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.
Posts
No comments:
Post a Comment