Dominion of Melchizedek, as discussedinfra, is a submerged atoll in the South Pacific and a portion of Antarctica, but is not a country. Such "case law" has been interposed by those defendants for less-than-legitimate reasons, which is a patent violation of Rule 11, Federal Rules of Civil Procedure. The undersigned, therefore, will recommend summary denial of their motions and the striking of all arguments based upon such bogus case law.
FINDINGS AND CONCLUSIONS
I. Introduction
In this action, plaintiffs contend that defendants have infringed valid and protectable trademarks; defendants' use of copies of such marks creates a likelihood of confusion; plaintiffs' marks are strong and distinctive; and irreparable injury to plaintiffs will be caused, absent a permanent and complete injunction. Defendant David E. Robinson has answered and responded to the complaint, pro se, arguing that he has not infringed the marks. He bases that argument on his belief that plaintiffs no longer govern the First Church of Christ, Scientist. Defendant David J. Nolan, having been properly served under the Federal Rules of Civil Procedure, and having failed to answer or otherwise respond within the time allowed, is in default as a matter of law.
II. Jurisdiction
Plaintiffs are corporate residents of the State of Massachusetts. Defendant Robinson is a resident of Bakersville, North Carolina, and does business as defendant "The Roan Mountain Institute of Christian Science" ("TRMI"). Defendant Nolan appears to reside in California and does business as defendant "University of Christian Science."
Plaintiffs have stated federal claims for trademark infringement, false designation of origin, and false advertising and dilution, which arise under the United States Trademark Act of 1946 — the "Lanham Act," 15 U.S.C. § 1051, et seq. Plaintiffs have also stated supplemental claims under North Carolina law for unfair competition and unfair or deceptive trade practices arising under Chapters 75-1.1, et seq., of the North Carolina General Statutes, and common law unfair competition. This court, therefore, has subject-matter jurisdiction under 15, United States Code, Section 1121, and 28, United States Code, Sections 1338 and 1367.
III. Summary Judgment Standard
Plaintiffs have moved for summary judgment. On a motion for summary judgment, the moving party has the burden of production to show that there are no genuine issues for trial. Upon the moving party's meeting that burden, the nonmoving party has the burden of persuasion to establish that there is a genuine issue for trial.
When the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts. In the language of the Rule, the nonmoving party must come forward with "specific facts showing that there is a genuine issue for trial." Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving [sic] party, there is no "genuine issue for trial."Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986) (citations omitted; emphasis in the original) (quoting Fed.R.Civ.P. 56). There must be more than just a factual dispute; the fact in question must be material and readily identifiable by the substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986).
By reviewing substantive law, the court may determine what matters constitute material facts. Id. "Only disputes over facts that might affect the outcome of the suit under governing law will properly preclude the entry of summary judgment." Id. at 248. A dispute about a material fact is "genuine" only if the evidence is such that "a reasonable jury could return a verdict for the nonmoving party." Id.
[T]he court is obliged to credit the factual asseverations contained in the material before it which favor the party resisting summary judgment and to draw inferences favorable to that party if the inferences are reasonable (however improbable they may seem).Cole v. Cole, 633 F.2d 1083, 1092 (4th Cir. 1980). Affidavits filed in support of plaintiffs' Motion for Summary Judgment are to be used to determine whether issues of fact exist, not to decide the issues themselves. United States ex rel. Jones v. Rundle, 453 F.2d 147 (3d Cir. 1971). When resolution of issues of fact depends upon a determination of credibility, summary judgment is improper. Davis v. Zahradnick, 600 F.2d 458 (4th Cir. 1979).
IV. Discussion
A. Introduction
As discussed below, plaintiffs have satisfied their initial burden and defendants have failed to show that genuine issues of material fact exist that warrant trial. Review of the undisputed evidentiary material submitted reveals that defendants have been using, without right or permission, copies or facsimiles of plaintiffs' federally registered and common-law trademarks and service marks. It is equally undisputed that the public has come to identify such marks exclusively with The First Church of Christ, Scientist ("TFCCS") and its publishing arm, The Christian Science Publishing Society.
