NAACP v. NAACP LDF Memorandum of Law in Support of Defendant's Motion for Summary Judgment
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August 3, 1982

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Case Files, Bozeman & Wilder Working Files. NAACP v. NAACP LDF Memorandum of Law in Support of Defendant's Motion for Summary Judgment, 1982. eff8309d-ed92-ee11-be37-6045bdeb8873. LDF Archives, Thurgood Marshall Institute. https://ldfrecollection.org/archives/archives-search/archives-item/7f42ca25-cd3b-4eee-ac48-96b5bd9b6952/naacp-v-naacp-ldf-memorandum-of-law-in-support-of-defendants-motion-for-summary-judgment. Accessed May 15, 2025.
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UNITED STATES DISTRICT COURT FOR TITE DISTRICT OF COLUI{BIA x NATIoNALAsSocIATIoNFoRTIIEADVANCEIIiENT OF COLORED PEOPLE, 2 Plaintiff, : Civil Action No' 82-1 424 V. (Jackson, J. ) N.A.A.C.P. LEGAL DEFENSE AND EDUCATIONAL : FUND, INC., Defendant. x !.tEuoRANDUl{oFLAwINSUPPoRToFDEFENDANTIS MOTION FOR SUT,IT.{ARY JUDGUENT PAUL, WEISS' RIFKIND, WEARTON &.GARRISON A partnership including Professional corporations AttorneYs for Defendant 345 Park Avenue New Yorkr New York 10154 (212) 544-8000 Of Counsel: Jay Topkis Kenneth Roth AKIN, GUUP, STRAUSS, HAUER & FELD Att,orneys for Defendant 1333 tlew UamPshire Avenue' N'W' Suite 400 Washington, D.C.20036 (202) 887-4000 of Counsel: Vernon E. Jordan, JE. Daniel JosePh, P.C. PARKER AUSPITZ NEESEMANN & DELEHANTY P'C' AttorneYs for Defendant 415 ltladison Avenue New York, New York 1 00 1 7 (212) 355-4415 Of Counsel: Barrington D. Parker, JE. Charles S. Barquist TABLE OF AUTHORITIES CASES Page 11 7r 9 7r 9 5 5 5 9 *Ancient Eqvptian Arabic Order of Nobles of the 4 Mystic 929) o.... 10 - *Anheuser-Busch, Ine. v. Du Bois Brewing Co., -rffici , 339 u,S. 934 (1950) ............................... Ambrosia Chocolate Co. v. Ambrosil lgfg--eakeryr- 3 (4 fniea, 333 U.S. 882 (1948) ........:........o. Bernard v. Gulf Oi1 Co.r 519 F.2d 459 (5th Cir. -i9ao) @, 452 u.s. 89 (1981) o....... *Creswill v. Grand Lodge x = , 22 """"""'o"' crotoll.t"h co. ,r. Laughlin , zoa F.2d 93 (2d Cir. 1953 ) .. .. . . . .. . . . . o ' o ' " " " t ' ' ' ' ' t ' ' " ' ' " ' ' Cuban Cigar Brands, N.V. .v. -UP{raBn.-IgtefE3lionalr1090 ( s. D.N. Y. 1978 ) , 'EEfla mem. , 607 F.2d 995 ( 2d Cir. 1979 ) . .......... *Dawn Donut Co. v. Hartrs Food Storesr-f4111r ffi35s ....o......... *Dwinel1-wriqht Co. v. White llouse Milk Qo.,ffi(2d .............. *tlavi land & co. v. Johann Eavi land q!tnE_-@-, @p. """t""""t' NAACP v. Button, 37 1 U.S. 415 ( 1953) ................... 10 10 10 11 NAACP Leqal Defense and Educational Fund, Inc. - er l Northcross v. Board of Educ., 511 F.2d 624 (5tft..=.--TT-rgzgffi, 447 u.s. 911 (1980) *Pfluqh v. Eaqle White Lead Co., 185 F. 769 (3d tir. ) .s. 515 (1911) .......... Polaroid Corp. v. Pollqed Electronics Corp., ffi4e2 368 U.S. 820 ( 1961 ) ............. ............ - *Robinson Co. v. Plastiq E.esearch & Dev. Corp.,----ffi-Ffsupp ................. TABLE OF AUTTIORITIES ( cont 'd ) Co. v. Lehman, 625 F.zd Paqe 9, 10 11 Sheilats Shlne Products, Inc. v. Sheila Shine, fnc.7 73)ffi. CASES (contrd) *Sara aVi STATUTES 15 U.S.C. S 15 U.S. C. S 15 U.S.C. S 15 U.S.C. S 15 U.S.C. S 4 Callmann, Unfair Competition Trademarks and [onopolies S 97.3(a) (3d ed.1970) ................. MISCELLANEOUS Cases or authoriEies asterisks. chiefly relied uPon are marked bY 1t UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUUBIA - NATIONAL ASSOCIATION FOR THE AD\ANCE!'IENT OF COLORED PEOPLE, Plaintiff, V. N.A.A.C.P. LEGAL DEFENSE AND EDUCATIONAL FUND, rNC., De fendant ' x : CiviI Action No. 82-1 424 (Oberdorfet, J. ) x MEI.IORANDI I'f OF I"AW IN SUPPORT OF DEFENDANT I S !