Committee for Idaho's High Desert, Inc. v. Yost
| Decision Date | 06 August 1996 |
| Docket Number | Nos. 95-35439,95-35472,s. 95-35439 |
| Citation | 92 F.3d 814,39 U.S.P.Q.2d 1705 |
| Parties | , 39 U.S.P.Q.2d 1705, 96 Cal. Daily Op. Serv. 5814, 96 Daily Journal D.A.R. 9516 The COMMITTEE FOR IDAHO'S HIGH DESERT, INC., Plaintiff-Appellee, v. Jim YOST, individually and dba Committee for Idaho's High Desert, Inc.; Ted Hoffman, individually and dba Committee for Idaho's High Desert, Inc.; Quey Johns, individually and dba Committee for Idaho's High Desert, Inc., Defendants-Appellants. The COMMITTEE FOR IDAHO'S HIGH DESERT, INC., Plaintiff-Appellant, v. Jim YOST, individually and dba Committee for Idaho's High Desert, Inc.; Ted Hoffman, individually and dba Committee for Idaho's High Desert, Inc.; Quey Johns, individually and dba Committee for Idaho's High Desert, Inc., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Laird J. Lucas, Land & Water Fund of the Rockies, Boise, Idaho, for the plaintiff-appellee-appellant.
Gary D. Babbitt, Hawley, Troxell, Ennis & Hawley, Boise, Idaho, for the defendants-appellants-appellees.
Appeals from the United States District Court for the District of Idaho Larry M. Boyle, Magistrate Judge, Presiding; Nos. CV-94-00089-LMB, CV-94-00089-LMB.
Before: FLETCHER, NOONAN, and RYMER, Circuit Judges.
James Yost, Ted Hoffman, Quey Johns, and their corporation Committee for Idaho's High Desert, Inc. (hereinafter "appellants") appeal from the district court's decision, published at 881 F.Supp. 1457, finding that they violated § 43(a) of the Lanham Act, 15 U.S.C. §§ 1051-1128, by infringing appellee's protected tradename "Committee for Idaho's High Desert" and enjoining them from using that name. 1 The Committee for Idaho's High Desert, Inc. (CIHD, pronounced "kid") cross-appeals from the district court's grant of summary judgment dismissing its damages claim and its claims against the individual appellants, as well as from the court's order denying an extension of time in which to file a motion for attorney's fees. We have jurisdiction over this timely appeal under 28 U.S.C. § 1291.
CIHD is a non-profit environmental education and advocacy organization, concerned with issues of grazing, range-land reform, water use, recreation, endangered species, and resource use affecting the desert of southwest Idaho and parts of Nevada, Oregon, and Utah. CIHD's position on these issues is "to encourage limited use of public lands with an emphasis on conservation and preservation of the natural state of the desert ecosystem". 881 F.Supp. at 1463.
CIHD was organized in the late 1970s by a number of individuals. In 1981, the organization incorporated under Idaho law. Throughout its history, the organization has operated very informally, "due to the voluntary, changing, and diverse nature of its membership". Id. at 1464. In 1985, CIHD failed to file a required annual report with the Idaho secretary of state and forfeited its corporate charter. The organization's leaders and members were unaware of this forfeiture and continued to operate as if CIHD were a corporation in good standing.
In 1992, CIHD and the Idaho Conservation League sued the federal government to have the Bruneau snail, which lives in the Idaho desert, listed as an endangered species; as a result of the suit, the snail was listed in January 1993. A coalition of agriculture and cattle organizations called the Bruneau Valley Coalition then sued to have the snail de-listed. See Idaho Farm Bureau Federation v. Babbitt, 839 F.Supp. 739 (D.Idaho 1993), vacated and remanded, 58 F.3d 1392 (9th Cir.1995). James Yost was, at the time, the director of public affairs at the Idaho Farm Bureau; Ted Hoffman was president of the Owyhee Cattlemen's Association; and Quey Johns was president of the Owyhee Farm Bureau. All three organizations, which were members of the Bruneau Valley Coalition, had opposed CIHD's positions on the use of public lands. The individual appellants' viewpoints on these issues are "virtually antithetical" to those of CIHD. 881 F.Supp. at 1466. In 1993, Hoffman, in a letter to the editor, accused CIHD's long-time chairman, Randy Morris, of using "enviro-nazi tactics" and "environmentalist flim-flam". Id.