The evidence presented shows that defendants, without authorization, have attempted to expropriate such recognized marks to promote their own competing products and services. Through such unlawful use, defendants have deceived the public and caused a false impression as to the origin of those goods and services by inferring that they are affiliated with and sponsored by TFCCS. Without doubt, defendants blatantly are infringing the valid, protectable, and valuable marks owned by plaintiffs, and plaintiffs are entitled to the permanent injunctive relief they seek.
B. Summary Judgment in Trademark Cases
A plaintiff is entitled to summary judgment in a trademark case when it demonstrates that (a) it has a valid, protectable trademark and (b) a defendant's use of a copy or colorable imitation of that mark creates a likelihood of confusion. Lone Star Steakhouse Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 930 (4th Cir. 1995).
Plaintiffs seek relief under Section 32(1) of the Lanham Act, which relates to infringement of registered trademarks; Section 43(a) of the Lanham Act, which relates to infringement of common-law trademarks and other forms of unfair competition; and N.C. Gen. Stat. §§ 75-1.1, et seq., which proscribe unfair or deceptive acts. The standards for relief under those laws are the same. Polo Fashion, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987).
1. Valid, Incontestible Marks Owned By Plaintiffs
A plaintiff's first burden is to plead and prove a valid and protectable trademark. In this case, plaintiffs have asserted four groups of trademarks over which they assert ownership:
1. the federally registered CROSS AND CROWN Marks;
2. the federally registered DOME DESIGN Marks;
3. the Christian Science Monitor Marks, consisting of
a. the federally registered CSM NAME Marks,
b. the federally registered SHEAF OF WHEAT Marks,
c. the federally registered GRAIN QUOTATION Mark,
d. the common-law CSM Logo, a design mark consisting of the three foregoing marks on a black rectangular background, and
e. the common-law mark CSMONITOR as used in the plaintiffs' csmonitor.com domain name; and
4. the CHRISTIAN SCIENCE Family of Marks, comprising
a. nine (9) federal registrations for CHRISTIAN SCIENCE, CHRISTIAN SCIENCE JOURNAL, CHRISTIAN SCIENCE QUARTERLY, THE HERALD OF CHRISTIAN SCIENCE, THE CHRISTIAN SCIENCE MONITOR, and THE CHRISTIAN SCIENCE SENTINEL for various educational and informational products and services, and
b. CHRISTIAN SCIENCE as a common-law trademark for various informational and educational services, such as CHRISTIAN SCIENCE Sunday Schools, CHRISTIAN SCIENCE Organizations (student organizations at colleges and universities) and CHRISTIAN SCIENCE Lectures.
Plaintiffs have presented certificates of registration of the federally registered marks listed above. See Moody Dec. ¶¶ 23, 32, 38, 49; Exh's 1, 3, 6, 10. Certificates of registration are prima facie evidence of the validity of the marks and the plaintiffs' ownership of the marks. 15 U.S.C. § 1057(b); Makhtab Tarighe Oveyssi Shah Maghsoudi, Inc. v. Kianfar, 179 F.3d 1244, 1249-50 (9th Cir. 1999). In addition, affidavits attesting to five consecutive years of continuous use since the date of registration have been submitted with respect to each of the federally registered marks except the SHEAF OF WHEAT marks, which were registered less than five years ago. Moody Dec. ¶¶ 24, 32, 40, 50. Affidavits of continuous use, such as have been submitted, render the marks incontestable. 15 U.S.C. § 1065; American Angus Ass'n v. Sysco Corp., 829 F. Supp. 807, 816-17 (W.D.N.C. 1992).
In his pleadings, Defendant Robinson and his business alter ego, The Roan Mountain Institute of Christian Science Health ("Robinson defendants"), seek to challenge the validity and ownership of the plaintiffs' trademarks and service marks on two grounds. First, they make conclusory allegations of "frauds" purportedly committed by plaintiff Board of Directors which relate to matters of church polity and doctrine. Further, it appears to be their contention that the plaintiffs have forfeited the ownership of their trademarks, making the Robinson defendants' use non-infringing, through somehow returning the marks to the public domain:
The plaintiffs are not the legitimate authorized owners of the marks for they do not legitimately represent the Church.
