J-A06045-16
NON-PRECEDENTIAL DECISION - SEE SUPERIOR COURT I.O.P. 65.37
G. CRAIG CABA IN THE SUPERIOR COURT OF
PENNSYLVANIA
Appellee
v.
MAURICE “SAM” SMALL, WESLEY SMALL,
AND THE HORSE SOLDIER LLC
Appellants No. 1263 MDA 2015
Appeal from the Order Entered July 10, 2015
In the Court of Common Pleas of Cumberland County
Civil Division at No: 2013-2638
BEFORE: LAZARUS, STABILE, and DUBOW, JJ.
MEMORANDUM BY STABILE, J.: FILED JUNE 16, 2016
Appellants, Maurice “Sam” Small, Wesley Small, and The Horse Soldier
LLC, appeal from the July 10, 2015 order declaring rights in favor of
Appellee, G. Craig Caba. We vacate and remand.
The trial court summarized the underlying facts in its Pa.R.A.P.
1925(a) opinion:
[Appellee] is the owner of Civil War artifacts belonging to
the ‘J. Howard Wert Gettysburg Collection’ (hereinafter ‘Wert
Collection’), which he purchased from Mr. and Mrs. John
Cobaugh in 1970. On February 11, 1981, a burglary occurred at
[Appellee’s] home and several boxes of artifacts from the Wert
Collection were stolen. [Appellee] never provided the police with
a full inventory of the items that were taken following the
burglary and [Appellee] never recovered any of the Wert
Collection artifacts. [Appellee] described the artifacts that were
stolen as ‘rusted battlefield, relic/junk kind of stuff’ and stated
they were not items of ‘terrific notoriety.’
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[Appellants] are located in Gettysburg, Pennsylvania, and
are in the business of selling Civil War artifacts. Sometime in
2007, [Appellee] became aware that [Appellants] were selling
items purported to be from the Wert Collection. On November
27, 2007, [Appellee], through his [] counsel, [] sent a letter to
[Appellants] about the Wert Collection items. In this 2007 letter,
[Appellee] did not demand the return of the items, but rather
requested that [Appellants] stop using the Wert Collection title to
sell the items because he claimed they were not part of the Wert
Collection. However, in his deposition [Appellee] admitted that
he became aware in 2007 that [Appellants] were in possession
of artifacts he claims are his.
Almost a year later, on October 20, 2008, [Appellee] had
new counsel [] send a letter to [Appellants]. This letter included
a list of items [Appellants] had for sale which [Appellee] believed
were Wert Collection artifacts stolen from him in 1981.
[Appellee] demanded the return of the items and also stated
that if he did not receive the items by October 31, 2008, he
reserved the right to pursue any legal action available to him.
[Appellants] did not return the items by October 31, 2008.
Instead of pursuing a civil action after October 2008,
[Appellee] informed the Cumberland County District Attorney’s
Office of his discovery that [Appellants] were selling stolen
artifacts, specifically those Wert Collection artifacts stolen from
him in 1981. The District Attorney’s Office seized the artifacts in
question on November 23, 2010, and convened a Grand Jury to
investigate [Appellee’s] claims. The Grand Jury did not return a
presentment and the District Attorney’s Office was ordered to
return the artifacts to [Appellants] on April 2, 2013.
Trial Court Opinion, 9/24/2015, at 3-4 (footnotes omitted).
Appellee commenced this litigation on May 9, 2013, with a complaint
alleging a cause of action in conversion and replevin and seeking return of
items from the Wert Collection presently in Appellants’ possession (the
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“Disputed Items”).1 Appellants filed preliminary objections to venue in
Cumberland County, which the trial court overruled on June 27, 2013.
Appellants then filed an answer, new matter and counterclaims, which they
amended on September 20, 2013. Among Appellants’ counterclaims was a
request for a declaration of their right to use “J. Howard Wert” or “J. Howard
Wert Collection” to sell the Disputed Items. Appellants moved for judgment
on the pleadings, and the trial court denied that motion by order of February
27, 2014. The parties proceeded to discovery, after which Appellants filed a
summary judgment motion on March 6, 2015. Appellee answered the
motion on March 25, 2015, but did not file a cross motion for summary
judgment.
On July 10, 2015, the trial court entered an order granting in part and
denying in part Appellants’ motion for summary judgment. The trial court
granted Appellants’ motion as to Appellee’s causes of action in replevin and
conversion, concluding the applicable statute of limitations barred those
actions. That decision is not presently at issue. The trial court’s July 10,
2015 order denied Appellants’ summary judgment motion on their request
for declaratory relief, and instead declared rights adverse to Appellants.
