Gamble v. City of Dublin, GA Brief for Appellants

    Certificate Required by Rule 8 (c) of the 
General Rules of the United States Court 
of Appeals for the District of Columbia 
Circuit

The undersigned, counsel of record for the N.A.A.C.P. 
Legal Defense and Educational Fund, Inc., certify that the 
following listed parties appeared below:

- National Association for the Advancement 
of Colored People

- N.A.A.C.P. Legal Defense and Educational Fund,
Inc.

These representations are made in order that judges 
of this Court, inter alia, may evaluate possible disqualifica­
tion or recusal.

Attorney of record for N.A.A.C.P. Legal 
Defense and Educational Fund, Inc.

/s/ JAY TOPKIS 
Jay Topkis

Paul, Weiss, Rifkind, Wharton & Garrison 
A Partnership Including Professional 

Corporations 
345 Park Avenue 
New York, New York 10154 
(212) 644-8000

/s/ WILLIAM T. COLEMAN, JR. 
William T. Coleman, Jr.

O'Melveny & Meyers 
1800 M Street, N.W 
Washington, D.C. 20033 
(202) 457-5300



/s/ VERNON E.JORDAN 
Vernon E. Jordan

Akin, Gump, Strauss, Hauer & Feld 
A Partnership Including Professional 

Corporations
1333 New Hampshire Ave., N.W.
Suite 400
Washington, D.C. 20036 
(202) 887-4000

/s/ CHARLES S. BARQUIST 
Charles S.. Barquist

Parker Auspitz Neesemann & Delehanty P.C.
415 Madison Avenue
New York7 New York 10017
(212) 355-4415

li



TABLE OF CONTENTS

g.a£e
PRELIMINARY STATEMENT.....................................  1

QUESTIONS PRESENTED.......................................  3

THE RECORD FACTS........................................... 4

The Original Consent................................ 5
The Organizations Separate.........................  7
The Association Complains — ■ And Stops

Complaining.......................................  9
The Fund's Action in Reliance...................... 11
The Association Complains .........................  13

SUMMARY OF ARGUMENT....................................... ■ 14

I. THE ORDER OF THE DISTRICT COURT SHOULD BE 
REVERSED AND SUMMARY JUDGMENT SHOULD BE
ENTERED IN FAVOR OF THE FUND.......................  15
Consent..............................................  16
Acquiescence and Estoppel..........................  23
Estoppel............................................. 24
Laches..................    29
Injury to the Fund.................................. 34

II. THE DISTRICT COURT ERRED IN NOT APPLYING 
COLLATERAL ESTOPPEL TO BAR THE
ASSOCIATION'S CLAIM FOR RELIEF..................... 37
The 1939 Judicial Proceeding.......................  38
The Association Is Bound By The
1939 Adjudication ..................................  42
The Association's Remedy...........................  44

III. THE DISTRICT COURT ERRED IN GRANTING 
SUMMARY JUDGMENT FOR THE ASSOCIATION 
SINCE THE ISSUE OF CONFUSION PRESENTED
A MATERIAL ISSUE OF FACT...........................  45

IV. THE DISTRICT COURT ABUSED ITS DISCRETION BY
ENTERING THE INJUNCTION IN ITS PRESENT FORM......  50
The Fund's Right to Its History.................... 50
The Association Cannot
Appropriate History................................. 52

CONCLUSION.................................................  52

iii



TABLE OF AUTHORITIES
Cases; page

*Abraham v. Graphic Arts International Union,
660 F .2d 811, 212 App. D.C. 412 (D.C. Cir. 1981) ..... 49

Advanced Hydraulics, Inc, v. Otis Elevator Co.,
525 F.2d 477 (7th Cir.), cert, denied,
423 U.S. 869 ( 1975) ....................................  27

Allen v. McCurry, 449 U.S. 90 ( 1 980) .................... 38-39, 42
Ambrosia Chocolate Co. v. Ambrosia Cake Bakery,

Inc., 165 F .2d 693 (4th Cir. 1947),
cert, denied, 333 U.S. 882 ( 1 948) . .....................  26

*Ancient Egyptian Arabic Order of Nobles of the
Mystic Shrine v. Michaux, 279 U.S. 737 (1929) ........ 33

*Anheuser-Busch, Inc, v. Du Bois Brewing Co.,
175 F.2d 370 (3d Cir. 1949) , cert, denied,
339 U.S. 934 (1950) .........7777...................... 25

Berlitz School of Languages of America, Inc.
v. Everest House, 619 F.2d 211 (1980) 7777...... . 46

Bernard v. Gulf Oil Co., 619 F .2d 459 (5th Cir.
1980) (en banc) , aff '~d 452 U.S. 89 ( 1981)  .......... 12

Blaw-Knox Company v. Siegerist, 300 F. Supp. 507 
(E.D. Mo. 1968), aff'd 414 F .2d 375
(8th Cir. 1 969) ................................... ..... 31

Chisolm-Ryder Company, Inc. v. Sommer & Sommer,
78 App. Div.2d 143, 434 N.Y.S.2d 70
(4th Dep't 1980) ................................... . 41

*Coca-Cola Bottling Co. v. Coca-Cola Co.,
269 F. 796 (D. Del. 1920) .............................  17, 18

Coca-Cola Company v . Gemini Rising, Inc.,
346 F. Supp. 1183 (E.D.N.Y. 1972)...................... 30

Cases or authorities chiefly relied on are marked 
by asterisks.

IV



Cases: page

♦Continental Coatings Corp. v. Metco, Inc.,
464 F . 2d 1 375 (7th Cir. 1972) .........................  27

Matter of Council of Orthodox Rabbis, Inc.,
10 Misc. 2d 62, 171 N.Y.S.2d 664
(Sup. Ct. N.Y. Cty. 1958) ............................  40

♦Creswill v. Grand Lodge Knights of Pythias
of Georgia, 225 U.S. 246 ( 1 91 2) .......................  33

Croton Watch Co. v. Laughlin, 208 F .2d 93
(2d Cir. 1953) .........................................  16

Cuban Cigar Brands N.V. v. Upmann International,
Inc., 457 F. Supp. 1090 (S.D.N.Y. 1978)
aff »d mem. , 607 F.2d 995 (2d Cir. 1979) ........... 29

Matter of Daughters of Israel Orphan Aid Society,
Inc. , 125 Misc. 217, 210 N.Y.S. 541
(Sup. Ct. N.Y. Cty. 1925) ....................... ...... 39

Democratic Organization of County of Richmond 
v. Democratic Organization of County of 
Richmond, Inc~ 253 App. Div. 820,
1 N.Y.S.2d 349 (2d Dep't 1938) ........... 38

DFI Communications, Inc. v. Greenberg,
41 N.Y.2d 602, 394 N.Y.S.2d 583,
363 N . E. 2d 312 (1977) ........................ . 19

♦District of Columbia Court of Appeals v.
Feldman, ___U.S. ____ , 103 S. Ct. 1303 (1983) ........ 37, 40-41

♦Dwinell-Wright Co. v. White House Milk Co.,
132 F . 2d 822 (2d Cir. 1943) ................ . 16, 26

French Republic v. Saratoga Vichy Spring Co.,
191 U.S. 427 (1903) .......................... .........  32

♦General Electric Company v. Sciaky Brothers, Inc.,
304 F . 2d 724 (6th Cir . 1962) ................ .........  33-34

♦Matter of General Von Steuben Bund, Inc.,
159 Misc. 231, 287 N.Y.S. 527
(Sup. Ct. N.Y. Cty. 1936) .............................  39-40

v



Cases: Page
H. A. Friend & Company v. Friend & Company,

276 F. Supp. 707 (C.D. Cal. 1967), 
aff'd. , 416 F .2d 526 (9th Cir. 1969),
cert, denied, 397 U.S. 914 ( 1970) ..................... 30

*Haviland & Co. v. Johann Haviland China Corp.,
269 F. Supp. 928, (S.D.N.Y. 1967) ...... .............. 22, 26

Independent Nail & Packing Company v.
Stronghold Screw Products, 205 F.2d 921
(7th Cir.), cert, denied, 346 U.S. 886 (1953) ........ 30

James Burrough, Ltd. v. Sign of Beefeater, Inc.,
572 F . 2d 574 (7th Cir. 1978) ..........................  31

Kidd v. Johnson, 100 U.S. 617 ( 1 879) .................... 17
McLean v. Fleming, 96 U.S. 245 ( 1877) ..................  31-32
Menendez v. Holt, 128 U.S. 514 ( 1 8 8 8) ..................  31-32
*Montana v. United States, 440 U.S. 1 47 ( 1979) .......... 43
♦Mushroom Makers, Inc. v. R.G. Barry Corp.,

580 F .2d 44 (2d Cir. 1978),
cert, denied, 439 U.S. 1 1 16 ( 1979) .................... 48

NAACP v. Button, 371 U.S. 415 (1963) .................... 12, 51
NAACP Legal Defense and Educational Fund, Inc.

v. Campbell, 504 F. Supp. 1365 (D.D.C. 1981) ......... 12
Northcross v. Board of Education,

611 F . 2d 624 "(6th Cir. 1 979),
cert, denied, 447 U.S. 91 1 ( 1 980) ..................... 12

Owasco Club v. Kantor, 171 Misc. 960,
14 N.Y.S .2d 188 (Sup. Ct. N.Y. Co. 1939) .............  38

*Pflugh v. Eagle White Lead Co., 185 F. 769
(3d Cir.), cert, denied, 220 U.S. 615 (1911) ......... 25

Polaroid Corp. v. Polarad Electronics Corp.,
287 F .2d 492 (2d Cir.),
cert, denied, 368 U.S. 820 ( 1961 ) ..................... 29

vi



Cases: Page
Rudd v. Robinson, 126 N.Y. 113, 26 N.E. 1046 (1891) ___  20

♦Saratoga Vichy Spring Co. v. Lehman,
625 F . 2d 1037 (2d Cir. 1980) .......................... 29

♦Schaumberg v. Citizens for a Better Environment,
444 U.S. 620 ( 1980) .......................... .........  51

Schwartz v. Public Administrator, 24 N.Y.2d 65,
298 N.Y.S.2d 41 , 246 N.E.2d 725 ( 1969) ..............  41

Seven-Up Co. v. O-So-Grape Co., 283 F .2d 103
(7th Cir. 1960), cert, denied, 365 U.S. 869 ( 1961 ) ... 30

Shelton v. Tucker, 364 U.S. 479 ( 1960) .................  51
Souffront v. Compagnie des Sucreries,

217 U.S. 475 ( 1910) ....................................  43
Surgical Supply Service, Inc. v. Adler,

321 F . 2d 536 (3d Cir. 1963) ...........................  48
United Drug Company v. Rectanus, 248 U.S. 90 (1918) ___ 32-33
United States v. Diebold, Inc., 369 U.S. 654 (1962) ___ 49
Van't Veld v. Honeywell, Inc.,

440 F. Supp. 1020 (D.D.C. 1 977) ....................... 34
Watts v. Swiss Bank Corporation, 27 N.Y.2d 270,

317 N. Y. S. 2d 315, 265 N.E.2d 739 ( 1970) ..............  44

Statutes and Rules:
15 U.S.C. § 1065 .................................... '..... 22
15 U.S.C. § 1114(1) ....................................... 16
N.Y. Membership Corporations Law § 10 ................... 38-45
N.Y. Membership Corporations Law §§ 55, 56 .............  19
United States District Court for the

District of Columbia Rule 1-9(h) ...................... 7

VI 1



4 R. Callman, Unfair Competition Trademarks
and Monopolies § 97.3(a) (3d ed. 1970) ................ 22

9 W. Fletcher, Cyclopedia of the Law of Private
Corporations § 4633 (rev. perm ed. 1976) .............. 20

19 W. Fletcher, Cyclopedia of the Law of Private
Corporations § 8949 (rev. perm ed. 1975) .......... 21

Miscellaneous: Page

viii



UNITED STATES COURT OF APPEALS FOR 
THE DISTRICT OF COLUMBIA CIRCUIT

NO. 83-1719

NATIONAL ASSOCIATION FOR THE 
ADVANCEMENT OF COLORED PEOPLE,

Plaintiff-Appellee,
v.

