GIRL SCOUTS OF UNITED STATES OF AM. v. HOLLINGSWORTH Civ. A. No. 19628.
188 F.Supp. 707 (1960)
GIRL SCOUTS OF the UNITED STATES OF AMERICA and Boy Scouts of America, Plaintiffs, v. R. Lee HOLLINGSWORTH, individually and doing business as the Hollingsworth Company, Defendant.
United States District Court E. D. New York.
July 13, 1960.
R. Lee Hollingsworth, pro se.
ABRUZZO, District Judge.
The plaintiffs instituted this action to enjoin the defendant who appears herein pro se from using in any manner the words "Safety Scout," "Safety Scout Master," "Scout," "Scouts," "Scouting," or any word or words, syllable or syllables confusingly similar thereto, alone or in combination with any other syllable, syllables, word or words, on or in connection with the promotion, advertising, offering for sale or sale of any program, goods or services, or either of them, not plaintiffs' which, as a result of such use, are likely to be purchased as and for plaintiffs' program, goods or services or as sponsored by them, or either of them; and from using said words in association and in combination with defendant's commercially advertised radio and television programs, and from using said words
The plaintiffs now move for summary judgment and the defendant moves to dismiss the complaint.
The complaint alleges infringements and acts of unfair competition by the defendant of registered and common-law trademarks of the plaintiff Girl Scouts and common-law trademarks of the plaintiff Boy Scouts by the defendant's adoption and using the term "Safety Scout" in interstate commerce in association and in connection with defendant's promotion of a commercial advertising and merchandising program; that he has used in interstate commerce the term "Safety Scout" on products and goods of all kinds including, but not limited to, children's clothing, bicycles, toys, pocket pencil and pen protective shields, school supplies, pencils, pens, jewelry, watches, bracelets, tie clasps, belts, belt buckles, rings, candy bars and bubble gum, and that as part of his commercial advertising and promotional venture he has copied and incorporated essential features of plaintiffs' safety programs by using the terms, "Scouts," "Safety Scout" and "Safety Scoutmaster," in association and conjunction with a safety program which defendant sells and offers to sell in interstate commerce to commercial sponsors on a national basis, to television and radio networks, and to any individual or company who will buy his products, goods and supplies, and offering to furnish to any purchaser of said program products and goods and membership cards and emblems bearing the words "Safety Scout" to be distributed as give-away prizes to girls and boys as part of his merchandising plan, and for the purpose of creating the impression among children and their parents that the holder of a Safety Scout Emblem is a member of either plaintiff; that defendant has used and threatens to continue using the words "Safety Scout Program" as the title of a radio and television program promoting safety and directed primarily to boys and girls. In the script for this program the announcer is referred to as Safety Scoutmaster of Ceremonies and Safety Scoutmaster, and said program invites girls and boys to become Safety Scouts and offers membership cards and emblems bearing the words "Safety Scout" to all who apply. Said radio and television programs are also used to promote and sell defendant's advertising service, products and goods under the designation "Scout"; that in furtherance of defendant's plan to appropriate plaintiffs' good will and trademarks, defendant on August 3, 1955, filed an application in the United States Patent Office to register the words "Safety Scout" and design for men's, women's, boys' and girls' clothes, and also applied for and secured registration of said words and design
Each plaintiff is a federal corporation organized and incorporated under Acts of Congress. The Boy Scouts was incorporated on June 15, 1916, and the Girl Scouts on March 16, 1950, and the Act under which the latter was incorporated was amended on August 17, 1951. The Boy Scout Movement was originated in England in 1906 by Lord Robert Baden-Powell as the "Boy Scouts," and groups of Boy Scouts were established and organized in the United States prior to 1910. In 1910, plaintiff Boy Scouts' predecessor was incorporated in the District of Columbia, and on June 15, 1916, it was incorporated by Act of Congress and succeeded its predecessor as a nonprofit, nonpolitical, nonsectarian character building membership organization open to all boys regardless of economic status, race or creed, having for its major purposes to promote the ability of boys to do things for themselves, to train them in Scoutcraft, and to teach them patriotism, courage, self-reliance, and kindred virtues as a preparation for their future responsibilities in the home and service for the community.
The Girl Scout Movement was founded by Mrs. Juliette Gordon Low in 1912 in Savannah, Georgia, for purposes similar to that of the Boy Scouts.
For a long period of time prior to the defendant's alleged competing acts and conduct, the plaintiffs operated through local councils and troops in every state and territory of the United States and have used and are using numerous terms including the word "Scout" such as Girl Scout, Boy Scout, Tenderfoot Scout, etc. (36 terms are set forth in the complaint). Many of the terms used by the Girl Scouts are used with trefoil design and by the Boy Scouts with the letters B.S.A. in association and connection with their activities; that an essential part of the purposes consists of education and teaching the principles of safety, and safety programs have been developed as one of their major educational projects and play an important part in the activities of the groups comprising their membership.