{OTION FOR SU Preliminarv Stat,ement The facts here are clear and simple: lrlore than four decades dgor by actions of its board and board members, plainti tf gave birth to defendant and Provided it with its namer.N.A.A.c.P. Le9a1 Defense and EdUCational Fund, Inc'n The parent explicitly endowed its child with the N.A'A'C'P' initials, and the initials became a Part of defendant's identity. No restriction on the use of the initials was suggestedT no right was reserved. Plaintiff never hinted that it, might one day seek to erase the identity it' had just conferred. Defendantgraduallymaturedtobeanindependent organization, a fuII partner in the fight for racial justice' sometimes together, sometimes on different fronts, Plaintiff and defendant advanced the cause of racial justicer each under a banner that included the N.A.A.c.P. initials' The initials served both as a vital symbol of the cause they furthered. Plaintiff allowed years to elapse after defendantr s birth and independence without ever suggesting that it might contest defendant's right to use the initials. Defendant grew and thrived under the justified belief that its name was beyond disPute. Now, after decades of sharing the N'A'A'C'P' initials, plaintiff seeks by this action suddenly to disown its namesake. Disregarding its unconditional act of pater- nityr plaintiff seeks t,o monopolize the init,ials it had agreed to share. The pertinent facts are not in dispute. Indeed, wit,h commendable candor, plaintiff has Pleaded most of them to the point where a motion for judgment on the Pleadings would be entirely in order. But we seek here a more final resolution of this controversy: Summary judgnent dismissing the complaint. The Record Facts In 1939, plaintiff caused the creation of defendant as a New York not-for-profit corporation under the name N.A.A.C.P. Legal DefenSe and EdUCatiOnal Fund, Inc. on octo- ber g, 1939, Plaintiff's board of directors adopted a resolu- tion explicitly authorizing the new organization to use t'he N.A.A.C.P. initials as part of its name: WHEREASrThefollowingindividuals--Herbert it. Lehman , wi 1li am AI 1an Ne i l son ' Ar th ur B ' Sping".", william II. tlastie, tltary l{hite ovington , charl"s i. Toney, Hubert T. Delany as Direc- tors of the "N.A-A-c.P. Legal Defense and Education Fund, Inc.rn have requested permission of the National Association Ifor] the Advancement' of Colored People to use the initials, .N.A.A.C.P.n, in an applieation for a of the rrN.A.A.C.P. Legal Fund, Inc. n ; therefore, Certificate of IncorPoration Defense and Educational BE IT RESOLVED, That the Board of Directors of the National Association for the Advancement of Colored Peop1e grant permission for the use of the initials, nN.i.A.c.P.n by the "N.A.A.c.P. tegal Defense and Education Fund, Inc.' and authorize the President and Secretary to execute what,ever PaPers might be necessary to carry out this resolution. The resolution conferred the right to use the initials uncon- dit,ionally: It articulated no time limit and reserved no right of modification or revocation. On t'larch 20, 1940, after the court approval required under New York law for the creation of a not-for-profit, corPo- ration entitled to practice law, defendant's certificate of incorporation was fi1ed. On April 30, 1940, the U.S. Treasury Department ruled t,hat defendant tdas entitled to t,ax exemption and that contributions to it were deductible under the Inter- nal Revenue Code. From the outsetr defendant was formally independent of plaintiff. With the passing years, defendant also gradually became completely independent of plaintiff in practice- When defendant first began operations in 1940, it shared directors, offices and staff with plaintiff: its sole indicia of more than formal independence were that it paid rent, for its use of the office and telePhone, and that it reimbursed plaintiff for the salaries of ttro employees. In 1941 , when defendant began its o$rn fund-raising efforts, its board came to include members who were not directors of plaintiff. ]n 1952, defen- dant physically left plaintiff's premises and moved into its own offices a few blocks away. By 1953, defendant supported an annual budget of over $220 r 000. The year 1957 marked the culmination of this Path to independence. The Treasury DePartment had begun to question defendantts tax-exempt status in light of defendantrs close relationship wit,h non-tax-exemPt plaintiff . In resPonse t,o this inquiry, defendant's board decided to sever all connec- tions with plaintiff. On May 16, 1957, the board resolved that 'no person should