Vonrosenberg v. Lawrence

422 F.Supp.3d 1048

The Right Reverend Charles G. VONROSENBERG, et al., Plaintiffs,

The Episcopal Church, Plaintiff in Intervention

v.The Right Reverend Mark J. LAWRENCE, et al., Defendants.

Civil Action No. 2:13-587-RMG

United States District Court, D. South Carolina, Charleston Division.

Signed September 19, 2019

Jason Severin Smith, Thomas S. Tisdale, Jr, Hellman Yates and Tisdale, Robert Walker Humphrey, II, Willoughby and Hoefer, Charleston, SC, Matthew Dempsey McGill, Pro Hac Vice, Gibson Dunn and Crutcher, Washington, DC, for Plaintiffs.

Adam Michael Chud, Pro Hac Vice, David Booth Beers, Pro Hac Vice, Goodwin Procter LLP, Washington, DC, Allan Riley Holmes, Cheryl H. Ledbetter, Timothy O'Neill Lewis, Gibbs and Holmes, Robert Walker Humphrey, II, Willoughby and Hoefer, Charleston, SC, Charles Alan Runyan, C. Alan Runyan, Beaufort, SC, Mary Elaine Kostel, Pro Hac Vice, Chancellor to the Presiding Bishop of The Episcopal Church, Alexandria, VA, for Plaintiff in Intervention.

Andrew Spencer Platte, Andrew S. Platte, Charles Alan Runyan, C. Alan Runyan, James Andrew Yoho, Howell Gibson and Hughes, Beaufort, SC, C. Mitchell Brown, Nelson Mullins Riley and Scarborough, John Edward Cuttino, Gallivan White and Boyd, Henry P. Wall, Bruner Powell Wall and Mullins LLC, Columbia, SC, Charles Hiram Williams, II, Williams and Williams, Robert R. Horger, Horger Barnwell and Reid, Orangeburg, SC, David Spence Cox, Barnwell Whaley Patterson and Helms LLC, Lance A. Lawson, Pro Hac Vice, Burr and Forman LLP, Ivon Keith McCarty, McCarty Law Firm, William A. Scott, Pedersen and Scott, Mark Victor Evans, Mark V. Evans Law Office, David B. Marvel, Marvel et al., LLC, Andrew Marvin Connor, G. Mark Phillips, Susan P. MacDonald, Nelson Mullins Riley and Scarborough, William Foster Gaillard, Womble Bond Dickinson US LLP, Catherine Robinson Graham, Paul E. Sperry, Copeland Stair Kingma and Lovell LLP, Allan Poe Sloan, III, Pierce Herns Sloan and McLeod, Ryan Earhart, Earhart Overstreet LLC, Charleston, SC, Henrietta U. Golding, Burr and Forman LLP, Robert S. Shelton, Bellamy Rutenburg Copeland Epps Gravely and Bowers, Karolan Furr Ohanesian, Ohanesian and Ohanesian, Myrtle Beach, SC, C. Pierce Campbell, Turner Padget Graham and Laney, Lawrence Bradley Orr, Orr Elmore and Ervin, Saunders M. Bridges, Jr., Aiken Bridges, Florence, SC, Harry Roberson Easterling, Jr., Easterling Law Firm, Bennettsville, SC, John Furman Wall, III, Mount Pleasant, SC, William A. Bryan, Bryan and Haar, Surfside Beach, SC, Peter Brandt Shelbourne, Summerville, SC, Harry A. Oxner, Oxner and Stacy, Georgetown, SC, for Defendants.

ORDER AND OPINION

Richard Mark Gergel, United States District Court Judge This matter is before the Court on the Disassociated Parishes thirty-five motions for summary judgment on all claims. (Dkt. Nos. 556 – 70; 572 – 579; 581 – 583; 587 – 593; 599 – 600.)¹ The Motions are granted in part and denied in part.

I. Background

This case arises out of a schism in 2012 in the Historic Diocese, originally known as the "Protestant Episcopal Church in the State of South Carolina," in which certain members and parishes sought to dissociate from The Episcopal Church, a nationwide hierarchical church. The parties have litigated property issues relating to the schism in the state courts of South Carolina, culminating in a 2017 decision in the South Carolina Supreme Court, and have raised in this action issues surrounding the use of certain federal and state law marks in contest between the national church and its affiliates and the disassociating diocese and its affiliates. As in separate Orders, it is important to identify the major parties in this dispute. The parties are as follows:

1. Plaintiff The Episcopal Church of the United States (hereafter "TEC") is the national church and an Intervenor Plaintiff in this action;

2. The Protestant Episcopal Church in the State of South Carolina (hereafter the "Historic Diocese"), which was formed as early as 1785 and has long affiliated with TEC;

3. Plaintiff The Episcopal Church in South Carolina (hereafter "TECSC"), which was headed initially by Plaintiff Bishop Charles G. vonRosenberg and subsequently by Plaintiff Provisional Bishop Gladstone B. Adams, III and is affiliated with TEC;

4. Defendant The Diocese of South Carolina (hereafter "Disassociated Diocese"), headed by Defendant Right Reverend Mark Lawrence and was formed following the schism in 2012 to disassociate from TEC;

5. The Defendant parishes associated with the Disassociated Diocese (hereafter "Disassociated Parishes") are the movants on the motions here and are members of the Disassociated Diocese.