Safety as taught by plaintiffs covers a wide field including without limitation safety methods and practices to be employed in the community, home, on the farm, and out of doors. As an incentive to Girl Scouts and Boy Scouts to learn about safety, the plaintiffs award proficiency or merit badges designated Health and Safety Badges to those who meet the prescribed requirements. Knowledge of safety rules and principles also is a basis required for the award of similar badges in other fields forming part of their safety programs. The plaintiffs have received the cooperation of the National Safety Council and of federal, state and local programs, and their members actively participate in such programs as Safety Leaders and Safety Scouts.
The plaintiffs for a long period of time have continuously and are using in interstate commerce designating marks, words and phrases which include the word "Scout," or a derivative thereof, as trademarks and designating marks in, or in connection with, the sale of many articles of merchandise which have been advertised and widely sold by the plaintiffs throughout the several states and now
The plaintiff Girl Scouts is the owner of numerous registered trademarks which include the terms Girl Scout, Girl Scouts (12 are listed in the complaint), and the letters G S and trefoil design covering clothing, fabrics, badges, flags and pennants, publications, jewelry, purses, handbags and shoes.
As heretofore stated, the defendant appears pro se and his answer is rhetorical, argumentative and unlegalistic. In his answer the defendant alleges that the plaintiffs have a distinct obligation to teach safety and concedes that this is done but contends that their first efforts should be for their organizations, without hindering the efforts of other organizations in keeping safety before the public; that no possible discrimination could conceivably be practiced because a Safety Scout wears no uniform; that plaintiffs are here asking in effect that protection be granted to their franchised outlets which make up real and tangible money profit from the sale of franchised products; that each store pays for the franchise and is permitted to make a profit from sales and from manufacturers who are also licensed under plaintiffs' trademarks; that plaintiffs have tried to tie in as many words, things and materials to their ownership by their creative program, did not produce "Safety Scout," and the only issue in the case is the use of the word "Scout." (Defendant then poses this question in his answer, "Do the Boy and/or Girl Scouts have exclusive use of this word"?). The defendant denies that the word "Scout" or any combinational use belongs to plaintiffs in that there is no Congressional Act giving anyone exclusive use of the word. He denies that he appropriated anything belonging to any others. He admits that he wrote, produced and broadcast the Safety Scout Program; created, drew, designed and used in interstate commerce, and registered the Safety Scout emblem as an outgrowth of the Safety Scout Program; he admits that he expects to continue to exploit the program and trademark, and contends that he has a right to continue because the Patent Office allowed and published the Safety Scout trademark. He contends that no one has the exclusive right to any one word except where the word is first established to indicate a product in commerce between the states, by design in the manner of shaping or building the letters of the word to be distinctly distinguishable and associated with the product, and he inquires, "Does anyone have exclusive use of the word `Scout'"? He denies that the words "Safety Scout" alone and in design combination are confusingly similar to plaintiffs and that plaintiffs' allegation as to it being confusingly similar is conjecture. He claims that the allegations in the complaint that the defendant has infringed plaintiffs' registered and common-law trademarks and competed unfairly with plaintiffs, and that the defendant's acts are calculated to deceive and do deceive the public into purchasing defendant's goods and services in the mistaken belief that they are the goods and services of the plaintiffs, or that the defendant's acts tend to dilute and reduce the value of plaintiffs' good will, or that the defendant's acts have been and are committed with the fraudulent intent and purpose of appropriating plaintiffs' good will, and the allegation that plaintiffs have suffered serious damage, are pure conjecture.
Many affidavits have been submitted in support of the plaintiffs' motion for summary judgment. Many of the averments contained in the affidavits repeat the allegations contained in the complaint.
The defendant was examined before trial by the plaintiffs, and his deposition has also been submitted by the plaintiffs in support of their motion.
In addition to the allegations of the complaint, the affidavits and the deposition set forth that defendant is an individual doing business as the Hollingsworth Company and is also president of radio station WKBS in Nassau County,
Defendant's promotional scheme is to make money, and he plans to put the Safety Scout Program on nationwide radio and television programs for a large sponsor. He has no background knowledge of safety, nor has he created a safety program for children other than listing simple safety rules on the Safety Scout membership identification cards. The promotion of safety is an integral part of both the Girl Scout and Boy Scout Movements and is basic in all Girl Scout and Boy Scout activities.
Girl Scouts and Boy Scouts must meet many requirements in order to earn proficiency or merit badge awards. Both plaintiffs have received awards of merit from the National Safety Council for meritorious activities in home safety education, and they are currently assisting the New York City Fire Department in a fire safety program, part of which is to contact Spanish-speaking people in New York to interpret fire prevention rules and to distribute literature.
