When a volunteer who ran a charity’s major annual fundraising event for five years decided that she no longer wanted to be involved with the charity, she and her husband sought to run a similar event, using the same name, for another charity in the same community. The volunteers and the charity each filed to trademark the name of the event, and then commenced litigation seeking to prevent the other from using the name. A federal District Court in Philadelphia has ruled that the charity is the proper owner of the name and issued a preliminary injunction to prevent the volunteers from using it. (Gemmer v, Surrey Services for Seniors, E.D. PA, No. 10-810, 12/13/10.)
Lydia Gemmer, who had a history of volunteering for numerous charitable causes, first volunteered to help Surrey Services for Seniors in suburban Philadelphia in 2005 and agreed to organize the organization’s “First Annual Antique Appraisal Fest and Silent Auction.” The initial sponsorship letter was signed by Ms. Gemmer and the president of the agency and the event was presented as a program of the agency. After a successful event, thank you letters were sent from the organization.
In planning the next year’s event, the fundraising committee, again chaired by Ms. Gemmer, discussed numerous names and decided to call it “The Main Line Antiques Show” to gain the “cache” of having it associated with the Main Line area. They cleared use of the name with an antiques dealer who had previously used the term. The 2006 solicitation letter was again signed by Ms. Gemmer and the president and sent on agency stationary in agency envelopes. Over the next several years, the show became highly successful.
In 2007, the show developed a separate website to advertise the event and Mr. Gemmer registered the website domain in his own name. The public relations, facility rental and other contractual relationships were made by the agency, while Ms. Gemmer was in charge and often negotiated the terms. Mr. Gemmer provided additional services, particularly with the set up of the actual event.
In 2009, after Ms. Gemmer announced that she would not do a 2010 show for the benefit of Surrey, the Gemmers sought a new beneficiary and spoke with the development office of Bryn Mawr Hospital. But when the Hospital learned that the show had previously been done for the benefit of Surrey, it declined to participate. The Valley Forge Military Academy, which had hosted the event, cancelled the use of the facility by the Gemmers when it learned that Surrey wanted to conduct its own show on the same dates. In January 2010, the Gemmers filed a trademark application for the name. Surrey filed an application in February.
The Gemmers sued thereafter, and Surrey counterclaimed. Each sought a preliminary injunction against the other on the use of the name. A Magistrate Judge took extensive testimony and concluded that the agency was the owner of the name. The Court adopted the recommendation and ordered the Gemmers not to use the name in any show or in the application for a trademark.
The Gemmers argued that the “first use” of the name was in June 2006 when Ms. Gemmer drafted the sponsor letters and agreements for the first show to use the name. But the Court said that the ownership depends upon “first use in commerce.” “Virtually all of the evidence relating to the use in commerce … connects the show to Surrey,” the Magistrate wrote. “The invitations, advertising materials, sponsorship letters, and everything else that constituted the ‘public face’ of ‘The Main Line Antiques Show’ connected the event to Surrey Services for Seniors. To the extent Plaintiffs are mentioned in any of these materials, they are listed by their committee participation, and as a contact person.”
The Gemmers also argued that they could prevail under the “related companies” doctrine by showing that they first used the mark (as opposed to establishing “use in commerce” of the mark), or that they controlled the first user of the mark. Again the Gemmers relied on Ms. Gemmer’s drafting the first 2006 letter. But the Magistrate said that there was considerable doubt that the draft letter was the first use of the mark sufficient to confer ownership. Members of the committee had previously discussed the new proposed name, another dealer had previously used it, and actual use in public was all under the Surrey name and logo.
Alternatively, the Gemmers argued that they “controlled” the first use of the name. But the Magistrate rejected the claim both for failure to show that the Gemmers controlled the use and for failure to show that the rule was applicable in the situation.
YOU NEED TO KOW
Fundraiser names can be of real value and many charities will be willing to take action to stop an infringement. (See Ready Reference Page: “Charity Fundraisers Raise Many Legal Issues”) In this case, one of the issues was use of a domain name associated with the event. Charities ought to be sure that their volunteers transfer any domain names that they purchase on behalf of the organization. If there is ever a falling-out, it may be difficult to gain control over the domain, and the cost of litigating to obtain it may be prohibitive.