This case is of interest not primarily for confirming that there’s really no such thing as fraud on the PTO any more, but for the majority/partial dissent dialogue on historians/experts in courts of law. The parties are two religious(esque) orders who both claim descent from the Knights of Malta. The district court cancelled the plaintiff’s (the Order’s) marks and found against it on its other claims, including false advertising. The court of appeals reversed the cancellation and therefore the infringement claims, but affirmed on the false advertising claim.
Quick review of complicated terminology: the plaintiff Order “is a religious order of the Roman Catholic Church that undertakes charitable work internationally.” The defendant Florida Priory is an ecumenical charitable organization, associated with a parent (the Ecumenical Order) incorporated in the US in 1911. The infringement claim is obvious; the false advertising claim is related, as the Order alleged that the Florida Priory, through its parent, falsely claimed a historic affiliation with Plaintiff Order going back to the eleventh century. I won’t recite the history according to the parties; I’m going to skip to the legal analysis, though it should be remembered that the analysis depends in significant part on the testimony about the history. The Order’s historical testimony came largely from its representative Geoffrey Gamble and Dr. Theresa Vann, a professor of history at the College of St. Benedict/St. John’s University specializing in medieval history. The Florida Priory’s historical testimony came largely from the current Prince Grand Master of the parent Ecumenical Order, Nicholas Papanicolaou. His account diverged around 1798.
The district court based its finding of fraud on the PTO on the conclusion that the Order was aware of the Ecumenical Order since as early as 1983 but failed to disclose that fact to the PTO, deliberately choosing a declarant who wasn’t aware of the existence of the Ecumenical Order. Fraud means knowingly false, material representations of fact with an intent to deceive the PTO; it must be shown by clear and convincing evidence. The court of appeals narrowed its focus to the intent of the individual declarant, which isn’t actually required by the concept of subjective intent—other areas of the law have managed to determine the intent of a corporation—but made fraud impossible here, since the declarant didn’t know about the Ecumenical Order at all. Willful blindness wasn’t enough, even though that standard is used in other areas of IP; courts should be cautious before importing standards from one area of IP to another, and patent and trademark lack the necessary historic kinship to justify translating the standard for patent infringement to trademark application.
Moreover, the declarant must know and believe that others have a right to use the mark or a mark confusingly similar thereto. As long as the declarant subjectively believes the applicant has a superior right to use the mark, there’s no fraud. (How would Leo Stoller fare under this standard?) There was no evidence that either the Order or the declarant believed that the Ecumenical Order or the Florida Priory had a superior right to the marks. (While this saves the registrations, isn’t it going to be fatal to any response to a laches defense? If in fact there was knowledge as early as 1983—which the court of appeals accepted only for these purposes and expressed some doubt about—the Order has sat on its rights for a very long time. I imagine there’s a dispute over whether evidence has become stale, given the parties’ attention to history, but I can also imagine a strong argument that specific evidence about the Order’s knowledge of the Ecumenical Order has been lost due to the passage of time; it seems likely that some of the people around in the 1980s are no longer available to testify about what they knew.) Anyway, even if the Order knew of the Ecumenical Order in 1983, the Order claimed use in commerce in 1926 and 1927, and so it could justifiably believe that its marks were superior based on their first use dating back to the 1920s. Cancellations reversed.
The court also found it “curious” that the district court canceled the marks even though it found that they were not likely to be confused with those of the Florida Priory. Fraud requires a showing that the applicant's representative knew that other organizations were using the mark “either in an identical form or a near resemblance.” Thus, the finding on the confusion issue was inconsistent with the disposition of the fraud claim.
The court additionally noted that “no entity in this scenario has even been misled by the purported nondisclosure at issue.” The examining attorney at the PTO found a mark registered by an entity associated with the Ecumenical Order and required the Order to distinguish itself from that prior registration. The PTO therefore knew about the prior uses allegedly concealed from it, so it couldn’t have been misled.
The district court’s subsequent finding of no likely infringement based on the remaining mark was based on visual dissimilarity: the Florida Priory's symbol contained a cross and crown that Order's mark did not. The court of appeals held that the district court erred in focusing solely on visual similarity and not making factual findings on the other factors, and that it should also conduct a confusion analysis for the now non-cancelled marks.
Turning to the false advertising side of the case: this claim was based on the Order’s position that the Florida Priory didn’t share any history with, and had no connection to, the historic Order of Malta, but that its appeal to the Order’s pre-1798 lineage and record of charitable activities was likely to deceive consumers. The district court faced the “monumental” task of adjudicating this distant history:
The testimony of Plaintiff Order's witnesses advised that The Ecumenical Order—and therefore The Florida Priory—had no connection to Plaintiff Order and that no split ever occurred in the long history of Plaintiff Order as an organization. The testimony of The Florida Priory's witnesses, however, sought to establish that as a result of Napoleon's 1798 invasion of Malta, the original Order of Malta essentially ceased to exist. They advised that other religious orders connected to that parent group sprung up, two of which are Plaintiff Order and The Ecumenical Order. In their eyes, The Florida Priory connects to The Ecumenical Order, which connects to the original Knights of Malta, just as Plaintiff Order is connected to the original Knights of Malta.
