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The Way International v. The Church of Way International

United States District Court, N.D. Alabama, Western Division

February 1, 2017

THE WAY INTERNATIONAL, Plaintiff,
v.
THE CHURCH OF THE WAY INTERNATIONAL, et al., Defendants.

          MEMORANDUM OPINION

          R. DAVID PROCTOR, UNITED STATES DISTRICT JUDGE

         In the last few decades, parties, courts, and commentators have emphasized the value of private alternative dispute resolution as a substitute for litigation in public courts. The Apostle Paul may have been ahead of his time in this area, although for different “policy” reasons. In his first letter to the Church at Corinth, he warned the Church not to take their lawsuits before secular courts. I Cor. 6:1 (New Living Translation) (“When one of you has a dispute with another believer, how dare you file a lawsuit and ask a secular court[1] to decide the matter instead of taking it to the believers!”). Despite this admonition, the parties in this case -- two ministry organizations -- are embroiled in a dispute over the use of “marks” that has found its way on to this court's docket. The court stands ready, willing, and (hopefully) able to rule on it.

         This matter is before the court on Plaintiff The Way International's Motion for Summary Judgment (Doc. # 32). The Motion has been fully briefed. (Docs. # 37-41, 45).

         I. Summary of Relevant Facts

         If facts are in dispute, they are stated in the manner most favorable to the non-movant, and all reasonable doubts about the facts have been resolved in favor of the non-movant. See Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1115 (11th Cir. 1993); Info. Sys. & Networks Corp. v. City of Atlanta, 281 F.3d 1220, 1224 (11th Cir. 2002). These are the “facts” for summary judgment purposes only. They may not be the actual facts that could be established through live testimony at trial. See Cox. v. Adm'r U.S. Steel & Carnegie, 17 F.3d 1386, 1400 (11th Cir. 1994). Having said that, a review of the record shows that the facts relevant to this motion are not genuinely in dispute. The parties certainly have a dispute. But it is not factual in nature.

         Plaintiff, The Way International is a non-denominational Biblical research, teaching, and fellowship ministry with an international membership. (Doc. # 32-5 ¶ 3, p. 1). Originally incorporated in 1947, The Way International changed its corporate name to The Way, Inc. in 1955, and subsequently to The Way International in 1974. (Doc. # 32-5 ¶ 5, p. 2). Plaintiff currently operates eleven separate fellowships with about 200 followers in the State of Alabama, including two separate fellowships in Birmingham. (Doc. # 32-5 ¶ 5, p. 2).

         The Way International has used the mark THE WAY for over sixty years and the mark THE WAY INTERNATIONAL for over forty years in connection with the provision of its religious educational services, publications, and related goods and services in the United States and throughout the world. (Doc. # 32-5 ¶ 5, p. 2). In Alabama, where Defendants are located, The Way International has used its marks for over forty years. (Doc. # 32-5 ¶ 5, p. 2).

         The Way International has expended time, effort, and money promoting its organization and its goods and services under the marks THE WAY and THE WAY INTERNATIONAL. (Doc. # 32-5 ¶ 6, 7, p. 2). As a result of Plaintiff's promotional efforts and extensive use of its marks, Plaintiff has established national and worldwide recognition of the marks, and people involved in religious studies and fellowship associate the marks with Plaintiff. (Doc. # 32-5 ¶ 7, p. 2).

         In the late 1990s, The Way International began promoting its goods and services online by launching its official website located at TheWay.org. (Doc. # 32-5 ¶ 10, pp. 3-4). In addition, Plaintiff has registered the following domain names: TheWayInternational.net, TheWayInternational.org, TheWayInternational.info, TheWay.com, TheWay.net, TheWay.info, TheWay.tv, TheWayIntl.net, TheWayIntl.org, TheWayIntl.info; TheWayMinistry.com, TheWayMinistry.net, TheWayMinistry.info, and WayInternational.org, which Plaintiff uses to redirect Internet browsers to its official website. (Doc. # 32-5 ¶ 11, p. 4; Doc. # 32-6).

         The Way International owns 16 federal trademark registrations comprised of or containing the marks THE WAY and THE WAY INTERNATIONAL (Doc. # 32-5 ¶ 8, p. 2). The registrations for THE WAY and the WAY INTERNATIONAL are set forth in the chart below.

Exhibit

Mark

Reg. No./Date

Class, Goods/Services

E

THE WAY

Reg 1155904

Reg 26-MAY-1981

INT. CL. 41 educational services-namely, providing religious teaching services by means of motion pictures andslide presentations and producing and presenting musical, dramaticomusical, and dramatic productions and presenting works of art, publishing of periodicals and booklets of a religious nature

F

THE WAY

Reg 1236084

Reg 03-MAY-1983

INT. CL. 16 religious paperback and hardback books, study manuals, and stationery-namely, notecards

G

THE WAY INTERNATIONAL

Reg 2885949

Reg 21-SEP-2004

INT. CL. 16 religious paperback and hardback books; religious brochures and study manuals; stationery, namely, note cards, invoices, and gift certificates

H

THE WAY INTERNATIONAL

Reg 2885950

Reg 21-SEP-2004

INT. CL. 9 audiotapes, videotapes, records, cds and cassettes in the field of religion

I

THE WAY INTERNATIONAL

Reg 2901293

Reg 09-NOV-2004

INT. CL. 35 retail bookstore services in the field of religion

J

THE WAY INTERNATIONAL

Reg 2901294

Reg 09-NOV-2004

INT. CL. 41 educational services, namely, providing religious teaching services by means of motion pictures and slide presentations; entertainment services, namely, producing and presenting musical, dramaticomusical, and dramatic productions and presenting works of art in the field of religion; publishing of periodicals and booklets of a religious nature

K

THE WAY

Reg 4362413

Reg 02-JUL-2013

INT. CL. 9 digital materials, namely, cds, and dvds in the field of religion; downloadable audio files, multimedia files, written documents, audio material, video material featuring information in the field of religion

(Doc. # 32-7 - 32-13). The Way International actively polices possible infringements of its marks, and takes action to protect its marks as appropriate under the circumstances. (Doc. # 32-5 ¶ 15, p. 4).