N.A.A.C.P. LEGAL DEFENSE AND 
EDUCATIONAL FUND, INC.,

Defendant-Appellant.

BRIEF FOR APPELLANT 
N.A.A.C.P. LEGAL DEFENSE AND 

EDUCATIONAL FUND, INC.

PRELIMINARY STATEMENT

This is an appeal from a summary judgment depriving 
defendant N.A.A.C.P. Legal Defense and Educational Fund, Inc. 
("the Fund") of the right to use the name under which it has 
practiced law in the cause of civil rights for over 43 
years.

The facts are clear and simple:
More than four decades ago, plaintiff National

Association for the Advancement of Colored People ("the
■»

Association") caused the Fund to be incorporated and pro­
vided the Fund with its name, "N.A.A.C.P. Legal Defense and



2

Educational Fund, Inc." The Association, long known as "the 
N.A.A.C.P.," deliberately and explicitly endowed the Fund 
with the N.A.A.C.P. initials, and the initials became a part 
of the Fund's identity. No restriction on the use of the 
initials was suggested, no right was reserved. In no way did' 
the Association or any of its officials suggest that it might 
one day seek to erase the identity it had conferred.

The Fund gradually matured to be an independent 
organization, a full partner in the fight for racial justice. 
Sometimes together, sometimes-on different fronts, the Asso­
ciation and the Fund have advanced the cause of racial justice, 
each under a banner that includes the N.A.A.C.P. initials.

The Association is a membership organization; it 
furthers the cause through social, economic, political and 
lobbying activities carried out by its central staff and 
its numerous branches. One part of the Association's work 
focuses on legal action.

The Fund, in some contrast, is a civil rights 
organization which devotes its efforts to the legal repre­
sentation of victims of racial discrimination.

The initials serve both organizations as a vital 
symbol of the cause they further.

The Association allowed decades to elapse after 
the Fund's birth and independence without contesting the



3

Fund's right to use the initials. The Fund grew and thrived 
in the justified belief that its name was beyond dispute.

Now, after these long years of sharing the N.A.A.C.P. 
initials, the Association, in the present action, seeks to 
disown its namesake. Disregarding its unconditional grant 
and its silence of so many years, the Association here seeks 
to preclude the Fund from asserting the identity it has 
developed over more than four decades.

Both sides moved below for summary judgment. The 
district court (Jackson, J.) ..granted plaintiff's motion and 
entered judgment enjoining the Fund from using the initials 
N.A.A.C.P. as part of its name. The judgment will become 
effective six months following the conclusion of appellate 
proceedings.

QUESTIONS PRESENTED

1. Did the district court err in not granting 
summary judgment for the Fund, based on its defenses of 
consent, estoppel, laches and abandonment?

2. Did the district court err in not applying the 
doctrine of collateral estoppel to bar the Association's 
claim for relief?

3. Did the district court err in granting summary 
judgment for the Association even though the issue of con­
fusion presented a material issue of fact?



4

4. Did the district court invade the Fund's First 
Amendment rights by enjoining the Fund from identifying 
itself as "formerly the N.A.A.C.P. Legal Defense and Educa­
tional Fund, Inc."?

Statement Required by General Rule 8 (b)
These proceedings have not previously been before 

this Court, nor is any other case involving the Fund's use 
of the initials "N.A.A.C.P." pending in any other court.

Statement Required by General Rule 8(e)
This is an appeal from the March 28, 1983 deci­

sion and order of Judge Thomas Penfield Jackson, published 
at 559 F. Supp. 1337 (Rec. Exc. B), Judge Jackson's ruling 
on the Fund's motion for reconsideration set forth in the 
transcript of June 6 , 1983 (Rec. Exc. C), the order entered 
on June 6 , 1983 (Rec. Exc. D) and the judgment entered on 
June 6 , 1983 (Rec. Exc. F).

THE RECORD FACTS

In 1939, in order to establish a tax-exempt organi­
zation to provide legal representation to victims of racial 
discrimination, the Association caused the creation of a 
not-for-profit membership corporation under New York law, 
"N.A.A.C.P. Legal Defense and Educational Fund, Inc." The 
corporation was to have perpetual life.



5

The Original Consent
The Association's counsel, representing the Fund, 

was informed by the New York Secretary of State that the 
certificate of incorporation could be processed only if 
the Association consented to the Fund's use of the initials 
"N.A.A.C.P." (Zand Aff., U 3).* Accordingly, the Associa­
tion's directors passed this resolution:

WHEREAS, The following individuals —  Herbert H. 
Lehman, William Allan Neilson, Arthur B. Spingarn, 
William H. Hastie, Mary White Ovington, Charles E. 
Toney, Hubert T. Delany —  as Directors of the 
"N.A.A.C.P. Legal Defense and Education Fund,
Inc.," have requested permission of the National 
Association (for] the Advancement of Colored People 
to use the initials, "N.A.A.C.P.", in an.applica­
tion for a Certificate of Incorporation of the 
"N.A.A.C.P. Legal Defense and Educational Fund,
Inc."; therefore,
BE IT RESOLVED, That the Board of Directors of the 
National Association for the Advancement of Colored 
People grant permission for the use of the initials, 
"N.A.A.C.P." by the "N.A.A.C.P. Legal Defense and 
Education Fund, Inc." and authorize the President 
and Secretary to execute whatever papers might be 
necessary to carry out this resolution.

(Zand Aff., II 4; Rec. Exc. G)

This exhibit was submitted by the Fund on its motion 
for reconsideration. Although the motion was denied, 
the exhibit is properly before this Court because the 
motion was denied after consideration of the evidence 
presented, and upon the determination that the evidence 
"would not alter the inferences drawn by the Court from 
those undisputed facts previously made of record herein 
even if deemed to be true" (June 6, 1983 Order, Rec. 
Exc. D).



6

The resolution, it will be noted, conferred the 
right to use the initials unconditionally: it articulated
no time limit, and reserved no right of modification or 
revocation. There was no suggestion, at the board meeting 
or elsewhere, that the Association's consent was not of 
equal duration with the corporation which was to be created 
(Hammond Aff., 11 2).

Thereupon, the Association's counsel shepherded the 
application for incorporation through the three-stage process 
required under New York law. -First, a petition was submitted 
to the New York State Supreme Court (New York's court of 
general jurisdiction) for approval of the Fund's incorpora­
tion, and the necessary order was duly entered (Association 
Ex. 19, p. 52). The Appellate Division of the Supreme Court 
then entered an order authorizing the Fund to practice law, 
despite its corporate status (Association Ex. 19, p. 46; 
Nabrit Aff., April 13, 1983, Ex. 1). And, finally, the 
certificate of incorporation and the court orders were 
submitted to, and filed by, the Secretary of State (Nabrit 
Aff., April 13, 1983, Ex. 1).

The Fund was wholly created by the Association: 
all of the member-incorporators and first directors of the 
Fund were members of the Association's board, and it was the 
Association's counsel who represented the incorporators in



7

the judicial proceedings by which the Fund was_created (Zand 
Af f., 1M| 1, 2 and 6 ; Nabrit Aff.f April 13, 1983, Ex. 1).

And so the Fund came into existence on March 20,
1940.

The Organizations Separate
With the passing years, the Fund gradually moved 

toward independence of its parent. At first,’ the two had 
common directors, offices and staff: the Fund's sole indicia
of independence were that it paid for its use of office and 
telephone, and reimbursed the Association for the salaries 
of two employees. But in 1941, when the Fund began its own 
fund-raising, its board came to include members who were not 
directors of the Association. In 1943, the Fund hired its 
own public relations firm. In 1952, the Fund physically left 
the Association's premises and moved into its own offices 
some blocks away. By 1953, the Fund had its own separate 
annual budget of over $220,000 (Fund Rule 1 —9(h ) Statement,
1 6).*

* Since these statements were not objected to in the Asso­
ciation's Objections to the Fund Rule 1—9(h ) Statement, 
November 30, 1982, they must be taken as true:

[T]he court may assume that the facts as claimed by 
the moving party in his statement of material facts 
are admitted to exist except as and to the extent 
that such facts are controverted in a statement 
filed in opposition to the motion. District of 
Columbia Local Rule 1-9(h).



8

The year 1957 saw the culmination of this path to 
independence. The Treasury Department had challenged the 
Fund's tax-exempt status, objecting to the presence on the 
Fund's board of board members of the non-tax-exempt Associ­
ation, and to the fact that the Fund shared part of its name 
with the Association (Hammond Aff., 11 3) . In response to the 
Treasury's inquiry, the organizations decided that the Fund 
should retain its name but should sever all connections with 
the Association (][d.) . On May 16, 1957, the Fund's board 
adopted a resolution that "no person should be a Board 
Member, officer or employee of this corporation who is also a 
Board Member, officer or employee of the N.A.A.C.P." (Fund 
Rule 1-9(h) Statement, 11 7; admitted by the Association, see 
Association's Objections, 1[ 4).

The separation was as much an act of the Associa­
tion as of the Fund. At the time, more than half of the 
Fund's directors were directors also of the Association; in 
consequence, they could have barred adoption of the resolu­
tion of complete separation (Fund Rule 1-9(h) Statement, 1[ 7)

By September 1957, the separation was complete, and 
the Fund had become fully independent. The separation was 
reported to the Treasury Department, and the Treasury has 
never since challenged the Fund's tax-exempt status (Id.)..



9

The 1957 split was not merely organizational: 
since that time, while the Fund has often represented members 
and branches of the Association, it has also handled litiga­
tion for many others who have had no connection with the 
Association, including Dr. Martin Luther King, thousands of 
freedom marchers, and thousands of victims of school segre­
gation, employment discrimination and discriminatory appli­
cation of capital punishment laws (Greenberg Aff., April 11, 
1983, H 7).