Answer to Supplemental Complaint, Item 12-28.
As a result of the Publishing Society Trustee's forced resignation of the legal obligation of trust to Mrs. Eddy, all subsequent Trustees since 1921 are illegitimate, as are all Directors since 1910. Neither group can therefore claim ownership of any trademarks or service marks. Like the KING JAMES VERSION OF THE BIBLE and all of Mrs. Eddy's publications, they are now in the public domain.
Answer, ¶ 20 (emphasis in original). Generalized and conclusory allegations of fraud do not vitiate the conclusive evidence of ownership conferred by an incontestable registration, Sovereign Order of St. John of Jerusalem, Inc., 119 F.3d at 1241; and the only fraud that may be asserted as a defense to an incontestable registration is a deliberate attempt to mislead the Patent and Trademark Office ("PTO"), Metro Traffic Control, Inc. v. Shadow Network, Inc., 104 F.3d 336, 340-41 (Fed. Cir. 1997). The record is devoid of evidence of any intent or attempt to deliberately mislead the PTO. Where the alleged fraud relates to the ownership of the mark, the party alleging fraud must show that the applicant had actual knowledge that it was not the owner of the mark. Five Platters, Inc. v. Purdie, 419 F. Supp. 372, 384 (D. Md. 1976). It is undisputed that the plaintiffs genuinely believe they are the owners of the marks registered, especially in light of the fact that challenges to their authority have been dismissed repeatedly by the Supreme Judicial Court of Massachusetts. Finally, to avoid entanglement in church governance forbidden by the first amendment, this court looks to the presumption of ownership given to the registrant of a federal trademark.Makhtab, supra, at 1249. Plaintiffs have presented conclusive evidence of ownership by showing incontestable registrations.
The Robinson defendants also appear to argue that any mark containing the term CHRISTIAN SCIENCE has been held to be generic and unprotectable. See Supplemental Counterclaim ¶ 19 Exh. C. InChristian Science Bd. of Directors v. Evans, 195 N.J. 297 (1987), the New Jersey Supreme Court held that "Christian Science" was the name of a religion and that the term "Christian Science Church" was "a generic name for churches in which Christian Science is practiced." Id., at 307. TheEvans court further held that a group of persons practicing Christian Science who were not affiliated with The First Church of Christian Scientist ("TFCCS") could legally incorporate the term "Christian Science" as part of the name of their church, but that they also had to make clear that their church was the "Independent Christian Science Church of Plainfield, New Jersey." The New Jersey Supreme Court did not invalidate the marks at issue here, hold that the term "Christian Science" was generic for all purposes, or determine that persons unaffiliated with TFCCS could make unlimited use of the term. Indeed, theEvans court noted that the mark CHRISTIAN SCIENCE for reading rooms was protectable and left untouched the injunction against the defendants' use of CHRISTIAN SCIENCE in connection with a reading room, id., at 304, and their use of the terms "Church of Christ, Scientist" and "Christ, Scientist." Id., at 303.
It is a basic principle of trademark law that a particular term may be generic as applied to one product or service, but protectable as applied to another product or service. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 147. The permitted use in Evans is distinguishable from the use in this case. Rather than the arguably permissive use of the term "Christian Science" used in the name of a church (when combined with other indicia of nonaffiliation with plaintiffs' protected marks), defendants herein are using CHRISTIAN SCIENCE as a service mark in purveying services and products that have long been associated with the plaintiffs and their CHRISTIAN SCIENCE family of marks.
Defendants' patent infringement of plaintiffs' marks can be found readily at an Internet website that publishes "The Christian Science Monitor of Bakersville, North Carolina" (see Moody Dec. ¶¶ 67-69; Exh. 22) and displays an exact copy of the logo of The Christian Science Monitor. Outright misappropriation of plaintiffs' mark and its protected art is not use of a generic term, but trademark infringement.
