C. Regional Representatives
55. In June 1989, Birthright and Birthright Inc. established the position of Regional Representative to serve as a channel of communication between the Regional Consultants and the management of the Birthright movement. This position is presently inoperative. II Tr. at 159-60.
D. U.S. National Director, the U.S. National Office, and Birthright Inc.
56. Above the regional directors is the national office. In Canada, the plaintiff Birthright constitutes the national office. In the United States, various individuals and organizations have comprised the national office throughout the history of the Birthright movement.
57. The U.S. national office is run by a national director responsible to plaintiff Birthright. The purpose of the U.S. national office is to serve the Birthright chapters located in the United States and to help the chapters to follow the directives and policies set forth by plaintiff. The national office and the national director are appointed and may be terminated by plaintiff Birthright. II Tr. at 88, 91; Pl.'s Ex. 70; Defs.' Ex. 3; Aff. of Cocciolone, Ex. D.
58. The first U.S. National Director was Lore Maier. Mother Louise appointed Maier to "act as a co-ordinator of Birthright operation in the United States of America in the capacity of the National Director of the United States of America, only being responsible to the International Committees, the Birthright Board and the Founder of Birthright." The location of the national office during Maier's tenure as National Director was in Toledo, Ohio. Defs.' Ex. 3.
59. In September 1971, mother Louise, acting in her capacity as an officer of Birthright, terminated the appointment of Maier as National Director. II Tr. at 132-33, 284-85.
60. Upon Maier's termination, Birthright appointed Denise Cocciolone to the position of U.S. National Director. On September 18, 1971, plaintiff changed the address of the U.S. national office from Toledo, Ohio to Woodbury, New Jersey. Defs.' Ex. 3.
61. Defendant Birthright Inc. was established approximately nine months after the appointment of Cocciolone to the position of national director and the relocation of the national office to Woodbury. Defs.' Ex. 1; Defs.' Ex. 3; II Tr. at 82, 220-21.
62. Birthright Inc. was formed to operate as the national office for Birthright. II Tr. at 13. Birthright Inc., however, does not itself comprise the national office for the Birthright movement.
63. Neither Denise Cocciolone, as U.S. National Director, nor Birthright Inc., as the U.S. national office, was ever granted exclusive control over the operations, activities, or organizations of the Birthright movement in the United States.
64. Cocciolone acted as U.S. National Director until approximately May 1987. On or about May 5, 1987, plaintiff Birthright appointed Cocciolone and Weaver to serve as national co-directors. In an announcement, the Birthright Board defined the duties of Cocciolone as comprising fundraising for Birthright Inc. and for the hotline service. The Board directed Weaver to help and to guide the chapters and consultants in the United States. Pl.'s Ex. 71.
65. On or about July 8, 1987, plaintiff informed Weaver that her services as national co-director were no longer needed, and she stepped down from that position and resumed her duties as a regional consultant. II Tr. at 91-92. Cocciolone once again functioned as the sole U.S. National Director.
66. On April 24, 1991, plaintiff dismissed Cocciolone from her position as National Director. Pl.'s Ex. 18.
67. Thereafter, plaintiff appointed Terry Weaver to the position of National Director in the United States, and the national office was moved to Atlanta, Georgia. II Tr. at 24, 26-27, 92.
E. The Toronto Office
68. The international headquarters and parent organization of the Birthright movement is plaintiff Birthright, located in Toronto, Canada. See Decl. of Berney, Exs. C, D; Pl.'s Ex. 70.
69. Plaintiff Birthright has the sole power to issue and to revoke the charters of local Birthright chapters. See supra Findings of Fact P 50.
70. Plaintiff shared with Birthright Inc. the power to hire and terminate regional consultants. II Tr. at 152, 175.
71. Plaintiff has the sole power to hire and terminate the national director in the United States. Denise Cocciolone defined Birthright's authority in this regard in a letter she wrote on September 27, 1971:
We are aware, however, that an appointed National Director of any organization or corporation is responsible to the Board of Directors and must confine himself to carrying out those responsibilities delegated to him by the Executive Board. If any Executive Director deviates from policy, defaults his responsibilities, or oversteps his authority, the Board is obligated to review what has happened and take prompt, positive action.
Pl.'s Ex. 60.
