Court Dismisses Federal Trademark Action against Bishop Lawrence

Today Senior Judge C. Weston Houck of the Federal District Court in the District of South Carolina entered an order dismissing "without prejudice" the federal trademark infringement lawsuit filed in that court by Provisional Bishop vonRosenberg of the "Episcopal Church in South Carolina" against Bishop Mark Lawrence of the independent Episcopal Diocese of South Carolina. The dismissal "without prejudice" means that the Court declined to rule on any of the merits of Bishop vonRosenberg's claims, so as not to interfere with the State Court proceeding involving those same issues which is currently before Judge Diane Goodstein in the Court of Common Pleas for the First Judicial Circuit in Dorchester County, South Carolina (see the footnote on page 22 of the Order).

Should the State court proceedings not fully and finally resolve all of the trademark issues between Bishop vonRosenberg and Bishop Lawrence (and there is no reason to conceive why they should not so resolve them), then the dismissal without prejudice leaves Bishop vonRosenberg theoretically free to refile his Lanham Act (federal trademark) claims in the federal district court. However, if the State court proceedings result in a litigated final judgment, then that judgment would operate to bar any further such filings by Bishop von Rosenberg in any court.

Bishop vonRosenberg had asked for the court to enter a preliminary injunction in his favor, while conceding that he himself was already subject to a State-court preliminary injunction which barred him from using the trademarks of the Diocese of South Carolina. The court also had before it Bishop Lawrence's motion to dismiss the federal action, and Judge Houck chose to grant the motion to dismiss rather than get entangled with the State court proceedings by issuing any injunction of his own.

Judge Houck also points out that while Bishop vonRosenberg is not a named party to the State court action, ECUSA itself is a counterclaimant, and its counterclaim there raises the exact same federal trademark claims which Bishop vonRosenberg tried to assert in federal court. Since those claims can be fully adjudicated by the State court (even though they are brought under a federal statute), there is no likelihood that the State court action will not fully and finally resolve them. Thus, there was no need for the federal court to retain jurisdiction, and Judge Houck granted Bishop Lawrence's motion to dismiss.

The opinion, once again, shows Judge Houck's thorough and careful approach to deciding just as much as he needs to -- and no more -- in order to arrive at his decision. It is replete with the finer and more technical points of federal declaratory judgment law as settled in the Fourth Circuit (the federal appellate circuit which includes the State of South Carolina, and which is headquartered in Richmond, Virginia). Because of his care in crafting his order, and also because the federal courts have wide discretion in deciding whether to entertain suits for a declaratory judgment, there is a near-zero probability that ECUSA or Bishop vonRosenberg could successfully appeal the dismissal.

The opinion also demonstrates the very substantial legal issues which are raised by ECUSA's now-standard approach to these cases of withdrawing dioceses (thus far: San Joaquin, Fort Worth, Pittsburgh, and Quincy). Judge Houck fully appreciates that there is only one corporate Diocese under South Carolina law at this point, and that ECUSA claims ownership and control of it by virtue of its "hierarchical" polity. (Score one more meaningless point for ECUSA to quote for future court cases: on page 3 of his Order (footnote 5), Judge Houck acknowledges the Fourth Circuit precedent which binds him to repeat the mantra that ECUSA is a "hierarchy". But the panel which decided that case, Dixon v. Edwards, 290 F.3d 699, 716 (4th Cir. 2002) made that statement as dictum in reaching its conclusion that the parish in Accokeek, Maryland had improperly denied (now deceased) Bishop Jane Dixon personally rights which she enjoyed in her capacity as bishop -- to visit the parish, and to withhold her approval of any new rector, etc. The nature of the structure between ECUSA and its member dioceses was not even remotely at issue in that case, and so the panel's language, being unnecessary to its decision, does not in fact bind any lower court. Perhaps Judge Houck was just being politely deferential to his judicial superiors.)

There is currently only one incorporated Diocese of South Carolina because ECUSA and its proxy ECSC refuse to incorporate one. To do so would give away their claim that member dioceses have no right unilaterally to withdraw from the denomination. So they have made the bed in which Judge Houck leaves them to lie. Their entire chance of success depends on proving to Judge Goodstein that the Constitution and Canons of ECUSA somehow contain language that denies to member dioceses what effectively is their right under the freedom of association guaranteed to all (including both corporations and unincorporated associations) by the First Amendment.

To prove that the DSC ever waived its First Amendment right would require quite a showing -- that it knowingly and voluntarily gave up that right, as documented in some kind of writing, or legislative action by General Convention in which the DSC joined. After years of encountering the kinds of evidence ECUSA throws out to support such a claim indirectly, I am fairly confident that it has nothing directly on point. So as I say, it will have a hard uphill slog in convincing Judge Goodstein that member dioceses are prohibited from withdrawing on their own -- especially with the precedent of the All Saints Waccamaw decision, which guides all inferior South Carolina courts on the rights of religious corporations under State law.

