Sacramento Public Library Authority can pursue trademark case against foundation with similar name

The Sacramento Public Library Authority can continue its lawsuit against the Sacramento Public Library Foundation, a judge ruled this week. The 28-branch, city-county library system claims the foundation is engaging in trademark infringement, misrepresentation and unfair competition. The complaint filed by Andrew W. Stroud with Hanson Bridgett LLP and Sacramento City Attorney Jennifer V. Gore seeks damages and an order that the foundation to stop using the words "Sacramento Public Library" in its name and fundraising. Sacramento Public Library Authority v. Sacramento Public Library Foundation, 2:20-cv-00678-WBS-KJN (E.D. Cal., filed March 31, 2020).

On Tuesday, Senior U.S. District Judge William B. Shubb dismissed the authority's claims under California's Unfair Competition Law and False Advertising Law on standing grounds. He also wrote the authority had failed to meet its burden to show misrepresentation.

But Shubb said the authority showed sufficient evidence to proceed with its trademark claims under the federal Lanham Act. He rejected the foundation's assertion it is the senior holder of the mark, and found that online use of the name was sufficient to "allege use of the mark in interstate commerce."

Shubb also dismissed the foundation's argument the California attorney general must be added as a party to the case under the charitable trust doctrine. The authority "has sufficient interest in the foundation and has notified the attorney general of this action," he wrote.

Court documents tell a story of a relationship between the two organizations that soured over several years. The foundation was formed in 1984 "for the sole purpose of funding the library," the order noted.

The authority claims that around 2013 the foundation began violating the terms of a 2004 memorandum of understanding by raising money for other groups and activities while misrepresenting themselves on tax forms and fundraising appeals. The library later rescinded permission to use the name and the foundation removed all library representation from its board and committees.

(Disclosure: the author was the public information coordinator for the Sacramento Public Library system from 2013 to 2015).

-- Malcolm Maclachlan