National Board of YWCA v. YWCA OF CHARLESTON, SC

• Decision Date: 17 December 1971
• Docket Number: Civ. A. No. 70-180.
• Court: U.S. District Court — District of South Carolina
• Parties: The NATIONAL BOARD OF the YOUNG WOMEN'S CHRISTIAN ASSOCIATION OF the U. S. A., Plaintiff, v. YOUNG WOMEN'S CHRISTIAN ASSOCIATION OF CHARLESTON, SOUTH CAROLINA, Defendant.

335 F. Supp. 615

The NATIONAL BOARD OF the YOUNG WOMEN'S CHRISTIAN ASSOCIATION OF the U. S. A., Plaintiff, v. YOUNG WOMEN'S CHRISTIAN ASSOCIATION OF CHARLESTON, SOUTH CAROLINA, Defendant.

Civ. A. No. 70-180.

United States District Court, D. South Carolina, Charleston Division.

December 17, 1971.

COPYRIGHT MATERIAL OMITTED

Terrell Glenn, Columbia, S. C., Bernard R. Fielding, Charleston, S. C., Donovan, Leisure, Newton & Irvine, New York City, for plaintiff.

J. C. Long, Leonard L. Long, Jr., Charleston, S. C., Peden B. McLeod, Watersboro, S. C., for defendant.

ORDER

BLATT, District Judge.

This is a civil action for infringement of trademarks registered in the United States Patent Office, 15 U.S.C. Section 1114, as amended, and for unfair competition, namely common law trademark and trade name infringement, and is joined with a substantial and related claim based upon contract. The plaintiff claims the exclusive right to the use of the words, "Young Women's Christian Association." Jurisdiction of plaintiff's claim based on trademark infringement and unfair competition exists under 28 U.S.C. Sections 1338(a) and 1338(b). Plaintiff's claim based upon breach of contract is recognizable under the pendent jurisdiction of this Court. Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148 (1933); United Mine Workers of America v. Gibbs, 383 U.S. 715, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966).

In its answer and counterclaim, defendant's principal contentions were: a) that plaintiff's registered trademarks were invalid because plaintiff's purpose and function had so drastically changed since these trademarks were registered that the continued recognition of the trademarks would constitute a fraud on, and a deception of, the public; b) that the issuance of a trademark to a religious association contravenes the First Amendment which forbids governmental establishment of religion; c) that the words "Young," "Women's," "Christian," and "Association," which plaintiff seeks to appropriate, are so descriptive in nature that they could never acquire a secondary meaning upon which plaintiff could base an action for unfair competition; d) that defendant used the words in question prior to the plaintiff's formation, and that plaintiff had not at that time established a secondary meaning to these words so as to be entitled to common law trademark protection; e) that, insofar as the breach of contract claim was concerned, the agreement with plaintiff was signed by officers of defendant without authority to bind defendant, and that plaintiff's own constitution exempted defendant from any requirement that it sign this agreement; f) that, as a complete defense to all causes of action, plaintiff's conduct in radically changing its original purpose for incorporation, and its espousal of certain causes, completely contrary to the avowed purposes for which plaintiff was originally founded, prevented plaintiff from seeking equitable relief.

Plaintiff, the National Board of the Young Women's Christian Association of the U.S.A. (hereafter "National Board"), is the governing body of the Young Women's Christian Association of the U.S.A. (hereafter "National YWCA"). The National Board was incorporated under the laws of the State of New York on June 5, 1907, under the name "The National Board of the Young Women's Christian Associations of the United States of America." Pursuant to Chapter 258 of the laws of 1950 of New York, the name was changed to its present form which change merely omitted the letter "s" from the word, "Associations."

The purpose of the National YWCA is set forth in its present Constitution as follows:

"The Young Women's Christian Association of the United States of America, a movement rooted in the Christian faith as known in Jesus and nourished by the resources of that faith, seeks to respond to the barrier-breaking love of God in this day.

"The Association draws together into responsible membership women and girls of diverse experiences and faiths, that their lives may be opened to new understanding and deeper relationships and that together they may join in the struggle for peace and justice, freedom and dignity for all people."

