Monday, March 21, 2011

8th Circuit "Church Fight" Trademark Decision

In Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s Church, No. 10-1707 (8th Cir. Mar. 21, 2011), the Eighth Circuit addressed several issues:

● whether the mark REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS is generic (no, in part because of lack of proof of what the public thought and in part based on precedent that church names generally are considered descriptive, not generic);

● whether the use of a church’s trademark by an unauthorized congregation can constitute trademark infringement (yes, it can, and, in this case, did);

● whether the plaintiff was entitled to a permanent injunction (yes, because it prevailed on the merits and irreparable harm is presumed in trademark cases – no mention of the possible impact of eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)); and

● whether it was an abuse of discretion to whack a small independent congregation with a $348,000 attorneys fees award (no, because there was “willful infringement” in that the defendant ignored the plaintiff’s cease-and-desist letter – which seems like a pretty flimsy reason given the defenses in this unique case resulted in a published opinion).

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