Oneida Indian Nation v. United States Department of the Interior
Filing
32
MEMORANDUM-DECISION AND ORDER granting 14 Motion to Dismiss for Lack of Subject Matter Jurisdiction: The Court hereby ORDERS that Defendant's motion to dismiss for lack of subject matter jurisdiction (Dkt. No. 14) is GRANTED; and the Court fu rther ORDERS that the Clerk of the Court shall enter judgment in Defendant's favor and close this case; and the Court furtherORDERS that the Clerk of the Court shall serve a copy of this Memorandum Decision and Order on the parties in accordance with the Local Rules. Signed by U.S. District Judge Mae A. D'Agostino on 8/24/2018. (ban)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
____________________________________________
ONEIDA INDIAN NATION,
Plaintiff,
vs.
5:17-cv-913
(MAD/TWD)
UNITED STATES DEPARTMENT OF
THE INTERIOR,
Defendant.
____________________________________________
APPEARANCES:
OF COUNSEL:
ONEIDA INDIAN NATION
5218 Patrick Road
Verona, New York 13478
Attorney for Plaintiff
MEGHAN MURPHY BEAKMAN, ESQ.
ZUCKERMAN, SPAEDER LAW FIRM
1800 M Street, N.W.
Suite 1000
Washington, District of Columbia 20036-5802
Attorneys for Plaintiff
MICHAEL R. SMITH, ESQ.
DAVID A. REISER, ESQ.
HOLLAND & HART LLP
6380 S. Fiddlers Green Circle
Suite 500
Greenwood Village, Wyoming 80111
Attorney for Plaintiff
THOMAS L. SANSONETTI, ESQ.
U.S. DEPARTMENT OF JUSTICE
NATURAL RESOURCES DIVISION
601 D St. NW
Washington, District of Columbia 20004
Attorney for Defendant
REUBEN SCHIFMAN, AUSA
OFFICE OF THE UNITE STATES
ATTORNEY - SYRACUSE
P.O. Box 7198
100 South Clinton Street
Syracuse, New York 13261-7198
Attorney for Defendant
WILLIAM F. LARKIN, AUSA
Mae A. D'Agostino, U.S. District Judge:
MEMORANDUM-DECISION AND ORDER
I. INTRODUCTION
On August 17, 2017, Plaintiff Oneida Indian Nation commenced this action against
Defendant United States Department of the Interior ("Defendant" or the "Department") pursuant
to the Administrative Procedure Act, 5 U.S.C. §§ 701 et seq. On November 27, 2017, the
Department moved to dismiss for lack of subject matter jurisdiction and failure to state a claim.
See Dkt. No. 14. For the following reasons, the Department's motion to dismiss is granted.
II. BACKGROUND
In 1794, the United States of America recognized the Oneida Nation when it entered into
the Treaty of Canadaigua. See Dkt. No. 1 at ¶ 16. In the years following the treaty, the Oneida
Nation split after some members sold a portion of the Oneida Nation's land and formed an
independent successor tribe. See id. at ¶¶ 17-18. This new tribe entered into treaties with the
United States that established a new reservation near Green Bay, Wisconsin. See id. at ¶ 17. The
United States recognized the Oneida Nation of New York ("Plaintiff") and the Oneida Tribe of
Indians of Wisconsin ("OTIW") as distinct entities and dealt with them individually. See id.
Since the initial schism, the OTIW has neither resided in or exercised tribal governance in New
York. See id.
In 1934, Congress passed the Indian Reorganization Act of June 18, 1934, 48 Stat. 984.
"[T]he [Indian Reorganization Act] was designed to provide meaningful self-government to
Indian people through reorganization of tribal governments under written constitutions." Timothy
W. Joranko & Mark C. Van Norman, Indian Self-Determination at Bay: Secretarial Authority to
Disapprove Tribal Constitutional Amendments, 29 Gonz. L. Rev. 81, 90 (1994). After the Indian
2
Reorganization Act came into law, the Department conducted separate tribal elections for
Plaintiff and the OTIW to determine whether either tribe would elect to be reorganized under the
Indian Reorganization Act. See Dkt. No. 1 at ¶ 21. The OTIW voted to reorganize under a
written constitution, while Plaintiff did not. See id.
In 1979, the Department began to periodically publish a list of all federally recognized
tribal entities. See id. at ¶ 22. This list identified which tribal entities were recognized by the
United States. See id. In 1994, congress passed the Federally Recognized Indian Tribe List Act
of 1994 (the "List Act"), which mandated that the Secretary of the Interior periodically publish
the list of federally recognized tribal entities in the Federal Register. See id. at ¶ 23; see also Pub.
L. No. 103–454, § 103, November 2, 1994. From 1979 to 2016, Plaintiff was listed as the
"Oneida Nation of New York." See Dkt. No. 1 at ¶ 24. From 1979 to 2016, the OTIW was listed
as some variation of the "Oneida Tribe of Indians of Wisconsin." See id.
