C. ASHLEY ROYAL, District Judge.
This trademark and copyright infringement action is currently before the Court on Defendants and Counterclaimants Our Firm Foundation For Koreans, Inc. ("OFFK"), Paul Im, Chang Sup Shim, and Justin Kim's Motion for Summary Judgment [Doc. 62] and Motion for Partial Summary Judgment [Doc. 64]. Having considered the Motions, the parties' arguments, and the applicable law, the Motion for Summary Judgment [Doc. 62] is
Under Rule 56 of the Federal Rules of Civil Procedure, summary judgment must be granted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law."
The moving party "always bears 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, if any, which it believes demonstrate the absence of a genuine issue of material fact" and that entitle it to a judgment as a matter of law.
This intellectual property dispute arises from a doctrinal split within a Christian ministry. The Court's task of determining the undisputed facts has been unnecessarily complicated by Plaintiffs Light for Life, Inc. and Pastor David Byung Kook Kang's failure to cite to evidence supporting their argument that genuine issues of material fact remain. Federal Rule of Civil Procedure 56 requires that, on summary judgment, "[a] party asserting that a fact . . . is genuinely disputed must support the assertion by . . . citing to particular parts of materials in the record."
In response to Defendants' Motions, Plaintiffs summarily deny facts without providing any cites to the record. Nevertheless, the Court has exercised its discretion and carefully reviewed the evidence submitted by Plaintiffs to determine whether their conclusory denials are supported by the evidence.
The road to the current litigation began in 1989, when Plaintiff Pastor Kang founded his ministry on the writings of Ellen G. White and the traditions of the Seventh Day Adventist movement.
In the early 1990s, Pastor Kang and OFFK expanded their ministry to non-Adventists and adopted the "Light for Life" mark to promote this new facet of their ministry.
OFFK, however, disputes Pastor Kang's depiction of the circumstances surrounding the adoption of the "Light for Life" mark. OFFK represents that, in early 1993, it began searching for a new name for its outreach ministry because "Our Firm Foundation," the organization's name and title of its magazine, was not appealable to non-Adventists.
It is undisputed that OFFK began to use the "Light for Life" mark in its distributed materials, including its monthly outreach magazine and its television ministry in the early 1990s.
In addition to adopting the "Light for Life" mark, the parties created websites to promote ministry outreach, which included www.lightforlife.org, www.sostv.net, www.finalg.org, www.askbible.net, www.askssabbath.org, and www.holytube.org (collectively, the "Websites").
Pastor Kang also wrote and delivered speeches, lectures, sermons, books, articles, and other works of authorship to promote ministry outreach.
Over time, significant disagreement and strife regarding the theological direction of the ministry arose between Pastor Kang and OFFK board members, Defendants Paul Im and Chang Sup Shim.
After Pastor Kang resigned, the parties began to dispute the ownership of several of the ministry assets. On February 24, 2012, Plaintiffs sent a letter to OFFK revoking OFFK's license to use the "Light for Life" mark and directing OFFK "to cease and desist carrying out any actions on behalf of [LFL, Inc.] or claiming an affiliation with or authority to act on behalf of [LFL, Inc.]."
On March 30, 2012, Plaintiffs LFL, Inc. and Pastor Kang filed this trademark and copyright infringement suit against Defendants OFFK, Paul Im, Chang Sup Shim, and Justin Kim. After filing suit, Plaintiffs obtained federal trademark registrations for "Light for Life" (Reg. No. 4,233,113) and "Light for Life Ministry" (Reg. No. 4,233,109) from the United States Patent and Trademark Office ("USPTO").
Following the Court's order on Defendants' motion to dismiss and Plaintiffs voluntary dismissal of one claim, Plaintiffs' remaining claims include: false designation of origin under 15 U.S.C. § 1125(a) of the Lanham Act (Count II); copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101, et seq. (Count IV); trademark infringement, counterfeiting, and dilution under both federal common law and Georgia state law (Count V); unfair competition under Georgia common law (Count VI); deceptive trade practices under O.C.G.A. § 10-1-370, et seq. (Count VII); conversion (Count VIII); civil liability for computer trespass pursuant to O.C.G.A. § 16-9-93 (Count IX); and civil liability for false identification by use of computer pursuant to O.C.G.A. § 16-9-93.1 (Count X).
Defendants answered, denied liability, and asserted sixteen counterclaims of their own against LFL, Inc., Pastor Kang, and Counterclaimant Gina Cho. These counterclaims include similar claims for, inter alia, unfair competition, trademark infringement, deceptive trade practices, dilution, conversion, and breach of fiduciary duties. Defendants seek declaratory and injunctive relief as well as punitive damages.
