Wednesday, December 26, 2012

Casual empiricism replaces casual historicism

Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of Knights Hospitallers of Sovereign Order of Saint John of Jerusalem, Knights of Malta, Ecumenical Order, --- F.3d ----, 2012 WL 6582565 (11th Cir.)

The court of appeals sua sponte vacated its original opinion.  What I said then:

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 court of appeals didn’t change its earlier reasoning: the district court erred in finding fraud on the PTO and invalidating certain registrations, including word marks, because the declarant didn’t have subjective intent to defraud, even if the organization as a whole knew of the existence of the Ecumenical Order and its potentially conflicting claims.  The court also reversed the dismissal of the trademark claims, because the district court erred in focusing solely on visual dissimilarities in the design elements of the marks.

The false advertising claim was where the analysis changed.  The Plaintiff Order claimed false advertising because, it contended, the Florida Priory didn’t share any history with and had no connection to the historic Order of Malta.  “In assessing this claim, the district court was faced with the monumental task of adjudicating the accuracy of two competing versions of late-eighteenth-to-early-nineteenth century history.”  Plaintiff Order’s witnesses testified that there had never been a split in its organization.  The Florida Priory’s witnesses testified that, when Napoleon invaded Malta in 1798, some Knights of Malta fled to Russia, where the original Order of Malta essentially ceased to exist, but related non-Catholic and Catholic Orders emerged.

The district court essentially agreed with the Florida Priory.  The Plaintiff Order argued that the court got the history wrong because it relied on the testimony of Papanicolaou, who did not hold himself out to be an expert in history, over the testimonies of the Plaintiff Order’s witnesses, only one of whom was qualified as an expert in the history of the Order of Malta.  This time, the court of appeals found that the district court abused its discretion in considering Papanicolaou’s testimony, but that the error was harmless.

It was abuse of discretion to permit a lay witness to testify about historical matters.  But the district court made two discrete factual determinations, each of which independently supported its holding: first, that the two organizations shared a history until 1798, and second, that the Florida Priory expressly associated itself with the Ecumenical Order, a non-Catholic organization that couldn’t cause any confusion.  The second finding was sufficient, because it meant that the alleged deception was unlikely to influence any purchasing decision (though the court didn’t indicate what the relevant purchasing decision would be). “The trial record abounds with references to The Florida Priory's interdenominational nature. And of course, by its very name, the Ecumenical Order is an interdenominational organization.”  (Implicit here seems to be a finding that people would only want to buy [whatever] from the Plaintiff Order, not the Ecumenical Order, on grounds of Catholicism, and that centuries-long continuity with the pre-1798 group isn’t important to selling whatever it is that the Ecumenical Order has to sell.  This is the casual empiricism I mentioned in the headline.)

The state-law trademark claims were also reversed.

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