from Urantia Foundation to Oklahoma
Society Defending Confirmatory
December 27, 1976
Via Registered Mail
URANTIA FOUNDATION 533 DIVERSEY PARKWAY CHICAGO ILLINOIS 60614
Return Receipt Requested
December 27, 1976
First URANTIA Society of Oklahoma Attn.: Mr. Tom Allen, President c/o Midway Oil Company 1909 First National Center Oklahoma City, Oklahoma - 73102
Re: The Conflrmatory Agreement
There are three matters to which your Society has patiently awaited a response from URANTIA Foundation. They are: Advice as to 1) Just how the Confirmatory Agreement would help the Foundation 2) Whether it would be possible to date the Agreement as of the date it is signed, rather than November 23, 1957 3) Whether the Agreement could be limited to a few pertinent matters, leaving out any extraneous requirements. As you of course realize, the Confirmatory Agreement deals with registered trademark and service mark matters only (as opposed to copyright considerations), and it pertains to the activities of the Societies with which the marks may lawfully be used. Further, as you are aware, the word URANTIA and the Concentric-Circles Symbol were registered in order to strengthen as well as to preserve their unique meaning as marks which identify the source of the products and services of URANTIA Foundation and the duly recognized and authorized organizations of the URANTIA movement.
We know from history and from our own rather brief but intense experience that, if active steps are not taken to insure that the registered marks are used by individuals or groups only in a manner specifically authorized by the Trustees, then the registered marks will lose their registered mark status and significance as trademarks and service marks. As a consequence, they will fall into the public domain. Thereafter, they could be used in conjunction with all manner of activities, some of which might not only be unrelated to, but also be manifestly inconsistent with, the URANTIA Teachings. URANTIA Foundation has already prevented or terminated a number of instances of misuse of the marks through persuasion, as well as by legal action where that was necessary. The Trustees have foreclosed, or are in the process of foreclosing, illegal uses of the registered marks which did not or do not contribute to the success of The URANTIA Book and which in some cases constituted or constitute a gross insult to the dignity -- if not the integrity -- of The URANTIA message.
Insofar as your first question and a specific answer thereto is concerned, we invite your attention to an article by F. Vern Lahart, who at the time he wrote this article was a member of the law firm which has continuously represented URANTIA Foundation since we became involved in matters concerning registered marks and copyright. The article, entitled ''Control-The Sine Qua Non of a valid Trademark License," appears in The Trademark Reporter, cited as 50 TMR 103, published by the United States Trademark Association. This is an excellent, erudite, summary of some of the basic doctrines of trade-mark (and service mark) law. We urge you to peruse this article in detail, including the extensive legal citations therein in support of this discussion. While the entire article should be of much interest to you, appearing below are pertinent quotations which bear on the question at hand.
"...the courts have held that the public is entitled to assume that the user of a mark is the owner of the mark, or is controlled by the owner, and that the goods bearing the mark are the genuine product of the owner of the mark.
"Now, as to the corresponding duties of the owner of the mark: The public has rightfully come to rely on the fact that the exclusive owner of the mark is the exclusive user, and vice versa...And, herein lies the duty. Since the public is expected, and even encouraged, to rely on the trademark as a 'badge of genuineness' of the product to which it is applied, the owner of the mark must make certain that the public is not defrauded. The failure to do so may result in the loss of his exclusivity, and in a holding that his claim of ownership is 'naked' and no longer covered by the coveted cloak." (50 TMR 104)
"It would thus seem that a trademark owner may do whatever he pleases with his mark since he is its sole proprietor. However as promiscuous as a trademark owner may be concerning his own use of a mark, he is not at liberty to permit a third party to do likewise-- without seriously impairing, or even vitiating, the validity of the mark." (Emphasis supplied) (50 TMW 105) "It is interesting to observe that a party is not at liberty to use another's mark even if the goods on which the mark is used truly conform to the owner's strictest controls. In one of the Coca-Cola cases the defendant purchased plaintiff's genuine syrup and used it in the manufacture of a beverage. The beverage which defendant bottled and sold under Coca-Cola was apparently made in exactly the same way that plaintiff had licensed others to manufacture the beverage. Nevertheless, even if arguendo, defendant exercised exactly the same safeguards and controls over its licensee, and if defendant only used genuine COCA COLA syrup, defendant could not apply the COCA COLA Mark to the finished product. The court unequivocally held that plaintiff must be able to '...control the integrity of its trademark, which is its guaranty that the beverage is as represented...' It is the licensor's responsibility to maintain control," (50 TMR 112-113)
It is clear, then, that the law requires that the owner-licensor of the registered mark exercise control over the licensed use of the registered mark. But what is control?
