Cmty. of Christ Copyright Corp.. v. Devon Park Restoration Branch of Jesus Christ's Church

• Decision Date: 21 March 2011
• Docket Number: No. 10–1707.,10–1707.
• Citation: 634 F.3d 1005
• Parties: COMMUNITY OF CHRIST COPYRIGHT CORPORATION; Community of Christ Church, also known as Reorganized Church of Jesus Christ of Latter Day Saints, Appellees,v.DEVON PARK RESTORATION BRANCH OF JESUS CHRIST'S CHURCH; David McLean, Appellants.
• Court: U.S. Court of Appeals — Eighth Circuit

634 F.3d 1005

98 U.S.P.Q.2d 1167

COMMUNITY OF CHRIST COPYRIGHT CORPORATION; Community of Christ Church, also known as Reorganized Church of Jesus Christ of Latter Day Saints, Appellees,

v.DEVON PARK RESTORATION BRANCH OF JESUS CHRIST'S CHURCH; David McLean, Appellants.

No. 10–1707.

United States Court of Appeals, Eighth Circuit.

Submitted: Jan. 13, 2011.Filed: March 21, 2011.

Julie J. Gibson, argued, Ronald Lee Holt, on the brief, Kansas City, MO, for appellant.Mark M. Iba, argued, Elizabeth Anne Tassi and J. David Wharton, on the brief, Kansas City, MO, for appellee.Before WOLLMAN, HANSEN, and SHEPHERD, Circuit Judges.WOLLMAN, Circuit Judge.

Devon Park Restoration Branch of Jesus Christ's Church and David McLean (Devon Park) appeal from the judgment entered following the district court's ¹ grant of summary judgment in favor of Community of Christ Copyright Corporation and Community of Christ Church a/k/a Reorganized Church of Jesus Christ of Latter Day Saints (COC). Devon Park contends that the district court erred in concluding that COC's marks were valid and enforceable and that Devon Park's use of the terms created a likelihood of confusion. Devon Park also challenges the orders enjoining it from using the marks and awarding attorneys' fees to COC in the amount of some $348,000. We affirm.

I. Background

COC is headquartered in Independence, Missouri. COC has registered and owns all rights and interests in the following marks: REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS (Reg. No. 3,188,759); RLDS (Reg. No. 956,687); PEACE (and design) (Reg. No. 1,044,453); and REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS PEACE (and design version 1) (Reg. No. 3,173,265). COC also owns all rights and interests in the unregistered mark REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS PEACE (and design version 2). Collectively, we refer to these marks as the RLDS marks.

In April 2000, COC adopted the name Community of Christ to better reflect its mission. Since then, COC has continued to use its RLDS marks on its buildings, in publications, and in holding real estate. More than fifty authorized congregations have not adopted the Community of Christ name; those congregations use only the RLDS marks. A number of congregations use both the RLDS and Community of Christ designations. Although new congregations do not use the RLDS marks on their signs, all congregations use the Red Hymnal that contains the RLDS marks.² Over the years, COC has repeatedly enforced its rights in the RLDS marks.

Devon Park is a non-profit organization that is also located in Independence, Missouri. Devon Park was originally formed as Southeast Independent Branch in 1987 by members of COC. In 2004, it incorporated as Devon Park Restoration Branch of Jesus Christ's Church. Although it did not request or receive permission from COC, Devon Park has used the RLDS marks for years, explaining that it used the marks so that “people would not think they started a new church.” Inside its building, Devon Park displays seals and flags that portray the RLDS marks. Beginning in 2005 and up until the issuance of the district court's order, Devon Park displayed an exterior sign that read “Reorganized Church of Jesus Christ of Latter Day Saints: Devon Park Restoration Branch.”

In 2007, COC saw a picture of Devon Park's exterior sign. In October 2008, Devon Park sent a letter to COC stating that Devon Park was using and would continue to use the RLDS marks on its signage, literature, church bulletins, and advertisements. The letter itself contained two RLDS marks. In response, COC sent Devon Park a cease and desist letter. Devon Park did not respond and did not cease using the marks. Thereafter, COC filed suit against Devon Park.

COC alleged trademark violations pursuant to 15 U.S.C. §§ 1114 and 1125, state law violations for unfair competition and dilution, and common law infringement. It sought an injunction against Devon Park's use of its RLDS marks. Devon Park counterclaimed seeking to cancel the registrations because COC had abandoned the marks and because the marks had become generic. ³ Both parties moved for summary judgment. The district court granted COC's motion for summary judgment, dismissed Devon Park's counterclaims, and permanently enjoined Devon Park from utilizing the RLDS marks. Additionally, the district court concluded that the case was exceptional and ordered Devon Park to pay the attorneys' fees described above.

