Kappa Sigma Fraternity v. Kappa Sigma Gamma Fraternity

• Decision Date: 23 February 1987
• Docket Number: Civ. No. 85-721-D.
• Citation: 654 F. Supp. 1095
• Parties: KAPPA SIGMA FRATERNITY, et al. v. KAPPA SIGMA GAMMA FRATERNITY, et al.
• Court: U.S. District Court — District of New Hampshire

654 F. Supp. 1095

KAPPA SIGMA FRATERNITY, et al. v. KAPPA SIGMA GAMMA FRATERNITY, et al.

Civ. No. 85-721-D.

United States District Court, D. New Hampshire.

February 23, 1987.

Lee, Smith & Zickert by Thomas E. Smith, Chicago, Ill., McSwiney, Jones, Semple & Douglas by Robert J. Lynn, Concord, N.H., for plaintiffs.

Sulloway, Hollis & Soden by Warren C. Nighswander, Concord, N.H., for defendants.

ORDER

DEVINE, Chief Judge.

Plaintiffs, a national collegiate Greek-letter fraternity and its officers, have brought this suit against a former, now disaffiliated, chapter and its officers alleging that defendants' use of a chameleonic variant of plaintiffs' federally registered fraternal trademarks fleeces the public. Seeking injunctive and ancillary relief only, not money damages, plaintiffs claim trademark and service mark infringement, false designation of membership, and misrepresentation pursuant to the Lanham Act, 15 U.S.C. §§ 1051-1127 (Counts I-III), and tortious interference with a not-for-profit license relationship, wrongful deprivation of property, and misappropriation of trade secrets under common law. (Counts IV-VI).

The matter is currently before the Court on plaintiffs' motion for summary judgment with respect to Counts I, II, and III, and defendants' objection thereto. Resolution of the issues presented therein requires the Court to traverse the labyrinth of trademark infringement law,¹ so, girded by the jurisdictional nimbus of 15 U.S.C. § 1121 and 28 U.S.C. §§ 1332 and 1338, the Court proceeds. A recounting of the historical background of this litigation is necessary.²

I

Plaintiff Kappa Sigma Fraternity ("Kappa Sigma") is an unincorporated collegiate fraternal organization with an international membership of more than 132,000 persons. Kappa Sigma has chapters on or in close proximity to the campuses of 198 colleges and universities in the United States and Canada, and alumni chapters in many major cities in the United States. The individual plaintiffs named in the complaint are officers of Kappa Sigma (e.g., the "Worthy Grand Procurator" and the "Worthy Grand Master of Ceremonies"), who as a group comprise the Kappa Sigma "Supreme Executive Committee" ("SEC"). Kappa Sigma is the owner of record of five active United States trademark registrations, including registrations for the juxtaposed Greek letters "kappa" and "sigma" and their English-letter equivalent, the mark "Kappa Sigma". Members of Kappa Sigma are entitled to and do refer to themselves as "Kappa Sigs" or other similar diminutives of "Kappa Sigma", and are privy to, among other arcane fraternal mysteries, Kappa Sig secret rituals and secret paraphernalia.

Defendant Kappa Sigma Gamma Fraternity ("KSG") is also an unincorporated collegiate fraternity, but is at present geographically limited to the campus of Dartmouth College in Hanover, New Hampshire. No members of KSG ("the KSGs") nor any residents of the KSG fraternity house are members of Kappa Sigma, and Kappa Sigma does not currently have a chapter at Dartmouth. Defendant The Kappa Sigma House, Inc. ("House"), is an unincorporated association holding title to and charged with maintaining the KSG fraternity house located at 7 Webster Avenue in Hanover.³ Defendant David C. Hewitt is a former Kappa Sig, the current KSG advisor, and currently and for a number of years president of House.⁴

The national organization of Kappa Sigma was founded in 1869. In April 1905 the fraternity chartered its ninetieth chapter, the Gamma Epsilon Chapter of Dartmouth College ("GE"). In 1910 persons presumably affiliated with GE formed a corporation which acquired title to a piece of land at 7 Webster Avenue in Hanover and thereon built a fraternity house, the location of the current KSG fraternity house. This corporation was dissolved in 1936, but was replaced the same year by a successor corporation, defendant House in this litigation.

The Greek tragedy which is embodied in the instant litigation began in 1979 and 1980 when, for unknown reasons, GE failed to fulfill its chapter obligations to Kappa Sigma as specified in the Kappa Sigma constitution, by-laws, and rules. Inter alia, the chapter failed to send out a newsletter, failed to file certain reports with Kappa Sigma, and failed to forward the requisite drachmas of national dues. On November 11, 1980, GE elected to sever its relationship with Kappa Sigma altogether. The GE Grand Master informed Kappa Sigma national headquarters by way of letter, writing in pertinent part: "We feel that it is no longer beneficial to our chapter to remain affiliated with the national fraternity." Plaintiffs' Motion for Partial Summary Judgment, app., exhibit 10. As of that date, GE had initiated approximately 1,350 members into Kappa Sigma. On December 1, 1980, the SEC voted to accept GE's disaffiliation, and later that year the SEC voted unanimously to write off the defunct chapter's indebtedness.

