Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. The Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, the Ecumenical Order, --- F. Supp. 2d ----, 2011 WL 4639824 (S.D. Fla.)
Plaintiff SMOM is a Catholic, non-profit international organization with associations in over 45 countries, including several in the United States. Defendant Florida Priory is a nonprofit, ecumenical Christian organization associated with an international ecumenical association known as Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order ("Ecumenical Order"). SMOM sued for trademark infringement, false advertising, unfair competition and deceptive trade practices, while the Florida Priory counterclaimed for cancellation of several of SMOM’s federal trademark registrations.
The court dropped a footnote disparaging the parties’ charitable activities: “The amounts of money each party has raised for charitable purposes are unimpressive, which leads the Court to believe that the members of both SMOM and the Ecumenical Order are more interested in dressing up in costumes, conferring titles on each other and playing in a ‘weird world of princes and knights’ than in performing charitable acts.” Query whether this affects the result—would the court be more protective of a “real” charity with registered marks?
SMOM and the Florida Priory share a history going back to the late 11th century, “when a lay religious Order was founded in Jerusalem to run a hospice for Christian pilgrims.” It came under the aegis of the Catholic Church, performing both charitable and military functions. The Order went by names including "Knights Hospitaller"; the "Knights of St. John," referring to its patron saint John the Baptist; the "Knights of Jerusalem," referring to the location of the Order's founding; the "Knights of Rhodes," once it took possession of Rhodes in 1310; and the “Knights of Malta,” from 1530, when it received the island as part of a grant from Roman Emperor Charles V. “Napoleon drove the Order from Malta in 1798, after which the knights scattered, with some returning to their homelands and others relocating to Russia. The Order subsequently ceased all military functions and focused exclusively on charitable work.” It is at this point that the parties’ histories diverged.
As SMOM tells it, Czar Paul I of Russia allowed the establishment of a Catholic Order from which SMOM claims descent. The czar, who was Russian Orthodox, also created a non-Catholic Order and appointed himself Grand Master thereof. The Florida Priory claims descent from this Order. SMOM does not consider Czar Paul I a legitimate Grand Master because he was never confirmed by the Pope, was not Catholic, was not celibate, and had not been a member of SMOM for the required number of years. In 1810, Paul’s son Alexander took away both Orders’ lands.
The Russian Orders, with Orders in other European countries, elected a Grand Master in 1803. The Pope confirmed this election. In 1926, an American Association of SMOM was established in New York, followed by a Western Association in 1953 in San Francisco and a Federal Association in 1974 in Washington, D.C. SMOM registered a number of service marks involving its shield and cross symbol, KNIGHTS OF MALTA, SOVEREIGN MILITARY HOSPITALLER ORDER OF ST. JOHN OF JERUSALEM OF RHODES AND OF MALTA, and HOSPITALLERS OF ST. JOHN OF JERUSALEM, ORDER OF ST. JOHN OF JERUSALEM. SMOM also uses “an unregistered mark that consists of a crown atop an open, fur-lined mantle sable. An ordinary cross superimposed over a Maltese cross sits inside the mantle sable. A chain winds its way through the Maltese cross and encircles the ordinary cross.”
The Florida Priory said that, “after the 1798 expulsion from Malta, the knights scattered, with some returning to their homelands and some migrating to Russia. The knights who returned to their homelands established independent Orders according to their geopolitical locations and religious persuasions. Meanwhile in Russia, Czar Paul I established two priories of the Order, the Polish Grand Priory for Catholics and the Russian Grand Priory for Russian and Greek Orthodox individuals.” The Florida Priory claimed that the Russian knights elected Czar Paul I Grand Master and that the Pope confirmed this election, that Czar Alexander returned the Polish priory to the Pope, and that during this period, a number of Orders of St. John were formed across Eurasia, with each claiming ties to the original order. Today, the Florida Priory contended, there are more than ten such Orders.
In this version of events, the Russian Grand Priory continued in Russia until the Bolshevik revolution, at which time its headquarters moved from St. Petersburg to the United States. It held its first US meeting in 1908, claiming the title of Knights of the Sovereign Order of Saint John of Jerusalem, and also referring to itself as a Grand Priory of the Order of the Knights of Malta and the Sovereign Order of Saint John of Jerusalem. The Ecumenical Order incorporated as "The Knights of Malta, Inc." in New Jersey in 1911, changed its name to "Sovereign Order of St. John of Jerusalem" in 1953, and was succeeded in interest in 1956 by a Delaware corporation, the "Sovereign Order of Saint John of Jerusalem, Inc." In 1958, the Ecumenical Order registered SOVEREIGN ORDER OF SAINT JOHN OF JERUSALEM AND KNIGHTS OF MALTA. The Governor of Indiana issued proclamation in 1977 declaring a "Dedication Day" in recognition of the contributions of the Ecumenical Order. The Ecumenical Order has used its names in the US since 1911 and has associations and members in New Jersey, Pennsylvania, Delaware, Florida, Texas, North Carolina, South Carolina and Texas.
Disputes led the Ecumenical Order to sever ties with the group that controlled the Delaware corporation in 1981, and after that the Ecumenical Order operated as an unincorporated entity. Over time, the Russian Grand Priory came to be known as Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order. The “Ecumenical Order” language was added in 2002 to distinguish the Ecumenical Order from SMOM. The Florida Priory was formed as early as 1992 and incorporated in Florida in 2005.
In 2008, the Ecumenical Order applied to register a US trademark in "[a] white cross on a red cross at the center of a red outlined Maltese Cross. A red crown is above the Cross," claiming first use in 1798 and first use in US commerce in 1916.
