The opinion of the court was delivered by: Colleen Kollar-kotelly United States District Judge
Plaintiff GLOBALAW Limited, a corporation organized under the laws of the country of Jersey and established as a international networking tool for over seventy (70) law firms across the globe, brought this action against Defendants Carmon & Carmon Law Office and GLOBALAW, Inc. (hereinafter, collectively "C&C"), on April 29, 2003, seeking a declaratory judgment that (1) it was the rightful "owner of United States trademark rights in the GLOBALAW service mark in connection with association services, namely promoting the interests of a group of law firms providing legal services on an international basis," Compl. ¶ 19; and (2) that "its use and its licensees' use in the United States of the GLOBALAW mark does not constitute infringement of any rights C&C might have in the GLOBALAW mark in the United States," id. ¶ 20.
On January 13, 2004, C&C filed its Answer and Counterclaim, which has become the focus of this suit. C&C's Counterclaim named, as Counterclaim Defendants, GLOBALAW Limited (the original Plaintiff), and, inter alia, three law firms participating in the GLOBALAW Limited network: Ballard Spahr Andrews & Ingersoll, LLP ("BSAI"), Jackson Walker L.L.P. ("JW"), and Garvey Schubert Barer ("GSB") (hereinafter, collectively, "Counterclaim Defendants" or "the Law Firms").*fn1 C&C's Counterclaim asserts that it is the rightful owner of the GLOBALAW service mark, and alleges that C&C has used the mark in conjunction with its law and business practice in New York City, New York, since on or about 1988. See C&C's Counterclaim ¶ 38. C&C's Counterclaim seeks -- among other things -- a permanent injunction, treble damages, the profits of Counterclaim Defendants, and a declaration that C&C is the rightful owner of the mark based upon four separate alleged violations: (1) trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1141(1), see id. ¶¶ 54-57 (Count I); (2) trademark infringement, false designation of origin, passing off, and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), see id. ¶¶ 58-61 (Count II); (3) false and misleading statements of fact under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B), see id. ¶¶ 59-65 (Count III); and (4) common law trademark infringement, unfair competition, and misappropriation, see id. ¶¶ 66-69 (Count IV).
Following a round of extended, highly acrimonious discovery in this case, the closure of which remains highly contested by C&C, Counterclaim Defendants BSAI and JW brought a Motion for Summary Judgment against C&C, asserting that dismissal of all four counts contained within C&C's counterclaim was warranted.*fn2 Three other motions have been filed which relate to or impact the Counterclaim Defendants' Motion for Summary Judgment: (1) C&C's Motion to Reconsider the November 14, 2005 Opinion and Order of Magistrate Judge Alan Kay, which resolved numerous discovery-related motions; (2) C&C's Motion for Further Discovery Pursuant to Federal Rule of Civil Procedure 56(f), which was filed contemporaneously with its Opposition to the Counterclaim Defendants' Motion for Summary Judgment; and (3) Counterclaim Defendants' Objections and Motion to Strike Evidence Submitted in Support of C&C's Response to Counterclaim Defendants' Motion for Summary Judgment. Each motion has now been fully briefed, and is ripe for this Court's resolution.
Upon a searching examination of the parties' filings, the attached exhibits, the relevant case law, and the entire record herein, the Court shall (1) grant Counterclaim Defendants' Motion for Summary Judgment as to all counts contained within C&C's Counterclaim; (2) deny C&C's Motion for Further Discovery Pursuant to Federal Rule of Civil Procedure 56(f); (3) deny C&C's Motion to Reconsider the November 14, 2005 Opinion and Order of Magistrate Judge Alan Kay; and (4) deny without prejudice as moot Counterclaim Defendants' Objections and Motion to Strike Evidence Submitted in Support of C&C's Response to Counterclaim Defendants' Motion for Summary Judgment.
In order to get a better understanding of the contours of this complex suit, it is necessary to set out -- in rather extensive detail -- the background of the relevant parties in this action. The Court shall begin by looking at Counterclaim Plaintiff C&C, and then shall turn to a discussion of Counterclaim Defendants/the Law Firms BSAI, JW, and GSB. The Court shall then set out the apparent overlap between the practice of C&C on one hand, and the practices of Counterclaim Defendants BSAI, JW, and GSB on the other hand. Following this discussion, in the next subsection, the Court shall discuss the competing GLOBALAW's established by these opposing parties.*fn3
1. Counterclaim Plaintiff -- Carmon & Carmon Law Office
Defendant and Counterclaim Plaintiff Carmon & Carmon Law Office is a New York partnership formed in 1987, and its current address is 767 Third Avenue, New York, NY 10017. See HC at 14-15.*fn4 C&C consists of two individual partners -- Haggai and Rakeffet Carmon. Id. at 21. From time to time, C&C has employed various legal secretaries and assistants, see RC at 36; HC at 500, but Haggai and Rakeffet Carmon have always been the only attorneys employed by C&C, see HC at 21, which has never had any other attorneys associated with it, other than on a periodic office sharing basis, see HC at 22-25, 62-68. As Ms. Rakeffet Carmon has attested to, C&C is small and of limited means. See TTAB at 63. Since its formation in 1987, all of C&C's office locations and business headquarters have been located within the New York City area. See HC at 15-17. Neither of the Carmons is rated by Martindale-Hubbell. See HC at 169; Countercl. Defs.' Mot. for Summ. J., Ex. 9 (Decl. of Charles W. Chotvacs, counsel for BSAI) ¶ 9.
The Carmons are both Israeli nationals, see RC at 99; HC at 261-62, and are licensed to practice law in Israel, see HC at 70; RC at 6-8, 22-23, 100. Ms. Rakeffet Carmon graduated from Tel Aviv Law School in 1981 and thereafter worked for a number of years as the equivalent of a criminal prosecutor/assistant U.S. district attorney before moving to the United States in 1985 with her husband, Haggai, to start their business. See RC at 18-19, 100-01; HC at 264-65. Following their move to the United States, both Haggai and Rakeffet Carmon became U.S. citizens in 1995. See 11/28/05 Haggai Carmon Aff. ¶ 3.