Judge Houck must have been happy to leave such an intricate ecclesiastical dispute for Judge Goodstein. His plate is now empty of all ECUSA matters, and he can hope to spend his retirement years in peace and quiet.

[UPDATE 08/24/2013: At the request of commenter Tom (below), I add some remarks about Judge Houck's standing-to-sue analysis. Standing is an essential requirement for every plaintiff who brings a lawsuit -- if a party does not have standing to sue, then that party may not sue in court -- period. However, there are two kinds of "standing" in federal court cases: first, the constitutional requirement of Art. III, which extends the federal judicial power only to "cases and controversies"; and second, a judge-made doctrine called "prudential standing", which seeks to keep the court from delving into matters that involve persons not before it, or cases that will not lend themselves to complete relief in the framework of the plaintiff's lawsuit.

The difference between them is this: if the plaintiff does not have standing to sue in the constitutional sense, then there is no genuine "case or controversy" for the court to decide. (Think, e.g., of the various attempts over the years to sue God in court for various natural disasters. Not only could the court never acquire personal jurisdiction over such a defendant, so that His side of the matter could never be represented; there would be an insurmountable problem for the plaintiff to prove that the defendant actually caused his injuries.) Without a genuine case or controversy before it, the court lacks subject-matter jurisdiction, and must dismiss the action.

Prudential standing, on the other hand, does not challenge the court's subject-matter jurisdiction -- there may well be a genuine controversy presented -- but it requires the court decide that the plaintiff's case is one that it would be prudent for it to accept, given the limitations of what courts can do.

Bishop Lawrence had attacked the standing of Bishop vonRosenberg in his motion to dismiss -- on both constitutional and prudential grounds. With regard to the former, he first argued that the corporate diocese, which had registered the marks at issue, had not authorized Bishop vonRosenberg to sue for those trademarks, and so he was not the proper party to bring the action. (Moreover, the Diocese was already suing in State court, and had a preliminary injunction against Bishop vonRosenberg to keep him from using the very marks he was asking the federal court to say that he was authorized to use.)

Next, Bishop Lawrence argued that Bishop vonRosenberg could not prove that he individually  had suffered any actual injury in fact -- i.e., that his claims of "injury" were all speculative and hypothetical -- because, again, he had no legitimate stake in the marks at issue, and is under an order not to use them.

How did Judge Houck deal with these arguments? In his characteristically thorough and methodical way. He acknowledged that Bishop vonRosenberg's right to control the assets of the corporate diocese under South Carolina law was at issue in State court (Order, p. 7), but he considered himself bound, under the First Amendment, not to question Bishop vonRosenberg's ecclesiastical status as the duly elected head of a religious organization. And, relying on Dixon v. Edwards (see above), which held that a bishop of a church had standing to sue for injury to, or denial of, rights pertaining to his office, Judge Houck held that Bishop vonRosenberg had a sufficient ecclesiastical stake in the controversy to satisfy the first element of constitutional standing (id. at 8). And given that finding, he had no difficulty in satisfying the other two elements of constitutional standing (causation and amenability to relief), as well (id. at 8-9) -- assuming Bishop vonRosenberg could show that he was indeed entitled to control of the corporate diocese.

Judge Houck's examination of "prudential standing" (pp. 9-11) raises a very interesting point for purposes of federal law. Because the Lanham (federal trademark) Act was central to the case, other courts had developed the doctrine that to have prudential standing under that Act, the plaintiff must be "engaged in commercial activity." (That is the third element of prudential standing; Judge Houck found that Bishop vonRosenberg easily satisfied the first two: he was not asserting the legal rights of a third party, or seeking adjudication of abstract questions or of a generalized grievance [id. at 10].)

But what does it mean to say that churches are engaged in "commercial activity"? (Think of Jesus' warning about nor trying to serve both God and Mammon.) It would seem to demean the entire spiritual purpose and character of a religious denomination to subject it to a criterion that measures the degree to which its pursuits are "commercial."

And here, Judge Houck took refuge in a prior decision of his Fourth Circuit, which had long ago settled this issue: see his quotation from Purcell v. Summers (4th Cir. 1944) 145 F.2d 979, 985, in note 9 on p.11. So in the eyes of the (federal) courts, at any rate, operating a church is just like operating a business: you have competition, and you have to make a "profit." I think that such a view underscores St. Paul's warning about taking Christian controversies into the civil courts, and demonstrates why our Presiding Bishop cannot heed his warning: she thinks just as the civil courts do.

So, by finding that Bishop vonRosenberg and his ECSC are engaged in a commercial activity, and seek to better their competition and make more money, Judge Houck completed his rejection of each of Bishop Lawrence's standing arguments. And somehow, considering how Bishop vonRosenberg and his group have conducted themselves to date, I see that finding as most appropriate.

Note, however, that their convincing the court that they had "standing" did not mean that they prevailed on the motion to dismiss. Because Judge Houck could see that the State court action offered a far better arena in which to resolve all the pending disputes between the various parties, he was happy to dismiss the federal action by exercising his wide discretion under the Declaratory Judgment Act.]