BACKWARD>LITIGATION>OVERVIEW

By Marty N.

[Reprinted from the soscon@onelist.com email list 8/23/99]

(I)

A decision was made at the beginning of the trademark litigation over the name "Secular Organizations for Sobriety" here in California that we would not publicize the litigation any more than absolutely necessary. This was a sound decision at the time. However, its rationale is no longer operative, and it's time to shed light on how and why this litigation arose.

At the time Jim C moved from California to Buffalo NY in June 1990, the Northern California chapter was growing rapidly and counted perhaps 18-20 meetings. With the express approval of Jim C, the chapter members decided to form a regional organization and to incorporate as a nonprofit, known informally as SOS West. However, some of the prime movers behind the incorporation were not "on board" with the abstinence plank of the SOS philosophy. They gained control of SOS West and turned it into an "abstinence-optional" grouping. People who were there tell me that some of the directors would smoke dope before meetings, on the ground they were only alcoholics not dope addicts; and others would drink, on the grounds they were no longer alcoholics and could now drink "normally."

During the litigation, we got testimony in which the president of the outfit admitted to drinking before leading SOS recovery meetings, drinking before and while answering organizational phone calls and letters, and drinking on numerous social occasions. They saw nothing contrary to the SOS West philosophy if their whole Board were to adjourn their meetings for cocktails. But I am skipping ahead.

When I first got sober in Oct. 92 and went to my first SOS meetings, there was an open split raging between the "SOS West" part of the chapter, and the "loyal" groupings that broke away from "West" and reaffirmed their affiliation with "SOS National" and its Sobriety Priority position. All the East Bay groups (Berkeley, Oakland, etc.), where I live, were loyal and upheld the Sobriety Priority. The leading movers and shakers on the loyal side were Karl Slinkard and Mike Bennett. Between the two of them, sometimes battling in total isolation, and at considerable personal expense and effort, they more or less saved the SOS bacon in the SF Bay Area. At this time the breakaway "SOS West" faction still counted as many or more meetings than the loyal groups; they controlled Marin and San Francisco counties; and a number of people waffled inbetween.

Unbeknownst to most people, the SOS West faction had registered the trademark "SOS West Secular Organizations for Sobriety" with the California state trademark registry. It thus posed as the legitimate owner of the "SOS" name in California.

Behind this claim, the leaders of SOS West after a while sent out "cease and desist letters" to Karl, to Mike, to Chip Griffin and others who were at that time known convenors of loyal SOS meetings. These letters threatened legal action for trademark infringement unless the convenors either stopped using SOS or else "took a license" (asked for permission and paid dues) from SOS West. These letters were followed up by letters from an attorney (one "Rocky Ortega") to the same effect, threatening a lawsuit.

One Friday, one of the SOS West leaders came to a Berkeley meeting and personally demanded that we stop using the name or else pay license fees to them, or face a lawsuit.

SOS West also wrote a letter to the California state Attorney General asking him to prosecute CODESH and the SOS Clearinghouse for sending fundraising letters into California using a trademark which, they claimed, belonged here to SOS West.

This issue originally affected only the groups. However, in January1995 Jim C left Buffalo and moved the Clearinghouse back to Los Angeles, CA. At that point, the California state trademark registration that SOS West owned became a threat not only to the Bay Area groups but also to the operation of the Clearinghouse in California. The Clearinghouse's very right to exist and operate as an "SOS" entity in California was in question.

The very first thought here was to refer this matter to CODESH, which owned the federal trademark registration for "Secular Organizations for Sobriety," for handling by CODESH's trademark lawyers, McGavern & McGavern. However, CODESH, while eager to see the legal path cleared of the "SOS West" threat, did not want to spend the money. An enthusiastic loyal volunteer with some background as a trademark litigator, I stepped forward and offered to handle the case pro bono. This was accepted.

Jim C personally, in his capacity as Executive Director of SOS Inc., signed a written authorization to commence the suit, and he reviewed the initial complaint and every other important paper in the suit before filing. He signed each of the key Declarations on which the suit was based, and Jim was without a doubt the star witness for our side during the week-long trial in the federal courthouse in San Francisco the week of Feb. 2, 1997. For a Polaroid snapshot of our litigation team on the courthouse steps at the end of the trial [above]. You can tell from our confident smiles that we felt we had thoroughly trounced the enemy and that the outcome was a foregone conclusion.

Wrong!

(II)

When we finished closing arguments Feb. 7 in the federal courthouse, I thought that the judge had heard plenty enough evidence and arguments to decide the case, and would immediately announce her decision. Instead, she clasped her notebook to her chest, thanked us all, told us we'd be hearing from her, and strode off the bench.

