Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Jerusalem

• Decision Date: 18 December 2012
• Docket Number: No. 11–15101.,11–15101.
• Citation: 702 F.3d 1279
• Parties: SOVEREIGN MILITARY HOSPITALLER ORDER OF SAINT JOHN OF JERUSALEM OF RHODES AND OF MALTA, Plaintiff–Counter Defendant–Appellant, v. The FLORIDA PRIORY OF the KNIGHTS HOSPITALLERS OF the SOVEREIGN ORDER OF SAINT JOHN OF JERUSALEM, KNIGHTS OF MALTA, The ECUMENICAL ORDER, Defendant–Counter Claimant–Appellee.
• Court: U.S. Court of Appeals — Eleventh Circuit

702 F.3d 1279

SOVEREIGN MILITARY HOSPITALLER ORDER OF SAINT JOHN OF JERUSALEM OF RHODES AND OF MALTA, Plaintiff–Counter Defendant–Appellant,

v.The FLORIDA PRIORY OF the KNIGHTS HOSPITALLERS OF the SOVEREIGN ORDER OF SAINT JOHN OF JERUSALEM, KNIGHTS OF MALTA, The ECUMENICAL ORDER, Defendant–Counter Claimant–Appellee.

No. 11–15101.

United States Court of Appeals,Eleventh Circuit.

Dec. 18, 2012.

Paul D. Clement, H. Christopher Bartolomucci, Viet Dinh, David Zachary Hudson, Bancroft, PLLC, Washington, DC, Luis M. O'Naghten, Jose Felix Diaz, Akerman Senterfitt, LLP, Miami, FL, Michael K. Grace, Grace & Grace, LLP, Los Angeles, CA, for Plaintiff–Appellant.

Thomas W. Brooke, Holland & Knight, LLP, Washington, DC, Joseph Rodman Steele, Jr., Duane Morris LLP, Boca Raton, FL, Brian W. Toth, Holland & Knight, LLP, Miami, FL, Matthew Z. Zimmerman, Holland & Knight, LLP, West Palm Beach, FL, for Defendant–Appellee.

Appeal from the United States District Court for the Southern District of Florida.

Before WILSON, PRYOR and MARTIN, Circuit Judges.

WILSON, Circuit Judge:

We sua sponte vacate and reconsider our original opinion in this matter. We substitute the following opinion for our original opinion.

Plaintiff–Appellant Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta (Plaintiff Order) is a religious order of the Roman Catholic Church that undertakes charitable work internationally. Defendant–Appellee The Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order (The Florida Priory) is also a charitable organization, having an expressly ecumenical, rather than Catholic, association. Although The Florida Priory incorporated in Florida in 2005, it is associated with a parent organization, Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order (The Ecumenical Order), which was first incorporated in the United States in 1911. The Ecumenical Order is not associated with the Catholic Church, although approximately sixty percent of its members are Catholic.

Plaintiff Order filed suit against The Florida Priory in July of 2009 asserting infringement and false advertising claims under the Lanham Act, 15 U.S.C. § 1051 et seq., as well as state law claims for unfair competition and violation of the Florida Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. § 501.201 et seq. The infringement claims were based on The Florida Priory's alleged use of marks that are confusingly similar to those for which Plaintiff Order has obtained federal registrations. In the false advertising claim, Plaintiff Order charged that The Florida Priory (through its parent) falsely claimed a historic affiliation with Plaintiff Order going back to the eleventh century. The state law claims derive from these same allegations. The Florida Priory counterclaimed, alleging that PlaintiffOrder committed fraud on the United States Patent and Trademark Office (PTO) in applying for its service marks due to Plaintiff Order's failure to disclose its knowledge of the domestic presence of other organizations that used similar marks in commerce.

The district court ruled in favor of The Florida Priory on all counts of Plaintiff Order's complaint and The Florida Priory's counterclaim. This appeal followed, and after thorough consideration, we affirm in part, reverse in part, and vacate in part the judgment below and remand for further proceedings.

I. Facts and Procedural History

Starting on February 28, 2011, the district court held a three-day bench trial on the claims and counterclaims asserted by the parties. The vast majority of testimony related to the histories of the organizations involved, including The Ecumenical Order. Because of the fact-intensive nature of this case, we summarize the trial proceedings and the resulting findings of fact and conclusions of law by the district court, which were reported in a published opinion. See Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. The Fla. Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, The Ecumenical Order, 816 F.Supp.2d 1290 (S.D.Fla.2011).

