Te-Ta-Ma Truth v. World Church of the Creator

• Decision Date: 13 December 2004
• Docket Number: No. 03-4085.,03-4085.
• Citation: 392 F.3d 248
• Parties: TE-TA-MA TRUTH FOUNDATION-FAMILY OF URI, INC., Plaintiff-Appellant, v. THE WORLD CHURCH OF THE CREATOR, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

392 F.3d 248

TE-TA-MA TRUTH FOUNDATION-FAMILY OF URI, INC., Plaintiff-Appellant, v. THE WORLD CHURCH OF THE CREATOR, Defendant-Appellee.

No. 03-4085.

United States Court of Appeals, Seventh Circuit.

Argued September 8, 2004.

Decided December 13, 2004.

Paul R. Steadman (argued), Kirkland & Ellis, Chicago, IL, for Plaintiff-Appellant.

Todd M. Reardon, A Citizen's Law Office, Charleston, IL, for Defendant-Appellee.

Before BAUER, MANION, and KANNE, Circuit Judges.

KANNE, Circuit Judge.

TE-TA-MA Truth Foundation-Family of URI, Inc. ("the Foundation") sued the World Church of the Creator ("the World Church"), alleging, among other things, trademark infringement in violation of the Lanham Act, 15 U.S.C. §§ 1051 et seq. The district court granted summary judgment in the World Church's favor, and the Foundation appealed. We reversed the judgment of the district court and remanded with instructions to enter an appropriate judgment in favor of the Foundation. TE-TA-MA Truth Foundation-Family of URI, Inc. v. World Church of the Creator, 297 F.3d 662 (7th Cir.2002) (hereinafter Foundation I). Following entry of judgment in its favor, the Foundation moved for an award of attorneys' fees pursuant to 15 U.S.C. § 1117(a), which allows a court to award reasonable attorneys' fees to the prevailing party if the case is "exceptional." The district court denied the Foundation's motion because the Foundation had not shown willful infringement on the World Church's part. Because we find this case exceptional, we reverse the judgment of the district court and remand for further proceedings consistent with this opinion.

I. Background

In our previous opinion, Foundation I, 297 F.3d at 662, we recounted the facts giving rise to the Foundation's Lanham Act trademark claims, and we need not repeat them here. Instead, we focus on the egregious conduct of the World Church and its followers, as documented extensively in the record, throughout the course of the litigation below. We recount these facts in some detail because the nature of the World Church's litigation conduct is central to the Foundation's argument on appeal.

The Foundation and the World Church are organizations with diametrically opposing views, to put it mildly. The Foundation, a recognized religious charity, practices as a central tenet the promotion of universal love and respect.¹ Like many other religious organizations, the Foundation provides a range of spiritual services, including: classes, lectures, and seminars on religion and self-help; ministerial services; religious consulting; ordination services; and religious, spiritual, and educational information via the internet. The Foundation provides these services and others in connection with the name "CHURCH OF THE CREATOR(R)." The Foundation began using the name sometime in 1982 and subsequently registered the name with the U.S. Patent and Trademark Office in 1987.

In contrast to the Foundation, the World Church subscribes to far less harmonious principles. The World Church is a nonprofit organization with goals succinctly described in its slogan: "Dedicated to the Survival, Expansion, and Advancement of the White Race." The World Church's goal is the elimination of Jews, blacks, and so-called "mud races." The organization first began operating under the name "Church of the Creator" upon its founding in 1973 and changed its name to "World Church of the Creator" at some point in the 1990s. The World Church registered neither name with the U.S. Patent and Trademark Office. Although styling itself a "church," the World Church has had its tax-exempt charity status revoked by both state and federal governments. See, e.g., Church of the Creator, Inc. v. CIR, 707 F.2d 491 (11th Cir.1983); Illinois v. World Church of the Creator, 198 Ill.2d 115, 260 Ill.Dec. 180, 760 N.E.2d 953 (2001).

Thus, from at least 1987, the Foundation operated under its registered mark "CHURCH OF THE CREATOR(R)" at the same time that the World Church conducted its own affairs under the moniker "World Church of the Creator." During this period, the World Church, under the leadership of Matthew Hale, engaged in or was associated with a number of incidents that heightened public awareness of the World Church's particular brand of "religion." For example, in 1997, Hale and other World Church members ("Creators") made an appearance on the nationally televised Jerry Springer Show, in which they proclaimed hatred for racial minorities, Jews, and even Christians. More notorious publicity came in 1998, when Benjamin Smith, a World Church devotee, embarked on a multistate shooting spree in which he targeted minorities. Smith shot and killed two victims and wounded several others before he took his own life. See, e.g., Russell Working, Rampage Left Lasting Wounds, CHI. TRIB., July 4, 2004, at 10. Activities of this sort served to focus the public spotlight in a negative way on the beliefs of the World Church's members and leaders.

