Girl Scouts of the U.S. v. Boy Scouts of Am.

597 F.Supp.3d 581

GIRL SCOUTS OF THE UNITED STATES OF AMERICA, Plaintiff,

v.BOY SCOUTS OF AMERICA, Defendant.

18 Civ. 10287 (AKH)

United States District Court, S.D. New York.

Signed April 7, 2022

Amanda Mary Prentice, Elizabeth Rozon Baksh, Fara S. Sunderji, Jonathan Richard Montcalm, Kimberly Frumkin, Bruce Roy Millar Ewing, Dorsey & Whitney LLP, New York, NY, Lucy Nnenna Onyeforo, Faegre Drinker Biddle & Reath LLP, New York, NY, Ben Kappelman, Tiana Towns, Dorsey & Whitney LLP, Minneapolis, MN, for Plaintiff.

Rachel Marie Kassabian, Sara Jenkins, Quinn, Emanuel Urquhart & Sullivan, LLP, Redwood Shores, CA, Claudia T. Bogdanos, Margret Mary Caruso, Todd Steven Anten, Donald J. Reinhard, Dylan I. Scher, Jessica Anne Rose, Quinn Emanuel Urquhart & Sullivan LLP, New York, NY, for Defendant.

OPINION AND ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

ALVIN K. HELLERSTEIN, United States District Judge:

The Girl Scouts have sued the Boy Scouts in this serious, contentious and expensive litigation. The Girl Scouts claim that the Boy Scouts’ use of the term "Scouting" to market themselves, undifferentiated by gender, is likely to cause confusion and divert girls who wish to become Girl Scouts to join the Boy Scouts. The Girl Scouts sue for trademark infringement, trademark dilution, and unfair competition with respect to the terms "Girl Scouts," "Scout," "Scouts," and "Scouting," in connection with services offered to girls. The Boy Scouts, countering that they had every right to offer their scouting programs to both boys and girls, and that "scouting" is a descriptive term of their gender-neutral scouting activities, oppose. These are the issues I must decide, and whether I can do so by summary judgment.

I hold, for the reasons discussed in this opinion, that the Boy Scouts have the right to describe their activities as "scouting", without reference to gender, that there are no issues to be tried, and that the Girl Scouts’ complaint should be dismissed.

BACKGROUND¹

The Boy Scouts of America ("BSA" or "Boy Scouts") is a non-profit organization that seeks to provide leadership and development activities to young people. Similarly, the Girl Scouts of the United States of America ("GSUSA" or "Girl Scouts") is a non-profit organization that works to provide leadership and development services to girls. Both organizations have existed for more than one hundred years and both have served millions of young people. The Boy Scouts of America began in 1910 and the Girl Scouts of America began two years later in 1912. Both organizations are Congressionally chartered, the Boy Scouts in 1916, and the Girl Scouts in 1950.

In 1930, the Boy Scouts launched the Cub Scout program to serve younger children. Since then, Boy Scouts has launched other initiatives, including the Venturers, Sea Scouts, and STEM Scouts, to cater to those with more specialized interests. Since 1971, several of these specialty programs have allowed female youth to join, but the total number of participants has consistently been less than 5% of Boy Scouts’ overall membership. Today the Boy Scouts operates as a national organization that has granted more than 50,000 charters to local units across the country. The local units are overseen by 250 regional councils, all separately incorporated.

For almost its entire existence, Boy Scouts has used the terms "Scout," "Scouts," and "Scouting" (collectively, the "Scout Terms") to refer to its single-gendered programming for boys. Boy Scouts continues to use the Scout Terms in conjunction with other words or phrases, such as "EAGLE SCOUT," "SCOUT STUFF," and "NATIONAL SCOUT JAMBOREE." The U.S. Patent and Trademark Office (USPTO) has repeatedly granted trademark registrations to Boy Scouts for these and other phrases incorporating the word "scout." Id. Boy Scouts maintains that its use of SCOUT and SCOUTING is typically accompanied by other Boy Scouts branding indicia, such as specific program names, the Boy Scouts’ corporate name, Boy Scout program logos, and its fleur-de-lis logo.

Similarly, Girl Scouts has used its GIRL SCOUTS mark continuously since the founding of Girl Scouts. The USPTO has also granted Girl Scouts trademark rights in GIRL SCOUT; the GIRL SCOUT mark accompanied by its logo; SCOUT COOKIES; and other phrases that include the words "GIRL SCOUT." In part to delineate its services from those of the Boy Scouts, Girl Scouts has on several occasions, including in 2009, released branding guidance instructing that the word "girl" should precede the word "scout" in connection with Girl Scouts.

