On the evening of January 21, 2022, the night before the annual March for Life in Washington, D.C., pro-life activists gathered in the Basilica of the National Shrine of the Immaculate Conception to celebrate Mass for the unborn and for the success of the March. Unbeknownst to the Mass-goers, another group of protesters gathered with a projector across the street from the Basilica. As Mass was being celebrated inside the church, these protestors projected onto the outside of the church statements in support of legal abortion access. This group was led by Catholics for Choice, an organization dedicated to protecting legal abortion.
The same group released a statement that evening by its president Jamie L. Manson stating, “I support abortion access because my Catholic faith teaches that healthcare is a human right, and that includes abortion. … Catholics for Choice will never stop shining our light on behalf of the pro-choice, faithful majority for the fundamental constitutional and human right to abortion – as a matter of justice, a matter of freedom, and a matter of faith.” The following day Wilton Cardinal Gregory made plain his view of the dissident group and their stunt, stating, “The true voice of the Church was only found within the Basilica,” and that “those whose antics projected words on the outside of the church building demonstrated by those pranks that they really are external to the Church and they did so at night.” He then cited John 13:30: “And Judas having received the bread, went out immediately. And it was night.”
This is not the first time that Catholics for Choice has been condemned by the bishops for their promotion of abortion in defiance of clear and universal Church teaching. Responding to a 2016 Catholics for Choice ad campaign, Timothy Cardinal Dolan released a statement on behalf of the United States Conference of Catholic Bishops saying the group’s use of “Catholic” in its name was deceptive and offensive, and that “CFC is not affiliated with the Catholic Church in any way.” A similar statement was made by Bishop Joseph Fiorenza on behalf of the USCCB in 2000, when the group was known as “Catholics for a Free Choice.” Consistent with its flagrant disregard of Catholic teaching, Catholics for Choice has simply ignored the bishops’ statements regarding the use of “Catholic” in its name.
In light of the actions taken last week at the Basilica, many Catholics have asked whether more can be done to perhaps force Catholics for Choice to rebrand. While modern US constitutional law enforces a “high wall” between church and state, that does not mean churches are bereft of civil legal rights. If the bishops wanted to use civil legal means to enforce their ecclesiastical rules, that option may be available to them in the case of Catholics for Choice—in the form of trademark law.
The 1946 Lanham Act creates a number of federal trademark or false designation rights. First, there is the classic trademark infringement claim set forth in 15 U.S.C. 1114(1)(a), which requires a federal trademark registration. But beyond this is a broader federal right of action known as “false designation of origin,” defined by 15 U.S.C. 1125(a)(1)(A), and which does not require federal trademark registration:
“Any person who … in connection with any goods or services … uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person …shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”
Catholics for Choice clearly uses the word CATHOLIC to gain publicity as Catholics allegedly in good standing who support pro-abortion policies. This is not hidden: As they say on their website, “We strive to be an expression of Catholicism as it is lived by ordinary people. We are part of the majority of the faithful in the Catholic church who disagrees with the dictates of the Vatican on matters related to sex, marriage, family life, and motherhood.” This suggests an affiliation, connection or sponsorship by the visible structure of the Catholic Church, which Catholics for Choice relies upon to obtain favorable news reports and interviews in the secular press. Thus, the use of CATHOLIC in the name Catholics for Choice is to misrepresent their affiliation with Catholicism and the Catholic Church to their benefit. That is false designation of origin, and the Catholic bishops have a right to action under Section 1125(a)(1).
At this point, I expect four objections to arise, but none should be sufficient to grant Catholics for Choice victory. First, Catholics for Choice will argue that CATHOLIC is not a trademark, nor is it registered by the USCCB. But this is beside the point. The “false designation of origin” action is available to prevent misrepresentation of, or deception on the basis of, affiliation, sponsorship, or endorsement as to source of origin, regardless of whether a given word or phrase is a registered trademark. The bishops have the authority under canon law to regulate the usage of the word CATHOLIC or any other word that suggests an endorsement, sponsorship, approval, or affiliation with the visible Church. 1983 CIC cc. 300, 312. If the appropriate bishop were to bring an action under canon law to remove the right of Catholics for Choice to use CATHOLIC in their name, it would put Catholics for Choice in a double bind. If they acquiesce to the authority of the bishops in this case, they would have to remove CATHOLIC from their name; if they refuse to do so, then they are not Catholics in good standing. (The last 20 years are proof of what the result would be here should a bishop take that action.)