The function of the National YWCA is set forth in its present Constitution as follows:

"The function of this organization shall be:

(a) To unite into an effective, continuing national organization the autonomous member Associations throughout the United States for the progressive fulfillment of the purpose of this organization in local, national and world relationships;

(b) To aid in establishing and developing autonomous units of the YWCA of the U.S.A.;

(c) To participate in the work of the World Young Women's Christian Association whose basis is `Faith in God the Father Almighty and in Jesus Christ His only Son our Lord and Savior, and in the Holy Spirit.'"

At the time of this trial, the National Board had over 400 affiliated community organizations, about 200 student organizations, and about 134 Y-Teen clubs throughout the United States. The National Board has for many years engaged in an extensive nationwide program of assistance to and supervision of these affiliated local organizations. Such continuing activities include the following: advisory services of consultants and specialists in areas of training of staff and volunteers; counselling of employed personnel; publication of administrative materials; assistance in planning, and provision of leaders for, locally administered community leadership development programs; consultative services with respect to new buildings and major renovations; development of standards to raise the quality of services to the community; administration of conventions and conferences for the development and furtherance of a national program; and promotion of the YWCA program and goals through the national media.

Defendant, the Young Women's Christian Association of Charleston, South Carolina (hereinafter "Charleston YWCA"), is a corporation existing under the laws of the State of South Carolina. The Charleston YWCA was organized in 1903. In 1906, when the plaintiff, National Board, was formed, the Charleston YWCA applied for charter membership and became affiliated with the National Board.

In order to remain affiliated with the National Board, each local association was required to meet all the requirements of membership as set forth in Section 3 of Article II of the Constitution of the National YWCA. In 1958, the Constitution was amended pursuant to the amendatory provisions thereof, to add a new requirement for membership of local associations. The new requirement for membership, Article II, § 3(a), reads as follows:

"Each Association shall signify by a written statement its acceptance of the Constitution of the National Association and its agreement to give up the use of the name and symbol if it should become disaffiliated."

On May 19, 1959, the National Board received the following instrument entitled "Statement and Record Obligation":

"The Young Women's Christian Association of Charleston, South Carolina signifies by this statement that it accepts the Constitution of the National Association as revised and agrees to give up the use of the name and symbol if it should ever become disaffiliated."

The statement was dated May 13, 1959, and carried the signatures of both the president and the executive director of the defendant then in office.

Until 1969, when at its own request, the Charleston YWCA was disaffiliated, the defendant was a member of the National YWCA and, therefore, an affiliate of the plaintiff. Since its disaffiliation, the defendant has continued to use the name "Young Women's Christian Association" and other symbols whose exclusive use is claimed by the plaintiff.

The National Board is the owner of five collective marks registered in the United States Patent Office under the provisions of the Trademark Act of 1946, 15 U.S.C. § 1051, et seq. These marks are as follows:

1. Collective Mark consisting of the slanted letters "YWCA", Registration No. 606,539, first used in or about 1887;

2. Collective Mark consisting of a triangle crossed by a bar containing the block letters "YWCA", Registration No. 632,427, first used in or about 1918;

3. Collective Mark consisting of a triangle crossed by a bar containing the block letters "YWCA", Registration No. 756,566, first used in or about 1918;

4. Collective Mark consisting of the block letters "Y-TEEN", Registration No. 581,709, first used in 1946; and

5. Collective Mark consisting of a globe superimposed upon a triangle containing the block letters "Y-TEEN", Registration No. 659,630, first used in 1946.

The registration of these marks upon the principal register at the United States Patent Office created a presumption of their validity and of plaintiff's ownership and exclusive right to their use. 15 U.S.C. Section 1057(b).

In addition to its five registered marks, the National Board claims ownership of a common law trade name, "Young Women's Christian Association", and a common law mark consisting of the letters "YWCA", both used to indicate membership in the Young Women's Christian Association of the U.S.A. The common law mark, YWCA, is depicted in United States Patent Office Collective Membership Mark No. 763,279, which mark plaintiff inadvertently allowed to become cancelled about January, 1970, for failure to file an affidavit of continued use as required by Section 8(b) of the Trademark Act of 1946, 15 U.S.C. § 1058(b). The National Board has applied for reregistration of this mark and the application was pending at the time of this trial.

The ownership and control of the marks listed above is retained by the National Board. Permission to use the name, "Young Women's Christian Association", and the marks is automatically extended to the local affiliated associations which fulfill and maintain the constitutional requirements for member associations. These associations use...