Bros. of the Wheel M.C. Exec. Council, Inc. v. Mollohan, Civil Action No. 2:11–cv–00104.

• Court: United States District Courts. 4th Circuit. Southern District of West Virginia
• Writing for the Court: THOMAS E. JOHNSTON
• Citation: 909 F.Supp.2d 506
• Parties: BROTHERS OF the WHEEL M.C. EXECUTIVE COUNCIL, INC., Plaintiff, v. Gerald R. MOLLOHAN, et al., Defendants.
• Docket Number: Civil Action No. 2:11–cv–00104.
• Decision Date: 14 November 2012

909 F.Supp.2d 506

BROTHERS OF the WHEEL M.C. EXECUTIVE COUNCIL, INC., Plaintiff,
v.
Gerald R. MOLLOHAN, et al., Defendants.

Civil Action No. 2:11–cv–00104.

United States District Court, S.D. West Virginia.

Nov. 14, 2012.

[909 F.Supp.2d 511]

Richard J. Lindroth, South Charleston, WV, for Plaintiff.

Gerald R. Mollohan, St. Albans, WV, pro se.

MEMORANDUM OPINION AND ORDER
THOMAS E. JOHNSTON, District Judge.

Pending before the Court are several motions, namely: (1) Defendant Gerald R. Mollohan's motions to dismiss the complaint [Dockets 5, 13, 20, 26]; (2) Plaintiff Brothers of the Wheel M.C. Executive Council, Inc.'s motion for default judgment [Docket 14] and Defendant's motion to deny the motion for default judgment [Docket 15]; and (3) Plaintiff's motion for summary judgment [Docket 17]. On April 7, 2011, this action was referred to the Honorable Mary E. Stanley, United States Magistrate Judge, for submission to this Court of proposed findings of fact and recommendation for disposition (“PF & R”), pursuant to 28 U.S.C. § 636(b)(1)(B). (Docket 8.) Magistrate Judge Stanley has submitted her PF & R and recommended that the Court grant the motions to dismiss as to Counts III through VI of the complaint and grant Plaintiff's motion for summary judgment on the remaining counts, Counts I and II. (Docket 56 at 16–50.) Magistrate Judge Stanley also recommended

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that the Court deny Plaintiff's motion for default judgment, grant Defendant's motion to deny the motion for default judgment, and deny as moot Defendant's motion for court injunction.¹ ( Id. at 33–35, 57.) On January 6, 2012, following a court-approved extension of time, Defendant filed timely objections to the PF & R. (Docket 54.) Plaintiff responded on January 16, 2012. (Docket 55.) For the reasons that follow, the PF & R is ADOPTED except as to the recommended finding on treble damages.

I. FACTUAL BACKGROUND & PROCEDURAL HISTORY

Plaintiff Brothers of the Wheel M.C. Executive Council, Inc. (“Plaintiff” or “BOTW”) filed the complaint in this action on February 15, 2011, alleging that Defendant Gerald R. Mollohan (“Defendant” or “Defendant Mollohan”), a former member of Plaintiff's organization, violated federal and state trademark laws by developing and using in commerce a mark that is confusingly similar to the collective membership mark Plaintiff uses to identify its motorcycle club. (Docket 1 at 1–3.) Plaintiff also claims that Defendant Mollohan is diluting its allegedly famous mark and engaging in “cyber-piracy.” ( Id. at 1.) The complaint seeks to enjoin Defendant from using the allegedly infringing mark, as well as compensatory and statutory damages. ( Id. at 12–15.) Also named as defendants alongside Defendant Mollohan are fifty John Doe defendants, which Plaintiff states are “persons to whom Gerald Mollohan sold to or allowed to use the trademark protected items belonging to Brothers of the Wheel.” ( Id. at 6.)

On March 4, 2011, Defendant Mollohan filed his first motion to dismiss, in which he argues: (1) that there is no evidence of actual confusion by the public between his mark and Plaintiff's mark; and (2) that while “[i]t may be true that there are some similarities in the two marks,” likelihood of confusion does not exist. (Docket 5 at 2–4.) On April 21, 2011, Magistrate Judge Stanley held a status conference and ordered Defendant to file an answer to the complaint by May 6, 2011. (Docket 11.) Instead, Defendant Mollohan filed a second motion to dismiss on May 5, 2011, which is nearly identical to his first motion. (Docket 13.) On June 2, 2011, Plaintiff filed a motion for default judgment, Docket 14, which Defendant Mollohan opposed via the “motion to deny plaintiff's motion for default judgment” that he filed on June 17, 2011, Docket 15. On July 19, 2011, Plaintiff filed its motion for summary judgment and permanent injunction. (Docket 17.). Magistrate Judge Stanley ordered Defendant Mollohan to respond to the motion by August 5, 2011. (Docket 18.) Defendant filed his response on August 5, 2011, Docket 19, and Plaintiff replied on August 10, 2011, Docket 21. Defendant Mollohan filed a sur-reply of sorts on August 18, 2011, which he titled “Defendant's Response to Plaintiff's Motion of August 3, 2011 [sic] Regarding Magistrate Stanley's ‘Order.’ ” (Docket 23.) Defendant Mollohan also filed a third motion to dismiss on August 5, 2011, Docket 20, and a fourth motion to dismiss on September 20, 2011, Docket 26. These two motions to dismiss are also largely identical in argument to one another. On September 6, 2011, the defendant filed a “Motion for Court Injunction(s),” wherein he alleges harassment on the part of Plaintiff and its members and requests that BOTW and its officers and members be forbidden from