72. Plaintiff has the sole power to interpret the Birthright Charter. II Tr. at 279.
73. Plaintiff has the sole power to formulate, implement, and enforce policy directives that articulate the Birthright movement's philosophy. See supra Findings of Fact P 19. For example, in 1983, the Birthright Board decided to forbid the use of the Pearson abortion slides. The Board then enforced this policy as against a Birthright Chapter located in New Haven, Connecticut. Supp. Decl. of Daughter Louise, Ex. P; Pl.'s Ex. 10.
74. Plaintiff has the sole power and responsibility to monitor the use of the "Birthright" name and the "B" logo, including the authority to revoke the charter of any Birthright chapter that violated the Birthright philosophy and to bring lawsuit against any entity that illegally used the name and/or logo. See infra Findings of Fact PP 87-92.
IV. The "Birthright" Name and the "B" Logo
75. The Birthright entities use the "Birthright" name as a service mark to identify the kind of pregnancy counselling services they offer. The Birthright entities frequently modify the name by adding a word or phrase, often identifying a geographic location, that further identifies the entity. For example, defendant Birthright Inc. uses the name "Birthright USA;" plaintiff Birthright uses the name "Toronto Birthright" or "Birthright International." However, these modified marks share the same core, i.e. the word "Birthright," and are therefore substantially the same.
76. The "Birthright" name appears on fundraising letters mailed throughout the United States and is therefore used in interstate commerce. Decl. of Daughter Louise, Ex. E.
77. The Birthright entities also use the "B" logo as a service mark to identify the kind of pregnancy counselling services they offer. The Story of Birthright at 18.
78. The "B" logo appears on fundraising letters mailed throughout the United States and is therefore used in interstate commerce. Decl. of Daughter Louise, Ex. E.
A. History of the Name and Logo
79. On August 16, 1971, plaintiff registered with the United States Patent Office, as registration no. 940,150, the "Birthright" name as a service mark for the counseling of pregnant women. Pl.'s Ex. 7B. In the late 1970s, plaintiff allowed registration No. 940,150 to lapse. I Tr. at 27.
80. On July 27, 1982, plaintiff registered with the United States Patent and Trademark Office, as registration no. 1,203,140, the "Birthright" name as a service mark-for the counseling of pregnant women. Pl.'s Ex. 7. Plaintiff has also filed declarations with the United States Patent and Trademark Office pursuant to Sections 8 and 15 of the Lanham Act. I Tr. at 25-26.
81. On March 21, 1975, plaintiff registered with the Canadian Department of Consumer and Corporate Affairs, as registration no. 205,989, the "Birthright" name as a trademark. Pl.'s Ex. 7A. On January 12, 1990, plaintiff obtained from the Canadian Department of Consumer and Corporate Affairs a certificate of renewal for registration no. 205,989, renewing the trademark registration for a period of fifteen years. Pl.'s Ex. 7A.
82. The "B" logo was designed in 1968 for mother Louise to use as a symbol for the Birthright movement and the services it offers. The Story of Birthright at 18-19.
83. Since 1968, plaintiff Birthright and its licensed U.S. organizations, have publicized the "Birthright" name and the "B" logo throughout the United States as symbols for the kind of pregnancy counselling service offered by the Birthright entities. The name and logo represent the assets of a valuable reputation and good will associated with Birthright. Decl. of Daughter Louise PP 20, 21, 24 & Exs. C, D.
84. Despite plaintiff's registration of the "Birthright" name as a trademark in Canada and the United States, plaintiff, mother Louise, and others connected to the Birthright movement have represented that the "Birthright" name and the "B" logo are owned by mother Louise and/or copyrighted in the name of mother Louise. See Decl. of Birthright Administration P 4.
85. Plaintiff and others have also represented the status of the "Birthright" name as a registered trademark in Canada and the United States. Decl. of Weaver, Ex. A; Aff. of Cocciolone, Ex. I. For example, in a speech given to the Birthright International Convention in June 1983 and subsequently published in the Life Guardian, Gordon Kaiser, Esq., a trademark attorney who sat on the Birthright Board, stated:
The trademark 'Birthright' is owned by Birthright, the Canadian corporation, and that is true of all the trademark registrations around the world. Birthright licences each chapter to use that mark. And as you know, each chapter is required to fill out and sign a charter - there is an application and attached to that application is a charter. One section of that charter deals with the trademark. That charter is, among other things, a trademark licence. Birthright therefore has an obligation to ensure that anyone using the name Birthright lives up to the terms of that charter or licence. If they don't, Birthright has an obligation at law to REQUIRE those people to cease using the name 'Birthright'. And of course, the "B" logo, which is also a protected symbol.
