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 fact:
A. Partido Revolucionario Dominicano Seccional 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 y 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 y 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 y Virginia;" one incorporated in Virginia on December 1, 2000, under the name "Partido Revolucionario Dominicano (PRD), Seccional Metropolitana de Washington-DC, 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 Virginia"
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 seccional, 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. Jimenez).*fn4
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 been given.*fn5
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 PRD, 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 assurances notwithstanding.
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 event).
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©)); (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 events. These 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 plaintiffs' consent, 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 their ...