In late 2010, the OTIW's government passed a resolution requesting a secretarial election
to amend the tribe's constitution pursuant to 25 U.S.C. § 5123. See id. at ¶ 33. Among the
amendments, the OTIW intended to change its name from "Oneida Tribe of Indians of
Wisconsin" to "Oneida Nation." See id. On October 11, 2011, the Department's Midwest
Regional Office advised the OTIW that "[n]one of the proposed amendments appear to be
contrary to law" and permitted the secretarial election to proceed. See id. at ¶ 36. The
Midwestern Regional Office did not notify Plaintiff that it was reviewing the proposed
amendments. See id. at ¶ 38.
Although the Department concluded that the name change was not contrary to any
applicable law, it nonetheless informed the OTIW
that the name "Oneida Tribe of Indians of Wisconsin" has a long
history, including the reorganization under the Indian
3
Reorganization Act. Changing the name will cause confusion for a
number of entities engaged in business with the Oneida Tribe as
well as other governments. Compounding this difficulty will be the
name of the tribe in the state of New York, called the "Oneida
Nation of New York". While the two names would not be exactly
the same[,] they are close enough so that they will undoubtedly be
confused more often than they are now. The Oneida Nation of New
York is often referred to as the Oneida Indian Nation, including
some self-determination contracts with the Bureau of Indian
Affairs, which will compound the existing confusion over this
matter.
Id. (emphasis omitted). While the OTIW response to the letter recognized the legitimacy of the
Department's concerns, the tribe nonetheless proceeded with the election. See id. at ¶¶ 38-39. On
May 2, 2015, the Department conducted an election and the majority of the OTIW voted to adopt
the proposed amendments, including the name change. See id. at ¶ 40. The amendments were
approved by the Midwest Regional Office as not contrary to applicable law on June 16, 2015.
See id. at ¶ 41.
In late 2015, Plaintiff learned that the OTIW was planning to host a professional golf
tournament on its reservation entitled the "Oneida LPGA Classic." See id. at ¶ 49. Plaintiff,
which had invested tens of millions of dollars establishing its own golf course, objected and
stated in a November 25, 2015 letter that "Oneida" and "Oneida Nation" were its federally
registered trademarks. See id.
On May 4, 2016, the Federal Register published a revised list of federally recognized
tribal entities identifying the OTIW as the "Oneida Nation." See id. at ¶ 42. Upon learning of the
official change in the Federal Register, Plaintiff requested that the Department initiate a process
to reconsider its approval of the OTIW's name-change amendment. See id. at ¶ 53. The
Department declined to reconsider approval of the amendment and noted that the Department's
policy is to automatically adopt any name chosen by a tribal entity. See id. at ¶ 54. The
4
Department noted that creating such a process would require the Department to engage in notice
and comment rulemaking and would be controversial with some tribes. See id. In response to its
unsuccessful attempt to initiate a reconsideration proceeding, Plaintiff attempted to mitigate the
effects of the name change by removing the geographic designation attached to its name and
formally changing Plaintiff's name to "Oneida Indian Nation." See id. at ¶ 55.
On January 16, 2017, the OTIW notified Plaintiff in a letter that the federal name change
entitled the OTIW to use the "Oneida Nation" name and that Plaintiff could no longer refer to
itself as "Oneida Nation." See id. at ¶ 50. Specifically, the letter
a.
invoked the decisions to claim that the Wisconsin tribe had a
right to use the "Oneida Nation" name with no clarifying
reference to Wisconsin;
b.
stated that [Plaintiff] . . . "has never been federally
recognized as Oneida Nation;"
c.
threatened to petition to cancel [Plaintiff's] registered
trademarks unless [Plaintiff] would enter into an
agreement permitting the [OTIW] to market itself
under the newly-federally approved name "Oneida
Nation;" and
d.
insisted that [Plaintiff] never again "refer to itself as
the Oneida Nation, which is the federally recognized
name of [the OTIW]."
Id.
On June 27, 2017, the OTIW filed a petition with the Trademark Trial and Appeal Board
("TTAB") to initiate an inter-partes review proceeding to cancel Plaintiff's trademark registration.
See id. at ¶ 51. According to Plaintiff, the OTIW argued that it had legal rights to the name
because it was recognized by the federal government on the list. See id. The petition stated that
because the Bureau of Indian Affairs approved the name change, the OTIW should be entitled to
use its federally recognized name. See id. at ¶ 52. The petition further argued that both groups
5
use of "Oneida" was "likely to cause confusion, mistake, or deception," Plaintiff's trademark
should be cancelled. Id. Finally, the OTIW argued that in light of the Department approving and
listing the name change, the OTIW should be recognized as having superior rights to the
"Oneida" mark. See id.