Ms. Carmon's legal practice in the United States focuses almost entirely in the area of immigration, see RC at 13-16; HC at 523-24, and her clients are mostly Israeli nationals, see RC at 121. In 2004, Ms. Carmon had only "a few dozen" "active cases," and testified that she has more clients than she "can handle." RC at 15-16, 36.*fn5 Rakeffet Carmon is licensed to practice in the State of New York, but her work in states outside of New York appears to be quite limited; for instance, Ms. Carmon remembers doing some "legal work" in Texas but has never appeared in a Texas courtroom before a judge and jury, and has never been admitted pro hac vice in Texas. See id. at 87. Furthermore, she has taken one deposition in her entire career, in New York in 1988. See id. at 88.
Mr. Haggai Carmon received his license to practice law in Israel in 1981, see HC at 70, where he worked as an attorney for two years before moving to the United States, id. at 262-64. Despite multiple attempts, Mr. Carmon has not passed any U.S. bar exam; however, given that he has passed the Ethics Bar Examination and the New York Character and Fitness Committee's interview, Mr. Carmon has been allowed to act as a "legal consultant" in New York (pursuant to its state statute recognizing foreign attorneys) under certain limited circumstances, where he provides advice on Israeli law within the State of New York. See HC 57, 70-71; RC at 24-25; see also 5/20/05 Rakeffet Carmon Aff. ¶ 2. He testified that he is also licensed to practice law on "some other additional areas that [he] could advise clients pursuant to what the law says." However, when asked about what those areas were at his deposition, he responded, "I don't know, I don't remember. The last time I looked it was many years ago. I don't actually do it. I am sure you can find the law." HC at 70-71; see also 22 NYCRR § 521.3 (setting out the limitations on licensed legal consultants within the State of New York). Haggai Carmon testified that his law practice in the United States is limited to two areas: (a) Israeli legal matters, and (b) other legal matters outside the United States for certain departments of the United States government, including the Division of Foreign Litigation of the United States Department of Justice. Id. at 73-76. Mr. Carmon testified that his "experience is very unique and it does not go along with customary definitions," and said of himself: "I don't believe there is anyone who does the things that I do." TTAB at 7. As of November 2004, Haggai Carmon had approximately ten (10) open clients or legal files that he was handling, all concerning Israeli legal matters and/or "worldwide" matters for the United States government. See HC at 73-76.
Mr. Carmon attempted to further supplement this list following his deposition via affidavit, which provided more detail as to the kind of law that he practices as a legal consultant operating within the State of New York. See 11/28/05 Haggai Carmon Aff. ¶ 6. Mr. Carmon's affidavit suggested that he had also practiced in such U.S.-based matters as, inter alia, the "[s]ale of NY public company's shares," "[s]erving as an arbitrator in NY commercial arbitration," "[r]epresenting a NJ resident in child abduction case," "[r]epresenting a charity regarding a bequeath in NY," "[c]opyright infringement litigation in NY," "[r]epresenting a publicly listed company in its start-up operation in the U.S.," and "[r]epresenting NY residents concerning real property in NY." Id.
Mr. Carmon's belated affidavit, entered well after his deposition in this matter and first provided to Counterclaim Defendants as an attached exhibit to C&C's Opposition to Counterclaim Defendants' Motion for Summary Judgment, is noteworthy in two respects. First, courts have been extremely wary of allowing a party to significantly supplement, expand, and/or contradict his or her deposition testimony with a post hoc affidavit attached to a dispositive motion or an opposition, given the lack of opportunity for effective cross-examination or further investigation by the opposing side. See Reetz v. Jackson, 176 F.R.D. 412, 414 (D.D.C. 1997). "Courts have long held that a party may not create a material issue of fact simply by contradicting [his or her] prior sworn testimony . . . . '[T]he objectives of summary judgment would be seriously impaired if the district court were not free to disregard [the later statement].'" Pyramid Sec. Ltd. v. IB Resolution, Inc., 924 F.2d 1114, 1123 (D.C. Cir. 1991) (quoting Martin v. Merrell Dow Pharm., Inc., 851 F.2d 703, 706 (3d Cir. 1988)). "If a party who has been examined at length in deposition could raise an issue of fact simply by submitting an affidavit concerning [his or her] own prior testimony, this would greatly diminish the utility of summary judgment as a procedure for screening out sham issues of fact." Perma Research & Dev. Co. v. Singer Co., 410 F.2d 572, 578 (2d Cir. 1969). Accordingly, "a party's affidavit which contradicts [his or her] own prior deposition testimony should be disregarded on a motion for summary judgment." Mack v. United States, 814 F.2d 120, 124 (2d Cir. 1987); see Franks v. Nimmo, 796 F.2d 1230, 1237 (10th Cir. 1986); Kalekiristos v. CTF Hotel Mgmt. Corp., 958 F. Supp. 641, 669 (D.D.C. 1997). A review of Mr. Carmon's Affidavit, see generally 11/28/05 Haggai Carmon Aff., reveals that almost all of the information therein either significantly expands upon the details provided by the Carmons in their respective depositions, or flatly contradicts the limiting statements previously given by the Carmons. While the Court will not entirely discount the information provided in Mr. Carmon's Affidavit given that not all of it is precisely "contradictory," the Court does note that (1) it could discount certain claims that might be best described as "so expansive and different from previous deposition testimony that they are contradictory"; and (2) a healthy skepticism might well be justified in reviewing the overall document.
Second, the Court is struck by the breadth of the legal activities claimed by Mr. Carmon in his affidavit. Importantly, Mr. Carmon has not passed a Bar Examination in the United States and is not a licensed attorney in New York. While Mr. Carmon is licensed to practice as a "legal consultant" in New York, the powers of a legal consultant are quite limited. See 22 NYCRR § 521.3. In brief, legal consultants are expressly prohibited from, among other things, representing other persons in court, preparing instruments effecting the transfer of title to real estate located in the United States, preparing wills or trusts effecting the disposition on death of any property located in the United States, or rendering professional legal advice on the law of New York or of the United States.