Mr. Lahart states: "Control is that which guarantees that a mark used by a licensee identifies goods as being manufactured in accordance with certain standards of the licensor-owner of the mark. Control is the guarantor of genuineness. "Control must be maintained by the licensor over the nature and quality of the goods in connection with which the licensee uses the mark. Control merely over the nature of the goods is not sufficient since 'nature' merely means 'kind' of goods." (50 TMR 107) "Control is not made up of any particular element nor does it have any special form. It is not necessary that the license provisions generally or the control provisions specifically be in writing. Control must be actual and not passive in order that the public may be guaranteed that the goods bearing the mark are of a certain nature and quality. In the SUNBEAM Bread case the trial court said: '...the question is, is there control in fact not whether the agreement specifies control.' (50 TMR 108)
"Conversely, just as provisions concerning control need not be specifically set forth in a license agreement, it is not sufficient merely to provide for control in a written agreement." (50 TMR 109) Control then consists not in mere formal elements such as a written agreement once written, filed away to be forgotten, or a 'gentlemen's understanding' (though these may well be legitimate concomitants of a well designed and administered program of supervision and control), but consists in the active involvement of the licensor in a number of ways to insure that the marks are indeed properly used.
"There are probably as many different methods for exercising control as there are licensors." (50 TMR 132)
"There is no magic formula to determine what is adequate control in a given situation, and there probably never will be any such formula." (50 TMR 132)
(We are assured by our attorneys that the above use of quotations is permissible under the current copyright law.) In satisfying this requirement of control, on advice of counsel, URANTIA Foundation has taken a two-fold approach -- one part of which has been the formulation of a Confirmatory Agreement for existing Societies (the same identical agreement for each and every Society) the purposes of which, among others, were and are:
1. To formalize the licensing arrangement with each Society which would show among other things the Foundation's active interest and participation in the husbanding of the registered marks. 2. To specify with care the proper and authorized uses of the registered marks to avoid a mere naked license situation which could lead to rendering the registered marks invalid. 3. Once and for all clearly to state what is expected of each Society so that there will be a minimum of misunderstanding as to each Society's rights and duties as a licensee. 4. To show (for court purposes and otherwise) an unbroken supervision of the uses of the marks during the existence of each Society, from its installation to the date of the signing of the agreement. As the second part of the two-fold approach, the Foundation has tried to meet this burden of "control" by promulgating suggested guidelines for the conduct of URANTIA meetings, which are, of course, still in the process of being finalized. Further, as an example of their active supervision of the use of the marks, you of course will recall that certain Trustees, with the Foundation's attorneys, met with representatives of your Oklahoma Society specifically to come to an agreement with the Oklahoma Society for the use of the marks in connection with the 1976 URANTIA International Forum this past summer. The Trustees have also -- both personally and through their representatives-- actively sought in a number of other instances to insure the proper use of the marks.
The Confirmatory Agreements are helpful in a number of respects: 1) They clearly establish the licensed relationship of each Society and their right to use the registered marks as specified, 2) They provide written evidence, readily admissible in court, in the stead of witnesses who might have to be flown a considerable distance and at some expense and inconvenience to testify, as to the Foundation's efforts to fulfill the requirements of the law regarding supervision of the use of the registered marks; 3) They avoid a mere naked license situation; and 4) they furnish each Society with full and open opportunity to know exactly what is involved in its status as a licensee.
The Confirmatory Agreements play a major role in the Trustees' multi-faceted approach towards actively engaging in proper supervision of the use of the marks and providing the requisite evidence thereof. The Confirmatory Agreements in conjunction with the active involvement of the Trustees not only help round out but also substantially support the program of wise registered mark licensing, supervision, and management. The Trustees' program of control over the use of its marks, we are advised, should meet the legal requirements necessary perpetually to preserve the registered status of the marks.