The Association Complains —  
and Stops Complaining

In 1965, the Association established a tax-exempt 
Special Contribution Fund (Association Ex. 105), and for the 
first time the two organizations were competitors in raising 
funds. The Association board, apparently concerned about 
sharing the N.A.A.C.P. initials, adopted this resolution:

. . .  it was VOTED that the Inc. Fund [defendant] 
be approached by the Chairman of the Board, the Execu­
tive Director, the Treasurer, and the Chairman of the 
Special Contribution Fund for the purpose of request­
ing the Inc. Fund to voluntarily re-incorporate under 
a name that does not include NAACP; or to-bring— the- 
Inc. Fund back into Special Contribution Fund status; 
and, if they refuse to do so, the NAACP should go 
into court and enjoin them from use of the name NAACP. 
(Rec. Exc. I, emphasis added).

The Association's Executive Director, Roy Wilkins, 
conveyed this demand and threat of suit to the Fund. The



10

Fund rejected the demand, and the Association did not sue 
(Greenberg Aff., December 7, 1982, UK 3-4).

Thereupon, at its September 12, 1965 meeting, the
Association board explicitly withdrew the language of its
resolution threatening suit. The board minutes record:

The Executive Director reported that the Legal 
Committee has suggested that a phrase in the 
July 2, 1965, minutes [page 4], to wit: "and, if 
they refuse to do so, the NAACP should go into 
court and enjoin them from uSe~c>F' the name NAACP," 
be stricken from the minutes . . . .  [BJecause 
of the feeling of the Legal Committee that it was 
impolitic to have such a phrase on record and, 
additionally, that it would have no standing in 
court, it was voted unanimously, on motion by 
Mr. Alexander, duly seconded, that the phrase be 
stricken from the minutes . . . .  (Rec. Exc. J, 
emphasis added).

Mr. Wilkins thereupon told the Fund that the threatening 
language had been withdrawn (Greenberg Aff., December 7,
1982, 11 5).

Soon after, representatives of the two organiza­
tions met to discuss their relationship. One of the Associa­
tion people suggested that the Fund change its name, but, 
again, the Fund de’clined to do so and the Association did 
nothing (Greenberg Aff., December 7, 1982, UK 6-7).

And for the next twelve years, from 1966 through 
1978, neither the Association nor anyone else uttered 
one word of protest over the Fund's name (Greenberg Aff.,
December 7, 1982, U 8 ).



The Fund has taken appropriate steps to distinguish 
itself from the Association and to prevent any confusion 
between the two. At least since 1966, all of the Fund's 
official reports have borne a disclaimer of any relationship 
with the Association. The language currently employed on the 
Fund's stationery is:

The NAACP LEGAL 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 commitment to equal rights. LDF has had for over 
25 years a separate Board, program, staff, office and 
budget. (Fund Rule 1-9(h) Statement, 11 9; Robinson 
Aff., U 2; Greenberg Aff-., April 1 1 , 1983, 11 5)

The record in this case contains no suggestion that the
Association has- ever used a reciprocal disclaimer or taken
any other step to avoid confusion.

The Fund's Action in Reliance
While the Association was thus consenting to, and 

acquiescing in, the Fund's name, the Fund built a large 
organization and developed substantial reservoirs of good 
will under that name. Significantly, of the lengthy roster of 
reported cases in which- the-Fund has appeared since 1940, 
almost three-quarters are reported after 1966 (App. A).*’*

The Fund has filed with the Court only one copy of this 
lengthy appendix which simply lists all the reported 
cases found in the computer banks of Lexis and Westlaw 
handled by lawyers at the Fund and in which the Fund 
participated as amicus curiae.



12

The courts have repeatedly praised the Fund for the 
legal work it has done under this name. See, e.g., NAACP v. 
Button, 371 U.S. 415, 421-22 (1963); Bernard v. Gulf Oil Co., 
619 F.2d 459, 470 (5th Cir. 1980) (en banc), aff'd, 452 U.S. 
89 (1981); Northcross v. Board of Education, 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 P. Supp. 1365, 1368 (D.D.C. 1981).

Equally, the Fund has spent millions of dollars 
and years of effort in solici-ting gifts and recruiting legal 
talent in the name of the "N.A.A.C.P. Legal Defense and 
Educational Fund, Inc." (Fund Rule 1-9(h) Statement, 1[ 11; 
Nabrit Aff., August 2, 1982, 1hl 2-6; Robinson Aff., 1[1| 6-10).

Attempting to emulate the Fund's success, many 
other organizations have styled themselves as the "
Legal Defense and Educational Fund, Inc.," or some close 
variant. At least 13 such organizations exist today, their 
names virtually identical to the Fund's except for the 
N.A.A.C.P. initials (Fund Rule 1-9(h) Statement, 1[ 12; Nabrit 
Aff., August 2, 1982, 11 8 ) . In consequence, it is only the 
N.A.A.C.P. initials which distinguish the Fund from all its 
emulators.



13

The Association Complains
On December 29, 1978, after thirteen years of total 

silence since withdrawing its 1965 threat of suit, the Asso­
ciation sent a letter to the Fund claiming that some unspe­
cified confusion results from the concurrent use of the 
N.A.A.C.P. initials (Association Ex. 141, p. 261). Repre­
sentatives of the two organizations met to discuss the matter 
and, while the Fund pledged to cooperate fully in avoiding 
any confusion that might exist, it refused to give up its 
right to use its name (Fund Rule 1—9(h ) Statement, fl 13).

On June 28, 1979, the Association's board adopted 
a resolution purporting to "rescind its resolution of Octo­
ber 9, 1939, and revoke the permission granted to use the 
initials 'NAACP'" (Association Ex. 153, p. 282). There were 
sporadic attempts at resolving the controversy (See Associa­
tion Exs. 156-164).

Then, on January 26, 1982, the Association regis­
tered the N.A.A.C.P. initials with the United States Patent 
and Trademark Office (Complaint, Ex. A). Finally, on May 25, 
1982, the Association brought this suit.

Both sides moved for summary judgment, and the 
district court granted the Association's motion. The court 
then denied the Fund's motion for rehearing, and entered 
judgment requiring the Fund to change its name to one which 
does not indlude the initials "N.A.A.C.P."



14

SUMMARY OF ARGUMENT

The district court's June 6, 1983 order should be 
vacated and summary judgment should be entered in favor of 
the Fund dismissing the complaint.

In 1939, the Association gave its absolute and 
unlimited consent to the use of the initials by the Fund and 
that consent is binding today. In the four decades since 
the estabishment of the Fund, as the Fund gradually came into 
its own and earned the reputation it now enjoys, the Associ­
ation continually acquiesced in the Fund's use of the initials. 
In 1965, on the single occasion when the organizations came 
to an impasse over the Fund's growing independence, the Asso­
ciation threatened to sue the Fund over the Fund's use of the 
initials. That threat was promptly withdrawn by the Associ­
ation. For the next thirteen years, the Association uttered 
not a single word about the Fund's use of the initials. The 
Association's behavior, in the face of the continued growth 
and development of the Fund, bars this action by reason of 
estoppel and laches.

The 1939 application to the New York State Supreme 
Court for its approval of the Fund's certificate of incorpora­
tion instituted a judicial proceeding. Because the Associa­
tion pulled the laboring oar in that proceeding and because



15

the Fund's right to use its name was determined in that pro­
ceeding, the Association's claim here is barred by collateral 
estoppel.

The district court strayed far from the record and 
into the world of it-might-be-so in finding for the Associa­
tion on the issue of confusion. The record simply does not 
support a finding that there is legally cognizable confusion.

Even if the district court's decision is not 
vacated, the form of the court's order must be modified.
The Fund should be allowed to-use the phrase "formerly the 
N.A.A.C.P. Legal Defense and Educational Fund, Inc.” and the 
Association should be denied the opportunity to appropriate 
the Fund's name and, thus, the vast goodwill and well-earned 
reputation which inhere in the name "N.A.A.C.P. Legal Defense 
and Educational Fund, Inc."

I.
THE ORDER OF THE DISTRICT COURT 

SHOULD BE REVERSED AND 
SUMMARY JUDGMENT SHOULD BE ENTERED 
_______IN FAVOR OF THE FUND

On the undisputed facts which form the record 
here, we submit, the Fund is entitled to summary judgment 
dismissing the complaint, and the district court wrongly 
denied defendant that relief. A variety of familiar legal



16

and equitable doctrines is applicable, each of them fatal to 
the Association's position: consent, laches, estoppel and
abandonment.

Consent
On the significance of consent, the pertinent legal 

reasoning was voiced forty years ago by Chief Judge Learned 
Hand. In Dwinell-Wright Co. v. White House Milk Co., 132 
F.2d 822 (2d Cir. 1943), he carefully analyzed the law appli­
cable to the use by a latecomer of an earlier-established 
trademark, and said of the latecomer:

He must show some reason why it will not be just 
to stop him. That he may of course do, if he has 
acted upon the actual consent of the owner of the 
mark . . I 132 F.2d at 825 (emphasis added) .

In short, consent is consent. When it is given 
freely, deliberately and without limit, the act is conclusive 
on the donor.

The plain language of the Lanham Act also is perti­
nent; it creates civil liability for use of a registered 
mark only when it is "without the consent of the registrant," 
15 U.S.C. § 1114(1). Cf. Croton Watch Co. v. Laughlin, 208 
F.2d 93, 96 (2d Cir. 1953) (a contract between the trademark 
owner and the user's predecessor-in-interest allowing use 
of the mark with certain qualifying language controls, even 
though "it is possible that [the owner] only meant to sur­



17

render what it thought to be its right for a particular 
occasion.").

Closely in point is Coca-Cola Bottling Co. v. Coca- 
Cola Co., 269 F. 796 (D. Del. 1920). There, the parties' 
agreement provided that defendant "hereby grants to [plain­
tiff] the sole and exclusive right to use the name Coca-Cola" 
in a described territory, and plaintiff proceeded to build . 
an organization around that name. When defendant later 
contended that it had granted only a revocable "license," 
plaintiff sued. The court held:

[I]n the absence of words of limitation, and in 
light of the fact that the essential object and 
purpose of the contract was the building up of the 
bottling business at much expense adequately to 
meet the contractual provisions, I am unable to 
find any sound principle upon which to base a 
conclusion that the right so conveyed was other 
than an absolute and unlimited right . . . .
269 F. at 810-11.

Likewise here, the 1939 resolution "grant[ed]" 
defendant unlimited permission to use the initials, whereupon 
defendant expended over forty years of time and effort to 
build an organization under that .name. As in Coca-Cola, 
sound legal principles dictate that defendant's right to its 
name is "absolute and unlimited." Accord, Kidd v. Johnson, 
100 U.S. 617, 619 (1879) ("If the owner [of a trademark] 
imposes no limitation of . . . time [upon the right to use 
the trademark], the right to use is deemed perpetual.").



