Stop the Olympic Prison v. US Olympic Com.

• Decision Date: 15 February 1980
• Docket Number: No. 78 Civ. 4691 (JMC).,78 Civ. 4691 (JMC).
• Citation: 489 F. Supp. 1112
• Parties: STOP THE OLYMPIC PRISON, Plaintiff, v. UNITED STATES OLYMPIC COMMITTEE, Defendant.
• Court: U.S. District Court — Southern District of New York

489 F. Supp. 1112

STOP THE OLYMPIC PRISON, Plaintiff, v. UNITED STATES OLYMPIC COMMITTEE, Defendant.

No. 78 Civ. 4691 (JMC).

United States District Court, S. D. New York.

February 15, 1980.

COPYRIGHT MATERIAL OMITTED

Leon Friedman, New York City (Clark, Wulf, Levine & Peratis, and Richard Emery, New York Civil Liberties Union, New York City, of counsel), for plaintiff.

James S. Morris, New York City (Michael S. Press, W. Anthony Stewart and Whitman & Ransom, New York City, of counsel), for defendant.

OPINION

CANNELLA, District Judge:

After a trial on the merits, on the plaintiff's complaint for a declaratory judgment, and on the defendant's counterclaims, the Court finds for the plaintiff.

The counterclaims by the defendant are dismissed.

These are the Court's findings of fact and conclusions of law. Fed.R.Civ.P. 52(a).

FACTS

More than half a century has passed since Learned Hand acknowledged a chewing gum maker's interest against an ironmonger's use of his mark.¹ This period has seen the birth and boom of television, large national and international corporations and conglomerates, and the art and science of mass marketing through widely recognized brand names and marks. The new age, perhaps not even imagined in 1928, is one of "official" sports league knit caps, "Star Trek" meals at hamburger restaurants, and "a company called TRW."

That widespread recognition of a name and marks could itself be marketed for their owner's benefit has not been lost on the United States Olympic Committee "U.S.O.C.", the defendant in this action, or on the drafters of its new charter.² The 1980 Winter Olympics now has an "official camera," an "official car," and an "official imported beer." The companies that produce these and similarly identified products are entitled to advertise them as such, and to sport on them certain symbols universally associated with the Olympics. In exchange for this privilege, they make badly needed contributions to the United States Olympic Teams.

The instant case concerns the scope of protection to be afforded to some of these symbols, which are registered as trade and service marks to the U.S.O.C. The plaintiff, Stop The Olympic Prison, or S.T.O.P., is the publisher of an allegedly infringing poster.³

The top half of the poster consists of the words "STOP THE OLYMPIC PRISON" in large, striking letters. Immediately below is a drawing of five vertical steel-grey bars upon which are superimposed five interlocking rings in an arrangement universally recognized as a symbol of the Olympic Games. Thrusting through the bars and the rings is a silhouetted forearm clutching a flaming torch. Beneath the drawing, in 3/16-inch lettering, is the following legend:

S.T.O.P. (Stop The Olympic Prison) 3409 East Genesee St. Syracuse, NY 13224 Phone 315/446-6151

Co-Sponsors: New York Moratorium on Prison Construction, National Moratorium on Prison Construction

S.T.O.P. is not organized for profit, and, on the basis of the evidence adduced in this case, has never made any. While it admits to having sold some of the posters for one dollar apiece, this appears to have been largely a means of soliciting contributions for its cause, since most of the posters were given away free. None of the posters are sold or distributed by commercial outlets such as bookstores.

S.T.O.P.'s purpose in designing, printing and distributing the poster is and has always been to publicize and marshal public opposition to current plans to convert the Olympic Village in Lake Placid into a prison after the Winter Games. The genesis of this plan dates back to 1976, when, after the International Olympic Committee had officially designated Lake Placid as the site of the 1980 Winter Olympics, Congress authorized $49 million in federal funds for the construction of facilities for the Games. As a condition for the appropriation, Congress required that any facilities built for the Olympics be subsequently put to some permanent use.⁴ In view of the considerable expense, this would appear to be a laudable bit of legislative foresight.⁵

In seeking a subsequent use for the planned Olympic Village to house the athletes, the Lake Placid Olympic Organizing Committee "L.P.O.O.C."⁶ considered several alternatives, including college dormitories and public housing, but eventually decided that the most propitious one would be a prison. The Federal Bureau of Prisons concurred, and asked Congress to authorize funds for a medium security facility for young offenders. Congress gave its approval, the State of New York donated 155 acres of woodland in Ray Brook, about five miles from Lake Placid, and design and construction soon began.⁷

The construction of a new federal prison at Ray Brook, and its temporary use by Olympic athletes, soon attracted public criticism.⁸ Among the more active opponents has been S.T.O.P., which describes itself as an

association of religious, civil, and criminal justice reform groups created in 1978 for the purposes of organizing opposition to and increasing public knowledge about the construction of a federal prison for youthful offenders in Raybrook sic, New York, and the use of that prison to house athletes gathered to participate in the 1980 Winter Olympic Games in Lake Placid, New York.