Specifically, the trial court concluded Appellants could not use “J. Howard
Wert” or “J. Howard Wert Collection” to describe the Disputed Items. The
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1
The parties apparently agree that the Disputed Items are part of the Wert
Collection.
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trial court’s order did not grant summary judgment on Appellants’
counterclaims for tortious and intentional interference with prospective
contractual relations, and malicious prosecution, and those claims remain
pending.2
Appellants argue the trial court erred in issuing a declaration of rights
adverse to them. “Our standard of review in a declaratory judgment action
is limited to determining whether the trial court clearly abused its discretion
or committed an error of law. We may not substitute our judgment for that
of the trial court if the court’s determination is supported by the evidence.”
Erie Ins. Grp. v. Catania, 95 A.3d 320, 322, appeal denied, 104 A.3d 4
(Pa. 2014). “[W]e will review the decision of the lower court as we would a
decree in equity and set aside the factual conclusions of that court only
where they are not supported by adequate evidence. The application of the
law, however, is always subject to our review.” Id.3
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2
The trial court’s final decision on Appellants’ declaratory judgment claim is
appealable pursuant to 42 Pa.C.S.A. § 7532.
3
Appellants argue we should treat the trial court’s order as an entry of
summary judgment against Appellant and apply the summary judgment
standard of review as if Appellee had been the moving party. We decline to
do so because the trial court did not enter summary judgment as to all
causes of action pending between the parties. We have jurisdiction over the
trial court’s declaration of rights because § 7532 of the Judicial Code defines
declaratory relief as a final appealable order. We therefore apply the
standard governing entry of declaratory relief.
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In this case, we conclude the trial court committed errors of law and
issued findings of fact not supported by the record. First, the question it
decided—a declaration of rights against Appellants—was not properly before
it, given the procedural posture of this case. As explained above, Appellants
moved for summary judgment on their declaratory judgment claim.
Appellee did not file an opposing motion for summary judgment on that
cause of action. Thus, the trial court’s choices were to grant Appellants’
motion and enter summary judgment in their favor, or deny the motion and
conduct further proceedings to resolve issues of material fact. 4 As our
Supreme Court has written: “In this case there was only one motion for
summary judgment filed, that of appellant. Despite the fact that [appellee]
did not file a motion for summary judgment, [the trial court] sought to
finally dispose of the matter in [appellee’s] favor. This he was not
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4
Summary judgment is appropriate:
(1) whenever there is no genuine issue of any material fact as to
a necessary element of the cause of action or defense which
could be established by additional discovery or expert report, or
(2) if, after the completion of discovery relevant to the motion,
including the production of expert reports, an adverse party who
will bear the burden of proof at trial has failed to produce
evidence of facts essential to the cause of action or defense
which in a jury trial would require the issues to be submitted to a
jury.
Pa.R.C.P. No. 1035.2
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empowered to do.” Sidkoff, Pincus, Greenberg & Green, P.C. v.
Pennsylvania Nat. Mut. Cas. Ins. Co., 555 A.2d 1284, 1287 (Pa. 1989).
Furthermore, the record fails to support the trial court’s decision
because Appellee has not asserted trademark infringement. Appellee’s
complaint alleged that “[b]eginning in 1863, Professor J. Howard Wert, a
renowned Civil War veteran and historian, collected thousands of historical
pieces of memorabilia, specifically relating to American history.” Appellee’s
Complaint, 5/9/2013, at ¶ 5. Wert’s collection includes memorabilia from
the Revolutionary and Civil Wars, among other things. Id. at ¶ 6. The
collection was sold to John and Vanita Cobaugh in 1957. Id. at ¶ 7. Both
parties to this appeal trace their collection to the Cobaughs. Appellee
alleges, however, that Wert’s collection of memorabilia “was never to be
broken up, and would always continue to be known as the ‘J. Howard Wert
Gettysburg Collection.’” Id. at 10. On August 25, 2009, Appellee
trademarked the name “J. Howard Wert Gettysburg Collection.” The official
purpose of that trademark, as reflected in the records of the United States
Patent and Trademark Office, is:
Conducting educational exhibitions featuring art and
artifacts on the subject of American history; educational
services, name, lectures and seminars on American History and
the preservation of artifacts[.]
Appellants’ Amended Answer with New Matter and Counterclaims,
9/19/2013, at Exhibit A. According to Appellee, the Wert Collection is
nationally known. Appellee’s Complaint, 5/9/2013, at ¶¶ 11-13. Appellee,
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through his complaint in replevin, sought the return of stolen items that are
part of the Wert Collection.
