Ward One Democrats, Inc. v. Woodland

• Decision Date: 04 May 2006
• Docket Number: No. 04-CV-208.,04-CV-208.
• Citation: 898 A.2d 356
• Parties: WARD ONE DEMOCRATS, INC., Appellant, v. Calvin B. WOODLAND, Jr., and Kelvin P. Esters, Appellees.
• Court: D.C. Court of Appeals

898 A.2d 356

WARD ONE DEMOCRATS, INC., Appellant, v. Calvin B. WOODLAND, Jr., and Kelvin P. Esters, Appellees.

No. 04-CV-208.

District of Columbia Court of Appeals.

Argued March 8, 2005.

Decided May 4, 2006.

COPYRIGHT MATERIAL OMITTED

Tony Norman, with whom James Walker was on the brief, for appellant.

L. Misha Preheim, Washington, DC, with whom Wendy C. McGraw, Norfolk, VA, was on the brief, for appellees.

Before WASHINGTON, Chief Judge, GLICKMAN, Associate Judge, and TERRY, Senior Judge.^*

TERRY, Senior Judge:

Appellant Ward One Democrats, Inc., filed this suit for declaratory relief, seeking exclusive rights to the use of the name "Ward One Democrats." Appellant contends that the trial court erred in denying its motion for summary judgment and granting appellees' cross-motion for summary judgment. We find no error and accordingly affirm.

I

At the heart of this case are two local political groups, each claiming to be the rightful user of the name "Ward One Democrats." In 1974 a group calling itself Ward One Democrats (hereafter "WOD 1974") established itself as an unincorporated political organization in Ward One of the District of Columbia. Twenty-eight years later, in November 2002, certain dissatisfied members broke off from this organization to form a competing group, which quickly incorporated itself as a non-profit political association under the District of Columbia Nonprofit Corporation Act¹ with the name "Ward One Democrats, Inc." (hereafter "WOD Inc." or "appellant"). Despite this relatively recent act of incorporation, the defecting group that formed WOD Inc. — since it included, inter alios, some former members (even founders) of WOD 1974 — claims that it is in fact the legitimate group known as "Ward One Democrats" that has been operating since 1974. In June 2003 WOD Inc. filed this suit, alleging that it had exclusive rights to the "Ward One Democrats" name and seeking declaratory relief so as to prevent all others — including appellees — from using the name.

Appellees Calvin Woodland and Kelvin Esters served, respectively, as Chairman and Treasurer of WOD 1974 from November 2002 to May 2004. Appellant alleged in its complaint that Woodland and Esters had been "doing business and using the name Ward One Democrats (illegally)" since February 2003, causing "a gross amount of confusion, loss of revenue, [and] reputation" to WOD Inc., and obstructing WOD Inc.'s operations "as an incorporated nonprofit corporation."²

The District of Columbia Democratic State Committee ("DSC"), whose membership is comprised in part of the chairmen of the eight ward organizations, recognizes WOD 1974 as the official Democratic organization in Ward One.³ In the trial court, however, appellant challenged the gatekeeper authority of the DSC, contending that WOD 1974 was always an independent political organization separate from the local Democratic Party apparatus. Moreover, it asserted that WOD 1974 was never chartered by the DSC and even predated the DSC, which appellant alleged did not exist until 1981. In the words of appellant's counsel at the hearing below, "just because we need to use the name Democrat does not put us under the auspices of the D.C. Democratic Party."

The DSC recognized Woodland and Esters as the principal officers of Ward One Democrats (i.e., WOD 1974) duly elected in a special election which the DSC held in Ward One on November 16, 2002.⁴ Although elections for ward officers are typically conducted by the ward organizations, the DSC temporarily had withdrawn that authority from WOD 1974 because of its failure to hold timely elections as required by the DSC's by-laws. In October 2002 the DSC ruled that the terms of the then-current WOD 1974 officeholders had expired and announced its decision to conduct a special election. We need not recount the details of the ensuing imbroglio, except to note that certain individuals within WOD 1974 viewed the DSC's action as a gratuitous and unwelcome intrusion.⁵ About a month later, these individuals founded the appellant corporation, WOD Inc.

II

We begin our legal analysis with a brief statement of the principles governing summary judgment. To succeed on a summary judgment motion, the moving party must show that there is no genuine issue of material fact and that it is entitled to judgment as a matter of law. See Hollins v. Federal Nat'l Mortgage Ass'n, 760 A.2d 563, 570 (D.C.2000) (citing authorities). If that burden is met, the nonmoving party then has the burden of showing that there is a genuine issue of material fact which must be resolved by a fact-finder at a trial. Id. We review de novo a grant of summary judgment, viewing the record in the light most favorable to the non-moving party. E.g., Futrell v. Department of Labor Federal Credit Union, 816 A.2d 793, 801-802 (D.C.2003).