Similarly, the defendants in default, Nolan and the University of Christian Science, are using CHRISTIAN SCIENCE in connection with what purports to be an educational institution — the "Christian Science University." This is also an infringement of the CHRISTIAN SCIENCE family of trademarks that the plaintiffs have, for many years, used for a variety of educational services, such as CHRISTIAN SCIENCE Reading Rooms, CHRISTIAN SCIENCE Organizations (i.e., student organizations at colleges and universities), CHRISTIAN SCIENCE Sunday Schools, CHRISTIAN SCIENCE Lectures and CHRISTIAN SCIENCE Board of Lectureship. Moody Dec., ¶¶ 49-55; Exh's 11-12.
Defendants having presented no competent evidence to the contrary, the above marks are valid and protectable marks owned by plaintiffs which are incontestible.
2. Likelihood of Confusion
Inasmuch as plaintiffs have satisfied the first prong of the summary-judgment standard in trademark cases, the next issue is to determine whether defendants' activities have created a likelihood of confusion. The Court of Appeals for the Fourth Circuit has identified a list of factors to aid in that inquiry:
a. the strength or distinctiveness of a plaintiff's mark;
b. the similarity of the two marks;
c. the similarity of the goods or services that the marks identify;
d. the similarity of the facilities used by the parties in conducting their businesses;
e. the similarity of advertising used by the parties;
f. a defendant's intent in using the mark;
g. actual confusion;
h. the proximity of the products as they are actually sold; the probability that a senior mark owner will "bridge the gap" by entering a defendant's market;
j. the quality of a defendant's product in relationship to the quality of a senior mark owner's product; and
k. the sophistication of the buyers.
Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). The undersigned will review plaintiffs' mark and defendants' alleged infringing uses in light of relevant factors specified in Pizzeria Uno.
a. The Plaintiffs' Marks are Strong and Distinctive
Where a mark is strong and distinctive, a defendant's use of a similar mark is more likely to lead consumers to believe that the defendant is affiliated with or sponsored by the mark owners Id., at 1527. Trademarks generally are classified in order of increasing distinctiveness as (1) generic, (2) descriptive, (3) suggestive and (4) arbitrary or fanciful.Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). A mark that is generic has little or no protection. A mark that is descriptive can be distinctive if it has acquired "secondary meaning," i.e., it has come to be associated with a single source of origin. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995). In determining whether a mark has acquired secondary meaning, a variety of factors are considered, including the length, extent, and success of the trademark owner's use of the mark. American Angus Ass'n v. Sysco Corp., supra, at 818. An incontestable registration is conclusive proof that the mark is either inherently distinctive or, if descriptive, has acquired secondary meaning. Park `N Fly, Inc. v. Dollar Park Fly, Inc., 469 U.S. 189, 205 (1985). Suggestive, arbitrary, and fanciful marks are considered inherently distinctive and strong. Pizzeria Uno Corp., supra, at 1527.
Plaintiffs' CROSS AND CROWN Marks, DOME DESIGN Marks, SHEAF OF WHEAT Mark and CSM Logo, are arbitrary or fanciful marks and, therefore, are inherently distinctive.
The same is true of the GRAIN QUOTATION Mark and thecsmonitor.com domain name. The GRAIN QUOTATION Mark, which consists of a Biblical quotation and the design of a sheaf of wheat, is clearly arbitrary or fanciful as applied to newspaper services, as is the name "csmonitor" as applied to dissemination of news over the Internet.
The CHRISTIAN SCIENCE Family of Marks are arbitrary, suggestive, or descriptive. It has not been disputed that the marks, even if descriptive, have acquired secondary meaning. Plaintiffs have demonstrated in detail the length, extent, and commercial success of their use of those marks (see Moody Dec. ¶¶ 15, 54-55; Exh's 11-12), and many of the marks, as discussed above, are the subject of incontestable registrations.
CHRISTIAN SCIENCE for library services, CHRISTIAN SCIENCE for student organizations, THE CHRISTIAN SCIENCE MONITOR for a newspaper, CHRISTIAN SCIENCE QUARTERLY for a periodical.