After CIHD and others moved in September 1993 to intervene in the de-listing suit in order to defend the listing, Yost had a colleague check with the Idaho secretary of state to determine whether the prospective intervenors were corporations in good standing. Within 24 hours of learning that CIHD had forfeited its charter in 1985, the individual appellants formed a new Idaho corporation under the name "Committee for Idaho's High Desert, Inc." (hereinafter "appellant corporation"). The individual appellants had been considering forming an organization to advance their views on environmental issues for several years and had discussed possible names, but took no action until they learned of CIHD's corporate forfeiture and did not seriously consider using the name "Committee for Idaho's High Desert" until they learned of the forfeited charter. The appellant corporation's articles of incorporation were modeled after CIHD's, and the statement of purposes was copied virtually verbatim from CIHD's, with "a few minor, subtle changes where necessary to represent what are distinct differences between [the appellants'] and [CIHD's] environmental philosophies". Id. at 1467. The appellant corporation was capitalized with only $120. Yost, Hoffman, and Johns are the appellant corporation's officers, directors, and only members, and the appellant corporation's articles listed its principal place of business as the Boise office of the Idaho Farm Bureau.
CIHD learned of its earlier inadvertent forfeiture when the Bruneau Valley Coalition opposed CIHD's intervention in the de-listing suit on the basis of incapacity. When CIHD promptly sought to be reinstated, however, the secretary of state denied reinstatement because the appellant corporation was already registered under the name "Committee for Idaho's High Desert".
In January 1994, Hoffman testified at a public hearing held by the U.S. Air Force on a proposal for a training range on public land in Idaho. "Hoffman stated that he was president of the Committee for Idaho's High Desert which was supportive of the proposal, a position he knew to be diametrically and publicly opposed by [CIHD]." 881 F.Supp. at 1467. At trial, Hoffman "acknowledged that he made this statement to add to his credibility as an environmentalist to support the training range proposal". Id.
On March 1, 1994, CIHD filed a complaint against Yost, Hoffman, Johns, and their corporation, alleging inter alia violations of federal and state trademark and unfair competition law. After the filing of an amended complaint, the parties consented to have the case assigned to a magistrate judge under 28 U.S.C. § 636(c).
After appellants moved for summary judgment, the district court dismissed CIHD's state-law claims, finding that as a forfeited corporation it could bring those claims only through its statutory trustees. The court refused to dismiss CIHD's federal claims, ruling that any corporate disability under state law did not preclude CIHD from suing in federal court to vindicate rights under federal trademark and unfair competition laws. The court also found that CIHD had not created a genuine issue of material fact as to the dollar amount of any damages sustained, so it dismissed CIHD's damage claims and struck CIHD's request for a jury trial. The court then ruled that since it had dismissed all damage claims, and since the individual appellants, as officers of the appellant corporation, would be bound under Federal Rule of Civil Procedure 65(b) by an injunction against the corporation, the individual appellants were entitled to summary judgment and to dismissal of the action as against them.
In January 1995, a four-day bench trial was held. The district court made findings as to the nature of CIHD's goods and services, its continuous and exclusive use of its tradename in connection with those goods and services from at least 1980 until the appellant corporation's incorporation in 1993, and the association by relevant "consumers" of the name with appellee CIHD. The court found that the relevant "consumers" of the services of CIHD and appellant corporation were similar, that some of those consumers had actually been confused by appellants' use of the name, and that the appellants "knowingly, intentionally and deliberately adopted and used [the CIHD name] in order to cause confusion, obstruct [CIHD's] pursuit of its environmental agenda, and thereby to obtain an advantage in the snail de-listing litigation by preventing [CIHD's] intervention". 881 F.Supp. at 1468.
The district court then concluded that CIHD had capacity to bring its suit as an unincorporated association under Rule 17(b)(1) of the Federal Rules of Civil Procedure and that § 43(a) of the Lanham Act allowed suits for infringement of an unregistered trademark or tradename. After setting forth the relevant standards for trademark and tradename protection, the court ruled that the tradename "Committee for Idaho's High Desert" was neither merely geographically descriptive nor arbitrary. It concluded instead that the name was suggestive, and therefore inherently distinctive and entitled to protection without a showing of secondary meaning. Recognizing, however, the difficulty in drawing the line between suggestive and descriptive marks, the court went on to conclude that, even if the name was only descriptive, CIHD had demonstrated that the name had acquired secondary meaning. Finally, the court concluded that the evidence clearly established a likelihood of confusion as a result of appellants' use of CIHD's name and that appellants had thus infringed CIHD's tradename. Therefore, the court enjoined appellant corporation, and "its officers,...
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