In support of their declaratory judgment action, Appellants alleged:
103. [Appellants] have good cause to believe that
[Appellee] will attempt to restrict and prevent [Appellants] from
identifying any artifacts it will soon put up for sale as being from
the collection previously owned by J. Howard Wert, based upon
[Appellee’s] registration of the Mark.
104. As evidenced by the averments of his Complaint, it
appears that [Appellee] believes that he has a monopoly over all
things associated with J. Howard Wert and the exclusive right to
use the proper name J. Howard Wert in any matter.
Appellants’ Amended Answer with New Matter and Counterclaims,
9/19/2013, at ¶¶ 103-04.
Appellee responded as follows:
103. The averment contained in Paragraph 103 is a
conclusion of law to which no response is required. To the
extent said averment are [sic] deemed averments of fact, it [sic]
is denied. It is further stated that [Appellants] have no right
to place the J. Howard Wert CollectionTM items in their
possession for sale as they are not the rightful owners of
the property; [Appellee] is the rightful owner.
104. Denied. Plaintiff has in no way attempted to
“monopolize” the name J. Howard Wert, but merely has
made every attempt to recover items which are the
rightful ownership of [Appellee] from [Appellants], and
prevent [Appellants] from using the J. Howard Wert name in
order to inflate the sale price for items which they have no
right to sell.
Appellee’s Answer to Appellants’ New Matter and Counterclaims, 8/14/2013,
at ¶¶ 103-04 (emphasis added). In other words, Appellee’s goal in this
litigation was to establish his right to possess the Disputed Items. In
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paragraph 104, above, Appellee expressly disavowed any desire to
“monopolize” the name J. Howard Wert. He did not allege any trademark
infringement or seek to enjoin potential infringement. Rather, Appellee did
not want Appellants to use the name “J. Howard Wert” to describe items
they had no right to sell. Appellee has thus far failed to establish a lawful
right of possession in the Disputed Items, and a grand jury did not charge
Appellants with any criminal wrongdoing based on their possession of the
Disputed Items. For these reasons, Appellants moved for summary
judgment on their declaratory judgment claim. The trial court disagreed,
and instead declared that Appellee has the right to prevent Appellants from
using “J. Howard Wert” or “J. Howard Wert Collection” to describe the
Disputed Items when Appellants offer those items for sale.
In summary, the trial court concluded: (1) that Appellee had
trademark protection in “J. Howard Wert” and “J. Howard Wert Collection’’;
(2) that Appellants’ use of those names to describe the Disputed Items for
sale would not constitute fair use of Appellee’s registered mark; (3) that “J.
Howard Wert” was sufficiently distinct and had sufficient secondary meaning
associated with Appellee’s business to justify trademark protection in a
proper name. Trial Court Opinion, 9/24/2015, at 7-11.
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We consider these three findings in turn. With regard to Appellee’s
trademark protections,5 the record establishes that Appellee has a registered
trademark in the name “J. Howard Wert Gettysburg Collection.” Appellee
registered that mark for use in educational exhibitions, lectures, and
seminars. Appellee has not registered “J. Howard Wert” or “J. Howard Wert
Collection.” The declaratory judgment pleadings contain the following
relevant averments and admissions (in addition those already quoted
above):
99. [Appellee’s] exclusive right to use [“J. Howard Wert
Gettysburg Collection”], if any, is limited solely to the “Goods
and Services” specified in the Certificate of Registration for the
mark.
100. Plaintiff cannot establish common law trademark
rights in the name J. Howard Wert.
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5
We observe:
The tests for trademark infringement and unfair
competition under the Lanham Act [15 U.S.C.A. § 1114] are
essentially the same. Thus, to prevail on either claim, a plaintiff
must demonstrate that: (1) it has a valid and legally protectable
mark; (2) it owns the mark; and (3) the defendant’s use of the
mark causes a likelihood of confusion. Moreover, to establish a
trademark infringement claim, the plaintiff bears the additional
burden of showing that the defendant’s use of the offensive
mark is unauthorized.
Brown & Brown, Inc. v. Cola, 745 F.Supp.2d 588, 610-11 (E.D. Pa. 2010)
(citations omitted). We need not offer a detailed analysis of trademark law.
Our decision rests on the procedural impropriety of the trial court’s action
and a record that either fails to support or flatly contradicts the trial court’s
factual findings.