6A N.Y. Jur. 2d Attorneys at Law § 46 (describing 22 NYCRR § 521.3). In light of these limitations, some of the extensive legal activities claimed by Mr. Carmon are inexplicable.
For instance, Haggai Carmon's Affidavit claims that C&C "handle[s] a few estates every year and prepare[s] wills for several clients each year." 11/28/05 Haggai Carmon Aff. ¶ 9. Given that Rakeffet Carmon testified that her practice in the U.S. focuses almost entirely in the area of immigration, see RC at 13-16; HC at 523-24, one would have to assume that Mr. Carmon was assisting or leading C&C's estate efforts. However, pursuant to 22 NYCRR § 521.3(c)(1)-(2), an individual licensed to practice as a "legal consultant" in New York, like Mr. Carmon, is forbidden from "prepar[ing]" "any will or trust instrument effecting the disposition on death of any property located in the United States of America and owned by a resident thereof" or "any instrument relating to the administration of a decedent's estate in the United States of America." As noted above, Mr. Carmon's Affidavit also claims that he has "practiced" in such matters as the "[s]ale of NY public company's shares," "[s]erving as an arbitrator in NY commercial arbitration," "[r]epresenting a NJ resident in child abduction case," "[r]epresenting a charity regarding a bequeath in NY," "[c]opyright infringement litigation in NY," "[r]epresenting a publicly listed company in its start-up operation in the U.S.," and "[r]epresenting NY residents concerning real property in NY." See 11/28/05 Haggai Carmon Aff. ¶ 6. It is difficult to imagine how Mr. Carmon could engage in these practices without "render[ing] legal advice on the law of [New York] State or of the United States of America," or "prepar[ing] an instrument effecting . . . the transfer or registration of title to real estate located in the United States" -- two activities directly prohibited by New York's "Rules of the Court of Appeals for the Licensing of Legal Consultants." See 22 NYCRR § 521.3(b), (e).
While it is true that Mr. Carmon may engage in some activities under the supervision of "a person duly qualified and entitled . . . to render professional legal advice" in New York, which would presumably be his wife (the only lawyer in the firm), see id. § 521.3(e), it is difficult to imagine that such supervision can occur given the fact that Ms. Carmon already has more clients than she "can handle," RC at 15-16, 36, and such supervision would be impossible when Mr. Carmon was "[s]erving [as] an arbitrator in NY commercial arbitration." 11/28/05 Haggai Carmon Aff. ¶ 6(11). Regardless, what is clear is that Mr. Carmon's position as a legal consultant, with its attendant limitations, ensures that the amount and type of work that C&C -- a two-person firm -- can do is inherently narrow and limited.
2. Counterclaim Defendant -- Ballard Spahr Andrews & Ingersoll LLP
Counterclaim Defendant Ballard Spahr Andrews & Ingersoll is a 120 year-old law firm, first established in 1886. See Countercl. Defs.' Mot. for Summ. J., Ex. 7 (Decl. of C. Baird Brown, partner at BSAI) ¶ 2. BSAI is a large, multi-office, multi-regional law firm, which employs over 430 attorneys and maintains seven (7) offices located throughout the mid-Atlantic corridor and the western United States. Id. BSAI's offices are located in the following United States cities: Baltimore, Denver, Voorhees (New Jersey), Philadelphia, Salt Lake City, Washington, D.C., and Wilmington (Delaware). Id. BSAI is a "full service" law firm, offering legal services in nearly every area of corporate, civil, and white collar criminal law on a national scope, to companies, individuals, and other entities in virtually every state and around the world. Id. BSAI lists thirty-five (35) such areas on its company website, www.ballardspahr.com. Id. BSAI currently has thirty-eight (38) Fortune 500 clients. See Chotvacs Decl. ¶ 6. Seventy-seven (77) of BSAI's partners have achieved an "AV" peer-review rating by Martindale-Hubbell, which is approximately 40% of BSAI's 196 partners. Id. ¶ 5. Forty-three (43) BSAI partners were selected to The Best Lawyers in America(r) 2006 directory by Woodward White, Inc., with seventeen (17) having been selected for this honor for over ten (10) years, and two (2) for over twenty (20) years -- and the honorees include lawyers from six (6) of BSAI's seven (7) offices. Id. ¶ 8. Finally, thirty-three (33) BSAI attorneys were honored as "Leaders in Their Field" by Chambers USA: America's Leading Business Lawyers in 2005. Id. ¶ 7.
3. Counterclaim Defendant -- Jackson Walker L.L.P.
Counterclaim Defendant Jackson Walker is a 119 year-old law firm, first established in 1887 by the "generally recognized dean of oil and gas law," A.W. Walker. See Countercl. Defs.' Mot. for Summ. J., Ex. 6 (Decl. of Bryan C. Birkeland, partner at Jackson Walker) ¶¶ 2-3. JW is a large, multi-office Texas law firm, which employs over 300 attorneys and maintains seven (7) offices located throughout the State of Texas: Austin, Dallas, Fort Worth, Houston, Richardson, San Angelo, and San Antonio. Id. ¶ 2. JW is a "full-service" law firm, offering legal services in nearly every area of corporate and civil law. Id. ¶¶ 2-3. JW lists some fourteen (14) areas and eighteen (18) industries served on its website, www.jw.com. In the last eleven (11) years, five (5) of JW's attorneys have been members of the American College of Trial Lawyers. Id. ¶ 2. More than 140 of JW's attorneys have achieved an "AV" rating by Martindale-Hubbell, and thirty-two (32) were selected to The Best Lawyers in America(r) 2005 directory by Woodward White, Inc. Id.
