United States District Court, M.D. Georgia, Athens Division
ORDER ON SUMMARY JUDGMENT
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 GRANTED in part and DENIED in part, and the Motion for Partial Summary Judgment [Doc. 64] is DENIED.
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." A genuine issue of material fact only exists when "there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Thus, summary judgment must be granted if there is insufficient evidence for a reasonable jury to return a verdict for the nonmoving party or, in other words, if reasonable minds could not differ as to the verdict. When ruling on a motion for summary judgment, the Court must view the facts in the light most favorable to the party opposing the motion.
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. If the moving party discharges this burden, the burden then shifts to the nonmoving party to go beyond the pleadings and present specific evidence showing that there is a genuine issue of material fact. This evidence must consist of more than mere conclusory allegations or legal conclusions.
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." The Court's Local Rules echo this requirement by stating
Response shall be made to each of the movant's numbered material facts. All material facts contained in the movant's statement which are not specifically controverted by specific citation to particular parts of materials in the record shall be deemed to have been admitted, unless otherwise inappropriate.
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. Where the evidence is absent, those facts have been deemed admitted. The facts viewed in the light most favorable to Plaintiffs, the nonmovants, are as follows:
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 furtherance of that ministry, on July 24, 1990, Pastor Kang incorporated Defendant Our Firm Foundation for Koreans, Inc. ("OFFK") as a Georgia not-for-profit corporation and served both as president and as a member of the board of directors. Pastor Kang's primary role was conducting the ministry of OFFK, which included educating and teaching through various media (including radio and television), writing books, giving sermons, and raising money. To this day, OFFK continues to operate as a not-for-profit ministry that focuses on the dissemination of its message through websites, magazines, TV broadcasting, and weekly sermons to the Adventist community in the United States, South Korea, Japan, and China.
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. The parties agree that the mark was inspired by Ellen G. White's book Light for Life, but they disagree as to who adopted the mark. Pastor Kang contends he adopted the mark to represent his entire ministry, which he contends is broader than OFFK and includes other affiliated organizations and churches, and incorporated Plaintiff Light for Life, Inc. (hereinafter "LFL, Inc.") in 1993 to further serve this broader ministry. Pastor Kang avers that he and LFL, Inc. then orally granted the other organizations, including OFFK, a license to use the "Light for Life" mark.
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. Accordingly, OFFK's board of directors held a formal meeting and adopted the name "Light for Life."
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. OFFK first displayed the "Light for Life" mark on the cover of its magazine in September of 1994. Pastor Kang was approached about changing OFFK's name to "Light for Life" but indicated that he wanted to continue to use both names. In 2001, Plaintiffs authorized OFFK to register "Light for Life" as a trade name with the Clerk of Court in Hart County, Georgia.
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"). These Websites were used to further the ministry and Pastor Kang's teachings. The Websites are registered by Min Ju Kim, a third party who is neither an agent nor an employee of OFFK. Instead, it appears as if Min Ju Kim is a follower of Pastor Kang. The parties dispute who paid the registration fees for these Websites.
Pastor Kang also wrote and delivered speeches, lectures, sermons, books, articles, and other works of authorship to promote ministry outreach. Pastor Kang registered several of these works with the United States Copyright Office, including the Book of Daniel, Revelation, Sanctuary, The Blotting Out of Sin, The Economical Stages of the Sunday Law, The Last King is Rising, and Why Do You Serve God? (collectively, the "Copyrighted Works"). OFFK as well as other organizations affiliated with the ministry used and disseminated the Copyrighted Works pursuant to a license orally granted by Pastor Kang.
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. Defendants Im and Shim wanted to continue to align OFFK's ministry with the Seventh Day Adventist Church. Pastor Kang, on the other hand, sought to distance the ministry from the Adventist Church. In an attempt to reduce tension, Pastor Kang resigned from the OFFK board in July 2011, and in February 2012, resigned from his employment with OFFK.
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.]." Despite this letter, Plaintiffs contend that OFFK seized control of the ministry Websites, deprived Plaintiffs of access to them, and continued to use the Copyrighted Works and "Light for Life" mark on the Websites to solicit donations from potential donors. Access and control of the Websites was later returned to Min Ju Kim. Plaintiffs also contend that OFFK changed LFL, Inc.'s address to a post office box in Franklin Springs, Georgia and took three vehicles belonging to LFL, Inc.
I. Procedural History
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"). According to Reg. No. 4, 233, 113, Plaintiffs first used the "Light for Life" mark in commerce on December 31, 1999. According to Reg. No. 4, 233, 109, Plaintiffs first used the "Light for Life Ministry" mark in commerce on May 14, 1993.
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 ...