U.S. Jaycees v. Cedar Rapids Jaycees, 85-2029

• Decision Date: 30 June 1986
• Docket Number: No. 85-2029,85-2029
• Citation: 794 F.2d 379
• Parties: UNITED STATES JAYCEES, a non-profit Missouri Corporation, Appellant, v. CEDAR RAPIDS JAYCEES, a non-profit Iowa Corporation, Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

Page 379

794 F.2d 379

230 U.S.P.Q. 340

UNITED STATES JAYCEES, a non-profit Missouri Corporation, Appellant, v. CEDAR RAPIDS JAYCEES, a non-profit Iowa Corporation, Appellee.

No. 85-2029.

United States Court of Appeals, Eighth Circuit.

Submitted Feb. 14, 1986.

Decided June 30, 1986.

Carl D. Hall, Jr., Tulsa, Okl., for appellant.

D.J. Smith, Cedar Rapids, Iowa, for appellee.

Before ARNOLD, Circuit Judge, TIMBERS, Senior Circuit Judge, ^* and FAGG, Circuit Judge.

ARNOLD, Circuit Judge.

This is a trademark infringement action brought by the United States Jaycees (USJ) under 15 U.S.C. Sec. 1114 to enjoin its affiliate, Cedar Rapids Jaycees (CRJ), from using the federally protected trademark "Jaycees." The United States District Court for the Northern District of Iowa ¹ granted summary judgment to the Cedar Rapids Jaycees, 614 F.Supp. 515. We affirm.

I.

Plaintiff United States Jaycees is a nonprofit civic and service organization. Cedar Rapids Jaycees has been chartered since 1945 as a local affiliate of the USJ. The national organization had since its founding in 1920 defined itself as a "young men's civic organization" and had limited its regular voting membership to "young men between the ages of eighteen (18) and thirty-five (35)." ² Local affiliate organizations were required to adhere to these membership requirements and otherwise conform their by-laws to the rules of the USJ. Women were allowed to join the Jaycees as "associate members" and were permitted to participate in various projects and activities, but were barred from voting in organization elections or serving in positions of leadership. For a number of years beginning in the 1970's the subject of admitting women as full members of the Jaycees was a matter of debate and discussion within the Jaycees. Several local organizations began on their own to admit women. The national organization resisted their initiatives, and litigation ensued. During this period the national membership three times voted against admission of women.

In May of 1982 the Cedar Rapids Jaycees amended its local by-laws to admit women to full voting membership. Subsequently, the Executive Committee of USJ informed CRJ that if the local organization did not conform its admission requirements to those of USJ, the Executive Committee would invoke By-law 4-4I, which had been promulgated earlier that year. By-law 4-4I empowered the Executive Committee to revoke the license of any local affiliate to use the "Jaycees" trademark if the local affiliate did not comply with the national by-laws. CRJ refused to comply, and USJ ultimately revoked CRJ's license to use the trademark. USJ never at any time revoked the charter of CRJ; it continued to accept dues payments from local chapter members, and the Cedar Rapids chapter continued to receive individual and group awards from the national and state organization.

On 6 March 1984 the District Court enjoined CRJ from using the "Jaycees" trademark. On 2 October 1984 the injunction was stayed pending appeal to this Court. Meanwhile, the USJ had, in its national convention, ended the long-standing "all-male" membership policy. This action was taken in response to the opinion of the Supreme Court of the United States in Roberts v. United States Jaycees, 468 U.S. 609, 104 S.Ct. 3244, 82 L.Ed.2d 462 (1984), holding that the State of Minnesota could constitutionally forbid USJ to exclude women from full membership.

On appeal, this Court remanded to the District Court for further proceedings. The trial court was directed to consider whether the USJ is a public accommodation under the Iowa Civil Rights Act, Iowa Code Sec. 601A.2(10) and (7) (a statute similar to the Minnesota law upheld in Roberts ); and whether, if so, the USJ's revocation of CRJ's license to use the trademark was nonetheless valid. United States Jaycees v. Cedar Rapids Jaycees, 754 F.2d 302 (8th Cir.1985).

After remand, the District Court granted summary judgment to CRJ. The Court held that (1) USJ is a public accommodation within the reach of the Iowa Civil Rights Act; (2) its lawsuit against CRJ violated the Iowa law since it was instituted in retaliation against CRJ for admitting women, a protected class under the Iowa law; and (3) even if the revocation was valid, the requested injunction would be denied since under 15 U.S.C. Sec. 1116 injunctions must issue according to the principles of equity, and USJ was undeserving of equitable relief since it had dealt unjustly with CRJ.

II.

The United States Jaycees is the owner of the service mark "Jaycees," No. 746,757, registered on 12 March 1963. This mark is incontestable within the meaning of 15 U.S.C. Sec. 1065, since it has been in use for five consecutive years subsequent to the date of registration, is still in use, and has not been challenged on any of the grounds provided in Sec. 1065.

The Cedar Rapids Jaycees has been a local affiliate of the USJ since 1945. Like all local affiliates, CRJ has been afforded a license to use the "Jaycees" service mark by the USJ since its original charter. This license arrangement was formally set out by amendment to the USJ by-laws in 1982, immediately before this lawsuit arose. ³

On 12 January 1984 the Executive Committee of the USJ exercised its power under the by-laws and formally revoked CRJ's license to use the Jaycees trademark. USJ does not seriously contend that this revocation was for any reason other than that the CRJ had violated the USJ by-laws by admitting women to voting membership.

USJ undoubtedly had the right, in the abstract, to revoke CRJ's license. The by-law which regulated relations between the national organization and its affiliates clearly set out the terms under which the trademark could be used and the terms under which permission could be taken away.

The central question which is presented for our determination is whether the District Court erred in denying the injunctive relief requested by USJ under 15 U.S.C. Sec. 1116(a), which provides:

The several courts vested with jurisdiction of civil actions arising under this chapter shall have the power to grant injunctions, according to the principles of equity and under such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office.

It is generally said that once infringement of a trademark is shown, the owner of the mark is entitled to injunctive relief. Indeed, when the infringement is clear and deliberate, such relief is denied only in the most unusual of cases. See Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 614-15 (7th Cir.1965). However, the grant of injunctive relief is not a ministerial act which must flow as a matter of course. Weinberger v. Romero-Barcelo, 456 U.S. 305, 313, 102 S.Ct. 1798, 1803-04, 72 L.Ed.2d 91 (1982). A court of equity has a duty to consider not only the nature of the asserted right, but also the conduct of the plaintiff in seeking to enforce that right, see, e.g., Knights of the Ku Klux Klan v. Strayer, 34 F.2d 432, 434 (3d Cir.1929); the burden that the requested relief will impose on the defendant (in proportion to the injury which the defendant has caused), see, e.g., Puritan Sportswear Corp. v. Puritan Fashions Corp., 232 F.Supp. 550, 555 (S.D.N.Y.1964); and the impact on the public interest, see e.g., Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 493, 62 S.Ct. 402, 405, 86 L.Ed. 363 (1942). The court ought also take care that its decree not be used to promote inequitable ends. It is still, even in this modern day of merged practice, a court of conscience, and it ought not grant equitable relief for an unconscionable purpose, however strong the legal rights asserted may be.

USJ argues that the discretion of a court in granting or withholding an injunction is severely limited when the trademark in question has, like this one, become incontestable. It relies on the language of 15 U.S.C. Sec. 1115(b) and on the recent Supreme Court case of Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 105...