In October 2017, Boy Scouts announced that its two largest programs, for boy scouting and cub scouting, would open to girls. In May 2018, Boy Scouts announced it would change the name of the Boy Scouts program to "SCOUTS BSA" and launched a marketing program with the slogan "SCOUT ME IN." The Cub Scouts formally began welcoming girls in August 2018; Scouts BSA formally began welcoming girls in February 2019. The Boy Scouts general branding materials, as well as those for the SCOUT ME IN campaign, do not use the term GIRL SCOUTS and forbid incorporating the term to describe the Boy Scouts’ activities.

Since Boy Scouts’ October 2017 announcement and subsequent use of SCOUTS BSA and SCOUT ME IN, both the Boy Scouts and the Girl Scouts have identified instances in which parents have reported confusion between Boy Scouts and Girl Scouts programming. At times, local Boy Scouts units have mixed the two organizations and their trademarks, as when a Boy Scouts council in Massachusetts referred to a co-ed Boy Scouts camp as offering Girl Scouts programs, and another time when a Boy Scouts flyer posted on Facebook showed a Girl Scout in a Brownie uniform. In November 2018, Girl Scouts filed the instant suit.

LEGAL STANDARD

Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The movant bears the initial burden of pointing out evidence in the record, "which it believes demonstrate[s] the absence of a genuine issue of material fact ...." Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986), The movant may support an assertion that there is no genuine dispute of any material fact by "showing ... that [the] adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1)(B). If the movant fulfills its preliminary burden, the onus shifts to the non-movant to raise the existence of a genuine issue of material fact. Fed. R. Civ. P. 56(c)(1)(A) ; Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The non-moving party may not rely on conclusory allegations or unsubstantiated speculation to defeat the summary judgment motion. Scotto v. Almenas , 143 F.3d 105, 114 (2d Cir. 1998).

A genuine dispute of material fact exists when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson , 477 U.S. at 248, 106 S.Ct. 2505. Courts must "draw all rational inferences in the non-movant's favor" while reviewing the record. Kirkland v. Cablevision Sys. , 760 F.3d 223, 224 (2d Cir. 2014) (citing Anderson , 477 U.S. at 248, 106 S.Ct. 2505 ). Importantly, "the judge's function is not himself to weigh the evidence and determine the truth of the matter," nor is it to determine a witness's credibility. Anderson , 477 U.S. at 249, 106 S.Ct. 2505. Rather, "the inquiry performed is the threshold inquiry of determining whether there is the need for a trial." Id. at 250, 106 S.Ct. 2505.

DISCUSSION

Girl Scouts and Boy Scouts each has operated for more than one hundred years, providing scouting experiences separately to girls and boys. As has happened in many sectors of society, the Boy Scouts has become co-ed, opening its scout membership and programs to girls and boys, and dropping its gender-specific name as an inaccurate and misleading descriptor. It now uses "scouts" or "scouting", without reference to boys or girls, as more accurate descriptive terms. Girl Scouts, fearing inability to maintain its own separate identity and confusion between the two organizations, objects. In truth, this case boils down to a single question: must the Boy Scouts continue to use the word "Boy" in its name now that it has become a co-ed institution, providing scouting experiences to boys and girls without distinction?

There are seven issues of contention before the Court. The parties dispute whether summary judgment is appropriate as to Girl Scouts’ claims for (i) trademark infringement and unfair competition under the Lanham Act, (ii) trademark infringement under New York law (iii) trademark dilution, (iv) modification and cancellation of registration, and (v) tortious interference. Boy Scouts also seeks summary judgment on (vi) its affirmative defense of laches and (vii) on Girl Scouts’ entitlement to monetary damages. I discuss these issues in turn, and conclude that summary judgment should be granted to the Boy Scouts, dismissing the Girl Scouts’ complaint.

I. Trademark Infringement.

Counts I, II, and V of the Amended Complaint claim trademark infringement and unfair competition under Sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(a), 1125(a), and New York common law. See Coty Inc. v. Excell Brands, LLC , 277 F. Supp. 3d 425, 440 (S.D.N.Y. 2017) (concluding that "[c]ourts use the same standards" to evaluate trademark infringement and unfair competition claims under the Lanham Act and New York common law, except that a plaintiff must prove "bad faith" to prevail on an unfair competition claim under New York common law); Twentieth Century Fox Film Corp. v. Marvel Enter., Inc. , 220 F. Supp. 2d 289, 297 (S.D.N.Y. 2002) ("[T]he standards for trademark infringement ... under New York common law are essentially the same as under the Lanham Act."); see also Pfizer Inc. v. Sachs , 652 F....