4. Counterclaim Defendant -- Garvey Schubert Barer
Counterclaim Defendant Garvey Schubert Barer is a forty (40) year-old law firm, first established in 1966. See Countercl. Defs.' Mot. for Summ. J., Ex. 8 (Decl. of Lucinda Fernald, Executive Director of GSB) ¶ 2. GSB is a large, multi-office, multi-regional law firm, which employs over 130 attorneys and maintains five (5) offices in various United States cities and one foreign country. Id. GSB's law offices are located in the following United States cities: New York, Portland, Seattle, and Washington, D.C. Id. GSB also maintains an office in Beijing, China. Id. GSB is a "full-service" law firm, offering legal services in nearly every area of corporate, civil, and white collar criminal law, on a national scope, to companies, individuals, and other entities throughout the United States, China, and around the world. Id. GSB lists thirty-two (32) different substantive areas served on its website, www.gsblaw.com Id. GSB has approximately seventy (70) lawyers with an "AV" rating by Martindale-Hubbell, and represents or has represented over twenty-five (25) Fortune 500 companies. See Countercl. Defs.' Mot. for Summ. J., Ex. 10 (Decl. of David Lieberworth, counsel for GSB) ¶¶ 2-3.
5. Apparent Overlap Between the Practices of C&C and the Counterclaim Defendants
Based upon the evidence offered by BSAI, JW, and GSB, and the assertions set forth by Haggai Carmon in his November 28, 2005 Affidavit and the attachment thereto, the practice areas of C&C on one hand, and Counterclaim Defendants BSAI, JW, and GSB on the other hand can be described as follows in this comparative table:*fn6
Affordable Housing/Community DevelopmentX X
Appellate X * only in the form of administrative appeals
Bankruptcy & Creditors RightsXXX
Biotechnology/ Life SciencesXX * represent biotech companies in commercial matters
Class Action LitigationX X
Commercial & Secured TransactionsXXX* only commercial contract matters
Communications & Media Law X
Consumer Financial ServicesX
Corporate Finance & SecuritiesXXX
Energy & Project FinanceXX
Entertainment, Sports, & Arts XX
Environment & Natural ResourcesXXX
Estate Planning & Probate XXX
Family Wealth ManagementXX
Family Law X
Financial Planning & ManagementXXX
Franchise & DistributionX
Global Customs & Trade X
Government Contracts X* principally in connection with sales from U.S. to Israel
Health & Safety RegulationsXXX
Indian Law X
Insurance Coverage & Defense XX* only represents clients up to litigation, then refers out
Labor & Employment LawXXX
Land Use & CondemnationXXX
LitigationXXX* limited only to criminal & immigration matters in the United States
Maritime Law X
Mergers & AcquisitionsXXX* very small & incidental
Municipal Law X
Nonprofit & Tax-Exempt Organizations X* 2 clients in this area
Public Policy, Lobbying, & Political Law XX
Product Liability & Mass TortsX
Resorts & HotelsX
State & Local TaxationXXX* only as an adjunct to C&C's corporation practice, wherein 8-10 corporations are incorporated each year
Technology & Emerging CorporationsXX * only in conjunction with commercial matters
White-Collar Criminal LawX X
B. The Competing GLOBALAW's
a. Formation and the Initiation of This Lawsuit
According to the unsupported affidavits of Rakeffet and Haggai Carmon, C&C began using the mark "GLOBALAW" in connection with its services as early as 1987. See 5/20/05 Rakeffet Carmon Aff. ¶ 5 ("Carmon commenced using the mark GLOBALAW in interstate commerce as early as 1987."); 11/28/05 Haggai Carmon Aff. ¶ 1 ("I invented or created the word Globalaw in 1987 to identify the legal services my wife and I would provide in our partnership, Carmon & Carmon."); see also C&C's Opp'n to Countercl. Defs.' Mot. for Summ. J., Ex. 13 (Decl. of Eugene Lemay, head of a NY/NJ storage and moving company that has used C&C's services) (undated) ¶ 2 ("I have been using the professional legal services of Rakeffet Carmon, Esq., of the law firm of Carmon & Carmon-GLOBALAW since 1987.").*fn8 However, C&C waited until 1994 to form "GLOBALAW, Inc.," a New York corporation which shares an address with C&C but has no employees, no income, and no expenses. See HC at 43-46 (also noting that C&C and GLOBALAW, Inc. are collectively referred to as "C&C"). GLOBALAW, Inc. is not a law firm and does not provide any type of legal services. See id. at 32 ("GLOBALAW, Inc. never appeared anywhere. It is not a law firm."). Indeed, GLOBALAW, Inc. has not done business since 2001. See id. at 45-46 ("[W]e did not fold it, the company is still legally registered. It is not active. It has not done business since, I believe, 2001. There is no income, no expenses."). However, according to the Carmons, they have treated GLOBALAW, Inc., as being equivalent to and interchangeable with C&C since its formation. See id. at 26-27, 30, 43-49; see also C&C's Mot. to Reconsider at 13 ("Therefore, a factually correct statement should have been that 'Carmon & Carmon and GLOBALAW were used interchangeably.'"). While "GLOBALAW, Inc." no longer exists, C&C "did and still does practice law . . . under the service mark . . . GLOBALAW (without 'P.C.' or Inc.')." C&C's Reply to Countercl. Defs.' Opp'n to C&C's Mot. to Reconsider at 4.