During our May (1976) meeting with representatives of First URANTIA Society of Oklahoma (which included Clyde Goodman, Berkeley Elliott, Max Lawrence, Tom Allen, Helen Butler, and Dick Brittain) there was some brief discussion as to the need for Confirmatory Agreements. In amplification of the above, appearing below are some pertinent quotations (principally of our attorney) from the transcript of the meeting of May 14 and May 15.
Lyman: "Well, maybe I can talk for a few minutes and then everybody else can do the talking. Just to sort of maybe go back to Square One, or something of the sort. A few years ago, I think it was Tom, or maybe it was Bill, who first came to my office, but it's not important. We got on the subject of the fact that we ought to protect the name URANTIA so that it could not be picked up by anyone who, however dedicated, were to, having read the book, decide that he was, how shall I say, called to tell others about the message of The URANTIA Book and to regard himself as maybe even divinely inspired to do this - and to do things which other people who had already been members of a URANTIA Society in one part of the country or another would regard as pretty strange and maybe even a little ridiculous and at least undesirable.
And that therefore it ought to be established just what the name URANTIA means insofar as it is an identifying name in connection with the Foundation and the Brotherhood and the Societies and what, for the lack of a better word, I would tend to call the URANTIA organization. That's an undesirable term, but I don't mean it that way. I just mean to indicate those, all of whom have been working together and know one another and have as far as I can see a very strong common purpose and desire. And so - anyway I said - well gee, the thing we need to do is to point out that it is used and it does mean those who are most dedicated to the dissemination of the Book and its message and it should be registered as a mark in the Patent Office to - in connection with educational services of that sort - and it should also be registered as a trademark for publications, the Foundation being the one that brings out publications. And similarly with reference to the concentric-circles symbol. And so that was done.
And then somewhat later the question was brought up - 'Well now, is there anything we ought to do in view of the fact that the Word and Symbol are being used, not only by the Foundation on the Book itself and some other subsidiary publications, excerpts, and leaflets and pamphlets and that sort of thing, but also, by, very extensively and rightly, by the Brotherhood and by the constituent Societies, and it was pointed out to me that, many years ago, a resolution had been adopted by the then Trustees relative to the right of the Brotherhood to use that as their - as the name URANTIA Brotherhood. And this was all done pursuant to formal action by the Trustees. And I pointed out that that may be so, but there hasn't been any acknowledgment by the Brotherhood, as far as I know, at least as far we could at that point, I think, find very readily, that they recognized this relationship and that ought to be established.
The reason for this being that the trademark and service mark act or law declares that someone can own an identifying name or mark and can permit other people to use it in connection with the manufacture of products or the performances of services of one sort or another. But then it must be shown that there is some connection. And if you own the trademark Dairy Queen and you let various people use the name, and gee, they put out all sorts of products and maybe some of them are not very good quality, you're going to begin to destroy the identity of that name. It doesn't really mean one thing uniformly and therefore there has to be some agreement that everybody's going to use the trademark and service mark and the membership mark, and so forth, consistent with the pattern set by the licensor. And this being done, if someone, as you probably all know, opens up a road-stand - a road-side, well what shall I say, bar? in the New Orleans area and calls himself the URANTIA Cocktail Lounge, you're in a position to say--"Oh-oh, you can't do that, because we not only registered it, but we very carefully see to it that everyone who uses it is part of our organization and group and we don't permit - it is not permitted to people to just use it broadly that way." Or the fellow out in Steamboat Springs who adopted the--
Tom: The URANTIA Leather Goods.
Lyman: The URANTIA Leather Goods. And--
Bill: On Long Island, the URANTIA Studio.
Tom: A photographic studio
Lyman: And so the theory is that this is beneficial to everyone who has, as I think all persons present certainly do, a deep and abiding interest in the maintenance and the protection of the name and the mark to mean only persons forming a part of the URANTIA organization. I don't know whether you use that term, but you know what I'm talking about.
Tom: URANTIA movement.