As held in a separate Order, Plaintiffs' own the following marks. TEC's marks are:

• "The Protestant Episcopal Church in the United States";

• "The Episcopal Church";

• "The Episcopal Church Welcomes You";

• "La Iglesia Episcopal", and;

• The Episcopal Shield.²

(Dkt. No. 595-5 – 595-12; 595-64 – 595-69.) TECSC's marks are:

• "Diocese of South Carolina";

• "The Episcopal Diocese of South Carolina";

• "The Protestant Episcopal Church in the Diocese of South Carolina";

• The Diocesan Seal.³

(Dkt. No. 584-3.)

In conjunction with the summary judgment briefing, the Disassociated Parishes filed thirty-five motions for summary judgment as to all of Plaintiffs' claims. Each motion has been fully briefed, with the Plaintiffs responding to the motion and the moving Party filing a reply.

II. Legal Standard

To prevail on a motion for summary judgment, the movant must demonstrate that there is no genuine issue of any material fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The party seeking summary judgment has the burden of identifying the portions of the "pleadings, depositions, answers to interrogatories, any admissions on file, together with the affidavits, if any, which show there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law."

Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The Court will construe all inferences and ambiguities against the movant and in favor of the non-moving party. U.S. v. Diebold, Inc. , 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962). The existence of a mere scintilla of evidence in support of the non-moving party's position is insufficient to withstand a motion for summary judgment. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). However, an issue of material fact is genuine if the evidence is such that a reasonable jury could return a verdict in favor of the non-movant. Id. at 257, 106 S.Ct. 2505.

"When the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "In the language of the Rule, the nonmoving party must come forward with ‘specific facts showing that there is a genuine issue for trial.’ " Id. at 587, 106 S.Ct. 1348. "Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no ‘genuine issue for trial.’ " Id. (quoting First Nat'l Bank of Ariz. v. Cities Serv. Co. , 391 U.S. 253, 289, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968) ).

III. Discussion

The Plaintiffs TEC and TECSC collectively bring five causes of action against all Defendants, including the Disassociated Parishes: trademark infringement under the Lanham Act, trademark dilution under the Lanham Act, false advertising under the Lanham Act, trademark infringement under state law, and cancellation of trademarks under state law. The Disassociated Parishes move for summary judgment on each of these claims. The Court, in a separate Order, granted Plaintiffs summary judgment on each of these claims. The Court therefore first addresses the effect of the contemporaneous Order on the Disassociated Parishes, and next addresses outstanding issues.

A. Effect of Summary Judgment Order on Disassociated Parishes

Each of the Disassociated Parishes argue, erroneously, that the Plaintiffs have failed to present evidence of likelihood of confusion regarding the Parishes use of Plaintiffs' marks. As to the marks owned by the Plaintiffs, this is incorrect. Plaintiffs submitted extensive evidence that each Disassociated Parish refers to themselves, as shown by references on parish websites, bulletins, newsletters, and responses to discovery requests, as members of "The Protestant Episcopal Church in the Diocese of South Carolina" or the "Diocese of South Carolina" (Dkt. No. 595-75; 595-79), that many of the Disassociated Parishes use the same exact buildings that they used prior to the dissociation in 2012 (Dkt. No. 595-76), that the Parishes use the Book of Common Prayer and/or TEC's hymnals (Dkt. No. 595-77), and that the Disassociated Parishes use the Diocesan Seal owned by TECSC (Dkt. No. 595-78). Additionally, much of the analysis is identical for the Disassociated Parishes as the Disassociated Diocese: the Court already found TEC's marks to be strong and TECSC's marks to have some strength, particularly regarding identical use in the same market; that the marks that Plaintiffs demonstrated the Disassociated Parishes use, "The Episcopal Diocese of South Carolina," "The Protestant Episcopal Church in the Diocese of South Carolina," the "Diocese of South Carolina" and the Diocesan Seal, are substantially similar, or identical, to Plaintiffs' marks; there is no dispute the Disassociated Parishes also offer religious services, there is no dispute that many of the Disassociated Parishes use the same exact buildings as prior to the schism, and; there is no dispute that the quality of the Parties' products are similar. Furthermore, the analysis for similar advertising and sophistication of the consuming public is generally applicable and...