18

The court below saw Coca-Cola as inapposite because 
it arose in a commercial context (Rec. Exc. B, 559 F. Supp. 
at 1342-43). But no rule of law denies a not-for-profit 
organization the rights accorded to a commercial enterprise 
under the common law of trademarks and unfair competition. 
Moreover, the district court acknowledged that this case is, 
in significant measure, a dispute over fund-raising competi­
tion (Rec. Exc. B, 559 F. Supp. at- T'34'0-41 ) .

The district court attempted to support its ruling 
by saying that the 1939 resol-ution was "intended" to convey 
to the Fund only a "revocable" license to use the initials 
(Rec. Exc. B, 559 F. Supp. at 1343). With respect, this is 
neither a finding of fact nor a ruling of law: it is an
exercise in judicial mind-reading, utterly unsupported by any 
evidence in this record. The record facts are squarely to 
the contrary:

(a) at the Association board meeting which adopted 
the resolution, nothing was said about the consent being 
"revocable" or limited in any way; the record makes it 
plain that the consent was absolutely unconditional 
(Hammond Aff., 11 2; Zand Af f., 1[1( 4 and 5);

(b) the 1939 resolution was adopted to satisfy the 
requirement by the New York Secretary of State that the 
Association consent to the Fund's use of the initials



19

(Zand Aff., 1f 3) —  a revocable consent would scarcely 
have satisfied this requirement when the relevant New 
York law conferred perpetual life on a membership cor­
poration such as the Fund (see N.Y. Membership Corpora­
tions Law, § 55 (1934) (amended 1952) and § 56 (1933) 
(amended 1948);

(c) nowhere in the thousands of pages of exhibits 
proffered here by the Association is there any sugges­
tion that the grant was in any way limited or revocable.

The court below attempted to buttress its conclu­
sion by pointing to "the language and circumstances" of the 
1939 Association resolution. The court held four factors 
important:

(a) "the resolution is found in the minutes of a 
board of directors' meeting, a document whose primary func­
tion is to record the proceedings of the governing body 
of the organization and not to constitute the definitive 
expression of the action being authorized" (Rec. Exc. B, 559 
F. Supp. at 1343). The court cites no authority for this 
unusual concept of corporate minutes; under New York law 
the text of a resolution is of critical significance. DFI 
Communications,Inc. v. Greenberg, 41 N.Y.2d 602, 607, 394 
N.Y.S. 3d 583, 363 N.E. 312 (holding that a resolution 
contained in the minutes of a meeting of a corporate board



20

of directors which recite that the board has agreed to modify 
a corporate contract may be deemed to satisfy the strict 
requirements of the General Obligations Law regarding written 
instruments because "[g]enerally, such minutes are prima 
facie evidence of action taken by the corporation."); 9 W. 
Fletcher, Cyclopedia of the Law of Private Corporations 
§ 4633 at 515 (rev. perm. ed. 1976) ("As to matters recorded 
in the minutes, the records are the best evidence of action 
at a particular meeting."). See Rudd v. Robinson, 126 N.Y. 
113, 117-118, 26 N.E. 1046 (1-391) ("The books of corporations 
. . . are received in evidence generally to prove corporate 
acts of a corporation such as . . . the formal proceedings of 
its board of directors.");

(b) the word "grant," said the court below, "can­
not be presumed to have had the same precise meaning for the 
secretary who took the resolution down as it would for the 
draftsman of, for example, a conveyance of land" (Rec., Exc. 
B, 559 F. Supp. at 1343). Again, however, the court reveals 
its unusual conception of normal corporate procedures: when, 
as here, the Secretary of State of New York demands a reso­
lution of corporate consent as a condition of allowing incor­
poration, no layman secretary "takes down" the text of the 
resolution at a meeting; it is drafted in advance by counsel 
and approved by the board —  just as no one "takes down" a



21

check-signing resolution required by a bank; the language is 
carefully decided upon in advance. 19 W. ,Fletcher, Cyclopedia 
of the Law of Private Corporations, § 8949 at 133 (rev. perm, 
ed. 1975) ("The proper framing of an important resolution is 
a matter that cannot ordinarily-be left to the director who 
offers the same, but is a task for an attorney, preferably 
an experienced attorney. Ordinarily, the resolution will be 
framed by the attorney in advance of the meeting . . .").
See, e.g., Association Ex. 15;

(c) the court said that "the resolution grants 
permission —  not the right —  to use the initials, a usage 
which in common parlance implies something of lesser order of 
finality and which can ordinarily be withdrawn" (Rec. Exc. B, 
559 F. Supp. at 1343). This argument, however, ignores the 
context: a corporation was being created to have perpetual
life under a particular name, and the consent of an existing 
corporation to the use of that name was required by the New 
York authorities. It defies reason, we submit, to imagine 
that a grant with a string on it —  revocable at any time —  

would have sufficed;
__ (d) Finally, the district court quite explicitly
engaged in speculating on what-might-have-beerv*. It said of . 
the Association's board: "Had they envisioned the LDF [the
Fund] in years hence as a potential competitor for contribu­
tions, not to mention acclaim, they would have been less



22

generous with their symbol" (Rec. Exc. B, 559 F. Supp. at 
1343). To this, the only possible response is this: what- 
might-have-been is irrelevant here. What counts is what was 
done. And what was done was the giving of unlimited, abso­
lute consent.

Finally, on the issue of consent, we should per­
haps note that the Association's belated registration of the 
N.A.A.C.P. initials as a trademark does not undo its prior 
consent: registration creates no new right against a known
concurrent user of a mark. In Haviland & Co. v. Johann 
Haviland China Corp., 269 F. Supp. 928, 936 (S.D.N.Y. 1967), 
the court rejected plaintiff's attempt to use its belated 
registration mark as a basis for challenging a long-condoned 
concurrent use:

The concurrent use of this mark for many years was 
a matter of common knowledge; and so far as the 
defendant . . . was concerned, plaintiff's registra­
tion has no effect upon the status quo ante. Id. 
at 936.

See also 15 O.S.C. § 1065; 4 R. Callmann, Unfair Competition 
Trademarks and Monopolies § 97.3(a), at 586-87_(3d ed. 1970) 
("Registration does not perfect a trademark right . . .  at 
the outset it does not grant any greater right than that 
which would be recognized at common law without registration 
. . . The right to the mark arises out of, and is solidified 
by, the principles of common law only.").



23

Acquiescence and Estoppel
Consent is but the first legal doctrine fatal to 

the Association's position here. Next there is the estoppel 
arising from the Association's long acquiescence in the 
Fund's use of the initials.

The Association admitted below that "[b]y September 
1957, this separation [of the Fund from the Association] was 
complete" (Fund Rule 1-9(h) Statement, 11 7 and Association's 
Objections, K 4). Thus, at least since 1957 the Association 
has acquiesced in the Fund's_use of the initials despite the 
Fund's complete independence from the Association.

Not only did the Association acquiesce in the -use 
of the initials, but it did so with full awareness that it 
was acquiescing and of the legal significance of that acqui­
escence. A 1961 document from the Association's files prof­
fered as an exhibit by the Association (Ex. 4; Rec. Exc. H), 
stands as an admission of this point. This document charac­
terizes the Fund as "a controlled subsidiary until 1956," and 
describes the events of 1957 as having "drastically altered 
the relationship of the Fund to the N.A.A.C.P. The Fund was 
no longer an N.A.A.C.P. instrument . . . "  (Rec. Exc. H, 
pp. 5-6, emphasis added). The document concludes: "The
right of the Fund to continue to use the name was approved,



24

at least by inference and certainly through acquiescence 
since 1957" (Rec. Exc. H, p. 5, emphasis added).

The author of this remarkable document is not iden­
tified in this record. From its phraseology, it was written 
by a lawyer, almost certainly a legal advisor to the Associ­
ation. But the burden of explanation is not on defendant.
The document came from the Association's files and was 
sponsored here by the Association —  and the Association 
has offered no other evidence to undercut the document's 
significance.

Estoppel
The facts here are that, from 1939 through 1957, 

while the Association had diminishing control over the Fund, 
it acquiesced in the Fund's use of the initials. In 1957, 
the Fund became completely independent and the acquiescence 
continued until 1965, when the Association made and then 
promptly withdrew a threat of suit. For thirteen years 
thereafter, the Association said nothing to the Fund about 
the initials. It was only in December 1978 that the events 
leading to this suit began: the Association wrote a letter
of complaint, it adopted a resolution, there were fruitless 
settlement discussions and, in 1982, this suit was filed.

During these years of acquiescence, the Fund grew 
to be an organization of extraordinary consequence, having a



25

staff of 24 lawyers and an annual budget of over $5 million 
(Nabrit Aff., August 2, 1982, UU 3 and 5). Since 1966, it 
has participated in over 1,300 reported federal cases —  all 
under the name beginning "N.A.A.C.P." (App. A).

A long line of cases supports a determination that 
the Association's years of acquiescence in this use of the 
name create an estoppel. In Anheuser-Busch, Inc, v. Du Bois 
Brewing Co., 175 F.2d 370 (3d Cir. 1949), cert, denied, 339 
U.S. 934 (1950). There, plaintiff, the brewer of "Budweiser" 
beer, filed suit to prevent defendant from selling beer under 
a similar label;, 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 discon­
tinuance of the suit, together with the absence of further 
protest, "amounted to at least an acquiescence in the use of 
the word [Budweiser] by [defendant]." I<3. at 375. The court 
warned that if the plaintiff "did not want to lull [defendant] 
into a false sense of security," it "should have followed up 
the discontinuance of the suit with some unambiguous action 
asserting its claim." Id.

Pflugh v. Eagle White Lead Co., 185 F. 769 (3d Cir.)
■»

cert, denied, 220 U.S. 615 (1911), is closely comparable to 
the facts at bar. There, plaintiff wrote a letter asserting



26

its exclusive right to a mark, but defendant rejected plain­
tiff's claim. Eight years later, plaintiff again asserted 
its exclusive right and defendant again disagreed. Finally, 
six more years thereafter, plaintiff filed suit. The Court 
of Appeals held that plaintiff, by its fourteen years of 
inaction, had acquiesced in defendant's use of the mark 
and was estopped to challenge it. _I<1* at 772-73. Accord, 
Ambrosia Chocolate Co. v. Ambrosia~Cake Bakery, Inc., 165 
F.2d 693, 695 (4th Cir. 1947), cert, denied, 333 U.S. 882 
(1948) (owner is estopped from challenging use by latecomer 
where defendant had used mark for eight years with plain­
tiff's knowledge and plaintiff had encouraged defendant's 
growth by suggesting it use plaintiff's product in the manu­
facture of goods under the contested name); Dwinnell-Wright 
Co. v. White House Milk Co., 132 F.2d 822, 825 (2d Cir. 1943) 
(owner is estopped from challenging use by late-comer where 
defendant had used mark for 16 years with owner's knowledge 
and owner did not challenge use but instead encouraged the 
defendant); Haviland & Co. v. Johann Haviland China Corp.,
269 F. Supp. 928, 955 (S.D.N.Y. 1967) (owner is estopped from 
challenging latecomer's use of the mark where owner had been 
aware of and did not challenge use for 30 years and took no 
action other than making sporadic complaints which were never 
pursued) .



