Mr. Chris Langan
[Insert address] Re: Cease and Desist Demand
Dear Mr. Langan: February __, 2001
This office represents the Mega Society ("the Society"), publisher of the Society's Journal, "Noesis." It has come to my attention that you have been, and are, engaged in the sale or distribution of another journal, also entitled "Noesis," which you purport to publish on behalf of the Society or on behalf of a faction or splinter group of the Society.
This letter demands that you cease and desist from anv use of the names "Mega Society or "Noesis" in connection with any publication or distribution, for profit or otherwise, of any journal, newsletter, magazine or other periodical of any nature, whether by printed or electronic means. The Society has well established common-law trademark rights in both names, dating back many years and long before you first purported to appropriate the Society's trademarks as an "East Coast Faction" of the Society. This letter further demands that you cease and desist from any other activities or communications of any nature, by which vou hold yourself out as an authorized representative of the Society or any part or faction of the Society, or as an editor or publisher of its journal, "Noesis."
Please confirm, in writing, by not later than February __, 2001, that you have discontinued the conduct described in this letter. In the event that the conduct continues or is repeated from or after that date, my office has been instructed to commence the appropriate litigation against you without further notice.
|I look forward to hearing from you.||Very truly yours,|
|LMAA:gge||Law Offices of Leighton M. Anderson|
|cc: Mr. Chris Cole, Publisher||Santa Fe Springs, California|
REGARDING THE PROPOSAL TO ISSUE A CEASE-AND-DESIST DEMAND
This article is written to accompany the proposed letter to Mr. Chris Langan in the journal, Noesis. The article briefly explains the basis for the letter, in terms of the Constitution of the Mega Society and in terms of the Society's rights and remedies against infringing users of its trademarks and trade names.1
Summary of Facts.
Although I lack extensive knowledge regarding the history of the Society and its joumal, I have reviewed enough information to have reached the conclusion that the proposed letter, and subsequent legal action if necessary, are appropriate. Among other sources, I have relied on an article entitled "By Way of Explanation" (hereinafter, "BWOE"), apparently written by Mr. Langan and available on the Internet at http://www.ultrahiq.net/MegaSociety/ByWay.html. I have also examined "Announcing a Mega Society Election" which appeared as an editorial under Mr. Langan's byline in a publication called, Noesis (East Coast Edition), dated September, 1997, and "An OPEN LETTER to CHRIS LANGAN," appearing under Mr. Cole's byline in Noesis No. 135 (November, 1997) at 3. In addition, I have reviewed the Constitution of the Mega Society ("the Society's Constitution" or, alternatively, "the bylaws"), and assume that it was adopted after notice to all members, published in Noesis, by a majority of all ballots cast.
Based on the above, it appears to me that the Society is an unincorporated association that is now governed by the Society's Constitution. It also appears to be undisputed that the Society has published a newsletter or journal for many years, under various names including, most recently, Noesis. Early on, the journal's editor was Ron Hoeflin. Mr. Langan edited the journal at Mr. Hoeflin's request, but was not the most recent editor. Although BWOE states that Mr. Langan became the"permanent" editor of the journal in 1989, as a result of volunteering to edit and publish the journal in Mr. Hoeflin's stead sometime that year, BWOE elsewhere admits that in 1990, Mr. Hoeflin resumed his editorship and later assigned editorial responsibility to Rick Rosner. It appears from the recitation of events in BWOE that Mr. Langan continued to submit articles during that period, as "the journal's main contributor of mathematical research."
In 1997, Mr. Langan purported to publish the "East Coast Edition" of Noesis, on behalf of the "East Coast Faction." Since then, he has purported to represent the "Official" Mega Society and to act as the duly appointed editor of its journal, Noesis. BWOE contains a lengthy apologia for these actions, but admits that there are at least two "factions," including the faction that has included Messrs. Hoeflin, Rosner and Cole and that has continued to publish Noesis to the Society's membership.
The law of California and other states recognize the existence of unincorporated associations, which have the right to sue to enforce their rights or the rights of their members under proper circumstances. See, e.g., Tenant's Assn. Of Park Santa Anita v. Southers, 222 Cal. App. 3d 1293, 272 Cal. Rptr. 261 (1990). While additional research may be needed to find other cases in which control of such an organization is disputed, a court would not be inclined to set aside the adoption of bylaws and the appointment of officers after notice to members and an opportunity to express their views and to vote. Cf. Zyrd v. Chapman, 97 Cal. App. 2d 357, 217 P. 2d 670 (1950) (court affirms denial of injunctive relief to "reinstate" plaintiffs as officers of unincorporated association, based on association's adoption of bylaws and subsequent election of officers).
The names of the Society ("Mega Society") and its publication ("Noesis") amply satisfy minimal requirements for secondary meaning, in that they are non-descriptive and have been associated with the Society and its joumal for many years. Priority of use is also established, since the Society conducted its affairs under its name, and published Noesis, before Mr. Langan's "faction" purported to use those names or any variant. Likelihood of confusion appears also to be established, especially now that Mr. Langan's web pages have de-emphasized the East Coast/West Coast differentiations and he purports to be the chief executive of the "official" Mega Society and Editor of its publication, Noesis.
Federal law (principally, section 43 of the Lanham Act, 15 U.S.C. §1125) provides remedies and protections even to unregistered trademarks or trade names. Those remedies and protections are supplemented in various states by common law and statutory provisions relating to trademark and trade name infiingement, and unfair competition. The principal remedy in such cases is injunctive relief While not always a prerequisite, it is commonplace for the prior user to demand in writing that the infringer cease and desist from future infringement, while reserving the night to seek injunctive relief and money damages in litigation if necessary. Such demands frequently result in the discontinuation of the challenged conduct, or a negotiated resolution of the dispute. If litigation becomes necessary, the cease-and-desist demand can be attached to the complaint as an exhibit, and demonstrates to the court that a reasonable effort was made to reach a resolution prior to the commencement of the action.
I recommend that I be authorized to send the accompanying letter, and that the officers of the Society be authorized to instruct me in connection with further actions. In the event that a resolution satisfactory to a majority of the officers cannot be reached with Mr. Langan and any persons acting in concert with him, I should be authorized to initiate litigation seeking injunctive relief, damages and attorneys' fees; provided, however, that the fees and expenses of the litigation shall not be paid by the Society's general fund and shall be borne by special voluntary contributions only.
Pursuant to Article IV, section 4, of the Society's Constitution, it is my opinion that this issue niust be presented to the Society's membership for a vote in accordance with the procedures set forth in that Article.
Leighton M. Anderson
1 The author is an attorney licensed to practice law in the State of California. He has frequently provided legal services to Chris Cole, an officer of the Mega Society, and to businesses in which Mr. Cole has been involved as an officer or shareholder.