Despite holding itself out to Kappa Sigma as now being a purely "local" fraternity, id., KSG continued to solicit alumni Kappa Sigs for contributions to the Dartmouth chapter's coffers, employing letters and solicitation literature which were Delphic as to the chapter's affiliation with the national organization. By way of example, KSG sent a letter in March 1981 on Kappa Sigma letterhead "To all Dartmouth KE Alumni"⁵ stating, amidst numerous references to the letter's addressees as being "our alumni", that "We have formally become a local chapter of KE. ... To clear up any confusion, we will retain the name Kappa Sigma. However, we will no longer be the Gamma Epsilon chapter of the national fraternity, instead we will be the KE Gamma chapter." Id. at exhibit 12.

Similar missives soliciting alumni lucre continued to obfuscate the chapter's affiliation (or rather, lack thereof) throughout 1982, 1983, 1984, 1985, and 1986. See, e.g., id. at exhibit 13 ("Dear Dartmouth Kappa Sig: ... the organization is basically the same one you knew when you were at Dartmouth. On the Dartmouth campus, the brothers continue to be referred to as Kappa Sigs.") (May 11, 1982); id. at exhibit 32 ("As president of Kappa Sigma, I wish to extend a warm welcome to you, our alumni benefactors.") (Summer 1982 issue of "News From Number Seven" ("News")); id. at exhibits 35, 37 (referring to fraternity as "Kappa Sigma" or "Kappa Sig"; members as "Kappa Sigs", "Brothers at Kappa Sig", and "Kappa Sigma Brothers") (respectively, Spring 1984 and Winter 1985 issues of News); see also id. at exhibits 33, 36, 38-41. The Court has seen evidence of numerous instances occurring even into 1986, more than five years after disaffiliation and beyond the date this lawsuit was filed, in which the local chapter, despite its voluntary disaffiliation with Kappa Sigma, continued to employ plaintiffs' marks or continued to refer to local chapter members as "Kappa Sigs" or members of "Kappa Sigma". Id. at exhibits 18, 26-30, 38-40; Michel Deposition at 18-20, 46-47; Hewitt Deposition at 36-37; Wilson Affidavit at 4.

Other evidence before the Court establishes: (1) that the local chapter's name was intentionally derived by combining the name "Kappa Sigma" with the "Gamma" from "Gamma Epsilon Chapter" in order to keep the name "Kappa Sigma" extant at Dartmouth, see, e.g., id. at exhibit 13; (2) that the chapter chose its new name in order to reinforce its former affiliation with Kappa Sigma, see, e.g., id. at exhibit 11; (3) that individual KSGs currently view membership in the defunct GE as being temporally equivalent to membership in KSG, see, e.g., id. at exhibit 13; Hewitt Deposition at 49-50; Michel Deposition at 68-69; and (4) that KSG members have visited Kappa Sigma fraternity houses on other campuses, Michel Deposition at 66-67. Finally, there is evidence that the public is unable to differentiate between the similar Greek-letter names herein at issue, evinced by a public misconception that Kappa Sigma is present on the Dartmouth campus. See, e.g., id. at exhibit 77; Hewitt Deposition at 60; Webb Affidavit at 18; Schissel Affidavit at 2; Michel Deposition at 46-47.

II

Under the Federal Rules of Civil Procedure, summary 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." Rule 56(c), Fed.R.Civ.P. A dispute of fact is "material" if it "affects the outcome of the litigation," Finn v. Consolidated Rail Corp., 782 F.2d 13, 15 (1st Cir.1986) (quoting Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d 482, 486 (1st Cir.1981)), and "genuine" if there is "sufficient evidence supporting the claimed factual dispute ... to require a jury or judge to resolve the parties' differing versions of the truth at trial," id. (quoting Hahn v. Sargent, 523 F.2d 461, 464 (1st Cir.1975), cert. denied, 425 U.S. 904, 96 S.Ct. 1495, 47 L.Ed.2d 754 (1976)). While the burden is upon the moving party to affirmatively demonstrate that there is no genuine, material factual issue, and the Court is required to view the record in the light most favorable to the party opposing the motion and indulge all inferences favorable to that opposing party, id., the Court is not required to ignore "clear uncontradicted facts", Astra Pharmaceutical Prod. v. Beckman Instruments, 718 F.2d 1201, 1207 (1st Cir.1983).

Plaintiffs contend they are entitled to summary judgment in their favor based on what they allege to be four undisputed areas of fact: that they own the registered Kappa Sigma marks, that the defendants continued using the marks after disaffiliation, that the chapter's choice of a name confusingly similar to "Kappa Sigma" and House's retention of its name "The Kappa Sigma House, Inc.", have caused confusion and are likely to continue to cause confusion, and that the defendants' use of plaintiffs'...