The opinion of the court was delivered by: PAUL FRIEDMAN, District Judge
This matter came before the Court for a bench trial on the parties'
cross-motions for a permanent injunction. The dispute relates to which
party has the right to use in the Washington, D.C. metropolitan area the
name and insignia associated with one of the three major political
parties in the Dominican Republic, the Partido Revolucionario Dominicano
("PRD"). Plaintiffs contend that defendants have intentionally created
confusion among individuals who are interested in Dominican political
issues by using the name and insignia of the PRD in an unauthorized
manner, which use has caused and will continue to cause irreparable harm
to their group the first group to use the PRD name and insignia.
Plaintiffs claim a violation of Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), and common law trademark infringement. Defendants
filed counterclaims on similar grounds, but in defendants' favor. Both
parties seek permanent injunctive relief.
A bench trial took place over three days in the Fall of 2002. At the
trial, plaintiffs called as witnesses members of plaintiffs'
organization, President Hector Santos and Organizational Secretary
Andreas Beriguete. They also called as adverse witnesses President
Franklin Jimenez and Vice President Guillermo Rivera of defendants'
organization and offered the deposition testimony of Dr. Rafael Bonilla,
Secretary of the PRD in the Dominican Republic and a former Cabinet
Minister in the Dominican Republic. Plaintiffs then called Shelley
Blumberg Lorenzana as an expert witness in translation to translate two
documents plaintiffs offered in evidence. In their case-in-chief,
defendants called as witnesses Vice President in Function Felipe
Rodriguez, Mr. Rivera and Secretary General Ivan Romero, all from
defendants' organization, and Dr. Rafael Lantigua, who is the Federal
President of the PRD for the United States, Canada and Puerto Rico. In
addition, the Court accepted in evidence numerous documents offered in
support of the parties' claims.*fn1 After carefully considering the
briefs and arguments of counsel for the parties in support of their
cross-motions for permanent injunctive relief, the testimony of the
witnesses at trial and the admitted documentary evidence, the Court
concludes that plaintiffs are entitled to injunctive relief and that
defendants are not. It therefore will grant plaintiffs' motion and will
deny the motion of defendants.
Upon a careful consideration and evaluation of the testimony of all the
witnesses and the documentary evidence admitted at trial, and making
credibility findings as necessary and appropriate to resolve any material
discrepancies in the testimony, the Court makes the following findings of
A. Partido Revolucionario Dominicano Sectional of Washington, D.C.
The PRD is one of three major political parties in the Dominican
Republic. The PRD has authorized the establishment of chapters, or
"seccionals," outside of the Dominican Republic in order to provide a
forum for political discussion and social and cultural interaction of
Dominicans living abroad, as well as for individuals generally interested
in issues related to the Dominican Republic. See Transcript of Trial,
October 11, 2002 ("Tr.") at 10:21-12:9 (H. Santos).*fn2
According to the
general by-laws of the PRD, there is a procedure by which interested
groups become authorized as official seccionals. Specifically, "[t]he
Political Commission of the Party shall authorize in each case the
creation and integration of the Sectionals outside of the country and in
the Zones, along with their respective jurisdictions." Defs.' Ex. 30(b),
Excerpt from the General Statutes of the Dominican Revolutionary Party
("By-laws") ¶ 2; Tr. 91:2-5, 95:5-6 (F. Jimenez). The By-laws also
provide that a federal committee in the United States shall exist "which,
as the superior body within the hierarchy, shall
coordinate the activities of the Party throughout all of North America,"
including the activities of seccionals. See By-laws ¶ 1. The
president of the Federal Committee during the relevant time period was
Dr. Rafael M. Lantigua, who testified on defendants' behalf.
Plaintiffs comprise a seccional of the PRD authorized by the Political
Commission and established in 1982. It is run by a Board of Directors and
sponsors various social events, political rallies, fundraisers and similar
activities related to the Dominican Republic and the PRD. See Tr. at
11:21-22 (H. Santos). The seccional also participates in an official
capacity in the nomination of the PRD candidate for the presidency of the
Dominican Republic. See Tr. at 17:3-19:2 (H. Santos). Plaintiffs' group
has members from the District of Columbia, Maryland and Virginia. See
Pls.' Ex. 20(a), Seccional de Washington, Maryland & Virginia Lista
de Militantes; Pls.' Ex. 20(b), Programa de Revision γ Apertura Del
Registro de Militantes; Tr. at 73:10-21, 74:19-75:2 (A. Beriguete). The
majority of plaintiffs' members are from Maryland, and meetings are held
throughout the greater metropolitan area including in Maryland and
Virginia. See Tr. at 15:12-16:23 (H. Santos).