More than six months went by before we got her decision. As I began to read it I got a sickening feeling of familiarity. I had heard these same points so often before, namely in the pretrial arguments of opposing counsel. It looked like the judge, after the gap of six months, had forgotten most everything that happened at the trial, and simply went to the paperwork filed by the Big Firm, paraphrased their principal points, and signed it.

Judge Susan Illston had been appointed to the federal bench only weeks before her assignment to this case. Our case had originally been assigned to The Hon. Lowell Jensen, a former law- and-order prosecutor in Alameda County. Jensen's initial ruling in the case was favorable to our "take" on the case; but he had a rather veinous, reddish, bulby nose in the mornings that gave me cause for concern in the long run. In any event, when Illston was elevated to the bench, each of the other judges donated a portion of their case load to her, and ours was among them.

A former partner in a prominent plaintiffs' personal injury firm, Illston had a reputation as a middle of the road liberal. She was also considered brilliant in her field, and was already being mentioned in the lawyer press as a candidate for elevation to the Ninth Circuit Court of Appeals.

She was, however, very new to the bench and very unsure of herself in the sometimes arcane realm of trademark law. Looking at the case from her perspective, she saw before her on the one side an unknown solo practitioner who freely disclosed his personal affiliation with the plaintiff organization, and on the other side a partner in one of San Francisco's giant law firms, Howard Rice Nemerovsky Canady Falk & Rabkin -- a firm that is deeply wired into the federal judiciary and that can make or break judges' careers.

There was also a subliminal personal angle. The lead attorney for The Firm, Patricia Thayer, was a woman of about the same age as Judge Illston, and with stellar career credentials (Harvard, a federal clerkship, etc). It also did not hurt that Thayer was the current president of the State Bar Intellectual Property Section and that they rubbed shoulders at the various bar receptions and affairs that prominent lawyers and judges must attend.

Finally, Judge Illston sometimes betrayed a hint of annoyance that her time was being taken up with this matter, which must have seemed to her a completely trivial dispute by comparison with the megamillion dollar antitrust cases and other commercial litigation that competed for her time. And so, bottom line, in the middle of August, probably as one of those last-minute chores to be done before going on vacation, Judge Illston wiped this annoying and forgotten little bug of a case off her to-do list by following her gut and going with The Firm.

(III)

Judge Illston's opinion, which remains "the law" on this case unless and until overturned on appeal, rests on three main points.

First, she made a finding of fact that "SOS West" had used and developed public recognition for the marks "Secular Organizations for Sobriety" and "SOS" in Northern California before "SOS National" did. She appeared to attach great importance to the fact that SOS West got its incorporation papers in California a couple of weeks before CODESH's attorneys managed to get Secular Organizations for Sobriety Inc. incorporated in New York State. Never mind that this "race to the courthouse" is totally irrelevant from the trademark standpoint; it left a psychological impression in the judge's mind that SOS West was "first."

The judge also appeared impressed by the testimony of Janis G., the founder of the SF Bay Area chapter, who worked her butt off getting SOS launched here, but then got burned out and disappeared from our radar screens somewhere into Nevada. However, much to our surprise and discomfort, The Firm's private investigators located her and flew her back to SF for the trial.

Janis had no love for the SOS West creeps. She testified that she left the area because one of them, Nancy C., had usurped control of the organization. However, Janis was even more scathing about the Clearinghouse ("National SOS"). She referred to it as "the black hole," among other cutting remarks, and left the over-all impression that she, Janis, the local founder, was lined up against us and with "them." Since it was undisputed that she had founded the first local meeting, March 17, 1988, this hurt.

Never mind that Janis had written letters to Jim C in 1988 thanking him profusely for having founded a secular recovery alternative; never mind that the first issue of the SOS National Newsletter was on the literature table at Janis' meeting, never mind that it was Jim C's visit to Janis' meeting, and the resulting press coverage, that launched the SOS name in the area. The judge chose to ignore those and similar facts to reach the conclusion that it was local effort, rather than the effort of SOS National, that first implanted the SOS name in the public mind in Northern California.

Judge Illston's second point was that the owners of the SOS trademark apparently never exercised any quality control over how the trademark was used. It is a basic requirement of US trademark law that the owner of a mark must exercise control over the quality of goods and services that are offered to the public under that name. The rationale for this is that trademarks function as a public identifier of the source of goods and services; they serve as a promise to the public that all goods or services sold under that mark will be of comparable quality. The law does not spell out how much or what kind of quality control is appropriate in a given case; however, if no quality control is found, the trademark owner will be deemed to have abandoned (forfeited) the mark, and injected it into the public domain for anyone to grab for any purpose.

