NAACP v. NAACP LEG. DEFENSE & EDUC. FUND

• Decision Date: 28 March 1983
• Docket Number: Civ. A. No. 82-1424.
• Citation: 559 F. Supp. 1337
• Parties: NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE, Plaintiff, v. N.A.A.C.P. LEGAL DEFENSE AND EDUCATIONAL FUND, INC., Defendant.
• Court: U.S. District Court — District of Columbia

559 F. Supp. 1337

NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE, Plaintiff, v. N.A.A.C.P. LEGAL DEFENSE AND EDUCATIONAL FUND, INC., Defendant.

Civ. A. No. 82-1424.

United States District Court, District of Columbia.

March 28, 1983.

Edward W. Brooke, Barry J. Cutler, O'Connor & Hannan, Washington, D.C., Thomas I. Atkins, Gen. Counsel, NAACP, Brooklyn, N.Y., for plaintiff.

Jay Topkis, Kenneth Roth, Paul, Weiss, Rifkind, Wharton & Garrison, New York City, Vernon E. Jordan, Jr., Daniel Joseph, Akin, Gump, Strauss, Hauer & Feld, Washington, D.C., Barrington D. Parker, Jr., Charles S. Barquist, Parker, Ausprita, Neesemann & Delehanty P.C., New York City, for defendant.

DECISION AND ORDER

JACKSON, District Judge.

In the prosaic context of this trademark action two of the nation's preeminent civil rights organizations contend for the right to use the common distinguishing initials by which both are known and to which each can fairly claim to have added luster. Joined by purpose as well as name for most of this century, the National Association for the Advancement of Colored People ("NAACP") and the N.A.A.C.P. Legal Defense and Education Fund, Inc. ("LDF") are parting company. Over the years in which they labored together, however, they have taught four generations of Americans that civics and civility are cognate virtues as well as words, qualities no less in evidence now as they confront each other for the first time as adversaries.

NAACP alleges that it has used those initials as its mark since "at least 1910;" that beginning in 1939 it permitted the LDF, then a newly incorporated subsidiary, to use them; and that, the LDF being now independent, its continued use of them infringes the mark to the confusion of the public, and represents unfair competition, in violation of Sections 32 and 43 of the Trademark Act of 1946, 15 U.S.C., §§ 1114 and 1125. It prays that the LDF be permanently enjoined from the use henceforth of the initials "NAACP."

Acknowledging plaintiff's prior claim to the mark, the LDF answers that the NAACP irrevocably granted it the right to use the initials in perpetuity, unconditionally and without reverter, and that the NAACP's acquiescence in or indifference to its continued use of them for nearly 20 years since its first objection works an estoppel to object now. The LDF counterclaims for a judgment declaratory of its own absolute right to joint or concurrent use of the initials with plaintiff hereafter.

The case is now before the Court on the parties' cross-motions for summary judgment. They are agreed that the passage of time has rendered further illumination of the facts (upon which their differences are principally semantic) both unlikely and unnecessary. The documentary evidence now before the Court and parties' statements of the case establishes sufficient material facts, hereinafter set forth, to be undisputed, from which the Court concludes that judgment must be given for plaintiff.

I.

The plaintiff National Association for the Advancement of Colored People was founded in 1909 and incorporated in New York in 1911,

to promote equality of rights and eradicate caste or race prejudice among the citizens of the United States; to advance the interests of colored citizens; to secure for them impartial suffrage; and to increase their opportunities for securing justice in the courts, education for their children, employment according to their ability, and complete equality before the law.

And so it has done to this day, becoming a national organization grown to some 400,000 members who belong to about 1700 branches in 36 conferences located in seven regions throughout the United States.

The NAACP has traditionally sought to achieve its objectives by a calculated blend of education, lobbying, and litigation. In the early years litigation was undertaken largely ad hoc; legal services were generally donated by volunteers, and such expenses as there were paid from the NAACP's general funds or defrayed by contributions obtained for a particular cause. By the 1930's, however, certain of the NAACP's distinguished scholar-advocates foresaw the potential of litigation as the most effective vehicle for rapid progress and set in motion the programs culminating in the cases which constitute so much of the history of the civil rights movement of the 20th century. For such cases, however, they realized that the impromptu financing of the past would not suffice and sought a way to assure that cases would be adequately underwritten before being undertaken. The dilemma they encountered—now familiar to non-profit public interest groups but less so then—was the reluctance of contributors to support organizations, however deserving, with non-deductible gifts and the unwillingness of the Internal Revenue Service (then the Bureau of Internal Revenue) to allow tax deductions for gifts to organizations engaged in political activity. The solution they arrived at was the LDF.