Lyman: URANTIA movement, yeah. Well, that was the reason for preparing, as I did prepare, a document, a legal document, setting all these things forth. And I prepared it in the form that is well-nigh universal among all the trademark owners and service mark owners with whom I am familiar, either by virtue of doing the work in our office or reading decisions about their marks when they had other counsel, it being language which I was moderately, at least, confident a judge would recognize and would say, "Oh yeah, I'm familiar with this--I've seen this sort of thing before, Let me see what it says. And this - and this - and this--so it appears that this is all well protected.
So you, Mr. Leather Goods, or you, Mr. Cocktail Lounge, or you Mr. Photographic Studio, are going to have to stop. You can't use this name." My sole intention, purpose, hope, and desire was to put the name in such a strong position that we couldn't - that anybody who did something could be stopped - and relatively quickly and simply and inexpensively, and so on. That's the whole thought behind it. Now, the cases as you - at least a few of them that you've seen - and maybe you've got a lot more, Max - all talk about and the Act talks about exercising 'control of the nature and quality' of the goods and services and so on and so on. And this is perfectly understandable. If somebody - well, the best example that comes to my mind quickly, I don't know whether they are still being sold around here - are Eskimo Pie Corp. of New York.
And certainly for many years they have licensed local dairies all over the country to make and sell chocolate covered vanilla ice-cream bars and put the name Eskimo Pie on the wrapper. And the idea is that this helps to insure that that shall always be of uniform quality. It isn't quite like Coca Cola who make the syrup and then sell it - but rather they rely on the local person to comply with their standards and so forth. In consequence, it stands up very well and you don't get any sour cream Eskimo Pies or what have you - undesirable quality. And no question that it's protected and maintained. Well, this is the whole idea and it is intended, as a consequence, I am about to bring this to a close - it isn't intended that as a consequence, that every little itty-bitty thing that anybody does has got to be inspected or checked or supervised or controlled or what have you. Max: Well, I think we all desire work to the end that the word Urantia immediately conjures up in the mind of the average individual the highest form of integrity, nobility, what have you, ut beyond even the revelation that's involved. Lyman: Yes.
Lloyd: Along the line of what Tom mentioned here concerning the way in which the marks are used, also brings to my mind a part of the statute that says that a trademark or service mark can become lost through acts of omission as well as acts of commission. So if someone --you not only have to pursue those who have no right to use it, but also you have to be certain that those who do have the right to use it, use it in the proper way.
Max: Otherwise, you've abandoned it.
Lloyd: Yes, it constitutes an abandonment.
Lyman: What we would like is, maybe I said, some provable acknowledgment by all of those who are using it rightfully that they are doing so with the consciousness of the fact that it's owned or stands in the name of the Foundation. The idea being that if it simply rests on our general oral agreement, in the fullness of time none of us are here. And whoever succeeds each of us is left in the position, - well, it's been going on for a long time and I suppose it was all done by agreement, but I can't prove it. This is a desirability as you, of course, are very well aware of, Max, of written instruments as distinguished from just a shake of a hand and say, "Sure, this is the way we all operate."
Now, in addition to the foregoing on May 11 Mr. Emrich sent Mr. Max Lawrence the following: a. Excerpts from the Trade Mark Act b. Excerpts from trade Mark Law and Procedure (2nd edition) pp. 243-245 c. Decisions re licensing of Mark: Rita Associates.... 134USPQ86 Turner et al......154USPQ330 Sheila's Shine products 179USPQ577 The National Lampoon 182USPQ25 Acme Valve 183USPQ629 Poole ........184USPQ303 During the May 14-15 meeting Max, who is a member of the Oklahoma Bar, indicated that he had some familiarity with this area of the law and we would now think (if Max will forgive us any seeming presumptuousness) that Max would be of help to you on this matter of the importance and purpose of the Confirmatory Agreement.
Hopefully, the foregoing discussions, including excerpts from a treatise authored by F, Vern Lahart, in conjunction with Mr. Emrich's explanation given during our meeting of last May, together with the materials previously supplied to Max, will serve fully to explain the legal basis for the Trustees' actions and will satisfy in all respects your request for a legal opinion. If you find this explanation overly lengthy, we apologize. However, in some cases there is no brief way appropriately to deal with a subject that is inherently technical and perhaps complicated, In any event, let us hasten to add that this is a condensed version of all that could be said!
