Girl Scouts of the United States of America v. Boy Scouts of America

Background

The Girl Scouts and the Boy Scouts are nonprofit organizations that provide leadership and development activities to young people. The Girl Scouts serves girls, while the Boy Scouts changed its core programs to admit girls in 2017 and 2018. The Boy Scouts then used “SCOUTS BSA,” “SCOUT ME IN,” and the words “Scout,” “Scouts,” and “Scouting” without a gender reference.

The Girl Scouts claimed that these uses were likely to confuse families and divert girls who might otherwise join the Girl Scouts. Its amended complaint asserted trademark infringement and unfair competition under federal and New York law, trademark dilution, modification or partial cancellation of a Boy Scouts trademark registration, and tortious interference with prospective economic advantage. The Boy Scouts sought summary judgment, which asks whether the evidence requires a trial or instead entitles one side to judgment as a matter of law. It also sought judgment based on delayed filing and challenged the Girl Scouts’ request for monetary damages.

Trademark rights in the Scout Terms

The court found that “GIRL SCOUTS” was a valid and protectable mark. But it held that the Girl Scouts had not shown that “Scout,” “Scouts,” or “Scouting,” standing alone, had acquired a meaning that identified the Girl Scouts exclusively. The evidence showed that the public used those terms in connection with both organizations and with scouting activities generally. The court also noted that the Girl Scouts had generally used “Girl” before “Scout” and had issued branding guidance supporting that practice.

The court concluded that the Scout Terms were descriptive of scouting activities, or at least distinctive of both organizations rather than exclusively of the Girl Scouts. It therefore held that the Girl Scouts had no valid trademark rights in the Scout Terms alone that could support the protection it sought.

Likelihood of confusion

The court also analyzed whether the Boy Scouts’ use of the Scout Terms was likely to confuse consumers about the source of the organizations’ services. Applying the eight-factor “Polaroid” framework used in the Second Circuit, the court found that the strength of the “GIRL SCOUTS” mark came from the combined words “Girl” and “Scouts,” not from “Scout” alone. It found the marks distinguishable in context because the Boy Scouts did not use “Girl Scouts” and generally used additional branding, such as its organization name, logos, and other program names.

Although the organizations competed to some extent for girls’ participation, the court found their services materially different: the Girl Scouts offered programs exclusively for girls, while the Boy Scouts offered co-ed programs. The court found that the “bridging the gap” factor favored the Boy Scouts because the Girl Scouts did not plan to admit boys. It treated reported confusion as isolated and insufficient because the evidence did not show that the confusion resulted from the Boy Scouts’ allegedly infringing use of the Scout Terms. The court also found that the Boy Scouts acted in good faith by using the terms to describe its co-ed programs, and that the remaining factors favored neither side or had little weight.

The court held that the Girl Scouts had failed to raise a genuine factual dispute about likely confusion. It granted summary judgment to the Boy Scouts on Counts I, II, and V, which concerned federal and New York trademark infringement and unfair competition. The court also rejected the Girl Scouts’ theory that the Boy Scouts was vicariously liable for acts by local councils, troops, packs, or individual participants, finding no evidence of the required partnership, joint ownership, or control.

Other claims

For trademark dilution, the court held that the Girl Scouts had not shown a likelihood of dilution under federal or New York law. It granted summary judgment to the Boy Scouts on the claim seeking modification or partial cancellation of the Boy Scouts’ “SCOUT” trademark registration because the Girl Scouts could not establish likely confusion.

The court granted summary judgment to the Boy Scouts on tortious interference. The Girl Scouts identified general categories such as new members, potential customers, and confused members of the public, but did not identify a sufficiently specific business relationship. The one specific opportunity it identified did not result in injury because the Girl Scouts ultimately received the space it wanted to use for selling cookies. The court also found that the Girl Scouts had not shown the required wrongful conduct because its trademark claims had failed.

The court denied the Boy Scouts’ motion for summary judgment based on laches, an equitable defense based on unreasonable delay. It held that the record did not establish as a matter of law that the Girl Scouts knew or should have known of a provable infringement claim more than six years before filing suit. The court viewed the Girl Scouts’ claim as potentially becoming actionable when the Boy Scouts announced in October 2017 that girls could join its core programs.

The court stated that the Girl Scouts’ request for monetary damages, including the Boy Scouts’ profits and corrective-advertising expenses, could not succeed because the underlying claims could not succeed. In the conclusion, the court granted the Boy Scouts’ motion for summary judgment, dismissed the Girl Scouts’ complaint, entered judgment for the Boy Scouts, taxed costs, and closed the case. Judge Alvin K. Hellerstein did not add a with-prejudice or without-prejudice qualifier to the dismissal.