Apparently, C&C filed for federal registration of the "GLOBALAW" mark in the United States Patent and Trademark Office on March 28, 1994 based upon first use of the mark as of January 22, 1988; however, according to the Carmons, this application was rejected "for technical reasons." See 5/20/05 Rakeffet Carmon Aff. ¶ 5. During this same period, another "GLOBALAW" was being formed -- that is, "GLOBALAW Limited," which is the mark used by the Counterclaim Defendants. In 1993, Dennis Campbell, the director of an international legal studies institute in Austria, formed and began administering a network of lawyers under the "GLOBALAW Limited" rubric. See DC at 13-16, 29, 31-32. This network started with forty (40) or fifty (50) law firm members. See id. at 31-32. In November 1994, Campbell filed an application in the United States Patent and Trademark Office requesting federal registration of the service mark "GLOBALAW" for "association services." See id. at 29; Birkeland Decl. ¶ 6. Following Campbell's valid application, C&C filed a U.S. application for registration of the name "GLOBALAW" for "foreign and international legal services" on February 3, 1995. See Birkeland Decl. ¶ 6; see also USPTO website, available at http://www.uspto.gov (wherein C&C, in Reg. No. 74629447, states that it is registering the term under International Class 035, for "foreign and international legal services"). In addition, Haggai Carmon of C&C filed an opposition to Campbell's registration in 1996. See DC at 42. Discovery and various procedural events caused the proceeding before the TTAB to continue without resolution through about 2001, and was stayed pending the outcome of this litigation. See Birkeland Decl. ¶ 6. Throughout all of this, C&C not once attempted to stop the use of the name "GLOBALAW" by GLOBALAW Limited, or by any of the Law Firms. Id.; HC at 366-70; RC at 55. In particular, C&C did not seek injunctive relief. Id. Finally, in April 2003, GLOBALAW Limited brought suit against C&C in this Court for declaratory relief, seeking a judgment that it was the rightful owner of the mark. See Compl. ¶¶ 19-20. C&C and GLOBALAW, Inc. countersued in January 2004, leading to the present dispute. See C&C's Counterclaim ¶ 38.
b. How Has the Mark "GLOBALAW, Inc." Been Held Out to the Public?
A review of C&C's Counterclaim and the deposition of Haggai Carmon shows that C&C's public use of the mark "GLOBALAW" is inexact and frequently shifting. The "GLOBALAW" service mark has been publicly employed by C&C in at least three ways:
1. The "GLOBALAW" mark has appeared in one form at the top of C&C's letterhead, prominently bearing the words "Carmon & Carmon," with the following words, in much smaller script, on the right side of the page: "Administrators of GLOBALAWSM A Worldwide Network of Independent Law Firms." See Countercl. Defs.' Mot. for Summ. J., Ex. 13 (4/11/00 C&C Letter).
2. At other times, it has appeared at the top of the firm's letterhead, stating:
EXCLUSIVELY FOREIGN AND INTERNATIONAL LAW A DIVISION OF CARMON & CARMON LAW OFFICES
See id., Ex. 14 (2003 letter from C&C ).
3. Finally, a website maintained by the Carmons, located at www.globalaw.com, provides:
GLOBALAW is an international law firm assisting its clients in their foreign legal matters through its network of members in 85 countries. Break the time, language and cultural barriers. Call GLOBALAW with your foreign legal questions.
A New York based international law firm exclusively dedicated to foreign and international law serving individuals, corporations and the U.S. Government.
Foreign Law. Transactional Law. Private International Law. Public International Law. A maze of the unknown without a roadmap. Need a guide? Call GLOBALAW[.]
Certain rights, recognized by some legal systems, are denied by others. Any person transacting with a foreign country privately or within a business may need to be aware of the rights and liabilities under that particular country's laws. Do you know what they are?
If you have a problem involving these areas of the law, or would simply like to avoid one: Call GLOBALAW.
See Chotvacs Decl. ¶ 3 & Ex. U (screen shot of www.globalaw.com). This appears in conjunction with a logo that contains the term "GLOBALAW." Id.
C&C does not contest any of these varying uses, despite the fact that #2 and #3 arguably run afoul of the New York State Bar Association Lawyer's Code of Professional Responsibility. The State of New York has long prohibited trade names pursuant to DR 2-102(B), which provides:
A lawyer in private practice shall not practice under a trade name, a name that is misleading as to the identity of the lawyer or lawyers practicing under such name, or a firm name containing names other than those of one or more of the lawyers in the firm . . . .
22 NYCRR § 1200.7[B] (emphasis added). As such, New York has consistently censured firms which attempt to use some form of trade name in a manner similar to the way the Carmons have -- at times -- used the GLOBALAW mark within the State of New York. See Matter of Shephard, 92 A.D.2d 978, 459 N.Y.S.2d 632 (1983) (censuring firm entitled "The People's Law Firm of Jan. L. Shephard, Attorney, P.C." for practicing under a trade name); cf. Matter of von Wiegen, 470 N.E.2d 838, 63 N.Y.S.2d 163 (1984) (allowing lawyer to use the phrase "The Country Lawyer" in a flyer "because the lawyer's name was inserted apart from the motto").
c. What Have Been the Practical Contours of C&C's "GLOBALAW, Inc." or "GLOBALAW" Since Its Inception?
In addition to the fact that C&C's public use of the mark "GLOBALAW" has differed in substantial ways throughout the years, C&C has also been sporadic and inconsistent as to the precise contours of its "GLOBALAW, Inc." or "GLOBALAW" in this lawsuit. In its Answer and Counterclaim, C&C explained that it used the "GLOBALAW" mark
as a means of connecting many firms around the world, including the United States, in a network of law firms in order to refer work to each other and receive referrals from each other. They used and are continuously using the Mark as an indication of their own worldwide contacts with law firms in the United States and in many countries. In both of these ways and in others, they used and continuously use the Service Mark, inter alia, to designate the source of their law and business practice.
C&C's Counterclaim ¶ 38. C&C further claimed in its Counterclaim that it "sent membership packages to many law firms in the 1980s and 1990s soliciting or facilitating their membership in their alliance of law firms called 'Globalaw.'" Id. ¶ 40.