II. Discussion

We review de novo the district court's grant of summary judgment and view all facts in the light most favorable to the non-moving party. Davis v. Walt Disney Co., 430 F.3d 901, 902–03 (8th Cir.2005). Summary judgment is appropriate “when a trademark dispute centers on the proper interpretation to be given the facts, rather than on the facts themselves.” Id. at 905 (citation and quotations omitted).

A. Likelihood of Confusion

Devon Park contends that the district court erred in granting summary judgment in favor of COC on its trademark infringement and false designation of origin claims. Both claims require a trademark owner to prove that it has ownership or rights in the trademark and that the defendant has used the mark in connection with goods or services in a manner likely to cause consumer confusion as to the source or sponsorship of the goods or services. See id. at 903 (citing § 1125(a)(1)); see also Minn. Mining & Mfg. Co. v. Rauh Rubber, Inc., 130 F.3d 1305, 1308 (8th Cir.1997). Devon Park does not dispute that COC owns the RLDS marks, but asserts that COC failed to prove a likelihood of confusion between the RLDS marks and its use of the marks.

To determine the likelihood of confusion between the trademarks and the allegedly infringing marks, we consider the following factors set forth in SquirtCo. v. Seven–Up Co.: 1) the strength of the trademark owner's mark; 2) the similarity between the trademark owner's mark and the alleged infringing mark; 3) the degree to which the allegedly infringing services competes with the trademark owner's services; 4) the alleged infringer's intent to confuse the public; 5) the degree of care reasonably expected of potential customers; and 6) evidence of actual confusion. 628 F.2d 1086, 1091 (8th Cir.1980); see, e.g., Georgia–Pacific Consumer Prods. LP v. Myers Supply, Inc., 621 F.3d 771, 775 (8th Cir.2010) (citing Davis, 430 F.3d at 903). “Under SquirtCo, no one factor controls, and because the inquiry is inherently case-specific, different factors may be entitled to more weight in different cases.” Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049, 1053 (8th Cir.2005) (citing SquirtCo., 628 F.2d at 1091).

Devon Park presents numerous arguments as to why these factors do not support a finding of a likelihood of confusion, but it has failed to create a genuine issue of fact. Devon Park admits that the RLDS marks are meaningful and distinct and concedes that the marks are similar to the RLDS marks, the only difference being the inclusion of the word “branch.” Devon Park did not present any evidence that the marks were not identical or, at the very least, substantially similar. Instead, it asserts that COC does not use the marks to offer religious services. As discussed below, this argument fails because the record establishes COC's continued use of the RLDS marks to offer religious services.

Devon Park contends that its services do not compete with COC's services because it offers a category of services different from those offered by COC. Devon Park's attempts to distinguish the services based on the substance of the religious messages offered is unconvincing, particularly in light of the fact that Devon Park chose the RLDS name so that people would not think that it had started a new church. Devon Park contends that consumers will use considerable care in distinguishing between the services offered by Devon Park compared with those offered by COC. A consumer exercising considerable care may still be confused, however, because Devon Park utilizes identical or substantially similar marks while offering the same category of services in the same geographical location. See, e.g., Pfizer Inc. v. Sachs, 652 F.Supp.2d 512, 522–23 (S.D.N.Y.2009); Solutech, Inc. v. Solutech Consulting Servs., Inc., 153 F.Supp.2d 1082, 1088 (E.D.Mo.2000) (“[W]hen identical marks are used in the same geographic area for the same class of goods or services, likelihood of confusion is presumed.”). We conclude that even when viewed in the light most favorable to Devon Park, the evidence established that its use of the RLDS marks created a likelihood of confusion and that COC was entitled to summary judgment on its trademark infringement and false designation of origin claims.

COC was also entitled to summary judgment on its state law claims for common law infringement, unfair competition, and trademark dilution. Missouri law “is well settled that the same facts which support a suit for trademark infringement support a suit for unfair competition” and common law infringement. Gilbert/Robinson, Inc. v. Carrie Beverage–Missouri, Inc., 758 F.Supp. 512, 527 (E.D.Mo.1991); Steak n Shake Co. v. Burger King Corp., 323 F.Supp.2d 983, 991 (E.D.Mo.2004) (citation omitted). Thus, our conclusion that Devon Park infringed COC's RLDS marks supports the district court's conclusion that Devon Park also engaged in unfair competition in violation of Missouri law and common law infringement. To prove dilution of the distinctive quality of its mark, a trademark holder must show that its mark is valid and distinctive and that the alleged infringer's use of its mark created a likelihood of dilution of the distinctive quality of the mark. Gilbert/Robinson, Inc., 758 F.Supp. at 527 (citing Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 1000 (W.D.Mo.1986)); see also Mo.Rev.Stat. § 417.061 (anti-dilution statute). As addressed below, the marks are valid and enforceable, ...