Ball v. American Trial Lawyers Assn.

• Citation: 92 Cal.Rptr. 228,14 Cal.App.3d 289
• Court: California Court of Appeals
• Decision Date: 13 January 1971
• Parties: Joseph A. BALL, Bernard G. Segal, and Edward L. Wright, individually and in behalf of the American College of Trial Lawyers, an unincorporated association, and in behalf of its members, Plaintiffs and Appellants, v. AMERICAN TRIAL LAWYERS ASSOCIATION, an unincorporated association, Defendant and Respondent. Civ. 34330.

Page 228

92 Cal.Rptr. 228

14 Cal.App.3d 289

Joseph A. BALL, Bernard G. Segal, and Edward L. Wright, individually and in behalf of the American College of Trial Lawyers, an unincorporated association, and in behalf of its members, Plaintiffs and Appellants, v. AMERICAN TRIAL LAWYERS ASSOCIATION, an unincorporated association, Defendant and Respondent.

Civ. 34330.

Court of Appeal, Second District, Division 5, California.

Jan 13, 1971.

As Modified on Denial of Rehearing Feb. 10, 1971.

Hearing Denied March 9, 1971.

Kaplan, Livingston, Goodwin, Berkowitz & Selvin and Herman F. Selvin, Los Angeles, for plaintiffs-appellants.

Spangenberg, Hasenflue, Shibley & Traci and Craig Spangenberg, James H. Ackerman, Bodle & Fogel, Pollock, Pollock & Fay, Armstrong, Lloyd & Caput and Orville A. Armstrong, Los Angeles, for defendant-respondent.

AISO, Associate Justice.

Plaintiffs Joseph A. Ball, Bernard G. Segal, and Edward L. Wright, individually and in behalf of the American College of Trial Lawyers and its members, instituted this action sounding in 'unfair competition' against defendant American Trial Lawyers Association ¹ seeking to enjoin and restrain defendant from 'using in any way the name American Association of Trial Lawyers (sic), or any other name confusingly, misleadingly or deceptively similar to the name American College of Trial Lawyers.' The trial court, sitting without a jury, rendered judgment in favor of defendant and denied plaintiffs any relief. Plaintiffs appeal from the adverse judgment. We have concluded that the record before us supports the claim for relief and that the judgment should be reversed for the reasons which we shall set forth below.

I.

The trial court's delineation of the background facts and of the evidence in its 'Memorandum Opinion' is fair and full. We, therefore, adopt so much thereof as we deem necessary to an intelligent comprehension of the issues raised on this appeal, with the addition of a few footnotes and insertions or deletions in interests of clarity or brevity.

'The plaintiffs charged and proved that they were did are authorized to bring the instant action on behalf of the plaintiffs, its members and the 'College,' and that the question is and was of common and general interest to the American College of Trial Lawyers.

'Plaintiffs' association limits its membership in any one state to not more than one percent of the lawyers licensed to practice in that state (except by unanimous consent of the board) and further requires that a member has practiced for at least 15 years and has been the chief counsel in at least fifty trials, be actively engaged in trial work, have high ethical standards and personal integrity, good morals and character, general legal learning and superior competency in advocacy, and be nominated by a member (now a member is nominated by a member and seconded by two others) and approved by the 'Board of Regents' of the plaintiffs' association. It was the express purpose of the plaintiffs' association to have a group of outstanding trial lawyers as members of the American College of Trial Lawyers and they sought at all times to make membership a mark of professional distinction. At its beginning in 1950 its scope had been principally as an honorary organization. It has expanded its activities and its interests. Its first expansion of interest was the preparation of a (Code of Trial Conduct) from 1954 to 1956, which was printed and circulated extensively, including republication in the American Bar Association Journal in March of 1957. ²

'Other than the attention gained from the (Code of Trial Conduct) there was little national publicity for the plaintiffs' association until 1962. Commencing in 1962 the plaintiffs' association commenced seminars and lectures at various law schools throughout the United States, and aided the Moot Court competition throughout the United States. Thereafter it expanded progressively the scope of its work in behalf of the teaching and practice of advocacy both by itself and separately in conjunction with the American Bar Association and American Law Institute. Its membership is 1,802 and seventeen honorary members. Notwithstanding the limited membership, approximately 30 percent of the 250 delegates to the American Bar Association convention are members of the College. The College and its membership are both influential and command prestige.