A. Plaintiff Order's History and Service Mark Registrations

1. Trial Testimony Regarding History

As part of its case, Plaintiff Order presented the testimony of Geoffrey Gamble, a representative of Plaintiff Order, and Dr. Theresa Vann, an expert historian, to trace the history of Plaintiff Order from its founding to present. According to these witnesses, Plaintiff Order was founded in Jerusalem in the eleventh century. (D.E. 144, 37:11–12.) It relocated to the City of Acre and later to the island of Rhodes, where it was known as the Knights of Rhodes. ( Id. at 37:12–16.) After spending about two hundred years on the island of Rhodes, the group located in Malta (becoming the Order of Malta), which had been ceded for the Order's use by Emperor Charles V. ( Id. at 37:16–18.) Organizationally, multiple priories—a term which Gamble explained references canonical religious bodies where people are housed, ( id. at 48:25–49:1)—existed across Europe.¹ At some point there existed priories in Poland, Bavaria, and England, though the Polish priory had been lost when Poland was partitioned. (D.E. 145,110:12–18.)

Around 1797 or 1798, the Order of Malta was suffering financial hardship and sought monetary support from Czar Paul I of Russia. ( Id. at 108:20–109:3.) Two knights went to Russia seeking to obtain the property of the former Polish priory, and out of this visit came an agreement to create a Catholic-affiliated Russian priory. ( Id. at 110:25–111:9.)

In 1798, Napoleon expelled the Order of Malta and its knights from the island of Malta, and the organization relocated to present-day Italy. (D.E. 144, 37:17–19; D.E. 145, 111:13–25.)² The Order of Malta's Grand Master at the time, Ferdinand von Hompesch zu Bolheim, wrote to Czar Paul I for support after this expulsion. (D.E. 145, 111:12–18.) Czar Paul I, in response to the request for assistance and “for reasons best known to himself,” created a non-Catholic order for the non-Catholicmembers of his court. ( Id. at 112:6–10.) What happened next forms the crux of both parties' historical arguments. Plaintiff Order contends that the Czar illegitimately declared himself Grand Master³ of the entire Order, commencing a short-lived usurpation that ended with his assassination in 1801. ( Id. at 112:8–21.) The Czar's heir, Alexander I, took no interest in the Order's work.

In the early 1800s, the two Russian priories, along with the other European priories, elected Giovanni Battista Tomassi as Grand Master. ( Id. at 118:16–19.) Eventually, Czar Alexander I stripped both Russian priories of their land. ( Id. at 115:6–8, 116:15–22.)

Grand Master Tomassi served for only several years, and the next Grand Master was not confirmed by the Pope until 1879. ( Id. at 123:3–7.) The title of Grand Master was in abeyance for that period because of the warfare in Europe and, importantly, because Plaintiff Order was without land, a headquarters, or revenue. ( Id. at 121:16–122:16.) Plaintiff Order utilized that interim period to redefine its responsibilities and focus on its hospitaller, rather than its military, activities. ( Id. at 119:24–120:5, 122:18–23.) Likewise, over the past century, Plaintiff Order has served to provide hospital accommodations and serve as a religious order of the Catholic Church. ( Id. at 124:3–6.) It is currently headquartered in Rome. ( Id.)

Plaintiff Order began operating in the United States in 1926 or 1927 when it established the American Association in New York. (D.E. 144, 90:11–12.) Later, Plaintiff Order established the Western Association, based in San Francisco, and the Federal Association, based in Washington, D.C. ( Id. at 106:7–9, 107:8–10.) There are about three thousand Knights and Dames of Plaintiff Order within the United States. ( Id. at 190:23.)

2. Service Mark Registrations

Plaintiff Order has obtained the following registrations for its service marks:

IMAGE

The applications for these service marks were executed by Dean Francis Pace, a member of Plaintiff Order. He attested on each application that he was authorized to execute the application, that he believed Plaintiff Order to be the owner of the specific mark, that he believed Plaintiff Order was entitled to use the mark in commerce, and that to the best of his knowledge no other entity had the right to use a similar mark. (D.E. 127–2, 69, 86–87.) After some back and forth with the PTO,⁴ Plaintiff Order's marks were registered.

B. The Florida Priory's History and Relevant Service Mark Registrations

1. Trial Testimony Regarding History

The Florida Priory's account of history mirrors Plaintiff Order's up until 1798. The Florida Priory disputes Plaintiff Order's characterization of Czar Paul I as a de facto Grand Master. Instead, The Florida Priory argued that the Czar became a de jure Grand Master, establishing a continuous interdenominational Order that persisted all the way to the point where Grand Duke Alexander of Russia accepted the title of Grand Master in 1913 at the Waldorf–Astoria Hotel in New York City. (D.E. 146, 25:3–16, 33:6–12); (D.E. 25–11, 16). It was not, of course, the district court's obligation to rule on the legitimacy of Czar Paul I's title, in much the same way that no Article III court could be asked to rule on the propriety of King Henry VIII's declaration of independence from the Vatican. See Act of Supremacy, 1534, 26 Hen. VIII, c. 1 (Eng.).

In January of 1911, The Ecumenical Order incorporated in New Jersey under the name “The Knights of Malta, Inc.” (the New Jersey Corporation).⁵ (D.E. 25–1, Exh. 2; D.E. 146, 40:2–9.) A companion and successor organization to the New Jersey Corporation was formed in Delaware in August of 1956 under the name “Sovereign ...