be a Board Menber, officer or employee of this corporation who is also a Board Member, officer or emPloyee of the N.A.A.C.P. " By September 1957, this separation tdas complete, and defendant had become fu11y independent of its founder. The seParation was rePorted to the Treasury Depart- ment and the Treasury has never since challenged defendantrs tax-exempt status. The separation lras nearly as much an act of plain- tiff as of defendant. At the time the resolution was adopted, a majority of the members of defendant's boardr 6s well as all of defendantts officers, were also members of plaintiff's board. The seParation was not a rash act by a disgruntled chi1d, but a considered step made with the active consent of t,he parent. In 1961-62, plaintiff for the first time suggested that defendant might cease using the N.A.A.C.P. initials, and the suggestion was repeated in 1965 and 1956. These sugg.es- tions t ere never written demands; they were merely informal oral comments by certain of plaintiff's board members. On each occasion, defendant determined to retain its name, and plain- tiff did not pursue the matter further. Defendant, however, began to take appropriate steps to distinguish itself from plaintiff. Since that time, defendantrs official reports have borne a disclaimer of any relationship with plaintiff. The language currently enployed on defendantrs stationery is: NThC NAACP LEGAT DEFENSE & EDUCATIONAL FUND is not part of the National Association for the Advancement of Colored People although it was founded by it and shares its commitmerit to equal rights. LDF has had for over 25 years a separate Board, program, staff, office and budget. r For the next twelve years, plaintiff uttered not one word of protest over defendant's name. In reliance on plaintiffrs consent and acqui.escence, defendant continued to use its name. It built a large organization and developed substantial reservoirs of good will under this name. The courts have repeatedly praised defendant for its 1ega1 work under this name. See, €.e.7 NAACP v. Button, 371 U.S. 415, 421-22 1t963); @[ v. Gulf Oil Co., 519 F.2d 459 | 470 (5th Cir. 1980) (en banc), aff 'd, 452 U.S. 89 (1981); Northcross v. Board of Educ., 611 F.2d 624, 637 (6th Cir. 1979), cert. denied, 447 U.S. 911 (1980); NAACP Legal Defense and Educational Fund, Inc. v. Campbell, 504 F. Supp. 1365, 1358 (D.D.C. 1981) (Gese11, J.). Defendant has spent millions of dollars and years of effort in soliciting gifts and recruit,ing 1ega1 talent in the name of the N.A.A.C.P. Legal Defense and Educational Fund, Inc. Attempting to emulate defendantrs success, many other organizations have styled themselves as the n Legal Defense and Educational Fund, fnc.r" or some close variant thereof. We have learned that at least 13 such organizations exist today, their names virtually identical to defendantts except for the N.A.A.C.P. initials- On December 29, 1978, plaintiff sent a letter to defendant claiming that some unspecified confusion results from the concurrent use of the N.A.A.C.P. initials. The two organi- zations met to discuss the matter and, while defendant pledged to cooperate ful1y in avoiding any confusion that might exist and t,o better coordinate activities between the tlro grouPs, it refused to give uP its right to use its name. On June 28, 1979, plaintiff's board adopted a reso- lution purporting t,o nrescind its resolution of October g, 1939r and revoke the permission granted to use the initiaLs 'NAACP.'N On January 26, 1982, Plaintiff registered the N.A.A.C.P. initials with the United St,ates Patent and Trademark Office. Fina11y, on May 25, 1982, Plaintiff brought this suit. Arqument On the above incontestable factsr w€ submit, defen- dant is entitled to sunmary judgnent dismissing the complaint. A variety of faniliar lega1 doctrines is apPlicable, each of them fatal to plaintiffrs position. I Plaintiff Consented to Defendantrs Use Of the N.A.A.C.P. Initials We have searched the authorities in vainr w€ confess, for any case squarely in point. Never before, aPParently, has a parent organization endowed its offspring with the parentrs name and, over forty years later, sought