Here, Judge Illston looked for evidence, any evidence, that either CODESH, or SOS Inc., or the Clearinghouse, had ever set any limitations on how individuals or meetings or other entities used the "Secular Organizations for Sobriety" or "SOS" names, and found none. Indeed, The Firm had a field day quoting to the court several statements in the SOS Newsletter which appeared to be saying that anyone was free to do anything they wished in their SOS meetings and the Clearinghouse would never interfere.

The best we were able to come up with was a letter drafted by several veteran SOS friends in Los Angeles, strongly and clearly denouncing the SOS West departure from the organization's abstinence plank. Unfortunately we had no evidence that this eloquent letter was ever mailed. Apparently only a synopsis of it was sent by unknown parties months later. And this effort bore only the signature of the Los Angeles chapter, not of SOS National, which was what was required. Jim testified that he knew of the letter and authorized it, but there was no hard documentary evidence before the court that "SOS National" itself prior to filing suit had ever attempted to squelch the anti-abstinence trend in the Bay Area at any point of its years-long development from little bud to big stinking weed. The impression was left that SOS National either did not care what philosophy was being offered to the public under the SOS name, or that it just did not have the tools to do the job. Hence, concluded Judge Illston, SOS National had forfeited whatever claim it might once have had to stop a local group from offering to the public under the SOS name any philosophy and practice it might see fit.

Judge Illston's third main point was that the federal trademark registration for "Secular Organizations for Sobriety" was procured by something close to fraud. The judge stopped short of finding actual fraud and canceling the registration, but she came close. The circumstances, in brief, were these. The attorneys for CODESH filed a federal application to register the mark "Secular Organizations for Sobriety" in CODESH's name. The federal trademark office initially refused to register the mark on the grounds that it was merely descriptive of a group of secular organizations for sobriety. ("Merely descriptive" marks cannot be registered.)

One way to overcome such a refusal is to demonstrate with evidence that you have been the exclusive user of that mark for those services for a period of five continuous years. To meet this requirement, a CODESH official signed a declaration swearing under oath that CODESH through its subcommittee SOS had used the mark "Secular Organizations for Sobriety" continuously since 1985. Paul Kurtz, the chairman of CODESH, signed a new trademark application under oath with this declaration attached, swearing that it was true. Unfortunately, neither CODESH nor anyone else had preserved any documentation proving its use of "SOS" as early as that time -- no flyers, announcements, letters, nothing. And The Firm brought in considerable evidence, including articles in Free Inquiry (the CODESH journal) and in the SOS Newsletter, that the name actually in general public use before 1988 was SSG (Secular Sobriety Groups). Thus it appeared to the court that Kurtz had probably fudged the application to obtain the federal registration of the SOS trademark by a matter of three years. The word "perjury" hung heavy in the air.

It took some very strenuous effort to back the court off an explicit finding of fraud, which would have meant cancellation of the registration. But although we prevailed on the technicalities of the "fraud" claim, the matter apparently left a bad taste in the court's mind and undermined the credibility of everything else we tried to do. The federal registration was supposed to be our trump card for defeating the mere California state registration owned by SOS West. When that ace turned out to be dubious if not outright bogus, our case didn't look so wonderful.

We did have our own equity cards to play, and we played them to the hilt. We showed that Lenihan, the principal defendant, drank alcohol on numerous occasions while an officer and director of SOS West. We demonstrated that he had tried to conceal this fact from the SOS West membership, with the knowledge of his codefendant Clark. We called as a witness Dr. Nancy Grover, the head of the Kaiser Permanente alcohol treatment program in San Rafael, who testified that Lenihan appeared to lead SOS meetings with the smell of alcohol on his breath and that she had evicted his meeting from the premises because of it.

This kind of evidence had a stunning effect on several of the character witnesses The Firm put up on behalf of SOS West. These people knew nothing of Lenihan's drinking, and some of them did not at first believe it, even though it was his own sworn testimonial admission. We put the key documents into a packet we called the Deprogramming Kit, and got it into the hands of each of their witnesses. I believe that our possession of this sworn documentary evidence of the group president's habitual lack of abstinence, and of the group secretary's enabling and concealment of this lack of abstinence, were an important factor in the further rapid decline of SOS West after the trial. These documents obtained in the litigation enabled us to win the war for the hearts and minds on the ground. But insofar as we believed that they would win us the trademark case in the courtroom of The Hon. Susan Illston, we were certainly mistaken.

