Vonrosenberg v. Lawrence
| Decision Date | 18 December 2019 |
| Docket Number | Civil Action No. 2:13-587-RMG |
| Citation | 429 F.Supp.3d 175 |
| Parties | The Right Reverend Charles G. VONROSENBERG, et al., Plaintiffs, The Episcopal Church, Plaintiff in Intervention v. The Right Reverend Mark J. LAWRENCE, et al., Defendants. |
| Court | U.S. District Court — District of South Carolina |
Jason Severin smith, Thomas S. Tisdale, Jr., Hellman Yates and Tisdale, Robert Walker Humphrey, II, Charleston, SC, Willoughby and Hoefer, Matthew Dempsey McGill, Gibson Dunn and Crutcher, Washington, DC, for Plaintiffs.
Adam Michael Chud, David Booth Beers, Goodwin Procter LLP, Washington, DC, Allan Riley Holmes, Timothy O'Neill Lewis, Cheryl H Ledbetter, Gibbs and Holmes, Robert Walker Humphrey, II, Willoughby and Hoefer, Charleston, SC, Charles Alan Runyan, Beaufort, SC, Mary Elaine Kostel Chancellor to the Presiding Bishop of The Episcopal Church Alexandria, VA, for Intervenor Plaintiffs.
C. Pierce Campbell, Turner Padget Graham and Laney, Lawrence Bradley Orr, Orr Elmore and Ervin, Saunders M. Bridges, Jr., Florence, SC, Charles Alan Runyan, C. Alan Runyan, Stacey P. Canaday, Tupper Grimsley and Dean PA, Andrew Spencer Platte, Andrew S. Platte, Charles Alan Runyan, C. Alan Runyan, Beaufort, SC, Harry Roberson Easterling, Jr., Easterling Law Firm, Bennettsville, SC, Henry P. Wall, Bruner Powell Wall and Mullins LLC, John Edward Cuttino, Gallivan White and Boyd, C. Mitchell Brown, Nelson Mullins Riley and Scarborough, Columbia, SC, Robert S. Shelton, Bellamy Rutenburg Copeland Epps Gravely and Bowers, Susan P. MacDonald, Nelson Mullins Riley and Scarborough, Karolan Furr Ohanesian, Ohanesian and Ohanesian, Henrietta U. Golding, Burr and Forman LLP, Myrtle Beach, SC, Robert R, Horger, Horger Barnwell and Reid, Charles Hiram Williams, II, Williams and Williams, Orangeburg, SC, William A. Scott, Pedersen and Scott, Mark Victor Evans, Mark V. Evans Law Office, David B. Marvel, Marvel et al LLC, G. Mark Phillips, Andrew Marvin Connor, Nelson Mullins Riley and Scarborough(Ch), William Foster Gaillard, Womble Bond Dickinson US LLP, Paul E. Sperry, Catherine Robinson Graham, Copeland Stair Kingma and Lovell LLP, Allan Poe Sloan, III, Joseph C. Wilson, IV, Pierce Herns Sloan and McLeod, Oana D. Johnson, Oana D. Johnson Attorney at Law, Ryan Earhart, Earhart Overstreet LLC, David Spence Cox, Barnwell Whaley Patterson and Helms LLC, Charleston, SC, John Furman Wall, III, Mount Pleasant, SC, William A. Bryan, Bryan and Haar, Surfside Beach, SC, Peter Brandt Shelbourne, Summerville, SC, Harry A. Oxner, Oxner and Stacy, Georgetown, SC, Lance A. Lawson, Burr and Forman LLP, Charlotte, NC, for Defendants
Richard Mark Gergel, United States District Court Judge This matter is before the Court on Plaintiffs' Motion to Enforce the Injunction (Dkt. No. 686) and Defendants' Motion to Stay Pending Appeal (Dkt. No. 690). For the reasons set forth below, Plaintiff's Motion to Enforce is granted in part and denied in part and Defendants' Motion to Stay is denied.
This case arises out of a schism in 2012 in the Historic Diocese, originally known as the "Protestant Episcopal Church in the State of South Carolina," in which certain members and parishes sought to dissociate from The Episcopal Church, a nationwide hierarchical church. The parties have litigated property issues related to the schism in the state courts of South Carolina, culminating in a 2017 decision in the South Carolina Supreme Court holding that The Episcopal Church owned most of the property in dispute and found that twenty-eight of the Disassociated Parishes held real and personal property in trust for TEC. Protestant Episcopal Church in the Diocese of S.C. v. Episcopal Church , 421 S.C. 211, 265, 806 S.E.2d 82, 111 (2017). Given the long history of this case and the multiple Parties, it is important at the outset to identify the principal Parties:
While the state courts addressed property issues, in this action the Parties raised issues surrounding the use of certain trademarks in contest between TEC and its affiliates and the Disassociated Diocese and its affiliates. (Dkt. Nos. 146, 150.)