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communicating with the defendants and from coming within one hundred yards of the defendants. (Docket 24.) On September 28, 2011, in the face of duplicative and counter-productive filings from both Plaintiff and Defendant Mollohan, Magistrate Judge Stanley stayed discovery and halted the filing of any additional motions until further notice. (Docket 29.) With the exception of objections to the PF & R and Plaintiff's response thereto, this order remains in effect, and the Court therefore presently considers only Magistrate Judge Stanley's PF & R, Defendant Mollohan's objections to the PF & R, and Plaintiff's response to Defendant's objections (as well as those filings that precede the stay order).

The PF & R recites facts from the complaint and the various filings by the parties. The relevant facts relied upon by Magistrate Judge Stanley are largely, if not wholly, unchallenged by either party in the objections and response. Furthermore, Defendant Mollohan was given several opportunities to challenge any facts presented by Plaintiff with evidentiary support, such as by affidavit, but he failed to do so.² In contrast, Plaintiff submitted two affidavits: one from its national vice president that, inter alia, verifies the complaint,³ and one from an individual claiming

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actual confusion between Plaintiff's mark and Defendant Mollohan's mark. ⁴ (Dockets 17–1, 1–5.) Those facts are summarized from the PF & R as follows.

Brothers of the Wheel is a motorcycle club that first began in 1977 and has chapters in West Virginia, Ohio, and Kentucky. According to the complaint, Plaintiff engages in fund-raising for charities, raising at least $150,000 per year for various charities. (Docket 1 at 2–3.) Plaintiff states that it has engaged in substantially exclusive and continuous use of the words “Brothers of the Wheel” and its composite marks for the motorcycle club since 1977, and that it has used its mark continuously since 1977. ( Id.) Plaintiff applied for trademark registration of a word mark “Brothers of the Wheel” and a corresponding design featuring those words on August 7, 2003. On February 15, 2005, the United States Patent and Trademark Office (“USPTO”) formally issued to Brothers of the Wheel M.C. Executive Council, Inc. the mark and assigned Registration Number 2926222. ( Id. at 3.) The trademark protects the name “Brothers of the Wheel M.C.” and the logo of the organization.

The by-laws of Plaintiff BOTW provide that the club retains ownership of the trademark-protected patch and items but grants a license to members and retirees to use the protected items. (Docket 1–3 at 8–10.) Defendant Mollohan was formerly a full member of Plaintiff. In accordance with Plaintiff's by-laws, Mollohan received permission to use items featuring the club's trademark and agreed to follow the by-laws as a condition of his membership. (Docket 1 at 3–4.) Defendant Mollohan retired from Plaintiff in 2000 and was given permission to use the trademarked protected items on a limited basis, again in accordance with the by-laws of the club. ( Id. at 4.) At some point following his

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retirement from Plaintiff, Defendant started his own motorcycle club, which he named “Brothers of the Wheel Nomads.” ( Id.) Plaintiff claims that Defendant Mollohan has been using the initials “BOTW” and the Brothers of the Wheel mark in derogation of his license to use the protected items and in violation of federal and state laws protecting trademarks. ( Id.)

The following are the respective marks of the parties, with Plaintiff's mark appearing on the first and Defendant Mollohan's marks appearing thereafter: ⁵

IMAGE


IMAGE

Magistrate Judge Stanley described Plaintiff's mark as follows:

On the left side of the eagle is a battle axe, and an American flag is on the right side. As used by the plaintiff in its patches, the outer circle containing “Brothers of the Wheel M.C.” has a white background, and the inner circle has a yellow background; the border that is in between the two consists of orange-colored chain links. See Trademark Documents for USPTO Registration No. 2926222, Section 8 and 15 filing of January 11, 2011, at 3.1

(Docket 31 at 5.) She described Defendant's (original) mark as follows:

On the left side of the eagle is an American flag, and a battle-axe is on the right side. The defendant's logo has a[n] all-yellow background; the border that is in between the inner and outer circles consists of black-colored chain links. See, e.g., Trademark Documents for USPTO Serial No. 85241480, Drawing filing of February 14, 2011.2

( Id. at 6.)

Defendant Mollohan has been using his mark in conjunction with several social networking web sites, and indeed, he continues to display his mark and the words

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“BOTW MC Nomads” on his personal Facebook account as of the issuance of this memorandum opinion and order. See Facebook—Chewy Mollohan, http:// www. facebook. com/ chewybotw? ref= ts (last visited September 28, 2012). ⁶

Plaintiff's motion for summary judgment states that Defendant Mollohan is using its marks on several additional social networking websites, some of which were verified by Magistrate Judge...