(IV)

After issuing her opinion, The Hon. Susan Illston never looked back. In rapid succession she rubberstamped an Order of Permanent Injunction drafted by The Firm, denied our motion for reconsideration and a new trial, denied our motion for a stay of injunction pending appeal, and awarded costs to the other side.

The court's Order of Permanent Injunction bars CODESH and the Clearinghouse and anyone affiliated with them from using the names "Secular Organizations for Sobriety' or "SOS" or anything similar in connection with holding meetings or offering recovery services, or doing recruitment, fundraising, advertising or promotion, anywhere in Northern California. Northern California is defined broadly as everything from just north of Los Angeles up to the Oregon border. There are also explicit restrictions on web sites and publications. We are even forbidden from stating publicly that SOS West advocates "controlled drinking."

For well over a year thereafter, our local meetings and everyone else concerned pretty much paid no attention to the injunction. We had met to consider what we were to do if actual enforcement commenced, but it never did. We were not about to change anything until and unless the gun was actually put to our heads, and it wasn't. It looked like The Firm, having won its paper victory, went on to other cases and forgot about us. Until April, 1999.

What happened to suddenly rouse The Firm from its inattention is only speculation. I have no inside sources. I only know this. In March, an attorney on the East Coast called my law office and hired me to make an urgent appearance in federal court on behalf of a business client in New Jersey who was being sued on a trademark matter in San Francisco. On very short notice I made the appearance and was lucky enough to prevail completely. My annoyed opponents happened to be two lawyers from The Firm. Ten days later I got a thick letter in the mail from The Firm accusing me among many others of being in contempt of the court's Order of Permanent Injunction in the SOS trademark matter. Coincidence? We'll probably never know.

I've written elsewhere about our local intergroup meeting of May 23, 1999, and the decision to adopt the name LifeRing Secular Recovery. See http://www.unhooked.com/news/natlnews.htm#namechange and http://www.unhooked.com/lsr/about_lifering_secular_recovery.htm

To these articles I only want to add here a brief personal note. The prospect of being found in contempt of court may seem trivial to others, but it is a serious matter for me personally. Based on my experience in the many months that this litigation consumed, I have not the slightest doubt that The Firm would move ahead ruthlessly with such proceedings, nor that Judge Illston would grant whatever The Firm asked for. I happen to earn my living as an attorney, and conviction of contempt of court could mean the end of my license to practice, and my livelihood. Contempt can also entail monetary fines. I have two children nearing college age, and a monthly mortgage payment to meet. Consequently, I beg everyone's forgiveness for not stepping forward and playing Joan of Arc in this matter, so that my public financial incineration could serve as an inspiration for all future generations. On the other hand, I didn't see any of the other defendants named in The Firm's letter step forward to volunteer for martyrdom either. So far the only voice to have raised the cry of cowardice on this issue has done so from the safe distance of a jurisdiction on the other side of the Atlantic.

(V)

In this concluding chapter on the SOS trademark litigation, I'd like to try to draw the lesson or lessons that I learned from this experience. It was a very intense passage for me personally. I became passionately involved in this struggle both as a recovering person in SOS and as a litigator. I spent hundreds of hours on the case, often giving it priority over paying matters. I spent quite a chunk of money (some of which I was able to recoup as a charitable deduction) on the case in court costs, paralegal salary, clerk salary, copying charges, deposition transcript fees and the like. The contest occupied much of my waking and some of my sleeping time for about three years, and -- as you can tell from the length of these messages -- I'm reliving it still.

But I'm not the only one in whom this history lives on. Last week I had the privilege of an interview with the current director of the alcoholism treatment program at Kaiser in San Rafael, the main town in Marin County, the affluent suburb north of San Francisco where "SOS West" has or had its home base. We are applying to start an LSR meeting at that facility. The director's opening words were to the effect of: what makes you think you're going to get a meeting here in view of the questionable history of "SOS" in this county?

Even though this was a new director, and even though we have a new name, the stench of "SOS" is still alive there. Even after I gave Dr. S. our sterling references from the Kaiser facilities in Oakland, San Francisco and Richmond, he wanted to know, yes, but "who is going to do the quality assurance" so that we can be satisfied that the meeting in San Rafael will be of the same caliber as the ones in Oakland and elsewhere? He was not reassured by learning that LSR was a part of SOS National; he had read on one of his professional email lists just last month that SOS was a moderationist group. (I told him that this was not true.) His challenge to us was: who is going to do the quality assurance?