The mark CHRISTIAN SCIENCE, as used in the CHRISTIAN SCIENCE Family of Marks, is not generic.
That a particular church publishes books and renders services with recognizable characteristics of the religion guiding the church does not convert the designation of source to a common or generic name.Stocker v. General Conf. of Seventh Day Adventists, 39 U.S.P.Q.2d 1 385, 1 398 (T.T.A.B. 1996). Even the New Jersey Supreme Court, which found "Christian Science Church" to be a generic term, acknowledged the validity and continuing viability of TFCCS' registered trademarks, including specifically CHRISTIAN SCIENCE for library services (i.e., CHRISTIAN SCIENCE Reading Rooms).
As to commercial strength, the owner's efforts to enforce its trademark rights, both by registering the marks and by objecting to unauthorized third-party use of its marks, is also evidence of a mark's strength.Dictaphone COrp. v. Dictamatic Corp., 199 U.S.P.Q. 437, 442 (D. or 1978). The commercial strength and distinctiveness of plaintiffs' marks may best be shown by the sheer volume of products plaintiffs produce:
1. the annual paid circulation of the printed edition of The Christian Science Monitor is 18.4 million;
2. more than 26 million print copies of The Christian Science Journal, Christian Science Sentinel, and Christian Science Quarterly have been distributed in the past five years;
3. more than 500,000 printed copies of Science and Health and more than 350,000 compact discs and audio cassettes, all bearing the CROSS AND CROWN Mark, have been sold in the last five years;
4. there presently are 1,402 CHRISTIAN SCIENCE Reading Rooms, 102 CHRISTIAN SCIENCE Organizations, and 1,483 CHRISTIAN SCIENCE Sunday Schools in the United States; and
5. approximately 1,950 CHRISTIAN SCIENCE Lectures are given each year.See Moody Dec. ¶¶ 15, 54. Plaintiffs have also presented undisputed evidence of use of there marks in e-commerce, including the following:
(1) the TFCCS website, which displays the DOME DESIGN Mark and makes frequent reference to the CHRISTIAN SCIENCE Family of Marks, with more than 200,000 visits since April 1998; and
(2) the csmonitor.com website, which displays the CSM NAME, SHEAF OF WHEAT, the GRAIN QUOTATION Marks, and the CSM Logo, with more than 300,000 visits per month, and almost 2.4 million page views per month.
Plaintiffs have also enforced their trademarks consistently. They have engaged in a systematic program of trademark registration; monitored and taken steps to prevent unauthorized use of their marks; and written letters to persons and organizations using the trademarks without authorization, warning them to cease and desist from further use. Moody Dec., ¶ 57; Exh. 14. Plaintiffs' marks, therefore, are strong.
b. Defendants Are Using Identical/Nearly Identical Copies of the Plaintiffs' Marks
It is undisputed that the Robinson defendants are using identical copies of the plaintiffs' CROSS AND CROWN Marks, CSM NAME Marks, SHEAF OF WHEAT Marks, GRAIN QUOTATION Mark, CSM Logo, and CHRISTIAN SCIENCE QUARTERLY Mark. Moody Dec., ¶¶ 58-60; Exh's 15-17. They also are using a nearly identical copy of the plaintiffs' DOME DESIGN Mark, lacking only the octagon that encloses the registered design.
The csmonitor.org domain name used by the Robinson defendants is virtually identical to the plaintiffs' csmonitor.com domain name. In addition, the Robinson defendants' use of the name Christian Science Beacon for a periodical publication clearly creates the misimpression that the periodical is one of the family of periodicals published by The Christian Science Publishing Society under the CHRISTIAN SCIENCE Family of Marks.