On December 19, 2014, following a prolonged stay in this case due to the waning health of Pastor Kang, Defendants collectively moved for summary judgment on all of Plaintiffs' claims. On that same day, Defendants moved for partial summary judgment on Counts I-III of their counterclaims, in which they seek (1) a declaratory judgment that they did not infringe the "Light for Life" and "Light for Life Ministry" marks and (2) cancellation of Plaintiffs' federal trademark registrations for these marks. In addition, Defendants have moved for summary judgment on Counts XII-XIII of their counterclaims for conversion of the Websites, donor information, and ministry funds.
In response, Plaintiffs voluntarily dismissed their claims against Defendants Paul Im, Chang Sup Shim, and Justin Kim without prejudice. However, Plaintiffs argue that genuine issues of material fact remain as to whether Plaintiffs or OFFK own the trademarks, the Copyrighted Works, domain names, and other personal property at stake in this case, and, therefore, summary judgment would be inappropriate on any of these claims.
The various claims and counterclaims in this case revolve around one primary issue: ownership of ministry assets. The parties dispute ownership of intellectual property, including the rights to use the "Light for Life" mark and the Copyrighted Works. In addition, the parties dispute the ownership of other ministry assets, including, but not limited to, the Websites, donor lists, and vehicles. The Court will address the intellectual property and personal property claims in turn below.
In Counts II, V, VI, and VII of the Complaint, Plaintiffs raise claims for false designation of origin under 15 U.S.C. § 1125(a) of the Lanham Act, trademark infringement, counterfeiting, and dilution under both federal common law and Georgia law, unfair competition under Georgia common law, and deceptive trade practices under O.C.G.A. § 10-1-370, et seq., arising from OFFK's use of the "Light for Life" mark. In Counts I-III of its Counterclaim, OFFK seeks a declaratory judgment that it has not committed trademark infringement as well as cancellation of Plaintiffs' trademark registrations for "Light for Life Ministry" and "Light for Life." OFFK now moves for summary judgment on all of these claims and counterclaims.
The analysis of these federal and state trademark-related claims is materially the same.
First, OFFK argues the undisputed evidence shows it is the rightful owner of the "Light for Life" mark because it was the first to use the mark. In support, OFFK contends it adopted the "Light for Life" mark in early 1993 and first used the mark in September of 1994 by displaying the mark on the cover of its magazine. Plaintiffs counter that the fact OFFK was the first to use the mark in commerce is not dispositive because OFFK's use of "Light for Life" was made pursuant to an oral license granted by Plaintiffs. Thus, OFFK's first use of the mark did not vest OFFK with any ownership rights in the mark.
Under common law, mere adoption of a mark, in and of itself, is not sufficient to create a protectable trademark.
Here, a genuine issue of material fact exists as to whether Plaintiffs controlled OFFK's first use of the mark pursuant to an oral license and whether OFFK's use pursuant to that license vested Plaintiffs with a protectable trademark interest in the "Light for Life" mark. Indeed, there is evidence in the record suggesting Pastor Kang exerted control over OFFK's use of the "Light for Life" mark. Specifically, one witness testified that she approached Pastor Kang about possibly changing OFFK's name to Light for Life, but Pastor Kang indicated he wanted to continue to use both names. If Pastor Kang controlled OFFK's use of the mark pursuant to a license, OFFK would not have a protectable trademark interest arising from its use of the "Light for Life" mark. Instead, ownership rights would vest with Pastor Kang as the licensor. OFFK, however, disputes that its use of the mark was made pursuant to a license. Therefore, whether such a license existed, and, by extension, which party owns the mark, are issues better left for the jury.
OFFK also argues it is entitled to summary judgment because Plaintiffs cannot establish the second element of their trademark-related claims: that OFFK's use of the "Light for Life" mark will likely cause confusion. To determine whether a likelihood of confusion exists, the court must consider seven factors: the "(1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties' retail outlets and customers; (5) similarity of advertising media; (6) defendant's intent; and (7) actual confusion."
OFFK contends there is no evidence that OFFK sold or distributed the Plaintiffs' products and services bearing the "Light for Life" mark after February 24, 2012, when Plaintiffs allegedly revoked the trademark license. Plaintiffs, however, have presented letters sent from OFFK to third parties bearing the "Light for Life" mark and purporting to be from the Light for Life Ministry after February 2012. In addition, Plaintiffs have presented a letter displayed on the Websites during the time when OFFK controlled access to these Websites. This letter purports to be from the Light for Life board of directors and requests continuing financial support from the ministry's followers. Clearly, if OFFK used the mark in the same channels (websites, letters), targeted at the same audience (Adventist and non-Adventist Christians), in the same industry (Christian ministry), a jury could find a likelihood of confusion.