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Appellants’ Amended Answer with New Matter and Counterclaims,
9/19/2013, at ¶¶ 99-100. Appellee responded:
99. Admitted.
100. Admitted. It is further noted that [Appellee] has not
attempted to alienate or corner the name “J. Howard Wert”
solely to reference [Appellee], as J. Howard Wert was a world-
renowned and well-recognized civil war historian whose
credibility and recognition are without question.
Appellee’s Answer to Appellants’ New Matter and Counterclaims, 8/14/2013,
at ¶¶ 99-100.
In other words, the record does not support a conclusion that
Appellee’s protection in the mark “J. Howard Wert Gettysburg Collection”
extends to the buying and selling of artifacts. Appellee admittedly has
protected that mark solely for use in educational exhibitions, lectures, and
such. Further, Appellants have not sought a declaration of their right to use
“J. Howard Wert Gettysburg Collection.” Appellants want to use “J. Howard
Wert” and/or “J. Howard Wert Collection,” and Appellee has registered
neither of those. Indeed, Appellee admits that he cannot register the name
J. Howard Wert. In summary, nothing in the record supports the trial court’s
conclusion that Appellee has trademark protection in “J. Howard Wert”
and/or “J. Howard Wert Collection.” Appellee asserted no such protection,
and the trial court lacked any legal or factual basis for declaring rights in
Appellee’s favor.
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Next, the trial court concluded Appellants’ proposed use of Appellee’s
trademark would not constitute “fair use.”6 This was error because Appellee
is not asserting trademark infringement and Appellants do not seek to use
Appellee’s registered mark. Fair use is a defense to an assertion of
trademark infringement. See Century 21, 425 F.3d at 214. As Appellee
has not asserted infringement, Appellants had no occasion to create a record
in support of fair use.
Finally, the trial court found that Appellee could trademark the proper
name J. Howard Wert because the name is sufficiently distinctive and has
secondary meaning associated with Appellee’s business.7 The trial court’s
finding flatly contradicts the parties’ pleadings:
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6
The Third Circuit has described fair use as follows:
“Nominative” fair use is said to occur when the alleged
infringer uses the [trademark holder’s] product, even if the
alleged infringer's ultimate goal is to describe his own product.
Nominative fair use also occurs if the only practical way to refer
to something is to use the trademarked term.
Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 214
(3d Cir. 2005) (emphasis in original).
7
We turn once again to the Eastern District’s Opinion in Brown:
Personal names can serve as a trademark, but they are
considered descriptive, not inherently distinctive marks, so they
are treated as protectable marks only upon showing of
distinctiveness and secondary meaning. An identifying mark is
distinctive either if: (1) it is inherently distinctive, or (2) it has
acquired distinctiveness through secondary meaning. A personal
(Footnote Continued Next Page)
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97. The Mark and personal name, J. Howard Wert, has
not acquired secondary meaning and is not distinctive.
98. The proper name J. Howard Wert has no secondary
meaning associated with [Appellee].
Appellants’ Amended Answer with New Matter and Counterclaims,
9/19/2013, at ¶¶ 97-98. Appellee responded:
97. Admitted.
98. Admitted.
Appellee’s Answer to Appellants’ New Matter and Counterclaims, 8/14/2013,
at ¶¶ 97-98. We need not address this issue further.
For all of the foregoing reasons, we conclude the trial court erred in
entering judgment in favor of Appellee on Appellants’ declaratory judgment
cause of action. That decision was procedurally improper in response
Appellants’ motion for summary judgment. Further, the record fails to
_______________________
(Footnote Continued)
name acquires secondary meaning when the name and the
business it is associated with become synonymous in the public
mind and the secondary meaning submerges the primary
meaning of the name as a word identifying a person, in favor of
its meaning as a word identifying that business. Accordingly, the
claimant must not only show that it used the personal name as a
trademark, but that a substantial portion of the consuming
public associates [the name] specifically with [its] business. If
the mark is primarily a personal name, then the senior user
must prove the existence of secondary meaning in its mark at
the time and place that the junior user first began use of that
mark.
Brown, 745 F.Supp.2d at 611 (internal citations and quotation marks
omitted).
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support the trial court’s factual conclusions. We vacate the trial court’s July
10, 2015 order insofar as it declared rights in favor of Appellee 8 and remand
for further proceedings in accord with this memorandum.
Order vacated. Case remanded. Jurisdiction relinquished.
Judgment Entered.
Joseph D. Seletyn, Esq.
Prothonotary
Date: 6/16/2016
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8
As explained above, our jurisdiction is limited to that issue.
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