Summary
finding the United States Patent and Trademark Office, Trademark Trial and Appeals Board a quasi-judicial tribunal and statements made in a petition thereto are "clothed with an absolute privilege"
Summary of this case from Doe v. Coll. of WoosterOpinion
Case NO. C2-02-265
July 29, 2002
ORDER
Plaintiff alleges that he registered a trademark incorporating the name "Mad Hops" with the United States Patent and Trademark Office. In this defamation action, plaintiff alleges that defendant defamed him when it filed a petition for cancellation of his trademark before the United States Patent and Trademark Office, Trademark Trial and Appeals Board ("Board"). Plaintiff alleges that in its petition, defendant unjustifiably accused him of defrauding an agency of the United States and that defendant published its libel by sending a courtesy copy of its petition to plaintiff's counsel and by filing it with the Board.
This matter is before the court on the motion of the defendant to dismiss the complaint pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief may be granted. A complaint may be dismissed for failure to state a claim only where it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief. Conley v. Gibson, 355 U.S. 41, 45-46 (1957). The court must construe the complaint in a light most favorable to the plaintiff and accept all well-pleaded allegations in the complaint as true. Scheuer v. Rhodes, 416 U.S. 232 (1974). A motion to dismiss under Rule 12(b)(6) will be granted if the complaint is without merit due to an absence of law to support a claim of the type made or of facts sufficient to make a valid claim, or where the face of the complaint reveals that there is an insurmountable bar to relief. Rauch v. Day Night Mfg. Corp., 576 F.2d 697 (6th Cir. 1978).
A complaint must contain either direct or inferential allegations with respect to all material elements necessary to sustain a recovery under some viable legal theory. Weiner v. Klais Co., Inc., 108 F.3d 86, 88 (6th Cir. 1997). The court is not required to accept as true unwarranted legal conclusions or factual inferences. Morgan v. Church's Fried Chicken, 829 F.2d 10 (6th Cir. 1987).
Defendant concedes that it filed a petition for cancellation of plaintiff's trademark registration with the Board. The Board is an administrative agency which performs a quasi-judicial function. Cancellations are initiated by the filing of a petition. See 37 C.F.R. § 2.111. The registrant then files an answer. See § 2.114. The parties conduct discovery, see § 2.120, and a trial is held. See § 2.121. The proceedings are governed by the Federal Rules of Civil Procedure. See § 2.116 The Federal Rules of Evidence apply at trial. See § 2.122. A petition for cancellation is heard by a panel of three members of the Board. See 15 U.S.C. § 1067. A dissatisfied party may appeal to the United States Court of Appeals for the Federal Circuit. See 15 U.S.C. § 1071 (a). The factual findings of the Board are reviewed under the substantial evidence standard. See,e.g., Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir. 2002).
Under Ohio law, a defamation action cannot be maintained for defamatory statements made in a judicial proceeding if such statements are reasonably related to the proceedings. See Hecht v. Levin, 66 Ohio St.3d 458 (1993); Kirshner v. Shinaberry, 64 Ohio App.3d 536, (Ohio Ct.App. 1989). Plaintiff argues that the rule of absolute privilege is limited to proceedings that are both (a) inherently judicial in nature; and (b) exclusively under the control of the judicial branch of government. According to plaintiff, statements made in the context of a quasi-judicial proceeding are entitled to only a qualified privilege. Defendant contends that Ohio extends an absolute privilege to quasi-judicial proceedings. Defendant's contention is well taken.
Ohio accords an absolute privilege to communications made during unemployment proceedings on the grounds that they are quasi-judicial in nature. See Barilla v. Patella, 760 N.E.2d 898, 906 (Ohio Ct.App. 2001) ("Communications made during unemployment proceedings, which are quasi-judicial in nature, are subject to an absolute privilege, and may not be used in subsequent actions.") To the same effect is Horsley v. Wal-Mart, Inc., No. 97 1997, Ohio App. LEXIS 5988, at *4 (Ohio Ct.App. Dec. 23, 1997):
Statements made in conjunction with the unemployment compensation hearings are made in the course of quasi-judicial proceedings. Statements made during judicial proceedings are afforded an absolute privilege when they are relevant to the issues at hand.
Plaintiff argues that Ohio extends an absolute privilege to quasi-judicial proceedings only when a specific Ohio statute creates such a privilege and suggests that the decisions in Barilla and Horsley can be explained on this basis. O.R.C. § 4141.21 provides that information furnished in the course of an unemployment compensation proceeding is inadmissable in a court proceeding but there is no Ohio statute which accords an absolute privilege to communications made in the course of unemployment compensation proceedings. See Pasanovic v. Am. Gen. Fin. Inc., No. 92 A P-651, 1992 WL 229517, at *3 (Ohio Ct.App. Sep. 17, 1992) ("R.C. 4141.21 does not confer a privilege; rather it contains an evidence exclusion provision.") In both Barilla and Horsley, the Ohio courts did not rely on § 4141.21 for the holding that statements made in the course of unemployment compensation hearings were absolutely privileged, instead they relied on the fact that the proceedings are quasi-judicial in nature.
In Stiles v. Chrysler Motors Corp., 89 Ohio App.3d 256 (Ohio Ct.App. 1993). the court held that statements made in the course of a grievance proceeding arising out of a collective bargaining agreement are entitled to receive the absolute privilege accorded them under federal law. In the course of its decision, the court indicated that such communications would also be entitled to an absolute privilege under Ohio law because grievance proceedings are quasi-judicial in nature. The court explained:
Grievance proceedings have also been classified as quasi-judicial, thereby giving rise to an absolute privilege for statements made by a party concerning another if the matter has some relationship to the judicial functions . . .Id. § 587 Comment f.
The Board is a quasi-judicial tribunal. The statements contained in defendant's petition for cancellation are clothed with an absolute privilege. The allegedly defamatory statements had a direct relationship to the cancellation proceeding. Plaintiff is prohibited from bringing a defamation action based on those statements. Accordingly, the complaint does not state a claim upon which relief can be granted and defendant's motion to dismiss is well taken. The Clerk shall enter final judgment in favor of defendant dismissing plaintiff's complaint with prejudice at plaintiff's costs.
It is so ORDERED.