On August 17, 2017, Plaintiff filed this action in the Northern District of New York
asserting two claims under the Administrative Procedure Act. See Dkt. No. 1. Plaintiff's first
claim is that the Assistant Secretary's decision to publish the OTIW's changed name in the Federal
Register was arbitrary and capricious, an abuse of discretion, and otherwise contrary to applicable
law. See id. at ¶¶ 56-65. Plaintiff's second claim is that the Midwst Regional Office's decision to
hold and approve the secretarial election was improper as the decision approved a constitutional
amendment that was in violation of 25 U.S.C. § 5123, which forbids the Secretary from approving
any amendments to tribal constitutions that are contrary to applicable laws. See id. at ¶¶ 66-80.
On September 12, 2017, the OTIW filed an amended consolidated petition with the
TTAB. See Dkt. No. 23-2 at 2. The amended petition argues that three of Plaintiff's registered
marks should be cancelled. See id. at ¶ 19. The OTIW's grounds for cancellation fall into three
categories. First, Plaintiff abandoned, failed to use, never used, and never intended to use the
registered marks. See id. at ¶¶ 136-71, 180-86, 190-93, 198-200, 207-13. Second, Plaintiff's
mark resembled the OTIW's mark, who had been using "Oneida" prior to January 26, 2006. See
id. at ¶¶ 187-89, 214-16. Third, Plaintiff's agents repeatedly committed fraud in the course of
registering the marks and filing its Statements of Use by knowingly not disclosing the OTIW's
use of "Oneida." See id. at ¶¶ 131-35, 172-79, 194-97, 201-06. Only two of this third category of
claims are based on filings that occurred after the Department approved the OTIW's final
6
constitutional amendment—one from July 31, 2015 and one from August 10, 2015. See id. at ¶¶
176, 202.
On December 21, 2017, Plaintiff moved for the TTAB to suspend the cancellation
proceeding pending a final determination in this action. See Dkt. No. 19-1 at 2. On January 23,
2018, the TTAB granted the motion and suspended the proceedings. See id. The OTIW
requested that the TTAB reconsider its decision to suspend the cancellation proceeding, but on
July 18, 2018, the Board denied its request. See Dkt. No. 30 at 2.
On August 15, 2018, Plaintiff submitted a letter to the Court that contained two cases of
parties confusing Plaintiff with the OTIW. See Dkt. No. 31 at 1. The first was an email exchange
between Plaintiff and the Indian Health Service. See Dkt. No. 31-1 at 4. On July 20, 2018, the
Indian Health Service mistakenly sent a Request for Corrective Action Plan to Plaintiff regarding
the OTIW's failure to follow proper vender verification procedures. See id. at 2-3. On the
morning of July 24, 2018, Plaintiff's associate general counsel notified the Indian Health Service
that it had made an error. See id. at 4. By the end of the day, the Indian Health Service
acknowledged its error and rescinded the request. See id. The second case of confusion was an
invoice from Purpora Engineering, addressed to what appears to be the OTIW's correct physical
address, that was mistakenly emailed to Plaintiff on January 17, 2018. See Dkt. No. 31-2 at 2-3.
III. DISCUSSION
A.
Standard of Review
When a party moves to dismiss a claim pursuant to Rule 12(b)(1), "the movant is deemed
to be challenging the factual basis for the court's subject matter jurisdiction." Cedars-Sinai Med.
Ctr. v. Watkins, 11 F.3d 1573, 1583 (Fed. Cir. 1993) (citations omitted). For purposes of such a
motion, "the allegations in the complaint are not controlling . . . and only uncontroverted factual
7
allegations are accepted as true. . . ." Id. (internal citations omitted). Both the movant and the
pleader are permitted to use affidavits and other pleading materials to support and oppose the
motion to dismiss for lack of subject matter jurisdiction. See Makarova v. United States, 201 F.3d
110, 113 (2d Cir. 2000) (citation omitted). "Furthermore, 'jurisdiction must be shown
affirmatively, and that showing is not made by drawing from the pleadings inferences favorable to
the party asserting it.'" Gunst v. Seaga, No. 05 Civ. 2626, 2007 WL 1032265, *2 (S.D.N.Y. Mar.
30, 2007) (quoting Shipping Financial Services Corp. v. Drakos, 140 F.3d 129, 131 (2d Cir.
1998)); see also State Emps. Bargaining Agent Coal. v. Rowland, 494 F.3d 71, 77 n.4 (2d Cir.
2007) (holding that, in a motion to dismiss for lack of subject matter jurisdiction, a court "may
resolve disputed factual issues by reference to evidence outside the pleadings, including
affidavits").
B.
