Holy War: 11th Century Knight Orders Duke It Out Over Trademark Infringement in Florida
Earlier this month, the Court of Appeals for the 11th Circuit filed their decision in a trademark infringement case Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order. The case, appealed from the district court of the Southern District of Florida, involves two religious orders with a shared history beginning in the 11th Century. Sometimes case facts require work and creativity to make them more compelling to a reader. In this case, I think you will agree that they are already sufficiently gripping.
During the Crusades, the Catholic Church commissioned a hospital in Jerusalem to tend to sick and injured Europeans on pilgrimages to the Holy Land. Over time, this order of “hospitallers” made the exceptional business decision to expand their charitable medical duties to include armed escort of Christian pilgrims. Thus began their ascent to becoming one of the most fierce and powerful Christian military groups of the Middle Ages. This group rivaled, and subsequently surpassed, the storied Knights Templar in both influence and wealth. For over 200 years, they were in almost complete control of the island of Malta. Eventually, the Hospitallers’ power in Europe waned and the Order broke into two factions: a Catholic and non-Catholic “Ecumenical Order.” The Ecumenical Order travelled to the United States in the early 20th century and incorporated under the name The Knights of Malta, Inc. In 1958, this faction registered the collective membership mark “Sovereign Order of Saint John of Jerusalem Knights of Malta.” Meanwhile, the Catholic order maintained its headquarters in Rome but began operations in the United States in the 1920s under the name Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta (SMOM). SMOM likewise registered its order designs, correspondingly prodigious full name, and shortened names, including “Knights of Malta.” SMOM proceeded to sue the Florida operations of the Ecumenical Knights of Malta (Florida Priory) for trademark infringement. The Florida Priory responded by claiming that SMOM defrauded the United States Patent and Trademark Office by failing to disclose known use of similar marks in their application process. The district court ruled in the Florida Priory’s favor, explaining that SMOM’s failure to share information about the existence of the Florida Priory marks constituted willful blindness and established fraud. SMOM appealed this ruling.
In its decision filed on September 11, 2012, the Court of Appeals for the 11th Circuit disagreed with the lower court’s ruling and voiced its dissatisfaction with the methods the lower court used in arriving at its decisions. Circuit Judge Charles Reginald Wilson cited the precedent for assessing fraud in registration, pointing especially to the requirement that the registrant have both knowledge of the existence of the same or similar mark and a belief that those other users have the right to use the mark. The district court noted that the registrant, and attorney for SMOM, did not have personal knowledge of the Florida Priory’s mark at the time of registration, sufficient to dispel the possibility of fraud. The lower court went one step further by referring to the Supreme Court’s holding in Global-Tech Appliances Inc. v. SEB S.A., which said that willful blindness could replace actual knowledge when assessing patent application fraud on the USPTO. Under this standard, SMOM would have acted fraudulently—that is, if it was a patent case instead of a trademark infringement case. The appellate court pointed to the court’s inappropriate mixing of these two spheres of intellectual property law. The circuit court went on to point out that SMOM had reason to believe that the Florida Priory, or the entire Ecumenical Order, did not have priority to the mark since its first established use began in 1958, which postdates SMOM’s use of the mark in the 1920s. This would destroy the possibility of fraud on the registration system and overturn the district court’s decision.
The appellate court didn’t limit itself to correcting the legal mistakes of the lower court. It went even further to admonish the district court for its procedural methodology after it used outside internet research on similarly named groups in its decision’s footnotes. This information was neither introduced nor authenticated by either of the parties at trial. In a more timid way, the appellate court agreed with SMOM that the comments made by the District Court Judge Ryskamp (who referred to the parties as “dressing up in costumes, conferring titles on each other and playing in a ‘weird world of princes and knights’”) were inappropriate. Even so, the appellate court denied SMOM’s requests to remove these statements from the record or reassign the case to another court on remand. Apparently, the district court can be relied upon for impartiality since the judge disparaged the parties in his courtroom equally.