Second, Catholics for Choice will suggest that “Catholic” takes on a meaning that is broader than the hierarchical Catholic Church, and they can use Catholic in that broader sense. Or to put it differently, the Catholic Church does not own the trademark CATHOLIC because it is generic or not a trademark and the bishops have never enforced it legally. In fact there exist a wide array of recognizably schismatic Catholic churches that use the word CATHOLIC in their names: Old Catholics, Polish National Catholics, Liberal Catholics, Catholic Charismatics, etc. But there are two distinctions here. First, while I am sure some isolated counterexample exists, I cannot think of a well known organization or entity that just uses the word CATHOLIC in its name like Catholics for Choice does in a way that suggests affiliation with the actual Catholic Church. Second, none of the members of such schismatic churches claim to be members of the actual Catholic Church. That is, anything more than a surface-level review of these organizations will demonstrate that they are not in fact Catholic as that term is generally publicly understood, nor do they claim to actually have such an affiliation jurisdictionally or spiritually. Catholics for Choice, however, lives on the ambiguity of that distinction, and that is enough to bring this case under Section 1125(a).
Third, Catholics for Choice will claim their use of CATHOLIC is what is known as nominative fair use. That is, they are merely suggesting that they themselves are Catholic, and they can call themselves such. The problem with this argument is that they do not need to have an organizational name that uses the word Catholic. Nominative fair use only applies when a given product or service cannot be readily identified without using the mark, and when the use itself does not suggest affiliation, sponsorship, or endorsement. Catholics for Choice fail both these prongs. It is not necessary for providing advocacy services for legal abortion access that they use CATHOLIC in their name, and as noted above, they are profiting from the implied affiliation. A nominative fair use argument will fail.
Finally, Catholics for Choice will argue that this is a matter of religion, free exercise, and free speech, which the First Amendment prohibits US courts from having any say over. But that is not true. US courts have in fact routinely enforced religiously-determined rights when a remedy is provided under secular law. Historically such cases arose when church congregations split over some doctrinal matter and the question arose of who owned the property: the historic church or congregation or the new entity. In the case of an intra-church dispute over such property rights, the U.S. Supreme Court has held that where the church in question is hierarchical, the civil court will adopt as conclusive the judicial judgment of the highest authority speaking on the matter under applicable religious law. This dates back to Watson v. Jones in 1872 and most recently was applied by the Supreme Court in Serbian Orthodox Diocese v. Milivojevich in 1976. Now in this case we are dealing with a trademark or right of affiliation, but this is just another property right, and the older cases involving real and personal property apply analogously.
In fact, we have a very recent district court opinion stating exactly that and discussing many of the issues above. As many are aware, several Episcopalian congregations in the United States have split from the official entity, The Episcopal Church of the United States of America (TEC), over doctrinal issues concerning sexual morality. Such splits resulted in disputes about ownership of parish lands and churches, but in South Carolina the split also resulted in a dispute about the use of the word EPISCOPAL. The Diocese of Lower South Carolina fractured, and the national TEC designated one entity as the continuation diocese. That entity then sued the conservative breakaway entity for continuing to use EPISCOPAL and other words and logos belonging to (and trademarked by) TEC and its South Carolina entity. In 2019 in a well-reasoned opinion in the case, VonRosenberg v. Lawrence, the District Court of South Carolina held that the breakaway entity’s use of EPISCOPAL and related words and marks constituted trademark infringement and entered an injunction against further use. In the case, the court held that Watson and Serbian Orthodox Diocese applied, meaning that the court was bound to accept the decision of the hierarchical TEC regarding the appropriate successor diocese. The court also ably rejected the breakaway diocese’s claim that EPISCOPAL was a generic word or being used in a non-trademark or nominative fair use manner. The case is still pending on appeal at the Fourth Circuit.
The key takeaway from all this is that to begin the action in civil courts, first the religious authorities must act with the force of canon law. Without an official juridical decree under canon law regarding the appropriate use of the word CATHOLIC, the civil courts will have nothing to act upon. Catholics for Choice is located in Washington, D.C. Therefore, any case must begin with Cardinal Gregory taking action under canon law to officially declare that Catholics for Choice may not use CATHOLIC in their name to suggest affiliation, sponsorship, or approval by the Catholic Church. If Catholics for Choice changes its name, then great, job done. But if they refuse to do so when presented a proper decree or decision as authorized under canon law, that action itself demonstrates their intent to trade willfully on the confusion their name creates. That brings the case under Section 1125(a)(1) for false designation of origin, and for the reasons above, I think the bishops have a good case.
This is no doubt an unusual situation, but the act of projecting abortion propaganda onto the façade of the largest Catholic church in North America while Mass is ongoing demands an appropriate response. Cardinal Gregory and the other bishops have the tools under both canon and civil law to take action and deprive Catholics for Choice of the right to call themselves Catholic. They should strongly consider using them.