Ultimately, this Court, on September 19, 2019, granted summary judgment in favor of TEC and TECSC, finding that TECSC is the lawful successor of the Historic Diocese, granting summary judgment on Plaintiffs' claims for trademark infringement, trademark dilution and false advertising and issuing an injunction prohibiting the Disassociated Diocese or the Disassociated Parishes from using any of the following marks or any mark that is confusingly similar:
(hereafter, "enjoined marks") (Dkt. Nos. 667; 668.)
Plaintiffs TEC and TECSC now move to enforce this injunction. (Dkt. No. 686.) Specifically, while TEC and TECSC acknowledge that the Disassociated Diocese and Parishes have made "limited" changes to their websites and advertising materials, Plaintiffs allege that a variety of Defendants' actions violate the injunction, including by: 1) stating that the Disassociated Diocese was "founded in 1785"; 2) stating that Defendant Bishop Lawrence is the Disassociated Diocese's "14th Bishop" or "XIV Bishop"; 3) stating that the Disassociated Diocese will hold its "229th Diocesan Convention"; 4) including the Journals of prior Diocesan Conventions on their websites; 5) stating that the Disassociated Diocese is the publisher of "Jubilate Deo" and posting prior issues of Jubilate Deo on their website; 6) stating that Camp St. Christopher is an institution of the Disassociated Diocese; 7) redirecting the Historic Diocese's website domains to Disassociated Diocese's websites; and, finally 8) adopting "Anglican Diocese of South Carolina" as their new name. (Id. ) Defendants oppose this motion, alleging that they complied with the injunction by changing their name to "Anglican Diocese of South Carolina and the uses identified by Plaintiffs do not violate the injunction.4 (Dkt. No. 688.) Plaintiffs filed a reply. (Dkt. No. 689.) Additionally, Defendants have moved to stay this Court's Order and Injunction pending appeal, which Plaintiffs oppose. (Dkt. Nos. 690, 691, 692.)
A court has continuing jurisdiction over its permanent injunction regardless of a pending appeal. Hudson v. Pittsylvania Cty., Va. , 774 F.3d 231, 234 (4th Cir. 2014). While Plaintiffs style their motion a petition to enforce the injunction, a court enforces its injunctions through "a finding of contempt, [which] springs from the court's inherent equitable powers." Innovation Ventures, LLC v. N2G Distrib., Inc. , 763 F.3d 524, 544 (6th Cir. 2014) citing Porter v. Warner Holding Co. , 328 U.S. 395, 398, 66 S.Ct. 1086, 90 L.Ed. 1332 (1946). To make out a claim for civil contempt, the movant must demonstrate, by clear and convincing evidence, four elements:
(1) the existence of a valid decree of which the alleged contemnor had actual or constructive knowledge; (2) that the decree was in the movant's "favor"; (3) that the alleged contemnor by its conduct violated the terms of the decree, and had knowledge (at least constructive knowledge) of such violations; and (4) that the movant suffered harm as a result.
Rainbow Sch., Inc. v. Rainbow Early Educ. Holding LLC , 887 F.3d 610, 617 (4th Cir. 2018) (citations omitted). Importantly, intent is irrelevant to a finding of civil contempt. See McComb v. Jacksonville Paper Co. , 336 U.S. 187, 191, 69 S. Ct. 497, 499, 93 L.Ed. 599 (1949) (). However, the order allegedly violated must be one that had set forth " ‘in specific detail an unequivocal command’ which a party has violated." In re Gen. Motors Corp. , 61 F.3d 256, 258 (4th Cir. 1995) (citations omitted).
A stay "is not a matter of right" and the party seeking a stay bears the burden of demonstrating the presence of the exacting standards for the granting of such relief. Nken v. Holder , 556 U.S. 418, 434, 129 S.Ct. 1749, 1761, 173 L.Ed.2d 550 (2009). The standard for granting a stay resembles the standard for a preliminary injunction, and requires: (1) "a strong showing" that the party requesting the stay will succeed on the merits; (2) the presence of irreparable injury by the party seeking the stay; (3) whether the stay will substantially injure other parties to the litigation; and (4) whether the public interest is served by the grant of the stay. Id.
As explained by courts of appeal, when faced with parties who have already been found to violate a trademark, "[t]he sole issue before the district court ... [is] whether [defendants] violated the injunction, that is, whether the [the new mark] is ‘confusingly similar’ to the [enjoined mark]." Wella Corp. v. Wella Graphics, Inc. , 37 F.3d 46, 48 (2d Cir....
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...organization's "history as their own" implicate "the goodwill of the marks they are prohibited from using." vonRosenberg v. Lawrence , 429 F. Supp. 3d 175, 184–85 (D.S.C. 2019). The well-reasoned decision in v onRosenberg addressed trademark goodwill in the context of a church schism. A por......
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