Thirty years after its own founding, the NAACP created the defendant "N.A.A.C.P. Legal Defense and Educational Fund, Inc.," as a New York non-profit corporation, with respect to which the NAACP Board of Directors resolved, on October 9, 1939, as follows:

WHEREAS, the directors of the LDF have requested permission of the NAACP to use the initials, "N.A.A.C. P.", in an application for a Certificate of Incorporation of the "N.A.A.C.P. Legal Defense and Educational Fund, Inc."; therefore,

BE IT RESOLVED, That the Board of Directors of the National Association for the Advancement of Colored People grant permission for the use of the initials, "N.A.A.C.P." by the "N.A.A.C.P. Legal Defense and Educational Fund, Inc.", and authorize the President and Secretary to execute whatever papers might be necessary to carry out this resolution.

In 1940 the LDF's certificate of incorporation was approved by the State of New York, and the Internal Revenue Service confirmed the new corporation's tax-exempt status. The creation of a separate organization to conduct the NAACP's legal work had enabled contributors wishing to support its non-political activities to receive tax deductions for their donations.

Thereafter the LDF and the NAACP (sometimes affectionately called the "Inc. Fund" and the "Association" to distinguish them in-house) kept separate books of account but still shared directors, offices and staff with one another. In the beginning there was considerable cooperation and coordination between the two organizations on matters of both operations and policy. Donations to one or the other were allocated according to their stated purpose without regard to the identity of the nominal payee, and the organizations frequently issued "exchange checks" to cure apparent mistakes in designation. The Executive Committee of the LDF Board of Directors often sought the approval of the board of the NAACP before it litigated questionable cases. And the LDF routinely handled general legal matters for the NAACP.

Although the organizations were physically separated in 1952 when the expansion of the LDF legal staff forced a move to new quarters a few blocks away, they experienced little distance of any other kind until May, 1957, when the LDF Board resolved to end the practice of interlocking directorates. The resolution did not result from any philosophical divergence but, rather, was adopted primarily as a countermeasure to "massive resistance" to their efforts to enforce compliance with Brown v. Board of Education (and secondarily to dispel growing IRS' unease at treating such close relatives as separate entities for tax purposes). State Attorneys General in several southern states were indiscriminately ordering the production of financial records and membership lists of both groups in quest of evidence of non-compliance with state law—any state law—to discredit or disable either or both. This technical separation for tactical purposes produced some confusion, primarily among those who had thought of them as, in essence, a single organization. But even after their formal separation the NAACP and the LDF remained largely able to coordinate efforts and avert conflicts, particularly in the sensitive area of fund-raising.

One of the NAACP's prominent leaders believed that a potential for disharmony had always existed in their structural differences. The NAACP is, and has always been, a membership corporation; the LDF has no members as such, its Board of Directors having only to account to itself. Whatever their origins, by 1960 tensions between the two had begun to emerge, and the first of several liaison committees was established to discuss jurisdictional issues and relations. In early 1962 the liaison committee presented a joint statement to the directors of both organizations suggesting means of and urging accommodation. Although tax considerations continued to preclude the NAACP's direct and formal control of the LDF, the directors of both boards were agreed that the whole of the LDF's resources could be devoted to NAACP legal programs without endangering the LDF's tax-exempt status.

Despite the sentiment for reconciliation, however, conflicts increased, primarily as to fund-raising, and in July, 1965, the NAACP Board passed a resolution calling upon the LDF to curb its autonomic impulses and revert to "special contribution fund status" or reincorporate under a name which would not include the initials "NAACP." As originally drawn the resolution provided that were the LDF to refuse to do either, the NAACP should sue "to enjoin them from use of the name NAACP," but in September 1965, at the urging of an elder statesman, the threatening language was stricken from the resolution as "impolitic."

In 1966 and 1967 the groups again attempted rapprochement, but relations now faltered over which was entitled to take major credit for the recent dramatic successes of the civil rights movement, and the NAACP was growing ever more concerned about its...