The defendants in default, Nolan and UCS ("Nolan defendants"), are also using a design mark that is very similar to the plaintiffs' CROSS AND CROWN Mark. The original design of the Nolan defendants was virtually identical to the CROSS AND CROWN Marks, except for the fact that the cross was vertical instead of tilted to one side. Moody Dec. ¶¶ 72-73; Exh. 25. The design adopted by the Nolan defendants after the commencement of this litigation is only marginally different:
Nolan has changed his imitation of the CROSS AND CROWN Mark slightly by changing the Biblical quotation that appears in a circle surrounding the cross and crown and by placing the cross and crown on a different background. The confusing similarity between the new Nolan/University of Christian Science mark and the CROSS AND CROWN marks can still be seen.See Moody Dec. ¶ 78; Exh. 27. The "University of Christian Science" name used by the Nolan defendants is also similar to the plaintiffs' CHRISTIAN SCIENCE Family of Marks, which refer to analogous educational services, such as CHRISTIAN SCIENCE Reading Rooms, CHRISTIAN SCIENCE Organizations (i.e., student organizations at colleges and universities), CHRISTIAN SCIENCE Sunday Schools, CHRISTIAN SCIENCE Lectures and the CHRISTIAN SCIENCE Board of Lectureship. Moody Dec. ¶¶ 49-5 5; Exh. 11-1 2.
The term "Board of Education of the Church of Christ, Scientist," used on the Nolan defendants' website, is also confusingly similar to terms uniquely associated with TFCCS. It is nearly identical to the term "Board of Education of The First Church of Christ, Scientist" used by TFCCS and specifically identified in the Church Manual. Moody Dec. ¶¶ 10, 74. "Church of Christ, Scientist" is also part of the name of TFCCS and the more than 1,500 branch Churches of Christ, Scientist throughout the United States. Moody Dec. ¶¶ 5-8.
c. Similar Goods and Services
Likelihood of confusion is increased if the parties offer the same or similar services or if their products or services are offered through the same retail outlets to the same customers. Pizzeria Uno Corp., supra, at 1535. The Robinson defendants offer products and services that are similar to those offered by the plaintiffs, and plaintiffs and the Robinson defendants use the Internet to offer those products and services. See plaintiffs' brief for examples. The website of the Nolan defendants purports to provide information, services and/or products about spiritual healing as well as religious instruction, which are the stock-in-trade of plaintiffs' commercial ventures.
d. Plaintiffs' Marks Intentionally Copied
Intentional copying of a plaintiff's mark gives rise to a presumption of likelihood of confusion. Osem Food Indus., Inc. v. Sherwood Foods, Inc., 917 F.2d 161, 164-65 (4th Cir. 1990). Where a defendant adopts a mark that is similar to a plaintiff's mark with knowledge of that plaintiff's prior use, the court is entitled to infer that the defendant intended to trade on the goodwill in the plaintiff's mark. Lone Star Steakhouse Saloon, Inc., supra, at 937. To a certain extent, defendants attempt to justify their use of copies or slightly altered copies of the protected marks under a theory that they are the true repository of the Christian Science faith. Regardless of who is more faithful to the teachings of Mary Baker Eddy (an issue which is beyond the jurisdiction of this tribunal), subjective good faith is no defense to trademark infringement. Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 596 (5th Cir. 1985).
d. Actual Confusion
A trademark owner need not demonstrate that there has been actual confusion in order for a court to find likelihood of confusion. Pizzeria Uno Corp., Supra, at 1527. Evidence of actual confusion is entitled to "substantial weight" because it is "the most compelling evidence of likelihood of confusion." Lone Star Steakhouse Saloon, Inc., supra, at 937.
Plaintiffs have offered evidence of actual confusion. The editor-in-chief of The Christian Science Monitor was contacted by a representative of Bayer Corporation about an article that had appeared in the Robinson defendants' "Christian Science Monitor of Bakersville, North Carolina" on his csmonitor.org website. That article stated that the president of Proctor Gamble had announced that he was associated with the Church of Satan, and it called for a boycott of all Proctor Gamble products. The Bayer representative wrote to advise that one of the products specifically named in the article, ALLEVE, was manufactured by Bayer, not Proctor Gamble, and formally requested that The Christian Science Monitor "print a correction." Moody Dec., Exh. 29. Actual confusion has occurred.
e. The Sophistication of the Buyers
The court takes notice from the pleadings that the customers of both the plaintiffs and the defendants can run the full gambit of sophistication.
