Conf. Corp. of Seventh-Day Adventists v. McGill

• Decision Date: 11 June 2008
• Docket Number: No. 06-1207.,06-1207.
• Citation: 624 F.Supp.2d 883
• Parties: GENERAL CONFERENCE CORPORATION OF SEVENTH-DAY ADVENTISTS, et al., Plaintiffs, v. Walter McGILL d/b/a Creation Seventh Day Adventist Church, et al., Defendant.
• Court: U.S. District Court — Western District of Tennessee

624 F.Supp.2d 883

GENERAL CONFERENCE CORPORATION OF SEVENTH-DAY ADVENTISTS, et al., Plaintiffs, v. Walter McGILL d/b/a Creation Seventh Day Adventist Church, et al., Defendant.

No. 06-1207.

United States District Court, W.D. Tennessee, Eastern Division.

June 11, 2008.

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Emily Campbell Taube, Lucian T. Pera, Adams and Reese LLP, Memphis, TN, Joel Todd Galanter, Adams & Reese, LLP, Nashville, TN, for Plaintiffs.

Walter McGill, Guys, TN, pro se.

Charles L. Holliday, Spragins Barnett Cobb & Butler, Jackson, TN, Ronald D. Michael, Michael Law Firm, Booneville, MS, for Defendant.

ORDER GRANTING IN PART AND DENYING IN PART THE PLAINTIFFS' MOTION FOR SUMMARY JUDGMENT

J. DANIEL BREEN, District Judge.

The Plaintiffs, the General Conference Corporation of Seventh-Day Adventists and the General Conference of Seventh-day Adventists, brought the instant trademark infringement action against the Defendant, Walter McGill, a pastor of an unincorporated association known as the Creation Seventh Day Adventist Church. Before the Court is the motion of the Plaintiffs for summary judgment. (Docket Entry ("D.E.") No. 37.) The Defendant has responded and this motion is now ripe for disposition. For the following reasons, the motion is granted in part and denied in part.

BACKGROUND

General Conference Corporation of Seventh-day Adventists ("Corporation") is a corporation whose principal place of business is located in Maryland. (D.E. No. 37, Pls.' Statement of Undisputed Facts ¶ 9.) The other Plaintiff, General Conference of Seventh-day Adventists ("General Conference") is an unincorporated association that represents the interests of the Seventh-day Adventist Church. (Id. ¶ 10.) The General Conference was formed in 1863, marking the official organization of the Seventh-day Adventist Church. (D.E. No. 21, George W. Reid ThD's Expert Report ¶ 13.) The church grew out of several congregations that believed that Christ's Second Advent was imminent and that the Sabbath should be observed on the seventh day of the week. (Id. ¶ 1.) The Plaintiffs' expert, George Reid ThD, asserts that none of these early churches called themselves "Seventh-day Adventist" and that it was not until the congregations came together to create a formal church structure that the name "Seventh-day Adventist" was chosen. (Id. ¶¶ 8-10.) Since the official formation of the church, the names "Seventh-day Adventist" and "SDA" have been used by the Seventh-day Adventist Church as the church's name, and as its trade name in advertising and publishing. (D.E. No. 37, Pls.' Statement of Undisputed Facts ¶ 40.) The church today has approximately 968,604 members in the United States, as well as 3,529 ministers and 5,316 congregations. (Id. ¶ 44.) Worldwide, it has over fourteen million members, 16,892 ministers, and 121,625 congregations. (Id.)

The Corporation holds title to all of the church's assets. (D.E. No. 37, Pls.' Statement of Undisputed Facts ¶ 11.) It has registered the marks "Seventh-day Adventist," "Adventist," and "General Conference of Seventh-day Adventists," with the United States Patent and Trademark Office. (Id. ¶¶ 17-23.) Registration number 1,177,185 protects the use of the "Seventh-day Adventist" mark on religious books, magazines, pamphlets, newsletters, brochures, encyclopedias, dictionaries, commentaries, fliers, bulletins, yearbooks, booklets, and bibles. (Id. ¶ 25.) It also protects its use for the establishment and administration of employee health care and benefit programs and medical insurance programs, as well as educational instruction services at the grade school, high school, and college level, and for film production and distribution services, health care services, and religious observances and missionary services. (Id.) Registration numbers 1,176,153 and 1,218,657 protects the "Advent" mark for the same purposes. (Id. ¶¶ 26-27.) Registration number 1,171,760 protects the "General Conference of Seventh-day Adventists" mark for church services. (Id. ¶ 28.)¹ "SDA" is an acronym for "Seventh-day Adventist" that has not been registered. (Id. ¶ 36.)² The Plaintiffs assert that they are "legally equivalent terms," however, and that "SDA" has been used by the General Conference from 1863 onwards "as part of the corporate name, the trade name, in advertising, in publishing and publications, and in the performance of services." (Id. ¶¶ 40-41.)