Now, let us consider your second question. As mentioned above, the Trustees in cooperation with competent legal counsel have formulated the Confirmatory Agreement as a document which would be equally applicable to all Societies. (Dr. Sprunger has recently provided Clyde Goodman with a copy of the Confirmatory Agreement submitted to and signed by First URANTIA Society of Fort Wayne, Indiana, which agreement was found to be identical in all respects to that originally supplied to First URANTIA Society of Oklahoma.) One of the purposes of the document was to recognize and confirm an unbroken supervision of the use of the registered marks. (Hence the title Confirmatory Agreement. )
Inasmuch as the Trustees wish to establish that there have been no gaps in their compliance with the legal requirements of control, we are reluctant to date an agreement, which was originally conceived as "confirmatory" in nature, only from the date of signing. We would, however, consider any specific substantive reasons you might offer us, if the present composition of the Confirmatory Agreement is objectionable. If the Agreement is to be modified we must know why if we are to react intelligently and meaningfully.
To date we have been told that the Confirmatory Agreement would cause First URANTIA Society of Oklahoma to perjure itself. This we can assure you came as a shock both to the Trustees and our attorneys. This matter came up during the May 14-15 meeting. It was maintained that "many things in that document would have been outright perjury."
Lyman Emrich responded as follows: "What I would like is a bill of particulars. Max, please prepare one. Not today, but next week, or something. Give me all--this is the only way we're going to get this thing down where we get somewhere. It isn't going to do any good to say, "you're charging me - or you want me to commit perjury," and I say "Oh no I don't." Let's have specifics so that we can figure out what it is that is believed to be, conscientiously, I'm sure, untrue. This has to do with the trademarks, and so forth, and the service marks." The Trustees are completely unaware of just how the Confirmatory Agreement would cause anyone to perjure themselves, and certainly not First URANTIA Society of Oklahoma. However, if this entire matter is to be discussed and ultimately settled to the satisfaction of First URANTIA Society of Oklahoma, URANTIA Brotherhood and URANTIA Foundation, it must be done on the basis of good faith and full and open, frank disclosure.
We invite you please to detail in what manner the Confirmatory Agreement will cause First URANTIA Society of Oklahoma to perjure itself, and if so, how it can be modified so that there will be no perjury and so that URANTIA Foundation at the same time can avoid any apparent gaps in the Foundation's supervision of the proper use of the registered marks. If there is a problem festering--as it appears there is, let us all be courageous enough openly to acknowledge it and deal with it intelligently. The lad mentioned on page 1475 of The URANTIA Book could not run from his problems. nor can we from ours.
Insofar as your third question is concerned, perhaps in view of the foregoing discussion you will now readily appreciate that it really begs the question.
URANTIA Foundation as proprietor of the registered marks must do that which in its best judgment is necessary adequately to protect the validity of the registered marks. The Confirmatory Agreement as submitted to your Society embodies the best legal thinking of experienced trademark lawyers available. In addition, it attempts to set out the entire agreement in reasonable detail so that each society will have fair and ample opportunity readily to know exactly where it stands (what is expected of it) as a licensee of the registered marks URANTIA and the Concentric-Circles Symbol. In other words, it is our considered belief that there is no extraneous material and any attempt to abridge the agreement would threaten its contemplated efficacy.
We apologize for the delay in providing a written answer to these questions. It has certainly not been our desire in any way seemingly to ignore First URANTIA Society of Oklahoma. In addition to this admittedly lengthy letter, we hope that the visits (which caused the Foundation treasury considerable expense) in January 1975 and May 1976, the latter including the presence of our attorneys, will in some measure-- if not completely--assure you of our desire to attain an open, honest, frank, and productive relationship.
We shall assume that the next step in working towards the first URANTIA Society of Oklahoma's signing of a viable Confirmatory Agreement shall be yours. We look forward to hearing from you. Despite our human organizational problems, each of the Trustees has warm, sincere personal regard for each of the members of First URANTIA Society of Oklahoma.
Our mission is too great, the love of our hearts too encompassing, to permit our stumbling and faltering at this historic moment. The future beckons. Let us fulfill the role which destiny has ordained.
Thomas A. Kendall President
cc: URANTIA Brotherhood Miss Berkeley Elliott Mr. Clyde Goodman