From both a qualitative and quantitative analysis of the factors, the likelihood of confusion is patently great. Confusion has even been documented as to a most sophisticated user, the Bayer Corporation.
3. Irreparable Injury
A conclusion that a plaintiff has been irreparably injured "regularly follows" from a finding of a likelihood of confusion. American Angus Ass'n, supra, at 817. Plaintiffs have also provided evidence of additional injuries that can only be redressed by an injunction.
The activities of the Robinson defendants disparage the plaintiffs and their trademarks. The TRMI website has from time to time offered something called "The Dominion of Melchizedek Bible Lessons," which purport to have been taken from the Christian Science Quarterly magazine published by The Christian Science Publishing Society. In those Dominion of Melchizedek Bible Lessons, the Robinson defendants sometimes substitute, when quoting from the Christian Science textbook, the word "Melchizedekianity" for "Christian Science" and the word "Melchizedekian" for "Christian Scientist" (Moody Dec., ¶ 64; Exh. 18). Exhibits attached to the Moody declaration, which appear to drawn from reliable government websites, report that the Dominion of Melchizedek is a nonexistent country that is not recognized by the United States, consists of an uninhabited (and apparently underwater) atoll in the Pacific Ocean and a barren slice of Antarctica. The materials also indicate that the Dominion of Melchizedek may be involved in illegal activities. An alert about the Dominion of Melchizedek has been issued by the United States Office of the Comptroller of the Currency to the chief executive officers of all national banks and to all state banking authorities. The association of the Dominion of Melchizedek with The Christian Science Quarterly and a website prominently displaying the plaintiffs' marks tarnishes TFCCS and The Christian Science Publishing Society.
As briefly discussed above, the false mis-association of the plaintiffs with the Robinson defendants' "Christian Science Monitor of Bakersville, North Carolina," which publishes articles about how Proctor Gamble is in league with Satan, tarnishes the reputation of the plaintiffs, subjects them to unwarranted inquiry from confused members of the public, and tends to diminish the journalistic integrity of the renown newspaper, The Christian Science Monitor.
Where likelihood of confusion is caused by a defendant's duplication of a plaintiff's mark,
words which indicate it was not authorized by the trademark owner are insufficient to remedy the illegal confusion. Only a prohibition of the unauthorized use will sufficiently remedy the wrong.University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1547 (11th Cir. 1983).
The undersigned, therefore, will recommend that summary judgment be granted against all defendants, including those in default; a permanent injunction issue prohibiting the use of the plaintiffs' marks; and with respect to Defendant Robinson, a mandatory injunction directing him to transfer his infringing csmonitor.org domain name to the plaintiffs within 14 days or, absent that, Network Solutions, Inc., be respectfully directed to transfer ownership of csmonitor.org to plaintiffs. See Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F. Supp.2d 496 (E.D. Va. 1999); c.f. ICANN Uniform Dispute Resolution Policy, Section 3. See also new § 43(d), of the Lanham Act, which provides that "a court may award injunctive relief, including the . . . transfer of the domain name to the plaintiff."
The Nolan defendants were duly served by publication pursuant to an Order of this Court. Certificates of service show that service was effected pursuant to Rule 4(u) of the North Carolina Rules of Civil Procedure. The time permitted for those defendants to answer elapsed on December 27, 1999, and they have failed to answer. Accordingly, judgment by default against the Nolan defendants should be allowed through granting the injunctive relief sought in the complaint.
V. Other Pending Matters
From the outset, the undersigned has recommended that pleadings submitted by the Robinson defendants that are not based on recognized law be stricken. Throughout this recommendation, the undersigned has attempted to draw from their pleadings the thrust of their arguments and address such concerns, even though the issues were not interposed in good faith under Rule 11.
The docket is peppered with motions by the Robinson defendants which have as their genesis reliance upon purported opinions of courts that do not exist and failure to recognize prior decisions of courts to which this court must give full faith and credit.