         Defendants began operating a nondenominational Biblical ministry in October or November 2014. (Doc. # 23 ¶ 23). Defendants Pastor Mason and Ms. Mason selected the name “The Church Of The Way International” for their ministry. (Doc. # 23 ¶ 24). Defendants registered with the Alabama Secretary of State under the name “The Church Of The Way International.” (Doc. # 32-14).

         Defendant Pastor Mason registered and owns the internet domain name thechurchofthewayinternational.org (the “Domain Name”). (Doc. # 23 ¶ 25; Doc. # 32-15). Defendants are using the Domain Name in connection with the website at the following URL: http://thechurchofthewayinternational.org. (Doc. # 23 ¶ 42; Doc. # 32-16). Defendants provide prayer, worship, and outreach services, offer religious teaching materials including a series of audio CDs, and solicit charitable contributions. (Doc. # 23 ¶ 23; Doc. # 32-16).

         Prior to receiving the letters from the Plaintiff's attorney requesting that Defendants stop using Plaintiff's marks, Defendants had never heard of Plaintiff (Doc. # 39 ¶ 7) and they deny having any intent to profit from the use of Plaintiff's marks. (Doc. # 39 ¶ 12).

         Defendants have used (and continue to use) “The Church Of The Way International” and http://thechurchofthewayinternational.org to promote and advertise their services and products, including religious teaching services, and also to solicit monetary contributions. (Doc. # 23 ¶ 27; Doc. # 32-16). Defendants have not obtained any authorization from The Way International to use its marks. (Doc. # 23 ¶ 22; Doc. # 32-5 ¶ 18, p. 5). After Defendants received Plaintiff's letter demanding that the Defendants cease use of “The Church Of The Way International” and http://thechurchofthewayinternational.org, Defendants continued to use the marks and Domain Name, and their use of them has continued. (Doc. # 23 ¶ 28; Doc. # 32-16).

         On April 29, 2016, the same day that Plaintiff filed its Motion for Summary Judgment, Defendants filed a Trademark/Service Mark Application with the United States Patent and Trademark Office, Serial Number: 87019245, seeking to register the mark “The Church Of The Way International.” (Doc. # 45-4).

         II. Summary Judgment Standard

         Under Federal Rule of Civil Procedure 56(c), summary judgment is proper “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that 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 (1986). The party asking for summary judgment always bears the initial responsibility of informing the court of the basis for its motion and identifying those portions of the pleadings or filings that it believes demonstrate the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. Once the moving party has met its burden, the Rule requires the non-moving party to go beyond the pleadings and -- by pointing to affidavits, or depositions, answers to interrogatories, and/or admissions on file -- designate specific facts showing that there is a genuine issue for trial. See id. at 324.

         The substantive law will identify which facts are material and which are irrelevant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). All reasonable doubts about the facts and all justifiable inferences are resolved in favor of the non-movant. See Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1115 (11th Cir. 1993). A dispute is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248. If the evidence is merely colorable, or is not significantly probative, summary judgment may be grated. See id., at 249.

         When faced with a “properly supported motion for summary judgment, [the non-moving party] must come forward with specific factual evidence, presenting more than mere allegations.” Gargiulo v. G.M. Sales, Inc., 131 F.3d 995, 999 (11th Cir. 1997). As Anderson v. Liberty Lobby, Inc. teaches, Rule 56(c) “does not allow the plaintiff to simply rest on [her] allegations made in the complaint; instead, as the party bearing the burden of proof of trial, [s]he must come forward with at least some evidence to support each element essential to [her] case at trial.” Anderson, 477 U.S. at 252. “Mere allegations” made by a plaintiff are insufficient. Id.

         Summary judgment is mandated “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.” Celotex Corp., 477 U.S. at 322. “Summary judgment may be granted if the non-moving party's evidence is merely colorable or is not significantly probative.” Sawyer v. Southwest Airlines Co., 243 F.Supp.2d 1257, 1262 (D. Kan. 2003) (citing Anderson, 477 U.S. at 250-51).

         “[A]t the summary judgment stage the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249. “Essentially, the inquiry is ‘whether the evidence presents a sufficient disagreement to require submission to the jury or whether it is so onesided that one party must prevail as a matter of law.'” Sawyer, 243 F.Supp.2d at 1262 (quoting Anderson, 477 U.S. at 251-52); see also LaRoche v. Denny's, Inc., 62 F.Supp.2d 1366, 1371 (S.D. Fla. 1999) (“The law is clear … that suspicion, perception, opinion, and belief cannot be used to defeat a motion for summary judgment.”).

         III. Analysis

         Plaintiff's Complaint contains five counts against Defendants: (1) Federal Trademark Infringement under 15 U.S.C. § 1114(1); Federal Unfair Competition under 15 U.S.C. § 1125(a)(1); (3) Federal Cybersquatting under 15 U.S.C. § 1125(d)(1); (4) Alabama Common Law Trademark Infringement and Unfair Competition; and (5) Unlawful & Deceptive Trade Practices Under Ala. Code ' 8-19-5. (Doc. # 1). The court addresses each of these claims, in turn. After careful review, and for the ...


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