Complaint ¶ 3 (filed Oct. 5, 1978).

On August 15, 1978, F. Don Miller, the Executive Director of the U.S.O.C., wrote to S.T.O.P., requesting that it immediately "cease and desist from using the word `Olympic' as well as . . . the Olympic rings on any material under S.T.O.P.'s control."⁹ Miller asserted that S.T.O.P.'s poster violated the federal law governing the U.S.O.C., 36 U.S.C. § 379,¹⁰ as well as Rule 6 of the Rules of the International Olympic Committee.¹¹

S.T.O.P. refused to comply, and instead brought this suit against the U.S.O.C. for declaratory relief. S.T.O.P. seeks a judgment declaring that it and its members have rights protected by the first amendment "to print and distribute their poster," and "to the use of the word `Olympic' and the symbol of the interlocking rings in expressing their opposition to the construction of the Raybrook sic prison." In addition, plaintiff seeks a declaration that its "use of the word `Olympic' and the interlocking rings does not violate any trademark rights of the United States Olympic Committee and does not violate the former section 379 of Title 36." Complaint at 5.

Shortly thereafter, the U.S.O.C. counterclaimed for defamation, trademark infringement, and violation of New York's anti-dilution law.¹² Although the U.S.O.C. requested a preliminary injunction in its Answer and Counterclaim, it has never actively sought this relief, and consequently, the Court has not granted it.

The action was tried on September 13, 1979. Plaintiff called only one witness, Michael Kroll, an organizer and spokesman for S.T.O.P., and introduced several exhibits, consisting of numerous newspaper and magazine articles, and a transcript of congressional hearings on the fiscal year 1980 authorization for the Federal Bureau of Prisons. Defendant called no witnesses, but introduced without objection an affidavit of its Counsel, and copies of the registrations of various of its trademarks.

Throughout the proceedings, counsel for both sides threw bouquets at one another. S.T.O.P. asserted that it fully supported the U.S.O.C.'s efforts to raise money to support the United States' participation in the Olympic Games, and, moreover, that it wished to see the Olympic Village converted into a permanent training facility for Olympic athletes, rather than a prison. The U.S. O.C. acknowledged that S.T.O.P. has no intention of using the Olympic trademarks for profit, and that its only purposes are to publish its views and bring about a change in the plans for the subsequent use of the Olympic Village.

DISCUSSION

Jurisdiction

In attempting to uphold the Court's jurisdiction over the subject matter of this action, the plaintiff asserts that it can be based upon the presence of a federal question, 28 U.S.C. § 1331(a), since the complaint makes first amendment claims against the defendant. Alternatively, plaintiff seeks to rely on defendant's status as an agency of the United States.

Of these two proffered grounds, the latter is the more easily dismissed, since the defendant is by no means a federal agency. Furthermore, the U.S.O.C.'s incorporation by an Act of Congress, 36 U.S.C. § 371, does not provide a basis for jurisdiction under 28 U.S.C. § 1349,¹³ since it is prohibited from issuing capital stock.¹⁴

The first asserted ground is a bit more troublesome. In a declaratory judgment action, where the posture of the parties is often reversed, the issues raised in the complaint may be merely the defenses plaintiff would raise if the defendant were to bring a coercive action against it. See, e.g., Public Service Comm'n v. Wycoff Co., 344 U.S. 237, 248, 73 S.Ct. 236, 242, 97 L.Ed. 291 (1952). And the existence of a federal question in a defense does not suffice to bring an action under the District Court's "arising under" jurisdiction, even if the plaintiff's complaint anticipates the defense and thereby incorporates the federal question. See Louisville & Nashville R.R. v. Mottley, 211 U.S. 149, 29 S.Ct. 42, 53 L.Ed. 126 (1908). As the Second Circuit recently stated:

An action for declaratory judgment may be brought in federal court ordinarily only if there would exist a basis for federal jurisdiction in a coercive action between the two parties.

Warner-Jenkinson Co. v. Allied Chemical Corp., 567 F.2d 184, 186 (2d Cir. 1977) (citing Public Service Comm'n v. Wycoff Co., supra; Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667, 671-72, 70 S.Ct. 876, 878-79, 94 L.Ed. 1194 (1950)).

In the instant case, plaintiff's assertion of first amendment claims is solely as a defense to a possible coercive action by the defendant: in the absence of such a coercive action, or at least some threat of such action, the mere...