to deny the birthright. The pertinent legal ProPosition has, however, been voiced by Chief Judge Learned Hand. In Dwinell-Wright Co. v. white House tlilk co., 132 E.2d 822 (2d Cir. 1943), he carefully analyzed the law aPPlicable to the use by a latecomer of a trademark owned by another, and said of the latecomer: He must show some reason why it will not be just to stoP him. That he mayr'.of course do, if he has acled upon the actual consent of the owner emPhasis added) ' In short, consent is consent. When it is given freely, deliberately and without linit, the act is conclusive on the donor. Cf. Croton Watc! Co. v. Laughlin,208 F.2d 93,96 (2d cir. 1953); 15 U.S.C. S 1114( 1). Plaintif f is bound by the consent that it long ago gave. that plaintiff now has registered the initials as a trademark does not undo its prior consent3 registration creates no ne!, right against a known concurrent user of a mark. In Eaviland & ca1 v. Johann Haviland chlqe-lcsE-, 269 F. Supp. g28 (S.D.N.Y. 19671| the court rejected plain- tiffts attenpt to use its belated registration of a mark as a basis for challenging a long-condoned concurrent use of the mark: "The concurrent use of this mark for many years was a matter of common knowledge; and so far as the defendant . . . is concerned, plaintiff's regis- tration has no effect uPon the status quo ante" Id. at 935. See also 15 U.S.C. 51055; 4 Cal1mann, Unfair Competition Trademarks and Monopolies S 97.3(a), at 587 (3d ed. 1970)' II Ilaving Acquiesced in Def endant's Use Of the Initials, Plaintiff Is Estopped From Now Challenging that Use Plaintiff is further barred from challenging defendantrs use of the initials because 7 having long acqui- esced in that us€2 plaintiff is now estoPPed to contest it. Prior to 1967, various of plaintiff's directors occasionally complained informally about defendant's name although the complaints $rere never serious enough to be reduced to writing. Then, plaintiff said and did nothing in the ensuing twelve years. Those twelve years of silence -- not to mention the forty years since defendant's creation, without formal protest create an estoppel. rn v.@, 175 F.2d 370 (3d Cir. 1949\, cert. denied, 339 U.S. 934 (1950), plaintiff, the brewer of "Budweiser' beer, filed suit to prevent the defendant from selling beer under a similar labe1; plaintiff then discontinued the suit, and pursued the matter no further. When, years later, plaintiff again filed suit, the court sustained a defense of estoppel: the Third Circuit ruled that the original filing and discontinuance of the suit, together with the absence of further protest, "amounted to at least an acquiescence in use of the word [Budweiser] by [plaintiff].n Id. at 375. The court warned that if the plaintiff 'did not want to 1u11 [defendant] into a false sense of securityrn it "should have followed uP t,he discontinuance of the suit with some unambiguous action asserting its claim." Id. 4llg!. v. Eagle White Lead Co., 185 F' 769 (3d cir.)r cert. denied, 220 u.s. 515 (1911), is closely comparabLe to the facts at, bar. There, plaintiff wrote a letter aEserting its exclusive right to a mark, but defendant rejected plaintiffrs c}aim. Eight years later, Plaintiff again asserted its exclusive right and defendant again disagreed. Finallyr Six more years lhereafter, plaintiff filed suit. The Court of Appeals held that plaintiff, by its fourteen years of inactionr had acquiesced in defendantrs use of the mark and vras estopped to challenge it. Id. at 772-73. Accord, Ambrosia chocolelg_lg_r_ v. Ambrosia cake Bakery, Inc. , 165 e.2d 693t 595 (4th Cir. 1947), cert' denied, 333 U.S. 882 11948); @ v' White Ilouse !,tilk Co. , 132 9 .2d 822, 825 ( 2d Cir. 1 943 ) ; Ilaviland & Co. v. Johann Haviland China Corp., 269 F'. SuPp' 928, 955 (s.D.N.Y. 1967). III Plaintiff Is Barred bY Its Laches Plaintiff is also barred by its laches. The second Circuit recently had occasion to sustain a laches defense against a claim of t,rademark infringement in Saratoga Vichy Spring Co. v. @!g, 625 F.2d 1037 (2d Cir. 1980) ' In affirming the lower courtrs grant of summary judgment dis- missing the complaint, the Second Circuit