Birthright v. Birthright, Inc.

• Decision Date: 23 July 1993
• Docket Number: Civ. A. No. 92-1837(SSB).
• Parties: BIRTHRIGHT, Plaintiff, v. BIRTHRIGHT, INC. and Birthright of Woodbury, Inc., Defendants.
• Court: U.S. District Court — District of New Jersey

827 F. Supp. 1114

BIRTHRIGHT, Plaintiff, v. BIRTHRIGHT, INC. and Birthright of Woodbury, Inc., Defendants.

Civ. A. No. 92-1837(SSB).

United States District Court, D. New Jersey.

July 23, 1993.

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Susan Singer, Singer & Goger, Newark, NJ, Roberta Jacobs-Meadway, Panitch Schwarze Jacobs & Nadel, Philadelphia, PA, for plaintiff.

Thomas F. McGuire, III, Pennsauken, NJ, and Robert J. Brooks, Washington, DC, for defendants.

AMENDED FINDINGS OF FACT AND CONCLUSIONS OF LAW (pursuant to order dated July 21, 1993)

BROTMAN, District Judge.

Before the court is a trademark infringement and unfair competition case brought by plaintiff Birthright under the Lanham Act, 15 U.S.C. § 1051 et seq, and the common law. Count I of plaintiff's second amended complaint states a claim for trademark infringement under Section 32, 15 U.S.C. § 1114. In count II, plaintiff makes a claim of unfair competition under Section 43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A). In count III, plaintiff alleges a claim of false or misleading representations of fact under Section 43(a)(1)(B), 15 U.S.C. § 1125(a)(1)(B). Finally, count IV is a pendant state claim of common law unfair competition. Plaintiff seeks injunctive and monetary relief, as well as an award of attorneys' fees. Also before the court are defendants' counterclaims for common law unfair competition, breach of contract, and defamation.

Plaintiff filed suit on April 24, 1992. The court held hearings on the parties' motions for preliminary relief on July 17, August 10, and August 11, 1992. On October 5, 1992, the court, with the consent of the parties, ordered the consolidation of the hearings on preliminary relief with the trial on the merits pursuant to Federal Rule of Civil Procedure 65(a)(2). On December 26, 1992, defendants submitted proposed findings of fact and proposed conclusions of law. On December 28, 1992, plaintiffs submitted the same. After careful consideration of the entire record in this matter, the court enters the following findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).

Findings of Fact

1. The "Birthright" name is a service mark, registered with the United States Patent Office in the name of plaintiff Birthright. The "Birthright" name functions to identify the kind of pregnancy counselling services offered by the entities affiliated with the Birthright movement. Pl.'s Exs. 7, 7A, 7B.

2. The stylized "B" logo is an unregistered service mark that also functions to identify the kind of pregnancy counselling services offered by the entities affiliated with the Birthright movement. The logo consists of the letter "B" in heavy print, surrounding the silhouette of a telephone handset that resembles a fetus. Defs.' Ex. 5 (Louise Summerhill, The Story of Birthright 19 (1973)).

I. The Parties, Witnesses, and Key Figures

3. Plaintiff Birthright is a Canadian corporation, organized on February 4, 1969 under the laws of Ontario by Louise Summerhill ("mother Louise") and others, with offices in Toronto, Canada. Pl.'s Ex. 19.

4. Mother Louise was the founder and dominating figure in the Birthright movement from its origins until the time of her death in August 1991. II Tr. at 46, 53, 83, 210. At all times relevant to this litigation, mother Louise's actions were taken in her official capacity as a member of the Board of Directors of plaintiff Birthright. II Tr. at 276.

5. Louise R. Summerhill ("daughter Louise") is one of three co-presidents and a member of the board of directors of Birthright. She is the daughter of mother Louise. I Tr. at 24, 31.

6. Defendant Birthright, Inc. is a United States corporation, organized on June 17, 1972 under the laws of New Jersey by mother Louise and others. Defs.' Ex. 1; II Tr. at 209.

7. Joan Evelyn Coleman has been active in the Birthright movement since the summer of 1971 and currently serves on the board of directors of Birthright, Inc. She is also the director of a Birthright chapter in Alexandria, Virginia, and holds the positions of regional consultant and regional representative. II Tr. at 154-55.

8. Denise Cocciolone is the executive director and member of the board of directors of defendant Birthright Inc. and a member of the board of directors of Birthright of Woodbury ("Woodbury Birthright"). Defs.' Ex. 11 ("Aff. of Cocciolone") ¶ 1. She is the leading figure of both Birthright Inc. and Woodbury Birthright, and controls and directs these two entities. II Tr. at 295. Cocciolone first became involved in the Birthright movement in 1970, and she formerly served as the national director for Birthright in the United States. II Tr. at 202.