Following the Counterclaim Defendants' extended attack on the existence of such a claimed "network" instigated by C&C through its "GLOBALAW" imprimatur, C&C has abandoned its initial "network" allegations. Indeed, C&C -- in its Opposition to Counterclaim Defendants' Motion for Summary Judgment -- criticizes Counterclaim Defendants for making a "straw horse" issue out of its non-existent network, arguing:
Carmon is not here claiming a network of lawyers. It is asserting that the GLOBALAW service mark identifies the source of the firm's legal services. Haggai Carmon repeatedly affirmed and reaffirmed in his depositions that GLOBALAW is the same as Carmon and Carmon -- it is the name the firm uses to identify itself in the practice of law and its services. (Exh. 11). Counterclaim Defendants['] attempt to erect a straw horse network issue so they can knock it down in their memorandum. Carmon does not lay claim to infringement or monetary award relating to a network owned, operated by, or conducted by Carmon & Carmon. Whether there was or is a group of law firms Carmon has worked with in the past or works with now in the form of a network, is irrelevant to the infringement and monetary award sought in this case.
C&C's Opp'n to Countercl. Defs.' Mot. for Summ. J. at 9-10; see also id. at 12 n.4 ("Globalaw, Inc. was merely a service company and ceased to operate several years ago. It never had a network."); but see 11/28/05 Haggai Carmon Aff. ¶ 4 (apparently contradicting this contradictory argument, noting that "[i]n this litigation, we do not claim anything for the network of law firms we have formed and worked with over many years").
Given that C&C has offered two, completely contradictory claims in its pleadings about what "GLOBALAW, Inc." or "GLOBALAW" actually is or does, the Court shall turn to the evidence in the record to try to get a better understanding of GLOBALAW, Inc.'s contours for the purposes of this suit. Upon examination of the evidence, it appears as though C&C's newest allegation -- i.e., that "GLOBALAW" is merely a synonym for "C&C" and its individual work -- is the most accurate.
For instance, while "GLOBALAW, Inc.'s" website claims that it "is an international law firm assisting its clients in their foreign legal matter through its network of members in 85 countries," see Chotvacs Decl. ¶ 3 & Ex. U (screen shot of www.globalaw.com), Haggai Carmon himself now admits that GLOBALAW, Inc. is not a law firm and does not provide any type of legal services. See HC at 32 ("GLOBALAW, Inc. never appeared anywhere. It is not a law firm."). Moreover, while both its website and its Counterclaim repeatedly reference a network of law firms associated through "GLOBALAW, Inc.," C&C's frequently alleged network is unfounded. Simply, C&C has no idea of who is (or is not) a member of its so-called network and has made no effort to recruit members. During Mr. Carmon's TTAB deposition, he was asked if there was a list that existed of the members as of May 7, 2002, that are part of C&C's "GLOBALAW" network; Mr. Carmon responded: "We have a list but I don't know if it is still valid." TTAB at 50. Mr. Carmon's list of alleged network members is not publicly available. See HC at 342. Also, it was C&C's practice not to recruit U.S. attorneys into any network, and it therefore made no effort to systematically communicate with U.S. attorneys to that end. See HC at 188-89, 684-86; TTAB at 48-49. C&C also made no effort to track who was using the GLOBALAW name and who was not, see HC at 683-84, and Mr. Carmon does not know which of the people on his list of alleged network members is actually using the designation "GLOBALAW," see id. at 339-41. C&C does not track the referrals it receives from other attorneys, see RC at 42-43, and also has not arranged for any supposed member law firms to secure any rights to the name Globalaw outside of the United States, see HC at 691.
Indeed, with but one exception, there were or are no written agreements or other formalities binding C&C or "GLOBALAW, Inc." with any other U.S. law firms. See HC at 135. The sole "exception" was an agreement in or about 1994 with a law firm in Seattle that Mr. Carmon could not identify by name at his deposition. See id. at 136-37. C&C admits that it has not communicated with that unknown firm for a number of years, see HC at 185, and that C&C has belatedly learned (as a result of inquiries made after Haggai Carmon's deposition) that the firm ceased to exist in the United States years ago, with the result that it is no longer authorized to use the GLOBALAW name, see id. at 565-67, 677. Mr. Carmon explained his failure to notice that the only other alleged member of his network left the country years ago by stating, "But they vanished . . . and I had no reason to suspect that there was anything wrong . . . ." Id. at 702. C&C has not had any communication with that firm since 1996, and cannot even say whether or not the firm ever used the name "GLOBALAW." Id. at 135-38. Indeed, at his deposition, Mr. Carmon could name only three (3) attorneys in the United States to whom C&C gave permission to use the name "GLOBALAW," id. at 139-47, and C&C has no idea how these individual attorneys may -- or may not -- have used the name, when such "use" stopped or started, or even where some or all of these attorneys are now located, id.
Accordingly, a review of the evidence in the record before the Court indicates that C&C has described "GLOBALAW" as a viable network of numerous international law firms and has used the mark "GLOBALAW" in a manner approximating a trade name. However, in practice, "GLOBALAW, Inc." has basically been a synonym for the work of C&C alone, used to denote and promote the fact that the two-person law firm specializes in international law and has experience in that field. Rather than being "global" in scope, C&C's practice -- and thereby its use of the "GLOBALAW" mark -- has been confined almost entirely to the State of New York, specifically, New York City, and the sovereign nation of Israel. See 11/28/05 Haggai Carmon Aff. ¶ 6 (listing the matters on which he has worked). Indeed, while C&C claims that it has "promoted the mark GLOBALAW extensively for at least [the] past 18 years, using word of mouth, print advertising, brochures, a web site, and other means," id. ¶ 2, C&C admits that it has spent only approximately $15,000.00 nationwide on advertising annually, see Countercl. Defs.' Reply at 10 (citing C&C's Resp. to Countercl. Defs.' Interrogs.).