While defendant sells various articles of clothing and products in order to make money, the net receipts from similar articles sold by plaintiffs together with funds received from other sources are devoted to administration and extension of their programs. In addition to selling clothing products, defendant also sells his emblems.
The defendant contends that the action is fundamentally based on two premises, (1) whether or not the plaintiffs have the exclusive use of the word, "Scout," a word that has been in use for hundreds of years, and (2) that the purposes of the Boy Scouts as set forth in its charter contains not a single reference to the restriction of the use of "Scout" or "Scouts" in writings such as plays, radio and television scripts and cannot be construed to restrict competition by others in the field of safety programs except where copyrighted or registered trademarks are in question in such activities. The defendant also avers that the plaintiffs have dozens of registered trademarks, none of which singly includes the word "Scout," nor of Safety Scout, with or without any form or design. Defendant assumes that because a registered trademark approved by the United States Patent Office and published in the Patent Office Gazette was granted to his Safety Scout Program, and because his membership and radio script was copyrighted, he has the right to use the word "Scout." He avers that the Patent Office has vast knowledge, experience and familiarity with the laws passed by Congress relative to trademarks and has not as yet rejected the trademark "Safety Scout" and design. He claims that neither plaintiff owns a trademark relating to safety although they do have many covering clothing and products. He maintains that a restriction on the use of the word "Scout" is a breach of the freedom of the press and of expression and of the free usage of the English language.
Various other contentions are made by the defendant, some of which are that the plaintiffs have no monopoly in the field of safety education; that plaintiffs during the last three or four years have promoted safety as never before but this
The affidavits in support of the motion draw attention conclusively to the fact that the defendant's actions have tended to confuse the public into the belief that his program is an extension of or sponsored by either the Boy Scouts, Girl Scouts, or both.
The plaintiffs have conducted a house-to-house survey by college students. Each person questioned was shown a T-shirt with a "Safety Scout" emblem on it, and a large percentage associated the T-shirt with either the Girl Scouts or Boy Scouts.
The defendant is his own lawyer. As stated in this opinion, the defendant's affidavit points up the fact clearly that he is his own lawyer, and there is a rambling set of arguments that skirt around and do not meet the facts set forth in the plaintiffs' application for summary judgment. He does not deny that his actions tend to confuse the public. He does not deny the facts contained in many of the affidavits in support of the plaintiffs' motion. He does not deny that his reason for resisting this motion for summary judgment is not altruistic in its nature alone, but that he intends to make a business of selling his script and his safety program to large companies for individual profit alone.
Surveys are admissible to show as a fact the reaction of the ordinary householder to a given set of facts. United States v. 88 Cases, More or Less, etc., 3 Cir.,
The Boy Scout statute provides (36 U.S.C.A. § 27):
The Girl Scout statute provides (36 U.S.C.A. § 36):
Under both of these statutes Congress gave the plaintiffs the sole and
In Adolph Kastor & Bros. v. Federal Trade Commission, 2 Cir.,
In the foregoing case the Court cited Boy Scouts of America v. Winchester Repeating Arms Co., 15 Trade Mark Reporter 142. In 1925, the Commissioner of Patents denied registration of the words, "Winchester Scout," as a trademark for pocket knives upon the opposition of the Boy Scouts of America upon the ground that the mark sought to be registered included the word, "Scout." After referring to the provision of the Boy Scout statute, the Commissioner said:
It must be remembered that not only registered trademarks are involved in the instant action but also common-law trademarks. The law pertaining to the validity of common-law trademarks has been expounded in E. F. Prichard Co. v. Consumers Brewing Co., 6 Cir.,
In Triangle Publications v. Rohrlich, 2 Cir.,
In Ronson Art Works v. Gibson Lighter Co.,
In the instant action, the plaintiffs have made out a case of both trademark infringement and unfair competition. The logical consequence of the defendant's acts and conduct is such as to cause deception. The words, "Safety Scout," when applied to the articles of clothing, merchandise and products upon which the defendant has placed or intends to place the emblem, "Safety Scout," suggests, if it does not actually indicate, that these articles are sponsored by the plaintiffs. Assuming arguendo that actual deception is not involved in the instant action, the plaintiffs must still prevail.
In Notaseme Hosiery Co. v. Straus, 2 Cir., 201 F. 99, at page 100, it was said:
In view of defendant's admission that he is using and intends to use the emblem, "Safety Scout," on articles of clothing, merchandise and products, there is no triable issue. The plaintiff, therefore, is entitled to both a summary judgment and a permanent injunction in accordance with this decision.
In view of the granting of the plaintiffs' motion, the defendant's motion to dismiss the complaint has become academic and is denied.
Submit an order on or before July 29, 1960, in accordance with this opinion.
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