Second Supp. Decl. of Daughter Louise, Ex. B; II Tr. at 230.
86. Throughout the period relevant to this litigation, Denise Cocciolone -- and therefore both Birthright Inc. and Woodbury Birthright -- knew of the status of the "Birthright" name as plaintiff's registered trademark and knew that the "B" logo was owned and controlled by plaintiff. II Tr. at 278.
B. Birthright's Monitoring Activities
87. Plaintiff Birthright has the responsibility and authority to monitor the use of the "Birthright" name and the "B" logo. I Tr. at 6, 13; II Tr. at 187; Pl.'s Exs. 10, 12, 21, 23; Defs.' Exs. 7d, 7f.
88. Denise Cocciolone -- and therefore both Birthright Inc. and Woodbury Birthright -- knew of and acknowledged the fact of plaintiff Birthright's role and authority in monitoring the name and logo. II Tr. at 187, 278; Supp. Decl. of Daughter Louise, Ex. I.
89. Plaintiff has the authority to revoke a charter and terminate a local chapter's use of the "Birthright" name and the "B" logo where the local chapter is not in compliance with the Birthright Charter or policy directives. An example of Birthright's monitoring of the name and logo occurred in 1990, when the San Diego chapter was not operating in conformity with the Birthright Charter and policy directives. In a letter dated October 1, 1990, the Birthright Board stated that it would revoke the San Diego chapter's charter, thereby terminating the latter's right to use the name and logo, "if immediate action is not taken to resolve the problems." Pl.'s Ex. 11. Daughter Louise travelled to San Diego to try to resolve the matter, but when the San Diego chapter failed to take steps to bring itself sufficiently in compliance with the charter, it voluntarily changed its name. II Tr. at 8-10.
90. One of the grounds on which plaintiff may revoke the charter of a Birthright chapter is for performing overtly political activities and/or adopting overtly political positions. For example, in 1983, plaintiff enforced its decision to forbid the use of the Pearson abortion slides. In a letter dated April 12, 1983, the Birthright Board informed the director of a Birthright Chapter located in New Haven, Connecticut that Birthright
maintain[s] the right to guarantee the beliefs and philosophy of Birthright. Should you decide to use [the Pearson] slides in your office, in opposition to the decision of the Board of Directors, we will have no choice but to insist, legally if needed, that you stop using the name of Birthright.
Pl.'s Ex. 10. As a result of this correspondence, the New Haven Chapter came into compliance, ended its use of the slides, and was permitted to continue its use of the "Birthright" name. II Tr. at 10-11.
91. As part of its monitoring responsibilities, plaintiff may threaten or take legal action against entities using the "Birthright" name without plaintiff's permission. For example, in 1977, plaintiff retained counsel and sued such an organization in Indiana using the "Birthright" name, forcing it to change its name to "Birthline, Inc. of St. Joseph County." II Tr. at 6-7; Pl.'s Ex. 12.
92. Another example of Birthright's monitoring of the name and logo occurred in 1990, when Denise Cocciolone, acting on behalf of Birthright Inc., signed a contract with Christianson, Barkley and Shaw ("CBS"), pursuant to which CBS represented itself as Birthright's exclusive representative for placing advertisements in Yellow Pages telephone directories. In connection with this contract, Cocciolone permitted CBS to use the "Birthright" name and the "B" logo. Cocciolone did this without any authorization from Birthright. II Tr. at 254-56, 292-93. In response to this situation, plaintiff sent a letter to CBS on June 28, 1990, stating that the representation that CBS is the "exclusive" agent for Birthright advertising in Yellow Page directories is false, and that CBS is not authorized to use the Birthright mark and the "B" logo. Plaintiff demanded that CBS cease this activity immediately, and informed CBS that the principal Birthright office is located in Toronto, not Woodbury. Aff. of Cocciolone, Ex. I.
V. The Dispute Between Birthright and Birthright Inc.
A. The Controversy Over the Fundraising Letters
93. The dispute between plaintiff and defendant Birthright Inc. centers around the tone and content of the fundraising letters sent out by Birthright Inc. as part of its direct mail fundraising efforts for the telephone hotline. II Tr. at 281.
94. Beginning in 1990, plaintiff perceived the following problems in the fundraising letters:
i. that the letters had taken on a changed tone, emphasizing political aspects of the abortion controversy and deemphasizing the loving and nonjudgment nature of Birthright;