'In August 1946 a national meeting of state industrial commission officials was held in Portland, Oregon. Some lawyers attended, who practiced chiefly in the workmen's compensation field, and presented the idea of an association interested in the rights of workmen injured in industrial accidents. The name selected was 'National Association of Claimants Compensation Attorney,' abbreviated to NACCA. In 1948 NACCA admitted some admiralty lawyers, and by 1949 had begun to admit lawyers specializing in FELA and tort cases. In 1948 the association began publishing its own Law Journal, with articles written chiefly by members. Eventually the organization engaged a professional staff to write and edit the Journal. Dean Roscoe Pound was the first full time Editor-in-Chief, and was followed after his retirement by Thomas Lambert, Jr., the former Dean of Stetson Law School.

'During the 1950's the organization's growth came largely from lawyers who practiced in the general tort field rather than in the workmen's compensation specialty. The defendant association commenced to publish a monthly 'newsletter' to members and subscribers, ³ which deals primarily with torts and products liability matters; and in 1965 began publication of a bi-monthly magazine named TRIAL, which now has circulation of approximately 70,000 to members and subscribers and others. The latter magazine is of general interest to the legal profession. Since 1948 the association has conducted seminars relating to trial practice in the tort field; the scope and breadth of said seminars has increased during the past decade and they now, and for a few years past, have related also to other subjects such as the defense of criminal causes. During the year 1966 approximately sixty seminars in forty states were given by or under the auspices of the association on the single subject of 'Damages and Settlements.' Numerous other seminars are given throughout the country, and handbooks in connection with such seminars are ordinarily prepared and distributed to those who register for the seminar. Attendance at the seminars is not limited to members of the defendant association. The defendant association also appears and files Amicus briefs in matters that it feels are of concern to the association and its members, and appears at or is represented at legislative and administrative hearings on matters which it believes are of concern to trial lawyers, with particular emphasis on such subjects as the attempted curtailment of jury trial, statutory limitations of awards, the Warsaw Convention Air Liability Treaty, 49 Stat. 3000, and judicial selection.

'The defendant organization was known originally from 1946 to 1960 as the 'National Association of Claimants Compensation Attorneys'; from 1960 to 1964 as 'National Association of Claimants Counsel of America'; and from August 2, 1964 to date as 'American Trial Lawyers Association.' Also, during the period from 1946 to 1964 it was commonly called or referred to as 'NACCA.'

(In connection with defendant's name change in 1964.) 'The Board of Governors did not adopt any of the names recommended by its committee appointed for the purpose of selecting a new name, but recommended to the membership that the name 'The American Trial Lawyers Association' be adopted as the new name of the organization. At the annual convention in August of 1964 more than two-thirds of the more than one thousand members present voted in favor of a constitutional amendment adopting the name of 'American Trial Lawyers Association.' At present the organization is known also by the capital letters 'ATL' and sometimes by the letters 'ATLA'.

'Although the constitution prohibits taking into membership those attorneys primarily engaged in the defense of tort cases and requires the members to regularly and generally represent injured persons, no instance of enforcement of this provision has been introduced by any party to the instant action. Its membership in 1964 was 14,223 and in 1967 it was 23,611. Its seminar attendance from 1964 to 1968 was approximately 28,000 paid and 8,000 free. (The latter consisting of law students, first-year practitioners and others.) It sold in excess of 15,000 books relating to or arising from the seminars, in addition to those furnished to the persons attending. The defendant has 36 employees, including not less than six lawyers.

'As its then president expressed it in speaking of the defendant:

'It was for lawyers who either were interested and engaged in matters affecting and involving the litigating process * * * who had a desire * * * to be educated in this area * * *. Amongst our members were literally droves of lawyers who engaged in many areas of trial law other than tort work, particularly in the smaller cities. * * *

'Our thrust was to try to broaden this and develop a Bar that would be more sensitive to the needs of our courts and our judicial system.'

'The name adopted was suggested by Thomas Lambert, the editor of their newsletter, and a discussion did occur as to whether the American College of Trial Lawyers would 'object' and it was decided by the Board that it would not because 'American' occurs in the names of hundreds of organizations, including many legal organizations, and, in conjunction with two common words (Trial Lawyers), was descriptive of the scope of the defendant association; they knew little of the plaintiffs' association, thought it was mostly honorary and social, felt its selectivity consisted in part in the exclusion of lawyers who acted primarily on...