The official name of plaintiffs' group at its inauguration in 1982 was
Partido Revolucionario Dominicano Seccional of Washington, D.C. See Tr.
at 32:1-4 (H. Santos). The organization began using the name Partido
Revolucionario Dominicano Seccional Metropolitana de Washington D.C.,
Maryland Γ Virginia in 2000. See id. at 31:5-6. Individually,
plaintiffs are three corporations: one incorporated in Washington D.C. on
March 31, 2002, under the name "Partido Revolucionario Dominicano (PRD),
Seccional Metropolitana de Washington-DC, Maryland Γ Virginia;"
one incorporated in Virginia on December 1, 2000, under the name "Partido
Revolucionario Dominicano (PRD), Seccional Metropolitana de
Maryland y Virginia;" and one incorporated in Maryland on April 7, 2000,
under the name "Partido Revolucionario Dominicano (PRD), Seccional
Metropolitana de Washington-D.C., Maryland and Virginia, Ltd."
(collectively, "PRD-DC"). See Pls.' Ex.1, Government of the District of
Columbia Certificate of Incorporation (March 31, 2000); Pls.' Ex. 2,
Commonwealth of Virginia State Corporation Commission Certificate of
Incorporation (December 1, 2000); Pls.' Ex. 3, State of Maryland
Certificate of Incorporation.
As an authorized seccional, plaintiffs have a non-exclusive license to
use the name and insignia of the PRD in their publications and in the
course of their activities. See Tr. at 19:3-10 (H. Santos); Defs.' Ex.
34, Affidavit of Rafael A. Lantigua, M.D. ("Lantigua Aff") ¶ 11. A
group may not use the name Partido Revolucionario Dominicano unless it
officially has been approved by the PRD's Political Commission as a
seccional. See Tr. at 95:11-14; 127:8-10 (F. Jimenez).
B. "Partido Revolucionario Dominicano, Seccional de Maryland y
In 1996, several individuals decided to form a new seccional separate
from PRD-DC to be called "Partido Revolucionario Dominicano, Seccional de
Maryland y Virginia," ("PRD-MD/VA"). PRD-MD/VA focused on membership in
Maryland and Virginia, although the group did not have a policy of
rejecting individuals from Washington, D.C. See Rodriguez Test. (Nov.
19, 2002).*fn3 After assessing the potential membership base of a new
PRD-MD/VA applied to be an official seccional in January of 1999. See
Defs.' Ex. 10, Letter of Application; Tr. at 116:1-18 (F. Jimenez);
Rodriguez Test. (Nov. 19, 2002). This application was rejected verbally
by the then-PRD President Emmanuel Esqua Guerrero at a meeting in New
York, and ultimately was never approved. See Tr. at 117:19-119:4 (F.
Jimenez); Lantigua Test. (Nov. 19, 2002). PRD-MD/VA submitted a second
application to become an authorized seccional in November 1999. See Defs.'
Ex. 11, Letter from PRD-MD/VA to PRD President Hatuey DeCamps requesting
authorization of PRD-MD/VA as a seccional; Tr. at 117: 9-16 (F.
While both Mr. Jimenez and Mr. Rodriguez testified that Dr. Lantigua
had authorized PRD-MD/VA as a seccional, both witnesses admitted that the
Federal Chairman is not authorized to do so; only the PRD Political
Commission is. See Tr. at 94:15-20 (F. Jimenez); Rodriguez Test. (Nov.
19, 2002). Instead, the Federal Chairman's role in the admission of new
seccionals is to swear in the seccional after receiving "orders from the
party in the Dominican Republic." Tr. at 94:21-22 (F. Jimenez). Although
several defense witnesses testified that the Federal Chairman received
authorization to authorize PRD-MD/VA, see Tr. at 110: 21-24 (F.
Jimenez); Romero Test. (Nov. 19, 2002); Rivera Test. (Nov. 20, 2002),
this testimony is either conclusory and not supported by evidence or
based on Dr. Lantigua's assurances that PRD-MD/VA had been authorized by
the PRD, which does not suffice to prove that authorization in fact had
In his pre-trial affidavit, Dr. Lantigua averred that "[t]he P.R.D. has
by-laws that govern the way that the P.R.D. and committees, seccionales,
and other sub-groups that are authorized pursuant to those By-laws . . .
operate and conduct themselves." Defs.' Ex. 34, Lantigua Aff. ¶ 3.
Dr. Lantigua also averred that as president of the Federal Committee, he
serves as "the leader of the 'Federacion de Seccionales,' which
authorizes and oversees the operations and activities of numerous
'seccionales' or branches around the country." Id. ¶ 6. In his
testimony at trial, however, Dr. Lantigua conceded that only the
Political Commission makes decisions regarding authorization of
seccionals. See Lantigua Test. (Nov. 19, 2002).*fn6
Defendants have offered no evidence in the form of minutes of the
meeting at which the Political Commission purportedly authorized
PRD-MD/VA, the affidavit or testimony of any individual who attended such
a meeting, or any official authorization document. Dr. Lantigua testified
that he believed PRD-MD/VA had been approved, and that he would not have
sworn in PRD-MD/VA had the group not been authorized by the Political
Commission, but his statement of belief is insufficient to demonstrate
authorization. See Lantigua Test. (Nov. 19, 2002). By contrast, Dr.
Rafael Bonilla, General Secretary of the PRO, member of the Political
Commission and official party spokesman, unequivocally stated in a
pre-trial deposition that was admitted in evidence that PRD-MD/VA is not
officially recognized as a seccional because it has never been approved
by the Political Commission. See Pls.' Ex. 20, Deposition of Rafael S.