27

Estoppel is especially appropriate here in light
of the Association's made-and-withdrawn threat to sue in

r 1965, and its 13 ensuing years of silence. In Continental
Coating Corp. v. Metco, Inc., 464 F.2d 1375 (7th Cir. 1972),
a patent infringement suit applying trademark principles,
then-judge (now Justice) Stevens sustained summary judgment
for defendant based on an estoppel defense on facts closely
akin to the case at bar. The patentee there, after several

, years of negotiations, threatened suit by sending notices of
infringement, which defendant^ in turn rejected. Four years
later plaintiff sued for infringement (id. at 1377). In

, upholding an estoppel defense, Judge Stevens explained:
[I]t is appropriate to identify explicitly the fact 
we consider critical. That fact is the infringe­
ment notice threatening prompt and vigorous enforce­
ment of the patent, which was then followed by a 

( period of unreasonable and unexcused delay. Having
made such a threat, the patentee was thereafter 
estopped . . . .  Ici. at 1380.

Accord, e.g., Advanced Hydraulic, Inc, v. Otis Elevator Co.,
I 525 F.2d 477, 481 (7th Cir.), cert, denied, 423 U.S. 869

(1975) (estoppel based on a-five-year delay between threat 
and filing of suit).

v. Here, as we have seen, the Association remained

silent not for three but for nearly thirteen full years after 
explicitly threatening suit. Moreover, while the plaintiff

L



28

in Continental merely failed to act on its threatened suit, 
here the Association explicitly withdrew its threat.

In rejecting the defense of estoppel, the court 
below totally misstated the law. The court said that 
"Estoppel . . . entails a misleading' affirmative showing on ' 
the part of the party to be estopped . . . "  (Rec. Exc. B,
559 F. Supp. at 1343). Finding no "misleading affirmative 
showing," the court concluded there could be no estoppel.
But this is plainly wrong. In all of the cases which we have 
just cited, it was years of silence, not any "misleading 
affirmative showing" that created the estoppel.

The court sought to buttress its conclusion by 
saying "Indeed, the LDF [the Fund] has, since the mid-1960's, 
anticipated the possibility that it might eventually have to 
disassociate itself altogether from plaintiff by including 
a disclaimer of any present relationship in its stationery" 
(Rec. Exc. B, 559 F. Supp. at 1343-44). This totally mis­
reads the record. The plain and undisputed record is that 
the Fund adopted the disclaimer in a wholly appropriate 
effort to avoid confusion —  not because anyone at the Fund 
"anticipated" anything (Greenberg Aff., April 1 1 , 1983, 11 5).



29

Laches

The Association is barred also by its laches. The 
Second Circuit recently had occasion to sustain a laches 
defense against a claim of trademark infringement in Saratoga 
Vichy Spring Co. v. Lehman, 625 F.2d 1037 (2d Cir. 1980). -In 
affirming the lower court's grant of summary judgment dismis­
sing the complaint, the Second Circuit explained the laches 
defense as follows:

Defendant's proof in its laches defense must show 
that p la in t iff had knowledge of defendant's use of 
its  mark, that p la in tiff- inexcusably delayed in tak­
ing action with respect thereto, and that defendant 
w ill be prejudiced by permitting p la in t iff inequitably 
to assert its rights at this time.

Id. at 1040 (quoting Cuban Cigar Brands, N.V. v. Opmann Inter­
national, Inc., 457 F. Supp. 1090, 1096 (S.D.N.Y. 1978), aff'd 
mem., 607 F.2d 995 (2d Cir. 1979)). The court held that the 
plaintiff, who had known of the defendant's plans to revive 
its operations under a common name but had waited seven years 
to contest those plans, was barred by its laches from proceed­
ing with the suit. Id. at 1041-42. Accord, Polaroid Corp. 
v. Polarad Electronics Corp., 287"F.2d 492 (2d Cir.), cert. 
denied, 368 U.S. 820 (1961), (owner's action for infringement 
against latecomer is barred where owner delayed eleven years 
in bringing suit and, during those eleven years, defendant 
grew from a fledgling company to an established and profit­



30

able corporation); Seven-Up Co. v. O-So-Grape, 283 F.2d 103, 
105-06 (7th Cir. 1960), cert, denied, 365 U.S. 869 (1961) 
(injunctive relief barred when trademark plaintiff filed suit 
thirteen years after voluntarily dismissing similar suit).

While it is true, as the district court states, 
that courts frequently tolerate delay in bringing trademark 
infringement cases (Rec. Exc. B, 559 F. Supp. at 1344), no 
court has tolerated a delay of 43 years or even thirteen 
years where the alleged owner has been on notice of the use 
for the entire period and has-misled the user (as by making 
and withdrawing a threat of suit and then lapsing into 13 
more years of silence) into the belief that it acquiesced in 
the use.

Surely the cases cited by the District Court do not 
support tolerance of the egregious delay which characterizes 
the instant case. See Independent Nail & Packing Company v. 
Stronghold Screw Products, 205 F.2d 921 (7th Cir.), cert. 
denied, 346 U.S. 886 (1953) (two-year delay after owner 
received notification of the use inadequate for laches); 
Coca-Cola Company v. Gemini Rising, Inc., 346 F. Supp. 1183, 
1192 (E.D.N.Y. 1972) (delay of ten to fifteen months pending 
negotiations does not amount to laches); H.A. Friend and 
Company v. Friend and Company, 276 F. Supp. 707, 716 (C.D.
Cal. 1967), aff'd, 416 F.2d 526 (9th Cir. 1969), cert, denied,



31

397 U.S. 914 (1970) (laches not sustained where father delayed 
two years after notice of use and prior to his death and sons 
delayed one year after notice to send a demand for discontin­
uance and one and a half years thereafter before filing 
suit); James Burrough, Ltd, v. Sign of Beefeater, Inc./ 572 
F.2d 574 (7th Cir. 1978) (delay of seven years between notice 
of objection to use and filing of suit amounts to laches but 
not estoppel because only prejudice to the defendant occurred 
after suit filed); Blaw-Knox Company v. Siegerist, 300 F.
Supp. 507, 514-515 (E.D. Mo. J968), aff'd, 414 F.2d 375 (8th 
Cir. 1969) (deliberate overreaching under written license 
agreement cannot be defended against on the ground of laches 
where-plaintiff was actually negotiating with defendant dur­
ing -the 11 years plaintiff was on notice of infringement).

The court below cites Menendez v. Holt, 128 U.S.
514 (1888), and McLean v. Fleming, 96 U.S. 245 (1877) for 
the proposition that: "While it occasionally bars an award
of damages, laches is rarely found a sufficient bar to an 
injunction in trademark actions." (Rec. Exc. B, 559 F. Supp. 
at— 1344) But soon after these decisions, the Supreme-Court 
explicitly made laches available as an equitable defense 
barring injunctive relief in trademark cases. Let us quickly 
trace the development of the law:



32

In McLean, the Supreme Court refused to allow 
laches to bar an injunction against the latecomer where plain­
tiff had delayed twenty years in attempting to enforce his 
right against defendant who had used a mark calculated to 
deceive purchasers. The Court observed that

[ejquity courts will not, in general, refuse an 
injunction on account of delay in seeking relief, 
where the proof of infringement is clear . . . .
96 U.S. at 253 (emphasis added).

Eleven years later, in Menendez, the court invoked McLean to
deny a laches defense against injunctive relief where the
infringement constituted a fraud. 128 U.S. at 523.

But it soon became clear that the Court did not 
intend to allow Menendez and McLean to operate as a blanket 
prohibition against laches defenses to injunctive relief in 
infringement cases. In French Republic v. Saratoga Vichy 
Spring Co., 191 U.S. 427 (1903), the court said that, where 
plaintiff had delayed 25 years in asserting its rights 
under the mark, "[a] clearer case of laches could hardly 
exist." 191 U.S. at 437. Holding the rulings in McLean and 
Menendez limited to situations of actual fraud or intent to 
deceive, the court sustained the laches defense as a bar to 
injunctive relief. Accord, United Drug Company v. Rectanus, 
248 U.S. 90, 102-103 (1918), (the McLean and Menendez rule



33

"finds appropriate application in cases of conscious infringe­
ment or fraudulent imitation," but does not stand otherwise 
as a bar to the operation of a laches defense).

The Supreme Court on two occasions has sustained 
laches defenses on facts that closely parallel the instant 
dispute. In Ancient Egyptian Arabic Order of Nobles of the 
Mystic Shrine v. Michaux, 279 U.S. 737 (1929), and Creswill 
v. Grand Lodge Knights of Pythias of Ga., 225 U.S. 246 
(1912), 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 prospered, 
suddenly sought to enjoin the black associations from con­
tinuing to use their names. The Supreme Court held tnat 
the years of inaction by the white organizations, and their 
seeming acquiesence, amounted to laches, which barred their 
injunctive efforts. Michaux, supra, 279 U.S. at 747-49; 
Creswill, supra, 225 U.S. at 262-63.

In General Electric Company v. Sciaky Brothers,
Inc., 304 F. 2d 724, 727 (6th Cir. 1962), a case very analo­
gous to the case at bar, the court found that, where the
owner was on notice of the infringement for ten years, laches

•»

would bar injunctive relief. The court held that the ruling 
in Menendez does not apply where the facts demonstrate more



34

than mere inaction on the part of the owner. The court held 
that the fact that the plaintiff had unsuccessfully attempted 
to arrange a cross-licensing agreement and then remained 
silent on the issue for seven years was sufficient to sustain 
the defenses of laches and estoppel. Accord, Van't Veld v. 
Honeywell, Inc., 440 F. Supp. 1020 (D.D.C. 1977) (where plain­
tiff unsuccessfully sought to interest defendant in a license 
and then delayed seven years, during-which time plaintiff 
should have known defendant was engaging in the alleged 
infringement, laches would bar injunctive relief).

In the case at hand, the Association knew of the 
Fund's name but stood passively by for years and, indeed, 
decades, while defendant built its organization and estab­
lished its identity. The Association's laches prevent it 
from abruptly ignoring its years of silence.

Injury to the Fund
Both laches and estoppel require a showing of 

prejudice to the party advancing the defense. The district 
court held that the Fund could not claim prejudice because 
"It has known for years that a reckoning could come at any 
time and elected to take its chance that the N.A.A.C.P. 
would not force the issue to the point of litigation" (Rec. 
Exc. B, 559 F. Supp. at 1344).



35

But this can be said of any second user of a trade­
mark who knows of the existence of the mark —  the second 
user can always be said to know "that a reckoning could come 
at any time" and it can always be said that it "elected to 
take its chance." The cases make it clear that this imputed 
gambling does not affect the result —  the defenses will be 
sustained if there is acquiescence or laches, coupled with 
prejudice. Here, acquiescence and laches are clear beyond 
doubt —  and so is the prejudice which the Fund would suffer 
were it forced to change its„name.