The Defendant is the pastor of a church he currently calls "A Creation Seventh Day & Adventist Church," (D.E. No. 37 Ex. 2 to Pls.' Statement of Undisputed Facts, Dep. of Walter McGill, at 5), although in his Answer to the Complaint he referred to it as the "Creation Seventh Day Adventist Church," (D.E. No. 4, Answer, at 1). His church has three members. (D.E. No. 37 Ex. 2 to Pls.' Statement of Undisputed Facts, Dep. of Walter McGill, at 7.) There is a second three-member church associated with his, which has the same name and is located in British Columbia, Canada. (Id. at 8-9.) In addition, there are other congregations that the Defendant "raised up" in the United States, which have been apostatized, or diverted from the faith. (Id. at 9.)

McGill was originally baptized in a Seventh Day Adventist church affiliated with the Plaintiffs. (Id. at 16.) After several years, however, the Defendant decided to separate from the church because of a theological dispute. (Id. at 18.) In 1990, McGill formed his current church, taking its name from a divine revelation. (Id. at 34, 37.) While the Defendant was aware that the Plaintiffs had trademarked the name "Seventh Day Adventist," he used it anyway, because he believed that he was divinely mandated to do so. (Id. at 40.) McGill has also created the following internet domain names, among others: "7th-day-adventist.org," "creation-7th-day adventist-church.org," "creationseventhday-adventistchurch.org," "creationsda.org," and "csda.us." (D.E. No. 37, Pls.' Statement of Undisputed Facts ¶¶ 13-14.) The Plaintiffs have not granted him any licenses to use their marks. (Id. ¶ 33.)

STANDARD OF REVIEW

Rule 56(c) provides that a

judgment ... shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.

Fed. R. Civ. P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Canderm Pharmacal, Ltd. v. Elder Pharms., Inc., 862 F.2d 597, 601 (6th Cir.1988). In reviewing a motion for summary judgment, the evidence must be viewed in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). When the motion is supported by documentary proof such as depositions and affidavits, the nonmoving party may not rest on his pleadings but, rather, must present some "specific facts showing that there is a genuine issue for trial." Celotex, 477 U.S. at 324, 106 S.Ct. 2548. It is not sufficient "simply [to] show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586, 106 S.Ct. 1348. These facts must be more than a scintilla of evidence and must meet the standard of whether a reasonable juror could find by a preponderance of the evidence that the nonmoving party is entitled to a verdict. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment must be entered "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322, 106 S.Ct. 2548. In this Circuit, "this requires the nonmoving party to `put up or shut up' [on] the critical issues of [his] asserted causes of action." Lord v. Saratoga Capital, Inc., 920 F.Supp. 840, 847 (W.D.Tenn.1995) (citing Street v. J.C. Bradford & Co., 886 F.2d 1472, 1478 (6th Cir.1989)). Finally, the "judge may not make credibility determinations or weigh the evidence." Adams v. Metiva, 31 F.3d 375, 379 (6th Cir.1994).

ANALYSIS

The Plaintiffs charge McGill with 1) trademark infringement in violation of 15 U.S.C. § 1114; 2) engagement in unfair trade practices in violation of § 1125(a), 3) dilution of their trademarks in violation of § 1125(c), and 4) engagement in cyberpiracy by appropriating their trademarks in domain names in violation of § 1125(d)(1). (See D.E. No. 1 Compl. ¶¶ 42-56.) The Complaint also alleges that the Defendant committed unfair or deceptive trade practices in violation of Tennessee's Consumer Protection Act, Tenn. Code Ann. § § 47-18-101 et seq., as well as common law infringement of the Plaintiffs' marks, common law unfair competition, and injury to business reputation or dilution of the Plaintiffs' marks in violation of section 47-25-513 of the Tennessee Code. (Id. ¶¶ 57-70.) The Plaintiffs seek injunctive relief, damages, and attorneys' fees. (See D.E. No. 1, Compl., 17-20.)

The Sixth Circuit has held that both trademark infringement and unfair competition claims require courts to determine whether there is a likelihood of confusion regarding the source of the products and, therefore, these claims can be analyzed together. AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 791 (6th Cir.2004); see also Audi AG v. D'Amato, 469 F.3d 534, 542 (6th Cir.2006) (citation omitted) ("[W]e use the same test to decide whether there has been trademark infringement, unfair competition, or false designation of origin: the likelihood of confusion between the two marks."); Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 288 (6th Cir.1997) (stating that claims brought pursuant to § 1125(a) "mirror the previously discussed...