Schroeder v. Lotito
| Decision Date | 29 December 1983 |
| Docket Number | Civ. A. No. 83-0417 S. |
| Citation | 577 F. Supp. 708 |
| Parties | William A. SCHROEDER, in his capacity as a member and officer of the Graphic Communications International Union, AFL-CIO, CLC, an unincorporated association and Graphic Communications International Union, AFL-CIO, CLC, an unincorporated association, Plaintiffs, v. Siro J. LOTITO, Jr., d/b/a Arrow Letter Shop a/k/a Arrow Printing Company, Arrow Print Shop, and Imperial-Arrow Associated Services of Rhode Island, a non-business corporation, Defendants. |
| Court | U.S. District Court — District of Rhode Island |
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Delson & Gordon by Martin R. Ganzglass, Washington, D.C., Roberts, Carroll, Feldstein & Tucker by Berndt W. Anderson, Providence, R.I., for plaintiffs.
Michael J. Kiselica, Cranston, R.I., for defendants.
In this action, the plaintiffs seek relief for alleged violations of assorted federal and state statutes and non-statutory legal principles prohibiting unfair competition, deceptive trade practices and trademark infringement. Specifically, the plaintiffs assert that defendants' use of a union label which is "confusingly similar" in appearance to plaintiffs' mark(s) derogates 15 U.S.C. § 1114, 15 U.S.C. § 1125, R.I.Gen. Laws §§ 6-2-1 et seq. and R.I.Gen.Laws §§ 6-13.1-1 et seq.; and is, likewise, violative of the common law of unfair competition. The defendants offer a medley of defenses, asserting that (i) this court is bereft of subject matter jurisdiction, (ii) plaintiffs have no standing, and finally (iii) plaintiffs' case is wanting on the merits. By order entered September 19, 1983, the court merged the plaintiffs' request for preliminary injunction with trial on the merits pursuant to Fed.R.Civ.P. 65(a), and bifurcated the resultant trial. In consequence of that order, and expedited by several stipulations of fact, the liability aspects of the action were tried to the court, sitting jury waived, in late October of 1983. Following that bench trial, decision was reserved. This opinion constitutes the court's findings of fact and conclusions of law as required by Fed.R.Civ.P. 52(a).
Plaintiff Schroeder is an officer of the Graphic Communications International Union (GCIU), an unincorporated labor organization. The GCIU, itself a plaintiff in this litigation, was born in wedlock of a marriage between the Graphic Arts International Union (GAIU) and the International Printing and Graphic Communications Union (IPGCU). The GCIU is also the successor to both the Lithographers and Photoengravers International Union (LPIU) and the Amalgamated Lithographers of America (ALA). The membership of the GCIU consists of lithographers, photoengravers, printers, bookbinders and persons pursuing allied trades.
The GCIU presently owns a trademark originally registered and used by the GAIU to identify goods produced by companies employing GAIU members. This mark is registered in the United States Patent Office, as well as in each of the fifty states and the District of Columbia. The GAIU mark has likewise been protected throughout Canada. In addition to the GAIU mark, the GCIU also owns the trademark originally registered by the LPIU in 1964 with the United States Patent Office and with the Rhode Island Secretary of State. And, although no longer regularly used, the GCIU similarly controls (and has in the past utilized) the ALA mark. The GCIU has consistently and vigorously enforced its perceived right to the exclusive use of these symbols.
Essentially, all of these marks serve a common purpose: they are placed on commercially-printed materials to designate and distinguish the work as having been produced by union labor. Such marks, generally, have come to be known as "union bugs." Common sense teaches, and the evidence shows, that certain customers prefer to patronize union shops for printing purposes — and to have it known that they act upon this preference. The apterous union bug proclaims to all who care to take notice that the person who commissioned the printing shares this orientation and has ceded his custom to print shops affiliated with organized labor. The presence of a beetle is of vital concern, especially, to those seeking elective office, many of whom feel that it is prudent—perhaps essential—to their electoral efforts tangibly to demonstrate their sympathy to, and oneness with, the labor movement. And, in the world of print, the GCIU is not just a garden-variety purveyor of bugs: it is a Colossus among the unions active in the industry. In Providence, for example, there are thirteen printeries catering to the general public affiliated with organized labor, of which no less than eleven are signatory to collective bargaining agreements with the GCIU.
