US Jaycees v. Philadelphia Jaycees

• Decision Date: 03 January 1980
• Docket Number: Civ. A. No. 78-3411.
• Citation: 490 F. Supp. 688
• Parties: UNITED STATES JAYCEES and Pennsylvania Junior Chamber of Commerce, v. PHILADELPHIA JAYCEES.
• Court: U.S. District Court — Eastern District of Pennsylvania

490 F. Supp. 688

UNITED STATES JAYCEES and Pennsylvania Junior Chamber of Commerce, v. PHILADELPHIA JAYCEES.

Civ. A. No. 78-3411.

United States District Court, E. D. Pennsylvania.

December 4, 1979.

On Motion to Amend January 3, 1980.

Robert B. Washburn, Woodcock, Washburn, Kurtz & Machiewicz, Philadelphia, Pa., for plaintiffs.

Bruce A. Cohen, Dechert, Price & Rhoads, Philadelphia, Pa., for defendant.

MEMORANDUM

CAHN, District Judge.

BACKGROUND

Plaintiffs, United States Jaycees (hereinafter National Jaycees) and Pennsylvania Junior Chamber of Commerce (hereinafter Pennsylvania Jaycees), have brought this action against defendant Philadelphia Jaycees. Plaintiffs allege that defendant's continued use of the trademark and trade name "Jaycees" is trademark infringement and false designation of origin under the Lanham Act (Federal Trademark Act of 1946), 15 U.S.C. §§ 1051-1127, and unfair competition under the common law of the Commonwealth of Pennsylvania. Jurisdiction is conferred upon this court by 28 U.S.C. § 1338, 15 U.S.C. § 1121, and the doctrine of pendant jurisdiction.

Plaintiffs have asked this court to enjoin the Philadelphia Jaycees from any use of the marks "Jaycees," "Jaycee," "J.C.," "J.C.'s," "Junior Chamber of Commerce," "Member of the United States Jaycees," "U.S. Jayceettes" and the various designs associated with and registered with these marks.

This controversy relates to the discriminatory policies of the National Jaycees. The National Jaycees, through its bylaws, precludes women from full membership as Jaycees. Women may neither vote nor hold office in any National Jaycee affiliate. The National Jaycees have consistently rejected attempts to admit women to full membership. In response, several affiliated chapters of the National Jaycees have interposed court challenges to the discriminatory policy of the National Jaycees. These cases have consistently held that there is no constitutional basis to prohibit the discrimination practices of the National Jaycees because no state action is present.¹ In response to these cases some affiliated chapters of the National Jaycees have abandoned or foregone individual policies of admitting women to full membership. Other affiliated chapters have chosen to admit women to full membership and accept disaffiliation. Defendant Philadelphia Jaycees is one such disaffiliated chapter.

Plaintiffs have brought this action as a test case. Plaintiffs' counsel at oral argument stated that success in this action may lead to threats or similar action against other affiliates or past affiliates who admit women to full membership and continue to use the "Jaycee" name to identify their organizations.

I make the following:

FINDINGS OF FACT

1. Plaintiff United States Jaycees is a nonprofit corporation duly organized and existing under the laws of the State of Missouri with its principal office in Tulsa, Oklahoma.

2. The National Jaycees grew out of the Young Men's Progressive Civil Association (YMPCA), organized on October 13, 1915, in St. Louis, Missouri. In 1916, the YMPCA changed its name to "Junior Citizens," sometimes abbreviated "JC's." In 1918, the Junior Citizens became affiliated with the St. Louis Chamber of Commerce and became known as the Junior Chamber of Commerce. In 1920, the National Jaycees was formed after a caucus and convention among local clubs from several cities. The National Jaycees has continuously existed since then, first under the name United States Junior Chamber of Commerce and since July 19, 1965, as the United States Jaycees.

3. Plaintiff National Jaycees was incorporated as the United States Junior Chamber of Commerce in the State of Missouri on August 5, 1929, and officially changed its name to United States Jaycees on July 19, 1965.

4. At the present time National Jaycees has an affiliated state organization member in each of the 50 states and the District of Columbia and approximately 9,200 affiliated local chapters with approximately 386,000 members.

5. Plaintiff Pennsylvania Junior Chamber of Commerce is a nonprofit corporation duly organized on May 12, 1947, and existing under the laws of the Commonwealth of Pennsylvania and having an office in Lancaster, Pennsylvania.

6. Pennsylvania Jaycees was chartered by National Jaycees on May 1, 1939, and has been in continuous existence since May 1, 1939, to date.

7. Pennsylvania Jaycees recorded the name "Pennsylvania Jaycees" with the Secretary of the Commonwealth of Pennsylvania on May 3, 1967.

