The Better Angels Society, Inc. v. Institute for American Values, Inc.

Background

The Better Angels Society, Inc. (“Better Angels”) sued Institute for American Values, Inc., doing business as Better Angels (“IAV”). Better Angels asserted claims for trademark infringement, trademark dilution, false designation of origin, unfair competition, and deceptive trade practices under the Virginia Consumer Protection Act. It sought declaratory and injunctive relief, treble damages, costs, and attorneys’ fees.

Better Angels owned the registered word mark “The Better Angels Society.” The registration covered charitable fundraising services connected with media- and entertainment-related projects. Better Angels funded historical documentary films, supported a digital platform called UNUM, hosted events, and used the mark in fundraising and promotional materials.

IAV began an initiative called “Better Angels” in late 2016. Its programming included workshops, debates, and documentary-film screenings intended to bring together people with different political views. IAV used “Better Angels” on its website and filed trademark applications for that phrase.

Better Angels moved for partial summary judgment on its trademark-infringement claim. Summary judgment is a decision without a trial when the evidence shows that no genuine dispute over an important fact requires a trial. IAV also asked for additional discovery under Federal Rule of Civil Procedure 56(d), arguing that it needed more information to oppose the motion.

Trademark-infringement analysis

Trademark infringement required the court to consider whether Better Angels’s mark was legally protected and whether IAV’s use was likely to confuse consumers about the source or sponsorship of services.

The court held that Better Angels’s registered mark was presumptively valid, and IAV did not contest the mark’s validity. The court also found that the mark had strength beyond the services listed in its registration because it was associated with civil-discourse-oriented nonprofit, charitable, and educational services. The court relied on Better Angels’s fundraising, marketing, documentary-related activities, panel discussions, and online services in evaluating the mark’s strength.

The court applied the eight factors commonly used in the Second Circuit to assess likely consumer confusion:

- Strength of the mark: Favored Better Angels. The mark was registered and had developed distinctiveness in the relevant market. - Similarity of the marks: Favored Better Angels. The court found no doubt that “Better Angels” and “The Better Angels Society” were similar, and IAV did not contest their similarity. - Commercial proximity: Favored Better Angels. Both organizations were nonprofit entities providing educational programming, workshops, film screenings, and civic-discourse-related services. Their websites also promoted programming and accepted donations. - Bridging the gap: Weighed heavily in favor of Better Angels. The court found that Better Angels’s UNUM platform showed a plausible expansion into an area similar to IAV’s activities. - Actual confusion: The court gave this factor no weight. It did not resolve IAV’s challenges to the few examples of alleged confusion because those examples were unnecessary to the decision. - Bad faith: Favored IAV. Better Angels did not show that IAV adopted its mark to exploit Better Angels’s reputation or create confusion. - Quality of services: Favored IAV. The record did not show that IAV’s services threatened harm to Better Angels’s reputation. - Consumer sophistication: Favored IAV. The court found that people making larger nonprofit donations were likely to make deliberate and careful decisions.

Balancing the factors, the court concluded that consumers were likely to believe that IAV was the same organization as, or related to, Better Angels. The court gave as an example a consumer who saw “The Better Angels Society” in a documentary’s credits, searched for the organization online, and encountered IAV’s website instead.

Discovery request

The court denied IAV’s Rule 56(d) request for additional discovery. IAV primarily sought discovery about alleged instances of actual confusion, Better Angels’s donors, and Better Angels’s involvement in programming that it funded and promoted. The court found that IAV had not shown how this discovery would create a genuine dispute over a fact material to the trademark-infringement claim.

Disposition

The court granted Better Angels’s June 18, 2019 motion for partial summary judgment as to IAV’s liability for trademark infringement. The court also denied IAV’s request for additional discovery. The opinion did not state a ruling on Better Angels’s other claims or on the requested remedies.