Christian Sci. Bd. of Directors v. Robinson

• Decision Date: 04 October 2000
• Docket Number: No. Civ. 1:99CV148.,Civ. 1:99CV148.
• Citation: 123 F.Supp.2d 965
• Court: U.S. District Court — Western District of North Carolina
• Parties: The CHRISTIAN SCIENCE BOARD OF DIRECTORS OF the FIRST CHURCH OF CHRIST, SCIENTIST; and The Christian Science Publishing Company, Plaintiffs, v. David E. ROBINSON; The Roan Mountain Institute of Christian Science & Health; David J. Nolan; and University of Christian Science, Defendants.

123 F.Supp.2d 965

The CHRISTIAN SCIENCE BOARD OF DIRECTORS OF the FIRST CHURCH OF CHRIST, SCIENTIST; and The Christian Science Publishing Company, Plaintiffs, v. David E. ROBINSON; The Roan Mountain Institute of Christian Science & Health; David J. Nolan; and University of Christian Science, Defendants.

No. Civ. 1:99CV148.

United States District Court, W.D. North Carolina, Asheville Division.

October 4, 2000.

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Catharine B. Arrowood, Brian D. Darer, Parker, Poe, Adams & Bernstein, Raleigh, NC, Joseph H. Lessem, Cowan, Liebowitz & Latman, P.C., New York City, for The Christian Science Board of Directors of First Church of Christ, Scientist, The Christian Science Publishing Society, plaintiffs.

David E. Robinson, Bakersville, NC, pro se.

John H. Hasty, John Watson Bowers, Waggoner, Hamrick, Hasty, Monteith & Kratt, PLLC, Charlotte, NC, Brenda A. Buan, Morris M. Goldings, Mahoney, Hawkes & Goldings, LLP, Boston, MA, for David J. Nolan, University of Christian Science.

MEMORANDUM AND ORDER

THORNBURG, District Judge.

THIS MATTER came before the undersigned on September 25, 2000, for a hearing on the Plaintiffs' motion to hold the Defendants in contempt of the Judgment entered on July 6, 2000. Approximately one hour before the hearing, the undersigned learned that on Thursday, September 21, 2000, Defendants Nolan and The Christian Science University (Nolan Defendants) had filed a notice of appeal from the undersigned's ruling of September 20, 2000, and a motion for a stay of the injunction pending appeal with the Clerk's Office in Charlotte, North Carolina.¹ As a result, this decision addresses not only the issue of contempt but that motion as well.

1. Motion to stay enforcement of the injunction pending appeal.

The Court first addresses the motion to stay the injunction pending appeal pursuant to Federal Rule of Civil Procedure 62(c).² In determining whether to stay an injunction pending appeal, the Court is required to consider (1) whether the applicant for the stay has shown a substantial likelihood of prevailing on the merits; (2) whether the applicant will be irreparably harmed absent a stay; (3) whether issuance of the stay will substantially injure other parties to the appeal; and (4) the public interest. Hilton v. Braunskill, 481 U.S. 770, 107 S.Ct. 2113, 95 L.Ed.2d 724 (1987); Planned Parenthood of the Blue Ridge v. Camblos, 116 F.3d 707 (4th Cir.1997), cert. denied, 525 U.S. 1140, 119 S.Ct. 1031, 143 L.Ed.2d 40 (1999).

The Nolan Defendants' motion is based on two arguments: (1) the undersigned erroneously ruled that North Carolina's long arm statute allows it to assert personal jurisdiction over them, and (2) the Lanham Act does not extend to religious speech because it is non-commercial. During the hearing, counsel argued there is "absolutely no evidence" that Nolan ever sent electronic mail into North Carolina or had sufficient contacts with the state to warrant the exercise of long arm jurisdiction.³ This case, he argued, involves the communication of religious ideas, not commercial services, and thus, is not governed by traditional notions of minimum contacts. Nolan did not purposefully direct toward North Carolina residents the solicitation of business or commercial enterprise, although admittedly, at some point he offered for sale books and other publications. Although counsel admitted Nolan sent materials into the State for use on his web site, which was established in this State, he claimed that when a religious organization is involved, it is in the public interest to allow the free disbursement of information.

Defendant Robinson, a North Carolina resident, appeared at the hearing pro se and advised the Court that he contacted Nolan in early 1999 and offered to set up a web site for The Christian Science University on his domain. Robinson downloaded Nolan's web site design and used it as a web page for The Christian Science University. Thereafter, Nolan and he communicated frequently by electronic mail to exchange information to be placed on the site. After the Plaintiffs began this lawsuit, Nolan told Robinson to remove his web site from Robinson's domain. Nolan then moved his site to a different domain.