The district court basically agreed with the Florida Priory. The Order argued that this was error, since defendant’s witness Papanicolaou wasn’t qualified as an expert, whereas Dr. Vann was qualified. The majority found no clear error. The Order basically argued that Papanicolaou's testimony wasn’t based on reliable evidence, but he testified as Prince Grand Master and presented history-related testimony in “much the same way” as the Order’s representative. He stated that he possessed the Ecumenical Order’s archives; that he’d read history books about it; and that he’d seen the Ecumenical Order’s records, which are located in other countries. The Florida Priory submitted the texts on which he relied, as well as the minutes of the 1908 meeting of the Ecumenical Order in New York, which tended to support his version of events. “We are reluctant to conclude here that the head of an organization is incompetent to testify about the history of the organization, especially when the opposing party had the opportunity to fully cross-examine and challenge his credibility on all aspects of his testimony” and when the Order used similar testimony. True, Dr. Vann testified that there was no connection between the Order and the Ecumenical Order, but Dr. Vann testified on cross-examination that she didn’t have and hadn’t reviewed any records from Russia after 1789 (where the alleged connection came from), and hadn’t asked to see the Ecumenical Order’s records. A book on which she relied was published by the Order. Given the evidence, the district court’s decision was “ultimately a matter of credibility in light of the documentary evidence presented.”
This was not a true judgment of history: “The federal courts do not sit as a final arbiter of historical fact, and a serious scholar would probably be reluctant to cite to a district court's findings of fact as a definitive statement of history.” Given the evidence, the court of appeals wasn’t left with the “definite and firm conviction that a mistake has been committed.” Without “definitive evidence that establishes that the parties are not connected,” the majority affirmed. In part this was because, the majority thought, the Order didn’t properly make the argument that Papanicolaou had to be qualified as an expert in order to testify about the history of the Ecumenical Order.
The state law claims were disposed of similarly, with a caution to the district court “to refrain from consulting outside sources on the Internet that have not been cited, submitted, or recognized by the parties.” It was unclear “to what extent the district court relied on its own, extra-record Internet research into similarly named organizations, to conclude that The Florida Priory's unregistered marks are not likely to be confused with Plaintiff Order's word marks.”
However, the court declined to order reassignment of the case on remand, despite instances in which the judge disparaged the parties, the witnesses, and their work. As to the parties, the district court “struggle[d] with the parties' characterizing themselves” as charities given the “unimpressive” amount of money they raised for charitable purposes; the court thought that members of both were “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.” Also, the judge opined that it was “tragic” that all Dr. Vann had done in her life was study the Knights of Malta and their records. While deeming these remarks “wholly inappropriate” and “offensive,” reassignment was not justified because they didn’t show actual bias in favor of or against one of the parties over the other; given the fact-intensive nature of the case, reassignment would also require duplication of resources.
Judge Pryor dissented on the evidentiary issues relating to false advertising:
Special dangers attend the introduction of testimony about history in judicial proceedings. “[W]hen a historian, whose methodology is unsound, is placed before a [factfinder], the historian has the ability to paint a picture of the past as he or she so desires. And this, in turn, has the potential to change and shape the way the public views, interprets, and understands the past.” Holly Morgan, Comment, Painting the Past and Paying for It: The Demise of Daubert in the Context of Historian Expert Witnesses, 44 Wake Forest L.Rev. 265, 29495 (2009).
Judge Pryor would have found clear error because there was no competent evidence of a shared history between the Order and the Florida Priory share a history prior to 1798. Papanicolaou lacked personal knowledge, obviously, and he wasn’t qualified as an expert either. A nonexpert can offer opinion testimony in the absence of personal knowledge only if the testimony isn’t based on scientific, technical, or other specialized knowledge within the scope of Rule 702, but Papanicolaou’s testimony was based on specialized knowledge of history. The dissent would have held that the Order didn’t abandon its objection because it consistently maintained that the Florida Priory hadn’t provided admissible evidence of a connection and that Papanicolaou was no more qualified than anyone else who’d read a history book. The dissent also rejected the “two wrongs make a right” suggestion of the majority; Gamble’s similar testimony in favor of the Order wasn’t challenged, but could have been.
The dissent was not willing to conclude that the head of an organization was competent to testify about the organization’s history under these circumstances, given the Federal Rules of Evidence. There was no “head” or “institutional knowledge” exception to the rules that ordinarily require non-experts to have personal knowledge. The dissent suggested that the majority’s principle would, for example, allow a governor to testify in a voting rights case that there was no history of official discrimination in the state, even as to events that occurred long before he was born; or allow the present chief of a Native American tribe to testify that land was the ancestral home of his tribe. “And, in the light of the broad language the majority employs, the rule might also permit the chief executive officer of Delta Airlines to testify, based on the institutional knowledge of the business, that a plane crash did not result from pilot error even though he holds a law degree instead of a degree in physics or aeronautical engineering.”
The dissent found this error serious. The record, it thought, established that the Order was “an ancient Christian organization that operates charitable hospitals and performs good works around the globe,” and without Papanicolaou’s testimony, the record showed that the Florida Priory played no part in those good works. “The real issue is whether the district court based its findings about history on the testimony of a serious scholar. The district court cannot rely on the testimony of a lay witness about ancient history. The district court must instead rely on the testimony of an expert to make findings about history, which is the province of serious scholars.” The dissent would have found that the Order had shown falsity.