2. GLOBALAW Limited -- the Counterclaim Defendants
As noted above, "GLOBALAW Limited" -- an international network of more than seventy (70) law firms, and over 2,600 lawyers, in over seventy-five (75) jurisdictions, see Birkeland Decl. ¶ 5(a) -- was initially formed in 1993 by the director of an international legal studies institute in Austria, an individual named Dennis Campbell. See DC at 13-16, 29, 31-32. This network started with forty (40) or fifty (50) law firm members. See id. at 31-32. From the beginning, "GLOBALAW Limited" was designed as a way for law firm members to develop one-on-one personal relationships from which referral business could flow. See id. at 29-30. However, referrals by a U.S.-based member of GLOBALAW Limited do not necessarily provide the referring firm any instantaneous benefit, "either by way of new clients or fees." BSAI's Rule 26(c) Mot. for Protective Order at 22; 11/14/05 Kay Opinion at 21-22 (noting that C&C does not contest this point). BSAI, JW, and GSB began to use to term "GLOBALAW" in connection with this network when they entered into pre-2002 licensing agreements with Campbell. See, e.g., Brown Decl., Ex. 2 (9/14/98 Understanding Between Campbell and BSAI); Birkeland Decl., Ex. 2 (1/18/94 Understanding Between Campbell and JW); Fernald Decl., Ex. 2 (2/14/01 Understanding Between Campbell and GSB).
All of the Law Firms (i.e., BSAI, JW, and GSB) have substantially the same sort of rights granted to them directly from Campbell as of the time they joined his fledgling organization. See id. Campbell affirmatively represented himself to be the "owner of the rights to the trademark 'GLOBALAW'" and he -- by contract -- explicitly granted each a license to use the mark. See id. On or about February 28, 2002, Campbell and GLOBALAW Limited signed a contract entitled the "Asset Transfer and Consulting Agreement," dated as effective January 1, 2002 (the "Asset Transfer Agreement"). See Birkeland Decl. ¶ 9 & Ex. 4 (Asset Transfer Agreement); see also C&C's Opp'n to Countercl. Defs.' Mot. for Summ. J., Ex. 4 (same). Pursuant to the Asset Transfer Agreement, Campbell transferred to GLOBALAW Limited all rights associated with the "Globalaw" mark worldwide, whether registered or not, and acknowledged that he in fact owned such rights. Id. at § 6.2 ("Assignor is the sole owner of the Marks and Domain Names, and has used the Marks and Domain Names exclusively in connection with the business and affairs of the Globalaw association."). Campbell also assigned all proprietary rights relating to the www.globalaw.net website; all organization records, including those of U.S. members such as BSAI, JW, and GSB; and all membership dues, including those of U.S. firms. Id. Among other things, Campbell also agreed to assist with applications to register "GLOBALAW" in any jurisdiction in the world where they are not now registered. Id.
GLOBALAW Limited and its members -- including Counterclaim Defendants BSAI, JW, and GSB -- have used the "GLOBALAW" mark since the Asset Transfer Agreement with the belief that Campbell had transferred all rights he had in the "GLOBALAW" mark. In their respective depositions, both C. Baird Brown, on behalf of GLOBALAW Limited, and Campell made clear that the Asset Transfer Agreement was the mechanism through which Campbell transferred his rights in GLOBALAW and whereby GLOBALAW Limited acquired such rights. See CBB at 48-49; DC at 149-50. Besides the fact that U.S. law firms were involved, see DC at 58, it was obvious to Campbell that -- under the Asset Transfer Agreement -- he was transferring to GLOBALAW Limited all rights he might have in the "GLOBALAW" name, id. at 58-59.*fn9
b. What Have Been the Practical Contours of Counterclaim Defendants' "GLOBALAW, Limited" Since Its Inception?
Plaintiff and Counterclaim Defendant GLOBALAW Limited -- which includes BSAI, JW, and GSB -- is an association of law firms that engage in relationships with each other. See Birkeland Decl. ¶ 8. However, GLOBALAW Limited does not itself refer clients to its member firms. Id. Unlike the alleged network of C&C's "GLOBALAW, Inc.," GLOBALAW Limited is an actively functioning organization which ties its selected members together on a regular and consistent basis. At least four key differences exist between GLOBALAW Limited and the evidence produced by C&C regarding its claimed, now-moribund "GLOBALAW, Inc."
First, the member law firms of GLOBALAW Limited are listed and available to the public on its website, www.globalaw.net. Id. ¶ 5(a). Reference to GLOBALAW Limited's website, and the websites of its individual members, makes plain the substantial nature of the size and capabilities of the firms operating under the "GLOBALAW Limited" umbrella.
GLOBALAW Limtied does not provide services to the public under the name "GLOBALAW," but instead under the name(s) of its individual members. Id. As a selection of the members' information from the website indicates, most firms consist of more than ten (10) lawyers, with a substantial number -- particularly in the larger cities -- being upwards of thirty (30) and sometimes over 100 lawyers. Id. Indeed, the vast bulk of the U.S. law firm members of GLOBALAW Limited have in excess of 100 lawyers, and no member of GLOBALAW Limited based in the continental United States has less than forty (40) lawyers. Id.
Second, membership in GLOBALAW Limited is not open to everyone, nor is it solicited by mass, anonymous mailings. Id. ¶ 5(b). Generally, a GLOBALAW Limited firm is selected to provide expertise in a specific geographic area. Id. Also, by choice, there is no GLOBALAW Limited member with its principal office in either New York City or New York State -- the location of C&C. Id. Member firms do not provide services under the designation "GLOBALAW," in contrast to the way that C&C has often held itself out to the consuming public. Instead, they use it only to denote their membership in the GLOBALAW Limited network of firms. Id. Such a reference is always made in conjunction with the prominent use of their firms names. Id.
Third, GLOBALAW Limited is not merely a list of names of people who might (or might not) be able to provide legal services. Id. ¶ 5(c). Rather, it is also an active organization. Id. GLOBALAW Limited has a Board of Directors that holds meetings generally once a month, with most being by telephone conference, although at least one (1) meeting a year is in person. Id. There are annual regional meetings of network members in Europe, the Americas, and the Asia Pacific region, as well as one (1) annual meeting to which all network members are invited. Id.