The Robinson defendants have filed a Motion for Summary Judgement, Motion to Postpone Judgment Pending Answers to Interrogatories, an "Objection for the Record," a Supplemental Motion for Summary Judgment and Dispositive Relief, Defendants' Answer Confirming Motion for Summary Judgment On The Pleadings, and numerous books, tapes, and other published material. To the extent relief is sought, the undersigned recommends summary denial of all such pleadings.
Finally, the Robinson defendants have asserted a number of counterclaims over which this court does not have jurisdiction. A defendant's counterclaim must be dismissed if the defendant can prove no set of facts that would entitle it to relief and the plaintiff, therefore, is entitled to judgment as a matter of law. In reviewing the defendants' pleadings on such a motion, the court must accept as true that defendants' well-pleaded allegations of fact. Ibarra v. United States, 120 F.3d 472, 474 (4th Cir. 1997). Neither conclusory allegations nor legal conclusions masquerading as factual conclusions will suffice.Bender v. Suburban Hospital, Inc., 159 F.3d 186, 192 (4th Cir. 1998). The Robinson defendants have asserted counterclaims and supplemental counterclaims alleging, in conclusory fashion, various frauds and breaches of fiduciary duty by the Board and The Christian Science Publishing Society. The issues raised by the counterclaims are not justiciable by this court because they involve questions of church polity protected by the Free Exercise Clause of the first amendment.
RECOMMENDATION
IT IS, THEREFORE, RESPECTFULLY RECOMMENDED that plaintiffs' Motion for Summary Judgment be ALLOWED and that judgment be entered in favor of plaintiffs and against ALL defendants permanently enjoining them from using the following marks:
1. the federally registered CROSS AND CROWN Marks;
2. the federally registered DOME DESIGN Marks;
3. the Christian Science Monitor Marks, consisting of
a. the federally registered CSM NAME Marks,
b. the federally registered SHEAF OF WHEAT Marks,
c. the federally registered GRAIN QUOTATION Mark,
d. the common law CSM Logo, a design mark consisting of the three foregoing marks on a black rectangular background, and
e. the common-law mark CSMONITOR as used in the plaintiffs' csmonitor.com domain name; and
4. the CHRISTIAN SCIENCE Family of Marks, comprising
a. nine (9) federal registrations for CHRISTIAN SCIENCE, CHRISTIAN SCIENCE JOURNAL, CHRISTIAN SCIENCE QUARTERLY, THE HERALD OF CHRISTIAN SCIENCE, THE CHRISTIAN SCIENCE MONITOR, and THE CHRISTIAN SCIENCE SENTINEL for various educational and informational products and services, and
b. CHRISTIAN SCIENCE as a common-law trademark for various informational and educational services, such as CHRISTIAN SCIENCE Sunday Schools, CHRISTIAN SCIENCE Organizations (student organizations at colleges and universities) and CHRISTIAN SCIENCE Lectures.IT IS FURTHER RECOMMENDED that a mandatory injunction be issued as to defendant David E. Robinson, directing him to transfer his infringingcsmonitor.org domain name to the plaintiffs within 14 days and, absent such, that Network Solutions, Inc., be respectfully directed to transfer ownership of csmonitor.org to plaintiffs; and
IT IS FURTHER RECOMMENDED that the Robinson defendants' counterclaims, supplemental counterclaims, and all motions, pleadings, paperwritings, submissions, and other material filed which is not relevant to the Rule 56 inquiry as to plaintiffs' motion be DISMISSED as nonjusticiable, inasmuch as they either involve impermissible first-amendment inquiry into church polity or have been interposed in violation of Rule 11 through citation of unrecognized authority.
The parties are hereby advised that, pursuant to 28, United States Code, Section 636(b)(1)(C), written objections to the findings of fact, conclusions of law, and recommendation contained herein must be filed within ten (10) days of service of same. Failure to file objections to this Memorandum and Recommendation with the district court will preclude the parties from raising such objections on appeal. Thomas v. Arn, 474 U.S. 140 (1985), reh'g denied, 474 U.S. 1111 (1986); United States v. Schronce, 727 F.2d 91 (4th Cir.), cert. denied, 467 U.S. 1208 (1984).