With these basic principles in mind, we turn to appellant's various contentions.

III

Appellant maintains that it has "the right to use the name Ward One Democrats and function under that name" or "any similar or derivative name." Appellant's claim is based "on the fact that [it has] operated for over thirty years [and on] the affidavit of Conrad Smith ... [and] the affidavit of Ms. Alma Strange, [who were] the founders of the Ward One Democrats." Specifically, appellant contends that the act of incorporating in 2002 gave it exclusive rights "under the incorporation laws" to use the name "Ward One Democrats" and seeks to prevent WOD 1974, which never was incorporated, from using it.⁶ Appellant also asserts that it is "suing under the common law of the District of Columbia." Appellees assert, in response, that use of the challenged term cannot be barred because the name "Ward One Democrats" necessarily denotes WOD 1974 — the chartered local organization of the DSC in Ward One.

Appellant's argument misses the mark because appellant's status under the District's Nonprofit Corporation Act does not govern this case. Moreover, appellant misconstrues the applicable law when it maintains that the District's common law, not the law of trademark protection, provides the appropriate analytical framework for this case. The common law and trade-mark law are not mutually exclusive. "Suing under the common law" does not, as appellant contends, preclude the court from analyzing this case as one basically involving a claim based on the established law, both statutory and court-made, governing trademarks and trade names.

It is well settled that incorporation, without more, does not grant a corporate entity exclusive rights to a name. By arguing that the mere act of incorporation entitles it to relief, appellant is asserting a broader right in the name "Ward One Democrats" than either the common law or trademark statutes would confer. In Lawyers Title Insurance Co. v. Lawyers Title Insurance Corp., 71 App. D.C. 120, 124, 109 F.2d 35, 39 (1939), cert. denied, 309 U.S. 684, 60 S.Ct. 806, 84 L.Ed. 1028 (1940), the court announced a principle which is still valid today: that there is "no authority to sustain a right so absolute. No statute confers it in specific terms. Nor does mere incorporation do so by implication." See also Foxtrap, Inc. v. Foxtrap, Inc., 217 U.S.App. D.C. 130, 135 n. 7, 671 F.2d 636, 641 n. 7 (1982) ("this circuit, following the general rule, has declined to accord any weight to a state agency's general acceptance of a corporate name" (citing Lawyers Title)). This has been the law in the District of Columbia for more than a century. See Original La Tosca Social Club v. La Tosca Social Club, 23 App. D.C. 96, 106-107 (1904) (members who withdrew from unincorporated association and formed a new corporation "did not by that act acquire any exclusive right to the use of the name of the prior and still existing unincorporated club or association .... `No case [holds] that incorporation gives an exclusive right to a name already in use ...'" (citations omitted)).

In the District of Columbia, as in most states, trademark statutes and the applicable case law are modeled after the federal Lanham Act.⁷ See Blacks in Government v. National Ass'n of Blacks Within Government, 601 F.Supp. 225, 227 (D.D.C.1983) (applying the same analysis under the Lanham Act and District of Columbia common law in a trade name infringement case). In claiming exclusive rights to the name "Ward One Democrats," appellant is asserting a property right in the term to the exclusion of all other potential users. Only the registration of a trademark in the United States Patent and Trademark Office ("USPTO"), however, can assign exclusive rights to that trademark. See, e.g., Pro-Football, Inc. v. Harjo, 367 U.S.App. D.C. 276, 278, 415 F.3d 44, 46 (2005) ("The Lanham Trademark Act provides protection to trademark owners ... [who] must register their marks with the Patent and Trademark Office"); Reese Publishing Co., v. Hampton Int'l Communications, Inc., 620 F.2d 7, 11 (2d Cir.1980). Appellant's reliance on mere incorporation is insufficient; we must instead consider appellant's claim under established trademark law. See, e.g., Partido Revolucionario Dominicano (PRD) Seccional Metropolitana de Washington DC, Maryland y Virginia v. Partido Revolucionario Dominicano, Seccional de Maryland y Virginia, 312 F.Supp.2d 1, 15 (D.D.C.2004) ("The analysis with respect to the parties' common law trademark infringement claims mirrors the analysis conducted for federal statutory trademark/unfair competition claims"); Russian Academy of Sciences v. American Geophysical Union, 1998 WL 34333239, at *3, 1998 U.S. Dist. LEXIS 20598, at *10 (D.D.C.1998) ("The elements that plaintiffs must demonstrate to prevail on trademark infringement claims under the common law and under ... the Lanham Act are [the same]"); American Ass'n for the Advancement of Science v. Hearst Corp., 498 F.Supp. 244, 261-262 (D.D.C.1980).

We therefore hold that appellant's status as a non-profit corporation provides no basis for relief. We agree...