First, there is the use of the name in fund-raising. 
The affidavit of James R. Robinson recites that the Fund 
raises a significant portion of its annual needs by direct- 
mail solicitation. And there is a great difference, Mr. 
Robinson's evidence demonstrates, between the response to a 
solicitation from a familiar name, such as the Fund's, and 
the response to a totally strange solicitation: first-time
solicitations from unfamiliar organizations get only a one- 
half to one percent positive response, while renewal mailings 
produce success at the rate of forty-five percent annually.
For the Fund, the loss of its name would transform renewal 
mailings into first-time solicitations, with terrible effect 
on its revenues and hence on its ability to perform its 
public services (Robinson Aff. at HH 5-8).



36

Equally, the Fund's effectiveness as an advocate 
will be substantially impaired if it cannot continue to 
practice law in the name under which it has developed its 
reputation. This reputation not only enhances the Fund's 
effectiveness with the courts —  it is no overstatement that 
its name is known in most of the federal courthouses of the 
nation —  but this reputation is the basis on which the Fund 
has regularly been allowed to participate in cases as an 
amicus. Name recognition is also the key to the Fund's 
ability to attract top legal -talent, and it is equally essen­
tial in attracting clients (Nabrit Aff., August 2, 1982,
1111 6 and 7).

The plethora of other organizations which have 
sprung up since 1966 operating under names which include the 
phrase "Legal Defense Fund" compounds the name change problem 
for the Fund.

These various harms will be felt not only by the 
Fund as an organization, but also by the black community 
which will suffer the loss of the full effectiveness of 
representation by the Fund (Greenberg Aff., April 11, 1983,
1111 8-9; Nabrit Aff., August 2, 1982, at 1111 3-9).

Finally, in the years since the Association 
threatened suit in 1965, the Fund has appeared in over 1300 
cases under its established name. No other organization has



37

had so extensive a litiga tion  docket. To lose the reputation 

gained in these battles would be s t i l l  additional injury.

These facts clearly satisfy the requirement that 

the proponent of the defenses of laches and estoppel demon­

strate prejudice by the passage of time in its ab ility  to 

recast its identity.

II.
THE DISTRICT COURT ERRED IN NOT APPLYING 

COLLATERAL ESTOPPEL TO BAR THE 
ASSOCIATION'S CLAIM FOR RELIEF

The Association's infringement claim here" is based 
on its position that, in creating the Fund, it retained for 
itself the right to control the use of the initials. But, 
in a judicial proceeding before the New York State Supreme 
Court in 1939, the Association relinquished that right.
Under New York law and the standards announced in D istrict

of Columbia Court of Appeals v. Feldman, __ U.S. __,

103 S. Ct. 1303, 75 L. Ed. 2d 206 (1983), the 1939 approval 
by a New York court of the Fund's use of the initials consti­
tutes an adjudication on the merits of this issue and, since 
the Association financed and directed that proceeding, the 
Association is barred by collateral estoppel from contesting 
that issue now.



38

The 1939 Judicial Proceeding
In 1939, New York law required an organization 

seeking incorporation as a membership corporation to make 
application to and receive the approval of the New York 
State Supreme Court. Section 10 of the New York Membership 
Corporations Law ("Section 10") provided in relevant part:

Every certificate of incorporation filed under 
this chapter shall have endorsed thereon or annexed 
thereto the approval of a justice of the supreme 
court . . . .  The justice to whom such certificate 
is presented for approval may, in his discretion, 
withhold such approval if the name of the proposed 
corporation includes all-or part of the name of a 
living person* who has not executed such certifi­
cate and whose right to the proper use of such name 
should be protected or if it includes a name so 
nearly resembling the name of such a person as to 
be likely to deceive or cause confusion or such 
justice may, as a condition precedent to his 
approval of such certificate, require the consent 
to the use of the name of such person duly acknowl­
edged by such person, to be annexed to or indorsed 
on such certificate.

The Supreme Court has recently ruled that, where 
the state court rendering judgment would give its ruling a 
preclusive effect, federal courts —  even in federal question

The "living person" provision of section 10 had been 
construed to include corporate and other associational 
entities. See, e.g ., Democratic Organization of County 
of Richmond v. Democratic Organization of County of Rich­
mond, IncT7 253 App. Div. 820, 820-21, 1 N.Y.S.2a 349, “
351 (2d Dept. 1938); Owasco Club v. Kantor, 171 Misc.
960, 961, 14 N.Y.S.2d 188, 189 (N.Y. Co. 1939).



39

cases —  must give the judgment the same effect. Allen v. 
McCurry, 449 D.S. 90, 95-96 (1980).

It has long been settled under New York law that 
the action of a State Supreme Court Justice in passing upon 
an application for incorporation under Section 10 is a 
judicial, not a ministerial, act. Matter of Daughters of 
Israel Orphan Aid Society, Inc., 125 Misc. 217, 219 (Sup. Ct. 
N.Y. Cty. 1925) ("[T]he written approval referred to [in 
Section 10] is . .-. a determination that is more than 
ministerial and not a mere duplication of the function of 
the Secretary of State.").

In Matter of General Von Steuben Bund, Inc., 159 
Misc. 231 (Sup. Ct. N.Y. Cty. 1936), the court had occasion 
to consider the application of the named organization for 
incorporation under Section 10. Holding that "it is the duty 
of the justice to act more than as a ministerial officer in 
meeting the requirements of the statute," the court consid­
ered the problem created by the fact that an unincorporated 
association named "Steuben Society of America" had been in 
existence since 1919. The court disapproved the application 
stating

Considerable opportunity might arise, to the 
detriment of the existing Steuben Society, in 
confounding the mixed activities of the proposed 
corporation with those of the society of long 
existence. If the two names were connected with



40

commercial enterprises, I have no doubt that the 
certificate would be refused for filing because 
of the possible confusion of names. 159 Misc. 
at 235.

See, Matter of Council of Orthodox Rabbis, Inc., 10 Misc. 2d 
62, 63 (Sup. Ct. N.Y. Cty. 1958) (disapproving the application 
of the named organization under Section 10 because, inter 
alia, it "might easily be confused with the well-recognized 
and long-established Rabbinical Council of America.").

Under New York law, then, not only is the applica­
tion to the court under Section 10 a judicial proceeding, but 
the proposed name of the applicant is a subject of judicial 
consideration. And, specifically, the issue of confusion of 
the name of the applicant with an existing corporation was an 
issue subject to careful judicial scrutiny at the time the 
Fund's application was filed. See, General Von Steuben Bund, 
supra.

Federal law is not different from New York's. In

District of Columbia Court of Appeals v. Feldman, ___ U.S.
____ , 103 S .Ct.1303, 75 L.Ed.2d 206(1983), the Supreme Court
ruled that a proceeding is "judicial" if a court, rather than 
engaging in prospective rule making or a mere ministerial 
act, is "called upon to investigate, declare, and enforce 
'liabilities at they [stood] on present or past facts and 
under law supposed already to exist.'" 51 U.S.L.W. at 4290



41

(citation omitted). Applying this standard, the Court held 
that, when a court reviews whether the qualifications and 
background of a candidate meet the standards for admission 
to the bar, it has engaged in a "judicial" proceeding (id.). 
Similarly, here, the New York Supreme Court's review of 
whether the Fund's certificate of incorporation accorded with 
the requirements of Section 10 meets the Feldman standards of 
a "judicial" proceeding.

Thus, having had the opportunity to litigate the 
issue of the Fund's use of the initials in 1939, the Associa­
tion would be precluded from raising that issue in a New York 
court today.

New York Law has now reached the point where there 
are but two necessary requirements for the invocation 
of the doctrine of collateral estoppel. There must 
be an identity of issue which has necessarily been 
decided in the prior action and is decisive of the 
present action, and, second, there must have been a 
full and fair opportunity to contest the decision now 
said to be controlling. Schwartz v. Public Adminis­
trator, 24 N.Y.2d 65, 71, 298 N.Y.S.2d 41, 246 N.E.2d 
725 (1969)

See, Chisolm-Ryder Company, Inc, v. Sommer & Sommer, 78 
App. Div.2d 143, 434 N.Y.S.2d 70, 72 (4th Dep't 1980)
(" [collateral estoppel precludes a party from relitigating 
issues which were previously determined even though the prior 
suit involved a separate cause of action or a different 
adversary . . . [Collateral estoppel] will . . . foreclose 
issues which were necessarily decided, litigated or not.")



42

Under the principle announced in Allen/ supra, the court here 
should have given the 1939 ruling the same preclusive effect.

The Association Is Bound 
By The 1939 Adjudication

The Association was the controlling force behind 
each of the proceedings before the New York state courts: 
all of the Fund's first directors were members of the Asso­
ciation's board; its president, Arthur' Spirigarn, appeared 
before the Appellate Division as one of the subscribers to 
the Fund's certificate of incorporation and also as counsel 
-to the Fund (Association Ex. 19, p. 46; Nabrit Aff., April 13, 
1983, Ex. 1); and Mr. Spingarn's law associate, Herman Zand, 
filed the petition in Supreme Court (Ex. 19, p. 52).

The Association could have objected to the Fund's 
use of the initials before the New York State Supreme Court 
justice when the certificate of incorporation was submitted 
—  as we have seen, he had discretion under Section 10 to 
reject the Fund's name unless the Association gave its 
consent to the use of the initials. Instead, the Association 
uttered not a word of objection to the use of the initials.

The fact that the Association was not a formal 
party to the New York state court proceedings will not 
suffice to allow the Association to relitigate this issue.
For, if not a party in name, the Association certainly pulled



43

the laboring oar in those proceedings and thus its attempt to 
relitigate the issue is barred by collateral estoppel:

Under collateral estoppel, once an issue is 
actually and necessarily determined by a court of 
competent jurisdiction, that determination is con­
clusive in subsequent suits based on a different 
cause of action involving a party to the prior 
litigation . . . .

These interests [of judicial efficiency and 
finality] are similarly implicated when non-parties 
assume control over litigation in which they have 
a direct financial or proprietary interest and then 
seek to redetermine issues previously resolved. As 
this Court observed in Souffront v. Compagnie des 
Sucreries, 217 U.S. 475, 486-487 (1910), the persons 
for whose benefit and at_whose direction a cause of 
action is litigated cannot be said to be "strangers 
to the cause. . . . [0]ne who prosecutes or defends
a suit in the name of another to establish and 
protect his own right, or who assists in the prose­
cution or defense of an action in aid of some inter­
est of his own . . .  is as much bound . . .  as he 
would be if he had been a party to the record."
. . . Preclusion of such nonparties falls under 
the rubric of collateral estoppel rather than res 
judicata because the latter doctrine presupposes 
identity between causes of action. Montana v.
United States, 440 U.S. 147, 153-54 (1979) (cita- 
tions omitted).

Having hired the lawyer who made the application and having 
guided the processing of that application (Zand Aff., 1MI 2-6), 
in a proceeding in which the Association had a proprietary 
interest of its own at stake, the Association is now collat­
erally estopped from relitigating the issue of consent.