9. Terry Weaver is a member of the board of directors of Birthright and the national director for Birthright in the United States. She assumed these positions in September 1991. She first became active in the Birthright movement in 1969, when she founded an Atlanta chapter. She has also served as a regional consultant and as a conational director for Birthright. II Tr. at 86, 87, 92.

10. Bernadette Sanders is the director of the Wichita, Kansas Birthright Center, which she founded in 1971. She also serves as a regional consultant for Birthright. II Tr. at 127.

11. Defendant Woodbury Birthright is a United States corporation, organized on November 17, 1975 under the laws of New Jersey. Pl.'s Ex. 58. Its offices are located in Woodbury, New Jersey. Before its incorporation, Woodbury Birthright operated as an unincorporated entity since December 1970. II Tr. at 204. On December 1, 1971, plaintiff Birthright issued Woodbury Birthright a charter document making the latter a "Chartered Member of Birthright" with the right to use the "Birthright" name.¹ Woodbury Birthright is located at the same address as Birthright, Inc., and is directed and controlled by Denise Cocciolone. II Tr. at 272, 295; Defs.' Ex. 10; Decl. of Berney, Ex. F.

II. Goals and Activities of the Birthright Organizations

12. The Birthright movement comprises non-profit, charitable, interdenominational, and non-political organizations that provide emergency services to counsel women with crisis pregnancies. Based on the idea that every pregnant women has the right to give birth and every unborn child has the right to live, the Birthright movement encourages women with unplanned and/or unwanted pregnancies to bear their babies and not to have abortions. I Tr. at 31; Pl.'s Ex. 20 ("Decl. of Daughter Louise") ¶ 6.

13. Formulated in 1971, the Birthright Charter articulates the underlying philosophy and guiding principles of the Birthright movement.² I Tr. at 36-37; II Tr. at 131.

14. The Birthright Charter also provides the standards that govern the activities of the Birthright chapters. I Tr. at 36-37; Pl.'s Ex. 4 ("Decl. of Birthright Administration") ¶ 5; Pl.'s Ex. 65 ("Decl. of Weaver"), Ex. A.

15. The Declaration of Birthright Administration outlines the administrative structure of the Birthright movement and the relationship among the entities comprising it. I Tr. at 43.

16. Article I of the Birthright Charter states that:

The guiding principle of every Birthright Chapter shall be:

"It is the right of every pregnant woman to give birth, and the right of every child to be born."

Pl.'s Ex. 1; Defs.' Ex. 10.

17. The Birthright Charter states the following aims for all entities affiliated with the Birthright movement:

1. To uphold at all times, that every pregnant woman has the right to whatever help is needed to bring her child to term.

2. To attempt to effect in every possible way, a decrease in the number of abortions by encouraging pregnant girls and women to have their babies, that is, to offer them the alternative to abortion.

3. To maintain a crisis centre where any pregnant girl or woman, wed or unwed, may find help as near as her telephone.

4. To create and maintain in society an awareness of the needs of pregnant girls and women, to remove the social stigma associated with the unwed mother and her child and to encourage a more humane understanding of her and her problems.

Pl.'s Ex. 1; Defs.' Ex. 10.

18. The Birthright Charter articulates the following policies, to which all entities affiliated with the Birthright movement must adhere:

1. To refrain, at all times, and in every situation from giving aid to induced abortion, directly or indirectly.

2. To refrain in every instance from offering or giving advice on the subjects of contraception or sterilization, and to refrain from referring any person to another person, place or agency for this type of advice.

3. To remain strictly and completely separate from all lobbying groups, and from activities affecting abortion legislation.

4. To remain strictly inter-denominational, in name, function and advertising.

5. To give help without charge for normal Birthright services.

6. To refer all matters concerning adoption and adoption procedures to legally authorized agencies.

7. To offer person to person help, giving love, understanding, and all needed moral, emotional and practical support to every pregnant woman who requests it, employing the use of non-professional workers. Birthright does not function solely as a referral agency although use is made of the professional service agencies.

8. To keep all services strictly confidential refusing to discuss any girl's problems with any person or agency without her consent, and to preserve her anonymity if she so desires.

9. To use the official and registered symbol, the stylized "B", on all official Birthright stationary and documents and when possible, in all advertising.

Pl.'s Ex. 1; Defs.' Ex. 10.

19. To supplement and clarify the Birthright Charter, the Birthright Board has the exclusive authority to issue policy directives. These policy directives are "as important as any of the terms of the Charter," and all entities and individuals connected to the Birthright movement...