That is a very good question. In answering that same question, Bill W., the co-founder of AA, wrote somewhere that adherence to the standards of AA is enforced by two powers. One is God, who commands the member to obey His will. The other is John Barleycorn, who kills the member if he doesn't. Well, we have John Barleycorn working still, gradually disabling if not already killing Mike Lenihan, the SOS West president. He used to be a fine SOS convenor in the Bay Area, and contributed a great deal, before he decided to have "just one" (and then another and the rest is predictable). But, being the kind of unGodly organization we are, we have to find a secular substitute for divine intervention as an instrument of quality assurance. If I had told Dr. S that God will do the quality control for this meeting, I suspect he would have thrown me out.

If we don't do quality assurance ourselves, we are destined to relive the SOS West nightmare. The urge to go back to drinking, to try just one, to drift into moderation, to experiment with controlled drinking, to define ourselves as cured and able to drink again, and many other variants of the same theme, is part and parcel of the recovery experience. It will arise again and again. It is not peculiar to affluent Marin or trendy San Francisco; it arises everywhere. Sooner or later it will take organizational form as a trend, or as the distinct philosophy of a meeting, or as a tacit group practice that is known and tolerated but never acknowledged openly. Whenever that occurs, the name of the organization is dragged into disrepute. All the painstaking work that we do to build ourselves up as a viable recovery alternative to AA goes down the tubes. One rotten apple stinks up the barrel.

I have heard people lauding the old anarchist principle that each SOS meeting is absolutely free to do whatever the f it wants. In my early days I thought that sort of rhetoric sounded wonderful. But after hearing The Firm quote that rhetoric at me in court papers for three years, as legal justification why SOS National could take no action against SOS West, I don't think it's so wonderful anymore. I think that rattly old rhetoric is a formula to repeat the SOS West experience time after time. When used by people old enough to know what it means, that rhetoric is a coverup for abandonment of the Sobriety Priority.

The public expects, the treatment profession demands, and the law requires, that we do quality assurance. If we promise the public that our meetings will be sober, we need to have some method for performing on that promise if it is persistently violated, as was the case in SOS West. We need to do internal quality assurance early and often, and we need to have ways of making it stick, long before we approach the litigation stage. When nothing will work anymore but to bring suit, then it is already too late and we have waited too long. Litigation, as this experience shows, is risky and the outcome is unpredictable; it eats up precious resources and diverts energies from more fruitful projects. Doing quality assurance only or mainly via litigation in the court system is a certain recipe for organizational disaster.

These reflections are the reason why, in the draft proposal for a form of organization for LSR that I posted recently, I have set "quality assurance" as the prime function of the proposed Board of Directors (or Trustees), why I have tried to endow the Service Center and the Press with affirmative rather than passive roles, and why I want to see an annual convenors' congress. These proposals do not come out of some book, either by Josef S. or by Bill W., as has been implied, but out of the living experience of our organization, in which I have had the privilege of participating. I hope that my reflections on this "interesting" and continuing chapter of SOS history will be of interest to those who care enough to ponder and study such issues.

Of course, many members do not care about organizational questions. They only want to drop in, talk about their sobriety, put a dollar in the basket, and leave. However, it should be perfectly obvious to anyone but a small child that such casual members are not sufficient to sustain, much less to grow a volunteer service organization. There must be people who care enough to come early, set up, see about literature and signup sheets, handle the money, and acquire enough knowledge about the principles of the organization to lead the discussion when called upon. And there must be people to present talks, and to answer phone calls, and to pay bills, and to produce literature, and address envelopes, and the thousands of other tasks, most of them behind the scenes and outside of meetings time, that it takes to keep an organization alive. If there are not those people also -- people whom we vaguely call "convenors" -- the casual drop-in will soon find the room closed and the meeting gone. And so this rhetoric about tailoring our organizational structure to the limited horizon of the casual drop-in member is infantile.

SOS, like every other voluntary service organization from AA to the Zoological Society, asks its participants to commit their time and their money. And rightly so. Without volunteer time and energy, without membership financial support, an organization ceases to exist. The big difference that I see between the official SOS in its present condition, and all of these other organizations so far as I know, is that the others, when they take your time and money, give you a vote. The official SOS just takes your time and money.

The great organizational virtue of SOS, as I said earlier, is that it is a Do It Yourself framework. Within that confederative framework, many different kinds of organizations can exist. Since the largest single cluster within the worldwide SOS network -- the SF Bay Area groups -- have been impelled by legal circumstance to adopt a new name, and since this change has roiled up the formerly quiet backwaters of the organization and set the dogs a'barking, this is an excellent time to question all the old structural assumptions, to think the unthinkable, and to set about creating, within the old framework, a new and more democratic substructure.

Marty N.