New York follows the general rule of collateral 
estoppel. Under New York law, control of a lawsuit binds 
one who was not technically a party to that lawsuit where



44

it can be said that that person has had a full opportunity to 
litigate a particular issue. Watts v. Swiss Bank Corporation, 
27 N.Y.2d 270, 317 N.Y.S.2d 315, 265 N.E.2d 739 (1970).

The Association's Remedy
The only remedy which the Association may lawfully 

have, we submit, is the remedy which was once afforded by the 
same Section 10 of the Membership Corporations Law. The 
statute continued, after the portion which we have quoted 
above:

Notwithstanding the approval by a justice of the 
supreme court of a certificate of incorporation of a 
corporation, the name of which includes all or part 
of the name of a living person who has not executed 
such certificate and whose consent to the use thereof 
is not annexed to or indorsed upon such certificate 
such person or someone in his behalf may, at any time, 
upon such notice to such parties as the supreme court 
or a justice thereof shall direct, make an applica­
tion for an order expunging such certificate of 
incorporation from the records in the department of 
state, and if the court, upon the hearing of such 
application, be satisfied from the testimony adduced 
or the proofs submitted by such person, that the use 
by such corporation of such name, or of such part 
thereof, is unauthorized or has damaged or affected 
or is damaging or affecting or is likely to damage or 
affect the reputation of such person or is or may be 
otherwise injurious to the interests of such person, 
it shall make an order granting the relief prayed for 
and it shall be unlawful, following the filing of a 
certified copy of such order with the secretary of 
state, for such corporation to continue using such 
name or to continue to exercise any of the powers 
conferred upon it by its certificate of incorporation 
or by any certificate amending or supplementing the same.



45

As a matter of precise fact, the Association's 
"consent to the use" of the initials is not "annexed to or 
indorsed upon" the certificate of incorporation of the Fund. 
Accordingly, as of 1940 the Association might have had the 
right to go back to the New York court and seek relief. We 
emphasize "as of 1940," for in 1965 Section 10 was amended and 
the statutory scheme changed to give the Secretary of State 
the deciding power. But perhaps the New York courts would 
recognize some ongoing equitable power to give aid to the 
Association.

This is, we recognize, an extraordinarily narrow 
door. But it is the only door not Surely closed against 
the Association by collateral estoppel.

III.
THE DISTRICT COURT ERRED IN GRANTING 
SUMMARY JUDGMENT FOR THE ASSOCIATION 

SINCE THE ISSUE OF CONFUSION 
PRESENTED A MATERIAL ISSUE OF FACT

For the reasons discussed above, we submit, the 
Fund was entitled to summary judgment dismissing the com­
plaint, and the court below erred in denying that relief.
The court then compounded its error by granting summary 
judgment for the Association despite the clear presence of 
a material issue of fact.



46

The key element in trademark cases is, of course, 
the likelihood of confusion. Berlitz School of Languages of 
America, Inc, v. Everest House, 619 F.2d 211, 215 (1980)
("The sine qua non of an action for trademark infringement .
. . is a showing by plaintiff of the likelihood of confusion 
. . . " ) .  And the court below admitted that the factual 
issue of confusion is here in dispute (Rec. Exc. B, 559 F. 
Supp. at 1344).

The Association attempted to prove only a relative 
handful of instances of confusion in the 43 years of the two 
organizations' sharing of the initials, all of them innocuous, 
none causing the slightest harm.

On a number of occasions, the Association demon­
strated, the Washington Post or the New York Times referred 
to the Fund as the Association, or vice versa. No harm was 
shown to have flowed from these journalistic errors.

The Association showed also that, in some 10 
instances, one organization received a contribution intended 
for the other. But, as the Association admitted in the court 
below, no harm was ever done: "checks mailed to the wrong
association were transferred to the other without fanfare"
(PI. Brief, November 24, 1982, p. 15; see, e.g.,
Ex. 74, pp. 145-46).

Association



47

Implying that substantial funding is here at stake, 
the Association argued below that "[e]ven a large foundation 
setting up a conference invited an LDF [Fund] representative 
in the mistaken belief that he would represent the N.A.A.C.P. 
as well" (PI. Brief, November 24, 1982, p. 20). But the 
"large foundation" was the Ditchley Foundation (Association 
Ex. 100, pp. 198-99) —  a British organization whose primary 
purpose is organizing Anglo-American conferences in Oxford­
shire, England —  not giving grants to American civil rights 
organizations (Nabrit Aff., Qecember 23, 1982, fl 3).

Finally, the Association offered a memorandum from 
its fund-raiser, Gilbert Jonas, describing an alleged instance 
of confusion on the part of the Rockefeller Foundation in 
1968 (Association Ex. 110). But the memo was written in 
1979, and purports to describe events that occurred ten years 
earlier —  scarcely very reliable evidence. Moreover, the 
memo -—  unsworn, clearly prepared in contemplation of litiga­
tion and untested by cross-examination —  is hardly suffi­
cient to demonstrate confusion beyond factual dispute; at 
best it is a fundriaser's self-serving excuse for his initial 
failure to secure a foundation grant.

So the Association's proof on the issue of confu­
sion added up to only a relative handful of instances, none 
of them causing the slightest harm. We might well argue that



48

this failure of proof would warrant summary judgment dismis­
sing the complaint —  surely, this inconsequential showing 
leaves the issue at worst unresolved.

The law is plain. As the Second Circuit said in 
Mushroom Makers, Inc, v. R.G. Barry Corp., 580 F.2d 44, 47 
(2d Cir. 1978), cert, denied, 439 U.S. 1116 (1979):

It is well-settled that the crucial issue in 
an action for trademark infringement or unfair com­
petition is whether there is any likelihood that 
an appreciable number of ordinary prudent purchasers 
are likely to be misled, or indeed simply confused, 
as to the source of the goods in question (emphasis added).

And the Third Circuit has said, Surgical Supply Ser­
vice, Inc, v. Adler, 321 F.2d 536, 539 (3d Cir. 1963):

The mere possibility that a customer may be misled 
is not enough . . . there must be proof of a likeli­
hood that customers may be confused as to the source 
of the products (emphasis added).

The standards set by those authorities are not here 
met. Plaintiff did not show, beyond dispute, any likelihood 
that "an appreciable number" of instances of confusion will 
occur. Nor has plaintiff shown, beyond dispute, that the odd 
instance or two of confusion which might occur annually will 
be of the slightest consequence —  surely not of consequence 
sufficient to warrant inflicting on the Fund and the cause it 
represents the harm which would follow from stripping away 
its identity.



49

The court below paid no attention to the Asocia- 
tion's failure of proof. Instead, it resolved this disputed 
issue of fact by relying on two inferences which it drew 
against the Fund.

First, the court speculated, as to past confusion,
( that many more cases of confusion might have occurred, but

gone undocumented or unreported (Rec. Ex. B, 559 F. Supp. at 
1344). And as to the future, the court offered its view that 
"People assume that relations between two such entities 
bearing virtually identical names and committed to the same 
goals are, at least, symbiotic . . ." (Rec. Exc. B, 559 F.

C Supp. at 1344).
These inferences are utterly unsupported in this 

record —  they were not even suggested to the court below by 
the Association.

And, on summary judgment, the rule is, of course, 
that all inferences must be drawn against the party seeking 
judgment. United States v. Diebold, Inc., 369 U.S. 654 
(1962); Abraham v. Graphic Arts International Union, 660 F.2d 
811, 814, 212 App. D.C. 412 (D.C. Cir. 1981).

Hence, the summary judgment granted below must be
set aside.



50

THE DISTRICT COURT ABUSED ITS DISCRETION 
BY ENTERING THE INJUNCTION 

___________ IN ITS PRESENT FORM__________

.Even if this Court determines that the district 
court's rulings on the cross-motions for summary judgment 
should be allowed to stand, the judgment below must be 
modified.

The Fund's Right to Its History
The judgment provides that the Fund "shall retain 

the right to identify itself as 'formerly N.A.A.C.P. Legal 
Defense Fund, Inc.' (or 'formerly N.A.A.C.P. Legal Defense 
and Educational Fund Inc.') for a period of two (2) years" 
from the conclusion of the appellate proceedings in this 
litigation (Rec. Exc. F, p. 2, emphasis added).

The First Amendment ramifications of this provision 
are extraordinary: it would strip the Fund in two years of
the right to claim its history. The Fund has enjoyed great 
success in the battles it has fought under the banner 
"N.A.A.C.P. Legal Defense and Educational Fund." Every 
person writing the history of the civil rights movement will 
refer to the accomplishments of the Fund, and will us<? its 
name in doing so. Surely the Fund cannot be deprived, conso­
nant with the First Amendment, of the right to claim its past.

IV.



51

It is well-established that charitable appeals for

funds involve a variety of speech interests that are within
the protection of the First Amendment. See Schaumberg v.
Citizens for a Better Environment, 444 U.S. 620, 628-32
(1982). As a result, regulation of such solicitation must be
undertaken with due regard

for the reality that solicitation is characteristi­
cally intertwined with informative and perhaps 
persuasive speech seeking support for particular 
causes or for particular views on economic, political 
or social issues, and for the reality that without 
solicitation the flow of such information and advocacy 
would likely cease. -

444 U.S. at 629. See also N.A.A.C.P. v. Button, 371 U.S. 415, 
429 (1963) (the "activities of the N.A.A.C.P., its affiliates 
and legal staff . . . are modes of expression and association 
protected by the First and Fourteenth Amendments").

It is a basic tenet of First Amendment law that, 
whenever another legitimate interest is invoked to abridge 
protected speech, the protection of that interest must be 
accomplished through the least restrictive means possible. 
Shelton v. Tucker, 364 U.S. 479, 488 (1960) (even a legiti­
mate and substantial governmental purpose cannot support a 
statute which "broadly stifle [s] fundamental personal liber­
ties when the end can be more narrowly achieved").

If this judgment is to stand at all, the phrase 
"for a period of two (2) years from the date aforesaid" must
be stricken.



52

The Association Cannot Appropriate History
In the form of judgment which we proposed to the 

court below, we asked that the Association be barred from 
ever using the name "N.A.A.C.P. Legal Defense Fund" (Rec.
Exc. E). Our purpose was simple: we sought to prevent any
attempt by the Association at the appropriation of the Fund's 
history.

Strangely, in our view, the Association resisted 
this request. And the court below rejected it.

The court below gave no reason for its ruling. And 
it may very well be that it saw no threat that the Associa­
tion would ever attempt the conduct we sought to bar.

The Association could have supported such a ration­
ale by offering its assurance that no taking of our history 
would occur.

But no such assurance was offered.
In consequence, the threat must be deemed to exist.