Network members receive regular notice of meetings and network initiatives. Id. Moreover, members cannot merely be passive participants, and each member is required to appoint a representative and an alternate and is expected to attend the meetings. Id. Such active participation creates the personal relationships among members that are at the heart of the GLOBALAW Limited organization. Id.
Fourth, and finally, the continental U.S. members of GLOBALAW Limited pay at least $7,000 in membership dues per year. Id. ¶ 5(d). These dues cover network expenses such as the cost for the third party currently retained to administer the GLOBALAW Limited network. Id.*fn10
Among other things, the outside third party assists in setting up meetings and conferences, keeping up the website, and maintaining its professional appearance in keeping with the standards of the member firms.
C. The History Leading Up to the Present Suit
As previously noted, in November 1994, Campbell filed an application in the United States Patent and Trademark Office requesting federal registration of the service mark "GLOBALAW" for "association services." See DC at 29; Birkeland Decl. ¶ 6. Following Campbell's valid application, C&C filed a U.S. application for registration of the name "GLOBALAW" for "foreign and international legal services" on February 3, 1995. See Birkeland Decl. ¶ 6; see also USPTO website, available at http://www.uspto.gov (wherein C&C, in Reg. No. 74629447, states that is registering the term under International Class 035, for "foreign and international legal services"). In addition, Haggai Carmon of C&C filed an opposition to Campbell's registration in 1996. See DC at 42. Discovery and various procedural events caused the proceeding before the TTAB to continue without resolution through about 2001; these proceedings have subsequently been stayed pending the resolution of this suit. See Birkeland Decl. ¶ 6.
While the TTAB proceedings dragged on, GLOBALAW Limited -- on behalf of its member firms -- brought suit in this Court for declaratory relief in April 2003, seeking a judgment that it was the rightful owner of the mark. See Compl. ¶¶ 19-20. C&C and GLOBALAW, Inc. countersued GLOBALAW Limited, BSAI, JW, and GSB in January 2004, leading to the present dispute. See C&C's Counterclaim ¶ 38. C&C's Counterclaim -- which contends that it actually is the senior user of the relevant mark -- alleges four separate alleged violations that are now the subject of Counterclaim Defendants' Motion for Summary Judgment:
(1) trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1141(1), see id. ¶¶ 54-57 (Count I); (2) trademark infringement, false designation of origin, passing off, and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), see id. ¶¶ 58-61 (Count II); (3) false and misleading statements of fact under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B), see id. ¶¶ 59-65 (Count III); and (4) common law trademark infringement, unfair competition, and misappropriation, see id. ¶¶ 66-69 (Count IV).
A. Motion For Summary Judgment Pursuant to Federal Rule of Civil Procedure 56(c)
A party is entitled to summary judgment if the pleadings, depositions, and affidavits demonstrate that there is no genuine issue of material fact in dispute and that the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Tao v. Freeh, 27 F.3d 635, 638 (D.C. Cir. 1994). Under the summary judgment standard, Counterclaim Defendants, as the moving party, bear the "initial responsibility of informing the district court of the basis for [its] motion, and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits which [it] believe[s] demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). C&C, in response to the Counterclaim Defendants' motion, must "go beyond the pleadings and by [its] own affidavits, or depositions, answers to interrogatories, and admissions on file, 'designate' specific facts showing that there is a genuine issue for trial." Id. at 324 (internal citations omitted).
Although a court should draw all inferences from the supporting records submitted by the nonmoving party, the mere existence of a factual dispute, by itself, is not sufficient to bar summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). To be material, the factual assertion must be capable of affecting the substantive outcome of the litigation; to be genuine, the issue must be supported by sufficient admissible evidence that a reasonable trier-of-fact could find for the nonmoving party. Laningham v. U.S. Navy, 813 F.2d 1236, 1242-43 (D.C. Cir. 1987); Liberty Lobby, 477 U.S. at 251, 106 S.Ct. 2505 (the court must determine "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law"). "If the evidence is merely colorable, or is not sufficiently probative, summary judgment may be granted." Liberty Lobby, 477 U.S. at 249-50, 106 S.Ct. 2505 (internal citations omitted). "Mere allegations or denials in the adverse party's pleadings are insufficient to defeat an otherwise proper motion for summary judgment." Williams v. Callaghan, 938 F. Supp. 46, 49 (D.D.C. 1996). The adverse party must do more than simply "show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Instead, while the movant bears the initial responsibility of identifying those portions of the record that demonstrate the absence of a genuine issue of material fact, the burden shifts to the non-movant to "come forward with 'specific facts showing that there is a genuine issue for trial.'" Id. at 587, 106 S.Ct. 1348 (citing Fed. R. Civ. P. 56(e)) (emphasis in original).
"Summary judgment may be granted in trademark matters where there is no protectable trademark interest and no likelihood of confusion." Info. Superhighway, Inc. v. Talk Am., Inc., 395 F. Supp. 2d 44, 50 (S.D.N.Y. 2005) (citations omitted); see also Frosty Treats Inc. v. Sony Computer Entm't Am., Inc., 75 U.S.P.Q.2d 1570, 1572 (8th Cir. 2005) (affirming summary judgment that "Frosty Treats" was not a protectable mark because it was descriptive "at best" and there was "no basis for concluding that it has acquired secondary meaning"); Packman v. Chicago Tribune Co., 267 F.3d 628, 646 (7th Cir. 2001) (affirming summary judgment because there was no likelihood of confusion); Davis v. Walt Disney Co., 75 U.S.P.Q.2d 1044, 1048-50 (D. Minn. 2005) (granting summary judgment on the bases that the "minimal, sporadic evidence of Plaintiffs' use . . ., as a matter of law, is not sufficient to establish that the mark 'conjures up a particular service or product in the minds of customers'" and that "even if Plaintiffs had a valid registered or common law trademark . . . no likelihood of confusion exists as a matter of law") (citation omitted); Johnson v. ...