Defendant Lotito is the president of Imperial-Arrow Associated Services of Rhode Island (Imperial-Arrow), a non-business corporation which owns and operates the Arrow Print Shop (Arrow), formerly known as the Arrow Letter Shop. Imperial-Arrow and Arrow were added as party defendants prior to trial. Arrow is in the business of printing invitations, announcements, reception cards and the like. None of Arrow's employees are members of any labor union; in fact, there has never been a collective bargaining agreement in effect at the company.
The events giving rise to this litigation began to unfold approximately five years ago when Lotito received literature from an organization euphemistically called the American Independent Lithographers Union, Inc. (AILU). The AILU was not a labor organization, nor was it engaged in the printing industry. It had, however, built a better mousetrap: it trumpeted its services as a handy panacea to combat "the experience of losing printing jobs to another printer just because the other printer could put the `Union Label' on his work..." Exhibit 26. According to the AILU literature, for a one-time membership fee of $20.00 and monthly dues of $10.00 thereafter, a wondrous eclosion would occur: the subscribing shopowner would receive "slicks" of the AILU union label and the opportunity, of course, to represent his business as a "union shop" — all without having to worry about such annoying details as collective bargaining, union organizers, wage scales, fringe benefit packages and the like.
Being aware of the advantage which the appearance of "union" affiliation could confer in attracting certain types of business,1 the defendants accepted the AILU's invitation with alacrity. They plainly hoped that the make-pretend bug would prove to be the eruciform larva which would transform the torpid caterpillar of Arrow's political printing business into a soaring butterfly. Since that time, Lotito has represented the fact of his union affiliation and has used the inquiline AILU beetle on divers occasions, almost invariably in connection with political assignments.
Prior to the institution of this action, the GCIU brought suit against AILU in the United States District Court for the Eastern District of Kentucky. On October 8, 1982, the district court entered a consent decree enjoining AILU from, inter alia, continuing to use, sell, or distribute its mark in commerce. The order further required that AILU notify its members in writing of the existence and terms of the injunction. Lotito claims that he never received such notice. But, this court does not credit his denial.
When viewed in registration-size mockups, the AILU bug is discernible from the GCIU marks. The points of distinction slip into oblivion, however, in the miniaturized forms in which the marks are routinely used on printed materials. The AILU bug, like all three of the plaintiffs' labels, consists principally of a geometric shape surrounding a word or phrase identifying the organization. Furthermore, the diamond-shaped configuration of the AILU mark replicates the predominant design of the LPIU mark. The consumer, of course, will rarely (if ever) be afforded the luxury of a side-by-side comparison of the authentic and ersatz marks. And, the typical patron of a printing establishment will doubtless rest secure in the knowledge that the desired bug appears to be embossed thereon. Thus, in actual use, there is no question but that the marks are confusingly similar—a circumstance which is exacerbated by the fact that the most prominent feature of the AILU mark (indeed, the only portion readable by the naked eye in actual use) is its ostentatious display of the phrase "UNION LABEL."
It is against this backdrop that the case at bar arose. The controversy dates back to a printing job which the defendants performed in the spring of 1982. An election year was at hand, and the aestivation of the political dry season could no longer be tolerated. Thomas DiLuglio, the incumbent lieutenant governor of Rhode Island, peered into his campaign warchest, and was apparently dissatisfied with the meagre contents. To remedy this situation, Lieutenant Governor DiLuglio determined to host a reception and to test the fund-raising waters. He specifically admonished his aides to make sure that the invitations to this gala affair were printed by a union printer and embossed with a union bug — as, at an earlier time, DiLuglio had been subjected to criticism, obloquy and scorn for using a non-union shop (apparently unwittingly) to produce political printing.
With this admonition ringing in her ears, Cynthia Simeone, a planning specialist in the lieutenant governor's office, acting on behalf of DiLuglio's campaign committee, contacted Lotito. He assured Simeone that Arrow could do the job, and he assuaged her fears: Arrow was a union shop and had a union bug, which would be displayed on the invitations. Encouraged by these blandishments, Simeone and two fellow DiLuglio aides, Jeanne Ballirano and George Radican, ventured to the Arrow premises. All of these individuals testified unequivocally that Lotito held Arrow out to be a union shop, reassured them that the invitations would...
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