Opinion & Order: US NSA vs. NSA UHG

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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOISEASTERN DIVISION

THE NATIONAL SPIRITUAL ASSEMBLY)OF THE BAHA’IS OF THE UNITED STATES)OF AMERICAN UNDER THE HEREDITARY)GUARDIANSHIP, INC.,))Counter-Defendant,))v.)Case No. 64 CV 1878)NATIONAL SPIRITUAL ASSEMBLY)OF THE BAHA’IS OF THE UNITED STATES)OF AMERICA, INC.,))Defendant.)

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Court Judge:Currently before the Court is the question of whether the National Spiritual Assembly of the Baha’is of the United States (the “NSA”) has established that certain non-party individualsand entities – (1) Franklin D. Schlatter, (2) Joel B. Marangella, (3) the Provisional NationalBaha’i Council (“PNBC”), (4) the Second International Baha’i Council (d/b/a Baha’is Under theProvisions of the Covenant) (“SIBC”), and (5) the Baha’i Publishers Under the Provisions of theCovenant (“BPUPC”) (collectively, the “Alleged Contemnors”) – should be held in contempt forviolating a permanent injunction judgment entered in this matter on June 28, 1966. (R. 1-1,NSA’s Motion for Rule to Show Cause at 1.) After granting the parties the opportunity toconduct discovery, (R. 26-1, Order of Feb. 2, 2007; R. 42-1, Order of Mar. 22, 2007), and afterconcluding that material issues of fact precluded summary disposition, (R. 61-1, Order of Aug. 8,2007; R. 64-1, Order of Aug. 16, 2007 (clarifying the holding of the Order of August 8, 2007)),

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-2-the Court held an evidentiary hearing to determine whether the Alleged Contemnors are inprivity with the party originally bound by the injunction. Based on the evidence adduced at thathearing and the parties’ written submissions, the Court finds, for the reasons below, that none of the Alleged Contemnors is in contempt.

BACKGROUNDI. Procedural Posture

On November 3, 2006, the NSA filed a motion for rule to show cause why the AllegedContemnors should not be held in civil contempt for violating a preliminary injunction judgmententered on June 28, 1966. (R. 1-1, NSA’s Motion for Rule to Show Cause.) The underlyingcase involved two parties: (1) The National Spiritual Assembly of the Baha’is of the UnitedStates Under the Hereditary Guardianship, Inc. (the “NSA-UHG” or “UHG”), as plaintiff to theaction, and (2) the NSA, as defendant. (

Id.

, Ex. A at 1.) The judgment resolved the NSA’scounterclaim against the NSA-UHG, “a counterclaim based upon asserted unfair competition,trademark infringement, dilution of the distinctive quality of [NSA’s] trademarks and tradenames, and likelihood of injury to the business reputation of [the NSA].” (

Id.

, Ex. A at 1-2(further noting that the Court had dismissed the NSA-UHG’s complaint); R. 88-1, NSAProposed Findings at ¶26 (noting that the NSA-UHG filed the original complaint in the caseagainst the NSA, claiming to represent the true Baha’i Faith, and further claiming ownership of the Baha’i House of Worship in Wilmette, Illinois and all other Baha’i funds, properties andbequests).) In 1966, the court found in favor of the NSA and entered the following order:IT IS HEREBY ORDERED, ADJUDGED AND DECREED that counter-defendant, TheNational Spiritual Assembly of the Baha’is of the United States of America Under theHereditary Guardianship, Inc., its officers, agents, servants, employees, attorneys, and allpersons in active concert or participation with them, including affiliated Local Spiritual

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-3-Assemblies, groups, and individuals, or any of them, be and they are hereby enjoinedfrom using in their activities the designations “National Spiritual Assembly of theBaha’is of the United States of America Under the Hereditary Guardianship, Inc.,”“Baha’i News Bureau,” “Baha’i Round Robin,” “Baha’i,” trademark representations of the Baha’i House of Worship, the Arabic design “The Greatest Name” and any otherdesignation which by colorable imitation or otherwise is likely to be mistaken for orconfused with the counterclaimant’s name or marks as indicated above or is likely tocreate the erroneous impression that counter-defendant’s religious activities, publicationsor doctrines originate with counterclaimant, and from otherwise competing unfairly withcounterclaimant or infringing counterclaimant’s rights.(R. 1-1, NSA’s Motion for Rule to Show Cause, Ex. A at 24-25.) The NSA-UHG did not appealthe granting of the permanent injunction, (R. 86-2, SIBC/BPUPC Proposed Findings at ¶13; R.87-1, PNBC Proposed Findings at ¶¶23, 24; R. 88-1, NSA Proposed Findings at ¶5 (indicatingthat, in early August 1966, Mason Remey instructed the NSA-UHG to withdraw from any actionfor reconsideration or appeal or other action “regardless of consequences”)), and, on December22, 1966, the NSA-UHG dissolved and ceased all activities. (R. 86-2, SIBC/BPUPC ProposedFindings at ¶29; R. 87-1, PNBC Proposed Findings at ¶¶25, 26.)In the current proceedings, the NSA contends that the Alleged Contemnors are violatingthe injunction “through Web publications that utilize marks that are colorable imitations of, orare otherwise likely to be confused with, the NSA’s marks.” (R. 1-1, NSA’s Motion for Rule toShow Cause at 6.) Even though the injunction does not specifically identify the AllegedContemnors, the NSA argues that the Alleged Contemnors are in privity with the party to theinjunction and, thus, are equally bound by it. (

Id.

at 7-13.)

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