SMOM and the Ecumenical Order have interacted for a long time. In 1983, the Grand Chancellor of the Ecumenical Order sent a letter to SMOM seeking cooperation in an internal dispute involving the Ecumenical Order and a splinter group that obtained control over the Ecumenical Order’s US registration. The letter was sent on official letterhead bearing the marks "Sovereign Order of Saint John of Jerusalem" and "The Knights Hospitallers of the Sovereign Order of St. John of Jerusalem" and related to activities in the United States. This constituted notice of the use of those marks. SMOM also tried to cancel the registration, but withdrew its cancellation request with prejudice in 1987. There was plenty of other evidence of SMOM’s knowledge of the Ecumenical Order; SMOM mostly considered it a “false order” and, as one of its members wrote, “a modern invention, with no connections whatsoever, other than its assumed name, with the genuine Hospitaller Order founded in the Holy Land, whose only legitimate successor is [SMOM]." However, in 2000, Chancellor Prince Boudewijn de Merode of SMOM expressed the opinion that the Ecumenical Order may duly dub knights.
Despite all this, SMOM filed its applications in 2002/2003, including a declaration that no other person was entitled to use the applied-for marks in commerce for the relevant services. (The declarant testified that he’d never heard of the Ecumenical Order, and the court concluded that SMOM designated an individual with no personal knowledge of the Ecumenical Order to sign the applications.) The Examining Attorney had questions about the existence of many Orders of St. John. SMOM still didn’t disclose the existence of the Florida Priory or the Ecumenical Order and others that were using the same or similar names and marks. SMOM distinguished its trademarks from the Delaware corporation's registration and the marks of other Orders by arguing to the PTO that its work was charitable in nature, although it knew that the other Orders were charitable as well.
Three out of five of SMOM’s registrations are incontestable. SMOM also opposed the Ecumenical Order’s trademark application, which opposition has been stayed pending the outcome of the current court case.
After all this history, the court pointed out that it was not in the business of resolving religious or historical disputes about the identity of the “real” Knights of Malta.
The Florida Priory didn’t challenge SMOM’s registration for its cross and shield mark, but it did challenge the others on the ground that they were procured by fraud. Knowing misrepresentations to the PTO with the intent to deceive constitute fraud. Intent can be inferred from direct or circumstantial evidence. Although the individual who signed the applications testified that he had no knowledge of the Ecumenical Order or the Florida Priory, the declarations themselves averred false facts: that no other identity used the marks in question. “SMOM knew of the existence and domestic presence of the Ecumenical Order at the time it filed the trademark applications. Given that SMOM claims there is a likelihood of confusion with the Ecumenical Order, SMOM had a duty to disclose the existence of the Ecumenical Order to the PTO.”
Building off of Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060 (2011), the court found that the appropriate standard is willful blindness as opposed to deliberate indifference: "a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts." SMOM had actual knowledge of the Ecumenical Order nearly two decades before it filed its applications. It then had an attorney with no personal knowledge of the Ecumenical Order execute the applications. SMOM’s failure to inform him is evidence of willful blindness. The court cancelled four of its registrations on that ground.
The court then turned to whether the Florida Priory’s unregistered symbol infringed SMOM’s registered symbol. Answer: no. The marks were easily distinguishable. SMOM’s registered mark consists of a Maltese cross on a shield, while the Florida Priory's mark consists of an ordinary cross on a shield. The shield is superimposed over a Maltese cross and crown sits atop the Maltese cross. The Florida Priory's two crosses to SMOM's one and addition of a crown serve to remove “any possibility for consumer confusion.” (Though the court doesn’t say so, the descriptiveness/prevalence of crosses in symbols for religious-affiliated entities, and the long period of coexistence, clearly bear on this determination.)
SMOM also had §43(a) claims based on an unregistered symbol, but the court decided to defer to the pending, stayed PTO opposition on the matter. (Can it do that? If the opposition was stayed pending this decision, isn’t it now in limbo? Also, given that an opposition doesn’t ask exactly the same questions as an infringement proceeding, I’m not sure there’s a legal basis for deferring to the PTO here.)
SMOM brought Lanham Act false advertising claims as well, arguing that the Florida Priory misappropriated SMOM’s history. No: “References by the Florida Priory to a shared history with SMOM are perfectly appropriate, as the organizations shared a history prior to 1798. Any claim for false advertising also rings hollow given that the Florida Priory expressly associates itself with the Ecumenical Order, a non-Catholic organization.”
This also doomed the coordinate state unfair competition claims. However, the fact that the court cancelled the federal registrations for SMOM’s word marks didn’t preclude a common-law unfair competition (trademark) claim based on those marks. (Or §43(a) claims, but SMOM apparently didn’t argue that, and no matter: the standard is the same.)
The court found no likely confusion because SMOM’s marks were weak and merely descriptive. “The marks consist of commonly used historical locations, religious terminology, and geographic terms that are not specifically associated with SMOM. As noted, the Ecumenical Order has been using these terms in the United States for over a century. The Court's own research indicates that there are numerous Orders that use this type of terminology in their names.” In addition, the Florida Priory clearly disclaimed affiliation with SMOM on its website. It shares a history with SMOM, “yet is a distinct entity and is ecumenical in nature as opposed to the exclusively Catholic SMOM.”
Unsurprisingly, there was also no violation of Florida’s consumer protection statute.
The court reserved judgment on whether this case was “exceptional,” allowing the Florida Priory to decide whether to submit a post-judgment motion for fees.