Given the confusing similarity in the names of the two organizations, it was certainly possible that the Foundation might be mistaken for the unsavory organization headed by Hale, and that is precisely what happened. The Foundation began to receive angry complaints and denunciations from parties believing that the CHURCH OF THE CREATOR(R) and the World Church of the Creator were the same entity, or that the Foundation endorsed the World Church's racist creed. As a result, on May 2, 2000, the Foundation filed suit against the World Church to enjoin its use of the obviously confusing name "World Church of the Creator" and for other relief.

A. Initial Harassment by World Church Members

Shortly after filing suit, the Foundation began receiving email and voicemail messages from World Church followers. A number of the communications were merely rude or offensive, but others took a more threatening tone (all grammar, usage, and spelling in original):

• "Perhaps I will drop by and pay you a visit. TOM METZGER"²

• "Race Traitors, We will include you in the concentration camps next time around, so you can be with the jews you so love."

• "if you are wise you will stop such a stupid action as a lawsuite, for your well-being."

• "i and my racial comrades take a great offense in suing the real church of the creator .... you wander why Hitler took you Jewish scum out back then well i hope you realize this will piss my race off even more because of this there may be a rise in so called `Hate Crimes' i am not saying i am going to but your sure to piss somebody off to the point of violence ... HIEL HITLER, HIEL KLASSEN, HIEL ROCKWELL ... WHITE POWER"

• "I'll tell you what your going to do is piss off allot of my aryan brothers and sisters!"

• "You sick, filthy, degenerate assholes! Burn in Hell!"

• "YOU HAVE NO RIGHT TO THE WORD CREATOR .... TAKE PRIDE IN YOUR RACIAL HERITAGE BEFORE YOUR CHILDREN ARE SMOTHERED BY MIXED MUTTS"

• "I'm a member of a white racel racial religion called creativity. Are church is called the world church of the creator.... What makes you think that we stould the name from you FUCKING KIKE?"

The Foundation continued to receive messages of this sort throughout the initial stages of litigation in the district court. Eventually, the Foundation and the World Church filed cross-motions for summary judgment. On January 31, 2002, the district court granted summary judgment in the World Church's favor. See TE-TA-MA Truth Foundation-Family of URI, Inc. v. World Church of the Creator, No. 00 C 2638, 2002 WL 126103, 2002 U.S. Dist. LEXIS 1478 (N.D.Ill. Jan. 31, 2002). The Foundation appealed the judgment on February 12, 2002.

B. Harassment During the Pendency of the Appeal

The threats and harassment continued unabated after the Foundation filed its notice of appeal. Indeed, if anything, it seems that the harassment became progressively worse and expanded to include the Foundation's attorneys. Hale now exhorted World Church members via email to "put pressure to bear on the [Foundation's] scoundrel law firm [Kirkland & Ellis] that is pushing this frivolous and malicious lawsuit against us." Hale also provided the names and phone numbers of two of the Foundation's lead attorneys, labeling one a "definite Jew" and the other a "probable Jew." Hale reminded the email recipients that "these scoundrels have brought this suit to consume our time and resources. Perhaps their time and resources will be consumed as well."

Hale also posted several "hotline" messages on the World Church's website, in which he again noted his belief that the Foundation's lead attorneys "are Jewish," and he provided their phone and facsimile numbers so that World Church members could "protest this witch hunt and make [the Foundation's attorneys] consume their time and money dealing with the mass of calls from angry White Racial Loyalists." Moreover, Hale reminded members that the Foundation's attorneys, who work at a "Jew infested law firm," had "consumed enough of our time and money — perhaps they could be repaid in kind." Hale asked members to "continue calling Kirkland & Ellis and voice your opposition to their pursuing this appeal of their harassment lawsuit against us."

In response to Hale's exhortations, World Church members and sympathizers continued their barrage of emails and phone calls to the Foundation's counsel. A sampling of these communications follows (all grammar, usage, and spelling in original):

• "I urge you to rescind from carrying this case on any further to avoid embarrassment to yourself and to your clients."

• "I understand that your law firm has appealed a decision handed down by a lower court in the World Church Of The Creator name lawsuit.... I'm a member of WCOTC and I just want to say that I think it's awful that your firm would do this kind of cheap, petty thing in the first place. WE had the name first. No one else did and it's been proven. Why do you and your firm place money ahead of ethics and morals? ...