Because genuine issues of material fact exist as to who owns the "Light for Life" mark and whether the opposing party's use of the mark will likely cause confusion, summary judgment on Plaintiffs and OFFK's trademark-related claims and counterclaims must be denied.
In Count IV of their Complaint, Plaintiffs allege that OFFK committed copyright infringement by unlawfully displaying and distributing the Copyrighted Works after Plaintiffs revoked their license to do so. "To establish a claim of copyright infringement, a plaintiff must prove first, that he owns a valid copyright in a work and second, that the defendant copied original elements of that work."
OFFK argues it is entitled to summary judgment because Plaintiffs cannot establish that they own the Copyrighted Works
OFFK argues that Plaintiffs cannot show OFFK committed copyright infringement because Pastor Kang orally granted OFFK a license to distribute the Copyrighted Works and never revoked that license prior to filing this suit. Plaintiffs respond by arguing that the February 2012 letter revoked OFFK's license, but, despite this revocation, OFFK continued to disseminate the Copyrighted Works.
Assuming without deciding that Plaintiffs granted OFFK a license to distribute the Copyrighted Works and the February 2012 letter effectively revoked that license, Plaintiffs have presented no admissible evidence showing that OFFK unlawfully copied or distributed the Copyrighted Works after February 2012. Pastor Kang admitted during his deposition that he has no evidence OFFK copied or published his books, and the record is devoid of any sales of the Copyrighted Works by OFFK. Instead, Plaintiffs point to screenshots from the Websites, a flyer, letters displayed on the Websites, and letters sent to third parties, purportedly displaying and advertising the Copyrighted Works. This evidence, however, is insufficient to create a triable issue of copyright infringement.
First, the website screenshots and flyer purporting to advertise the Copyrighted Works are in Korean. "[F]ederal court proceedings must be conducted in English."
Second, the letters displayed on the Websites as well as the letters sent to third parties do not reference the Copyrighted Works. The only letter that refers to the Copyrighted Works constitutes inadmissible hearsay. In that letter, dated March 11, 2012 and addressed to Pastor Kang, an individual states that she received a list of the recorded sermons or seminars from the Franklin Springs, Georgia address.
Without this evidence, Plaintiffs have failed to show that OFFK copied, distributed, sold, or otherwise used the Copyrighted Works after February 2012. As such, OFFK is entitled to summary judgment on Plaintiffs' copyright infringement claim.
In addition to their intellectual property claims, both Plaintiffs and OFFK assert conversion claims regarding certain personal property. Specifically, Plaintiffs allege OFFK converted ministry assets including the Websites, vehicles, audio and video production equipment, master tapes, donations, and other personal property. Similarly, OFFK alleges that Plaintiffs converted the Websites, donor lists, donations, equipment, and other property from OFFK premises. OFFK seeks summary judgment on all of these claims, arguing that the undisputed evidence shows it is the rightful owner of all the ministry assets.
"To establish a claim for conversion, the complaining party must show (1) title to the property or the right of possession, (2) actual possession in the other party, (3) demand for return of the property, and (4) refusal by the other party to return the property."
Having reviewed the evidence, the Court finds genuine issues of material fact exist on all the conversion claims except for Plaintiffs' conversion claims for the audio and video production equipment, master tapes, donations, and two unidentified vehicles.
Both Plaintiffs and OFFK claim a property interest in the Websites and argue that the opposing party converted the Websites following Pastor Kang's resignation. The evidence shows that OFFK seized control over the Websites in early 2012. Access and control over these Websites was later returned to Plaintiffs. Based on the parties' respective periods of control, both Plaintiffs and OFFK raise conversion claims for the other party's alleged interference with their access to the Websites. In its Motions, OFFK now argues the undisputed evidence shows it owns the Websites, and therefore, it is entitled to summary judgment on these claims. The Court, however, finds a genuine issue of material fact exists as to who owns the Websites.
The Websites are registered by a third party, Min Ju Kim, who OFFK admits is not an employee or agent of OFFK. Instead, the registrant is a follower of Pastor Kang. Moreover, the parties dispute who paid the registration fees for the Websites. OFFK claims it paid the domain name registration fees; whereas Pastor Kang claims the Websites were created and maintained by Light for Life Ministry's Korean affiliate and were funded by donations to Light for Life Ministries.