Plaintiffs' counsel noted that Nolan's original web site could only be accessed through Robinson's web site which is indisputably located in North Carolina. Robinson was both the billing and administrative contact, i.e., the "webmaster." In fact, Nolan could not even remove his web site, and the infringing materials, without the assistance of Robinson.

The Nolan Defendants, in addressing the likelihood of success on the merits, claim they will successfully obtain a reversal of the undersigned's finding of jurisdiction on appeal. In addition, they argue the Lanham Act does not apply to the maintenance of a "passive" web site promoting religious speech.

First, the Lanham Act prohibits the use "in commerce" of any reproduction or colorable imitation of a registered mark "in connection with the sale ... distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive."⁴ 15 U.S.C. § 1114. "The nature of the Internet indicates that establishing a typical home page on the Internet, for access to all users, would satisfy the Lanham Act's `in commerce' requirement." Planned Parenthood Fed'n of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1434 (S.D.N.Y.1997), aff'd, 152 F.3d 920, 1998 WL 336163 (2nd Cir.), cert. denied, 525 U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998). The Nolan Defendants argue that their passive Internet web site promoting their religious beliefs was not used "in connection with the distribution or advertising of goods or services."

When a domain name⁵ is used on a web site that promotes or preaches social, religious or political beliefs, the Lanham Act would not be triggered unless there is some provision of services or a commercial aspect to the web site. The 1997 Planned Parenthood case was the first time that a court directly faced the issue of finding a commercial use when an otherwise infringing domain name is used on a political or religious web site. In the Planned Parenthood case, the court found that the Lanham Act was triggered and issued a preliminary injunction against use of the domain name "plannedparenthood.com" as used on a web site by an anti-abortion religious activist. The court found that such a use of the domain name was an infringement of the service mark rights of plaintiff Planned Parenthood. Defendant was a religious talk show host who vigorously espoused the right-to-life position. Plaintiff Planned Parenthood was a family planning organization which had a web site under the domain name "ppfa.org." To get his religious message across to those looking for the Planned Parenthood web site, defendant reserved ... the domain name "plannedparenthood.com" and displayed on the site extensive excerpts from a right-to-life book, together with information about its author. The evidence showed that a number of people looking for plaintiff's home page tried defendant's plannedparenthood.com site and as the page down-loaded the first thing they saw were the words "Welcome to the Planned Parenthood home page!" ... [T]he court found that defendant's use was an infringement of plaintiff's registered mark under [the] Lanham Act [ ] because defendant used its accused domain name in connection with the distribution or advertising of goods or services for three reasons: (1) the web page promoted a right-to-life book, a use which was similar to a publisher's home page advertising its wares; (2) defendant offered, free of charge on his web page, information services about the alleged moral evils of abortion; (3) defendant's domain name was used "in connection with" the plaintiff's goods and services because it is likely to prevent some Internet users from reaching plaintiff's own web site.

4 McCarthy, at § 25:76 (footnote added).

In addition to the domain name, the defendant in Planned Parenthood created a home page that used the plaintiff's mark and conveyed the message that the plaintiff sponsored the site. The case at hand is indistinguishable: Defendants both used a domain name invoking "Christian Science" and designed a home page on their web site which infringed Plaintiffs' marks. The complaint alleged that Nolan maintained an Internet web site "in the State of North Carolina resident on the Robinson/TRMI website under the domain name ...." Complaint, filed July 23, 1999, at ¶ 9. It also alleged that Nolan used the Cross and Crown registered marks and other Christian Science marks in connection with products and services sold and made available to the public through both printed materials and on the web site. Id., at ¶ 's 36-37. Moreover, it was alleged that on the web site, Nolan held his University out as affiliated with the Plaintiffs' official education arm. Id., at ¶ 38.

Nolan's counsel argued that during the time prior to the initiation of this action, Nolan was not offering anything for sale, although he admitted that thereafter services, seminars, books, classes, etc., were offered for sale. However, there is no profit requirement in the Lanham Act. United We Stand America, Inc. v. United We Stand America, N.Y., Inc., 128 F.3d 86 (2nd Cir.1997), cert. denied, 523 U.S. 1076, 118 S.Ct. 1521, 140 L.Ed.2d 673 (1998) (The Act's requirement that an infringing use be in "commerce" encompasses non-profit services.). Like the Planned Parenthood defendant, Nolan used this site to provide informational services to convince people that his version of Christian Science is the "true" version. Planned Parenthood, 42 U.S.P.Q.2d at 1435. "In this way, defendant offers his own set of services, and his use of plaintiff[s'] mark is in connection with the distribution of those services over the Internet." Id. (citing ...