8. At the present time Pennsylvania Jaycees has approximately 15,000 members in more than 350 local chapters.

9. Defendant Philadelphia Jaycees is a nonprofit corporation duly organized in 1937 and existing under the laws of the Commonwealth of Pennsylvania and maintains an office in Philadelphia, Pennsylvania.

10. Defendant Philadelphia Jaycees has been in continuous existence since 1937.

11. Since 1937 defendant Philadelphia Jaycees has been and continues to be a civic organization in the Philadelphia community and has carried out and continues to carry out many important community service projects, such as the local "Special Olympics program" for retarded children, Christmas shopping for orphans, and "half-way" houses.

12. Plaintiff National Jaycees is a collective organization made up of state and local organizations all of which are engaged in the services of "organizing and holding meetings, competitions and other special events for young men interested in the affairs and improvement of their communities, with the purpose of fostering interest in the community betterment programs at the local, state and national levels, as well as offering leadership experience to the members."

13. Plaintiff National Jaycees is the owner of certain registrations for service marks, collective marks, and trademarks in the United States Patent and Trademark Office which include the mark JAYCEES, alone and in combination with other words and designs, each of which is currently in full force and effect. (Exhibits 1-7 attached).

14. Affidavits have been filed and accepted pursuant to 15 U.S.C. §§ 1058 and 1065 with respect to registration numbers 746,757, 810,264, 813,205, and 813,475. Affidavits have been filed and accepted pursuant to 15 U.S.C. § 1058 with respect to registration numbers 964,460 and 964,461. Affidavits filed by National Jaycees pursuant to 15 U.S.C. § 1065 with respect to registration numbers 964,460 and 964,461 are presently being held in abeyance pending the disposition of the present litigation. With respect to registration number 1,060,286 affidavits under 15 U.S.C. §§ 1058 and 1065 are not yet due.

15. Each of the state and local organizations or chapters affiliated with plaintiff National Jaycees are permitted the use of the trademarks, service marks, and collective marks of plaintiff National Jaycees for the term of affiliation and membership.

16. Defendant Philadelphia Jaycees was an organization affiliated with the plaintiffs, a charter having been granted to it as a nationally recognized local chapter of plaintiff National Jaycees on or about July 17, 1937.

17. Defendant Philadelphia Jaycees was an officially recognized affiliate local organization member of National Jaycees during the period between about July 17, 1937, and June 26, 1973.

18. Defendant Philadelphia Jaycees' charter with plaintiff National Jaycees and affiliation with plaintiffs was revoked effective June 26, 1973, and a letter to that effect dated July 13, 1973, was sent to defendant Philadelphia Jaycees.

19. During the entire period that defendant Philadelphia Jaycees was an officially recognized affiliate local organization member of National Jaycees and up to the present time the bylaws of National Jaycees have required that the active members and officers of a local organization member to be eligible for affiliation be young men below the age of thirty-six. The present age requirement is between the ages of eighteen (previously twenty-one) and thirty-five inclusive.

20. Defendant Philadelphia Jaycees amended its bylaws on August 11, 1972, and admitted its first female member as an active member in September, 1972, in violation of the bylaws of plaintiff National Jaycees.

21. Defendant Philadelphia Jaycees' charter was revoked solely because defendant admitted women as active members with all rights, opportunities and privileges of membership.

22. Prior to revocation of the charter of defendant Philadelphia Jaycees and continuously thereafter to the present the bylaws of National Jaycees have included the following bylaw:

A Local Organization Member shall not change or amend its by-laws, constitution, or articles of incorporation in such manner that will be inconsistent with any requirements for affiliation. Any Local Organization Member in violation of the foregoing may be subject to revocation of its charter as provided in By-Law 4-10.

23. Subsequent to the affiliation of the Philadelphia Jaycees, but prior to revocation of the charter of defendant Philadelphia Jaycees and continuously thereafter to the present the bylaws of National Jaycees have included the following bylaw:

Applying for affiliation with the Jaycees by a local organization member and/or maintaining affiliation shall constitute a waiver of all rights to the name Jaycees and/or Junior Chamber of Commerce in the event the local organization member at any time for any reason ceases to maintain a U.S. Jaycees charter. The Executive Vice President shall be authorized to and shall take necessary steps to create a binding contractual relationship between the Corporation and each Local Organization Member regarding such waiver.

24. The marks referred to in paragraph thirteen which include the mark "JAYCEES" are used by plaintiffs and members of their organizations in conjunction with the activities enumerated in paragraph twelve and for identifying their membership in plaintiff National Jaycees.

25. The marks referred...