Plaintiffs also claim OFFK converted other ministry assets including vehicles, audio and video production equipment, master tapes, and ministry donations. OFFK now moves for summary judgment, arguing Plaintiffs have failed to present any evidence showing Plaintiffs owned the referenced personal property.
Plaintiffs do not argue or present any evidence showing OFFK converted audio and video production equipment, master tapes, or ministry donations. Because Plaintiffs fail to address OFFK's argument regarding this property, the Court finds Plaintiffs have abandoned their conversion claims as to that property.
Plaintiffs do, however, present evidence regarding their conversion claim of the vehicles. Plaintiffs contend OFFK converted three vehicles owned by LFL, Inc. Pastor Kang avers that he demanded return of the three vehicles after he resigned from OFFK, but OFFK refused. OFFK later sold one of the vehicles without Plaintiffs' authorization. To support their claim of ownership, Plaintiffs offer a copy of the registration suspension notice for one of the vehicles showing it was registered in LFL, Inc.'s name.
Having considered the evidence, the Court finds a genuine issue of material fact exists as to who owns the one vehicle for which Plaintiff has proffered a vehicle registration suspension showing title in LFL, Inc.'s name. Plaintiffs' evidence, however, falls short of demonstrating ownership of the other two unidentified vehicles.
Accordingly, OFFK's is entitled to summary judgment on Plaintiffs' conversion claims for the audio and video production equipment, master tapes, ministry donations, and two unidentified vehicles; summary judgment, however, must be denied with respect to the one vehicle identified in the registration suspension notice.
OFFK also asserts a counterclaim for conversion of donor lists, donations, equipment, and other property. OFFK contends, after he resigned, Pastor Kang took donor lists used in OFFK's ministry that belonged to OFFK. In addition, OFFK contends that Pastor Kang's son-in-law and his followers removed property including computer and video equipment from OFFK's office during the two-week transition period following Pastor Kang's resignation.
As to OFFK's claim for conversion of donor lists, a genuine issue of material fact remains as to who owns those lists. Pastor Kang admits to using these lists, but argues that OFFK did not own them. Instead, Pastor Kang states that all the organizations affiliated with the Light for Life Ministry routinely shared the lists. Thus, the ownership of these lists is an issue for the jury.
As to OFFK's claim regarding the office equipment, a genuine issue of material fact exists as to whether Plaintiffs converted the personal property allegedly taken from OFFK's office. Plaintiffs do not contest that OFFK owns the office equipment Pastor Kang's son-in-law and other followers are accused of removing from OFFK's office. Rather, Pastor Kang avers he does not possess the disputed property. OFFK, however, claims Plaintiffs have the property. Thus, there appears to be a genuine issue of material fact as to the second element of conversion.
Moreover, assuming Pastor Kang's son-in-law and other followers took the property, an issue remains as to whether they were acting on behalf of or at the direction of Pastor Kang. Under Georgia law, an agent and the principal on whose behalf the agent acts can be liable for conversion.
In addition to their intellectual property and personal property claims, Plaintiffs seek redress under the Georgia Computer Systems Protection Act ("CSPA") for OFFK's alleged interference with the Websites. The Georgia Assembly enacted the CSPA to address problems with "computer related crimes" and to aid the "prosecution of persons engaged in computer related crime."
A party commits computer trespass when it
OFFK argues it is entitled to summary judgment on Plaintiffs' computer trespass claim for two reasons. First, Plaintiffs fail to show that OFFK's access to the Websites was "without authority" because the undisputed evidence shows that OFFK was the rightful owner of the Websites. However, for the reasons provided above, a genuine issue of material fact remains as to who rightfully owns the Websites, and thus, OFFK is not entitled to summary judgment on this ground.
Second, OFFK argues that Plaintiffs have produced no evidence showing that OFFK intentionally deleted or removed any computer program or data from the Websites. The CSPA, however, states that a party may commit computer trespass by "obstructing, interrupting, or in any way interfering with the use of a computer program or data."
In Count X, Plaintiffs assert a claim under section 16-9-93.1 of the CSPA, which prohibits a party from knowingly transmitting data through a computer network if that data contains a trade name or registered trademark "to falsely identify the [party] transmitting such data" or "falsely state or imply that such [party] has permission or is legally authorized to use" the trade name or registered trademark.
Based on the foregoing, OFFK's Motion for Summary Judgment [Doc. 62] is