CONCLUSION

The judgment here appealed would substantially 
impair the ability of black Americans to secure their civil 
rights —  by inflicting harm on the litigating civil rights 
organization which represents them. The harm would consist



53

of diminishing the Fund's ability to raise money; to be 
retained by those whose rights are denied; to associate with 
and employ counsel; and to assert the reputation developed 
over more than four decades in advocating equality before the 
courts, the public and elsewhere. This injury will be 
inflicted —  on a record which demonstrates no harm suffered 
by the Association, only speculation that harm may arise in 
the future. Should confusion arise in the future, it can be 
dealt with as it has been on the few occasions when it has 
occurred in the past, by simple explanations offered by 
either or both of the parties.

We ask that the judgment of the district court be 
vacated and summary judgment be entered in favor of the Fund.

Dated: Washington, D.C.
October 3, 1983

Respectfully submitted,

PAUL, WEISS, RIFKIND, WHARTON 
& GARRISON

A partnership including 
professional corporations 

345 Park Avenue 
New York, New York 10154
(212) 644-8000
Of Counsel:

Jay Topkis 
Mary Lu Bilek

AKIN, GUMP, STRAUSS, HAUER 
& FELD

A partnership including 
professional corporations 

1333 New Hampshire Avenue, N.W. 
Suite 400
Washington, D.C. 20036 
(202) 887-4000
Of Counsel:

Vernon E. Jordan, Jr.
Daniel Joseph, P.C.
Randall L. Sarosdy



54

O'MELVENY & MYERS 
1800 M Street, N.W. 
Washington, D.C. 20036 
(202) 457-5300
Of Counsel:

William T. Coleman, Jr. 
Jacob M. Lewis

PARKER AUSPITZ NEESEMAN & 
DELEHANTY P.C.

415 Madison Avenue 
New York, New York 10017 
(212) 355-4415
Of Counsel:

Barrington D. Parker, Jr. 
Charles S. Barquist

Attorneys for N.A.A.C.P. Legal 
Defense and Educational Fund, Inc.

(



ADDENDUM



Rules of the District Court of 
the United States District Court 

for the District of Columbia

Rule 1-9(h) MOTIONS FOR SUMMARY JUDGMENT.
With each motion for summary judgment pursuant to 

Rule 56 of the Federal Rules of Civil Procedure there shall 
be served and filed, in addition to the statement of points 
and authorities required by section (b) of this rule, a 
statement of the material facts as to which the moving party 
contends there is no genuine issue, and shall include therein 
references to the parts of the record relied on to support 
such statement. A party opposing such a motion shall serve 
and file, together with his opposing statement of points and 
authorities, a concise "statement of genuine issues" setting 
forth all material facts as to which it is contended there 
exists a genuine issue necess-ary to be litigated, and shall 
include therein references to the-parts of the record relied 
on to support such statement. In determining a motion for 
summary judgment, the court may assume that the facts as 
claimed by the moving party in his statement of material 
facts are admitted to exist except as and to the extent that 
such facts are controverted in a statement filed in opposi­
tion to the motion.



2

NEW YORK MEMBERSHIP CORPORATIONS LAW 
S 10. Incorporation

Five or more persons may become a membership cor­
poration for any lawful purpose, or for two or more such 
purposes of a kindred or incidental nature, except a purpose 
for which a corporation may be created under any general law 
other than this chapter, by making, subscribing, acknowledg­
ing and filing a certificate which shall be entitled and
endorsed "Certificate of incorporation o f ...... .........
.......... pursuant to the membership corporations law" (the
blank space being filled with the name of the corporation) 
and shall state:

1. The name of the proposed corporation.
2. The purpose or purposes for which it is to 

be formed.
3. The territory in which its operations are 

principally to be conducted.
4. The city, village, or town and the county in 

which its office is to be located.
5. The number of its directors, or that the number 

of directors shall be not less than a stated minimum nor 
more than a stated maximum. In either case the number 
of directors shall be not less than three.

6. The names and residences of the directors until 
the first annual meeting, and if any such director shall 
reside in a city, the street and number or other par­
ticular description of his residence. The number of 
directors named must be the number stated pursuant to 
the last preceding subdivision.

7. That all of the subscribers to the certificate 
are of full age; that at least two-thirds of them are 
citizens of the United States; that at least one of them 
is a resident of the State of New York, and that of the 
persons named as directors, at least one is a citizen
of the United States and a resident of the state of 
New York.

Every certificate of incorporation filed under this 
chapter shall have indorsed thereon or annexed thereto the 
approval of a justice of the supreme court of the judicial



3

district in which the office of the corporation is to be 
located. If the name of the proposed corporation includes 
the name of a political party, the consent of the chairman 
of the county committee of such political party of the 
county in which the office of the corporation is to be 
located, shall be endorsed on such certificate, except in 
cases where the supreme court finds that the withholding of 
such consent of the county chairman is unreasonable. The 
justice to whom such certificate is presented for approval 
may, in his discretion, withhold such approval if the name 
of the proposed corporation includes all or part of the 
name of a living person who has not executed such certificate 
and whose right to the proper use of such name should be 
protected or if it includes a name so nearly resembling the 
name of such a person as to be likely to deceive or cause 
confusion or such justice may., as a condition precedent to 
his approval of such certificate, require the consent to the 
use of the name of such person, duly acknowledged by such 
person, to be annexed to or indorsed upon such certificate. 
Notwithstanding the approval by a justice of the supreme 
court of a certificate of incorporation of a corporation, 
the name of which includes all or part of the name of a 
living person who has not executed such certificate and whose 
consent to the use thereof is not annexed to or indorsed 
upon such certificate such person or someone in his behalf 
may, at any time, upon such notice to such parties as the 
supreme court or a justice thereof shall direct, make an 
application for an order expunging such certificate of incor­
poration from the records in the department of state, and if 
the court, upon the hearing of such application be satisfied 
from the testimony adduced or the proofs submitted by such 
person, that the use by such corporation of such name, or of 
such part thereof, is unauthorized or has damaged or affected 
or is damaging or affecting or is likely to damage or affect 
the reputation of such person or is or may be otherwise injur­
ious to the interests of such person, it shall make an order 
granting the relief prayed for and it shall be unlawful, 
following the filing of a certified copy of such order with 
the secretary of state, for such corporation to continue 
using such name or to continue to exercise any of the powers 
conferred upon it by its certificate of incorporation or by 
any certificate amending or supplementing the same. As 
amended L. 1934, c.111, § 1? L.1937, c.424, eff. May 19,
1937.



Any membership corporation created under or by a 
general or special law may be dissolved by filing in the 
office of the secretary of state a certificate which shall 
be entitled and endorsed "Certificate of dissolution of
............... . pursuant to article eight of the membership
corporations law" (the blank space being filled in with the 
name of the corporation) and shall state:

1. The name of the corporation, and, if it has 
been changed, the name under which it was originally 
incorporated.

2. The date of filing of the certificate of incor­
poration in the office of the secretary of state, or if 
the corporation was created under or by special law, the 
chapter number and year of passage of such law.

3. That the corporation elects to dissolve.
4. The name and residence of each of its direc­

tors, and the name, title and residence of each of its 
officers.

Such certificate shall be either:
a. Subscribed and acknowledged by every member 

of the corporation entitled to vote, and shall have 
annexed an affidavit by the secretary or an assist­
ant secretary of the corporation that the persons 
who have subscribed the certificate, constitute all 
of the members of the corporation entitled to vote, 
or:

§ 55. Dissolution without judicial proceedings

b. Subscribed and acknowledged by the presi­
dent or a vice president and the secretary or an 
assistant-secretary, who shall make and annex an 
affidavit stating that they have been authorized to 
execute and file such certificate by the votes, 
cast in person or by proxy of two-thirds of the 
members of the corporation entitled to vote, at a 
meeting held upon notice as prescribed in section 
forty-three, and the date of such meeting.
Such certificate shall have indorsed thereon or 

annexed thereto the approval of a justice of the supreme 
court of the judicial district in which the office of



A

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the corporation is located, and if the corporation is 
one which could be created under this chapter only upon 
the approval of a state or local board or body, the 
approval of such board or body.

5. Upon the filing of such certificate of dissolu­
tion, the secretary of state shall certify in duplicate 
that the corporation has complied with this section, and 
is dissolved. He shall mail one of the duplicates to 
the clerk of the county, if any, named in the certifi­
cate of incorporation as the county in which the office 
of the corporation is located, if any county be so named 
therein, and shall deliver the other duplicate to the 
corporation. The county clerk shall file the certifi­
cate mailed to him.

6. Such corporation shall continue for the purpose 
of paying, satisfying, and discharging any existing 
liabilities or obligations, collecting and distributing 
its assets, and doing all other acts required to adjust 
and wind up its business and affairs, and may sue and be 
sued in its corporate name. Nothing in this subdivision 
shall authorize the impairment of any trust or the 
diversion of any property held thereunder. As amended 
L.1934, c. 110, eff. March 29, 1934.

§ 56. Jurisdiction of the supreme court
In the case of a membership corporation dissolved 

pursuant to this article or by the expiration of its cor­
porate existence, the supreme court, upon the petition of the 
surviving directors, or a majority of them, or, in a proper 
case, upon the petition of a creditor or member, or upon the 
petition of the attorney general, and upon notice to such 
surviving directors as are not petitioners, and notice to 
such other interested persons as the court may specify, to be 
given personally or otherwise, as it may direct, may, from 
time to time, order and adjudge in respect to the following 
matters:

1. The giving of notice by publication or other­
wise of the time and place for the presentation of all 
claims and demands against the corporation, which notice 
may require all creditors of and claimants against the 
corporation to present in writing and in detail at the 
place specified their respective accounts and demands to



6

the directors by a day therein specified, which shall 
not be less than forty days from the service of first publication of such notice;

2. The payment or satisfaction in while or in part 
of claims and demands against the corporation, or the 
retention of moneys for such purpose;

The presentation and filing of intermediate and 
final accounts of the directors, the hearing thereon, 
the allowance and disallowance thereof, and the dis­
charge of the directors or any of them, from their duties and liabilities;

4. The administration of any trust or the dispo­
sition of any property held in trust by or for the 
corporation;

5. The sale and disposition of any remaining prop­
erty of the corporation and the distribution or division 
of such property or its proceeds among the members or 
persons entitled thereto, except that in the case of a 
corporation formed for any of the purposes described in 
subdivision one of section eleven the court upon twenty

, days' personal notice to the attorney-general and four 
weeks' notice to the members, creditors and contributors 
to the funds of the corporation by publication once a 
week for four successive weeks in two newspapers of 
general circulation published in the county in which the 
treasurer of the corporation shall reside, may make an 
order that such property or its proceeds shall be trans­
ferred to such other corporation or association as shall 
be specified, to be administered or used in such manner 
as in the judgment of the court will best accomplish the 
general purposes, for which the corporation so dissolved 
was organized without regard to and free from any express 
or implied restriction, limitation or direction imposed 
upon such corporation.

6. Such matters as justice may require.
All orders and judgments shall be binding upon the 

corporation, its property and assets, its ,directors, members, 
creditors and all claimants against it. As amended L.1928,
c. 476; L.1932, c. 456; L.1933, c. 108, eff. March 31, 1933.