explained t'he laches defense as follows: 9 "Defendantrs Proof in its laches defense must show that plaintiff had knowledge of defendant,ts use of its mark, that plain- iiii i."xcusably delayed in taking action with respeet thlretor and !ht! defendant- ;iii ue-i,re:udiced by permit,ting plaintiffwilI be prejudiced by PermlE'E'lng P.t.arnu, in"euit"-ory-to asqgrl its.right. at :li:timd." Id: at 1040 (quoting CuPan 9isgr Brands, N:J,- v. g 1090, .g.lt.I. (WeinfeId, J . ), aff rd mem. , 607 F.2d 995 (2d Cir. 19'19)). The'court held that the plaintiff, who had known of the defen- dant's plans to revive its operations under a common name but had waited seven years to contest those plans, l,as barred by itslachesfromproceedingwiththesuit.Id.atl04l-42. Accord, POlaroid corp. v. Polarad Electronics corp' | 287 F'2d 4g2 (2d Cit.)r cert. denied, 368 U'S' 820 (1951)' TheUnitedSt,atesSupremecourtontwooccasions sustained laches defenses on facts that closely paral1e1 the of the trtystic Shrine v. Michaux, 279 U.S ' 737 ( 1929) ' and creswill v. Grand Lodge K+ights of Pvthias of Ga. , 225 U'S' 245 (1g12), black benevolent associations had evolved under names that closely resembled thOse of their white counter- parts. The white associations, after years of standing silently by while the black grouPs grew and prosperedr sud- denly sought to enjoin the black associations from continuing to use their names. The supreme court held t,hat the years of inaction by the white organizations and their seeming acqui- escence amounted to laches, which barred their injunctive efforts.ltichauxr-Wr27gU'S'at747-49;Creswill' El{pIB, 225 U. S. at 262-63 ' 10 In the case at hand, Plaintiff knew of defendant I s name but stood passively by for over twelve if not forty -- years while defendant built its organization and estab- lished its identitlt. Plaintiff's laches prevent it from abruptly ignoring its years of silence and contesting defen- dant I s nalne. IV Plaintiff Abandoned any Exclusive Right It Uight Have Held by Granting Defendant A "N;ked License" to use the Initials Plaintiff is also barred from proceeding in this action because, it the very least, it gave defendant a nnaked license" to use the N.A.A.C.P. initials without any control by plaintiff of the quality of services Provided under the mark. The Second Circuit outlined the nnaked license" defense in Dawn Donq! lic-1 v. gartts Food Stores, Inc.r 267 F.2d 358 (2d Cir. 1959). As the court there explained, a t,rademark holder is under an affirmative duty to control the quality of services Provided under the mark, to the end that the public will be able to identify a certain quality of goods or services with the mark. When a trademark holder grants a onaked licensen -- a license whj.ch reserves no right in the licensor to control quality the law adjudges the mark abandoned. Id. at 366-67 . @, Sheila's shine products, Inc. v. Sheila shine, Inc., 486 F.2d ',l 14, 123-24 (5th Cir. 1973); Robinson Co. v. Plastics Research g Dev. 999 -, 264 F. SuPP . 852, 863-64 (w. D.Ark' 1957 ) ' See 15 u.s.c. ss 1055, 1064 & 1127. 1'l In 1957, when plaintiff and defendant severed all connections, plaintiff reserved no right to control defendant's activities it left defendant free to do whatever it wanted, and to use the N.A.A.C.P. initials in connection with its activities. In lega1 terms, this nnaked license" worked an abandonment of plaintiffrs rights in the mark. CONCLUSION By reason of the foregoing, defendantrs motion for summary judgment, dismissing the complaint should be granted. Dated: August 3, 1982 Respectfully subnit,ted, PAUL, WEISS, RTFKIND, WHARTON & GARRISON A partnershiP incJ.uding Professional corporations Of Counsel: Jay Topkis Kenneth Roth Of Counsel: Vernon E. Jordan, Jr. Daniel Joseph, P.C. Atto 345 New (212) AKTN, GUIIP, STRAUSS, TIAUER & FELD UVtttnt laJ^ \.. Attorneys for Defendant 1333 New Hampshire Avenue, Suite 400 Washington, D.C. 20036 (202) 887-4ooo ys rk Avenue ork, New York 644-8000 12 Of Counsel: Barrlngton D. Parkerr Charles S. Barquiet PARXER AUSPITZ NEESEI.TANN & DELEHANTY P.C. ant {15 ltladlson Avenue New YorkT New York (212) 355-441 s Jr. 10017 13