Bonilla, Oct. 4, 2002 at 10:8-11:3, 14:21-17:23. Upon review of all the
evidence the Court finds that there is no evidence before it that the
Political Commission of the PRD officially authorized PRD-MD/VA to be an
official seccional in accordance with the PRD By-laws, Dr. Lantigua's
Dr. Lantigua presided over a swearing-in ceremony for PRD-MD/VA on
September 30, 2000. See Rodriguez Test. (Nov. 19, 2002). The invitation
for the inauguration featured the name "PRD" together with PRD-MD/VA's
name. See Defs.' Ex. 12(a) (invitation to inauguration event). The name
and insignia of the PRD also were featured prominently on decorations
displayed at the inauguration event itself. See Defs.' Ex. 12(b),
Photographs of Inauguration (name and insignia of PRD prominently
displayed at the event).
Following the September 30, 2000 inauguration party, PRD-MD/VA made an
effort to gain members, raise funds, and work with non-profits in
philanthropic endeavors. In
doing so, the group intended to expand what it considered to be PRD-DC's
limited purpose beyond political activities. See Rodriguez Test. (Nov.
19, 2002). As part of this effort, PRD-MD/VA held several events for
which it sent invitations or distributed flyers that featured the name
and insignia of the PRD, including a celebratory inauguration party on
December 1, 2000. See Rodriguez Test. (Nov. 19, 2002); Defs.' Ex. 15,
Invitation to Dec. 1, 2000 event; Defs.' Ex. 16(a), flyer for Dec. 1,
2000 party; Defs.' Ex. 16(b)-(g) (letters of invitation to Dec. 1, 2000
party). The PRD insignia was prominently displayed at the December 1, 2000
party as well. See Defs.' Ex. 17(a)-(b) (photographs of Dec. 1, 2000
PRD-MD/VA subsequently distributed a newsletter that featured the name
and insignia of the PRD, see Defs.' Ex. 19(a) ("Seccional PRD "Don
Antonio Guzman Fernandez" Maryland y Virginia" Boletin Informativo
Mesual), and distributed invitations and flyers and held numerous events
that prominently displayed the PRD name and insignia. These included: (1)
a fundraiser sponsored by PRD-MD/VA (see Defs.' Ex. 19(b) (informational
flyer for fundraiser)); (2) a letter of invitation to PRD president
Hatuey DeCamps from Ivan Romero to attend a party in honor of the first
anniversary of "inauguration" (see Defs.' Ex. 19(c))); (3) the first
anniversary party itself, at which the PRD name and insignia were
displayed (see Defs.' Ex. 19(d) (photograph of event); (4) a calendar of
2001 events of PRD-MD/VA (see Defs.' Ex. 19(f)); and (5) a party honoring
Dominican Mothers (see Defs.' Ex. 19(g) (invitational promotion)).
After PRD-MD/VA began advertising its events using the PRD name and
insignia, individuals approached PRD-DC board members inquiring about the
individuals were confused and assumed that PRD-DC was sponsoring the
activities. See Tr. at 21:13-22:22, 26:6-13, 29:10-21. (H. Santos).*fn7
On November 21, 2000, PRD-DC through counsel sent a letter to PRD-MD/VA
asserting that the latter group was using the name and insignia of the
PRD in violation of the law and requesting that PRD-MD/VA cease and
desist using the name. See Pls.' Ex. 7, November 21, 2000 Letter from
Stanley H. Goldschmidt, Esq. to Dr. Guillermo Rivera. Dr. Rivera
responded to the letter, stating that he did not "have a problem
complying to [the] letter, but [he would] not accept any responsibility
for other individuals who might use any stationery, material, cards,
advertisements and the like. Therefore, [Dr. Rivera would] cease to
distribute any of the items" delineated in Mr. Goldschmidt's letter.
Pls.' Ex. 9, November 24, 2000 Letter from Dr. Guillermo Rivera to
Stanley H. Goldschmidt, Esq. Dr. Rivera testified at trial that he
foresaw no problem in complying with the letter because he interpreted it
as instructing him not to use "Washington, D.C." with respect to his
group, PRD-MD/VA. See Tr. at 140:7-15 (G. Rivera). PRD-MD/VA did not
cease using the name PRD or its insignia.
Plaintiffs filed suit raising two claims: (1) a violation of Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and (2) common law
trademark infringement. Specifically, plaintiffs argue that by using the
name "Partido Revolucionario Dominicano, Seccional de Maryland y
Virginia" or any of its counterparts and the PRD insignia without
knowledge or authorization, defendants have infringed on plaintiffs'
exclusive license to use the name PRD and its insignia as an authorized
seccional in the Washington, D.C. metropolitan area. Defendants
counterclaim, raising identical claims and arguing that by using the name
Partido Revolucionario Dominicano Seccional Metropolitana de Washington
D.C., Maryland y Virginia rather than Partido Revolucionario Dominicano
Seccional de Washington D.C., plaintiffs improperly expanded ...