Article III Standing
Unless a plaintiff has Article III standing, a court lacks subject matter jurisdiction to hear
their claim. See Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992). To establish Article
III standing, a plaintiff bears the burden of establishing three "irreducible constitutional
minimum" elements. See id. "The plaintiff must have (1) suffered an injury in fact, (2) that is
fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed
by a favorable judicial decision." Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016).
When an "asserted injury arises from the government's allegedly unlawful regulation . . .
of someone else, much more is needed." Lujan, 504 U.S. at 562. "[I]t becomes the burden of the
plaintiff to adduce facts showing" that the third party will act or has acted in a "manner as to
produce causation and permit redressability of injury." Id. "Thus, when the plaintiff is not
8
himself the object of the government action or inaction he challenges, standing is not precluded,
but it is ordinarily substantially more difficult to establish." Id. (quotation omitted).
Plaintiff claims that it has standing because it has suffered two injuries in fact. First,
Plaintiff argues that the Department's actions caused the OTIW to initiate its TTAB cancellation
proceeding. Second, Plaintiff claims that the Department's actions allow the OTIW to conduct
business in a manner that will create confusion between the OTIW and Plaintiff.
1. Possible Prejudice in the TTAB Proceeding
Plaintiff claims that the OTIW's cancellation action constitutes an injury in fact, noting
that the TTAB proceeding has cost Plaintiff resources. See Dkt. No. 19 at 17. According to
Plaintiff, under Utah v. Evans, 536 U.S. 452, 464 (2002), a party has standing to pursue litigation
where the result may affect the outcome of other administrative or judicial proceedings. Plaintiff
notes that the TTAB has halted its cancellation proceeding on the grounds that the outcome of
this case may affect the cancellation proceeding. Although the Court recognizes that the OTIW's
cancellation petition made reference to its historical and ongoing use of "Oneida," the Court
concludes that the Department's approval of the OTIW's name change and its listing of the OTIW
as "Oneida Nation" as a federally recognized tribal entity in the Federal Register are not relevant
to the ongoing TTAB proceeding. As such, reversing the Department's decisions at issue in this
case would not affect the cancellation proceeding or the OTIW's prosecution of it and, thus, will
not redress this alleged injury in fact.
The requirement that an injury be redressable aims to ensure "that the harm alleged be
redressable by a favorable decision." E.M. v. New York City Dep't of Educ., 758 F.3d 442, 450
(2d Cir. 2014). "An abstract decision without remedial consequence seems merely advisory, an
unnecessary expenditure of judicial resources that burdens the adversary and carries all the
9
traditional risks of making bad law and trespassing on the provinces of the executive and
legislature." E.M., 758 F.3d at 450 (quoting Wright, et al., 13A Fed. Prac. & Proc. § 3531.6 (3d
ed. 2008)). "To satisfy the redressability requirement of Article III standing, the plaintiff must
show that 'it is likely, as opposed to merely speculative, that the injury will be redressed by a
favorable decision.'" Allco Fin. Ltd. v. Klee, 861 F.3d 82, 96 (2d Cir. 2017), cert. denied, 138 S.
Ct. 926 (2018) (quoting Friends of the Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S.
167, 180-81 (2000)). This ensures that "the plaintiff who seeks to invoke judicial power" is "in a
position to benefit in some personal way." Simon v. E. Ky. Welfare Rights Org., 426 U.S. 26, 39
(1976).
The Court first notes that the TTAB's decision to halt the cancellation proceeding on the
grounds that the outcome of this case may affect the cancellation proceeding does not mean that
the outcome of this case will affect the cancellation proceeding. See Dkt. No. 19-1 at 2. "It is
standard procedure for the Trademark Board to stay administrative proceedings pending the
outcome of court litigation . . . . involving related issues." New Orleans Louisiana Saints LLC &
NFL Properties LLC, 99 U.S.P.Q.2d 1550 (T.T.A.B. July 22, 2011) (quoting 6 McCarthy on
Trademarks and Unfair Competition §32:47 (4th ed. updated June 2011)); see also Trademark
Trial & App. Bd. Man. of Proc. 510.02(a) Suspension, 2018 WL 3386861 (noting that suspension
is warranted if there is another relevant proceeding involving only one party). Thus, the decision
to suspend a proceeding does not necessarily mean that an outside litigation will alter the outcome
of the TTAB proceeding. Determining whether the outcome of this litigation will affect the
outcome of the OTIW's cancellation proceeding requires examining the allegations in the
amended cancellation petition with respect to the claims in this case.
10
Looking at the grounds for cancellation asserted in the OTIW's amended consolidated
petition, the Court finds that the issues before the Court in this case are not material to the
OTIW's grounds for cancellation. The OTIW's first set of challenges to Plaintiff's registrations
are based on conduct entirely unrelated to the OTIW's rights to Plaintiff's name. The allegations
that Plaintiff failed to utilize the registered marks have no connection to the OTIW's rights to the
"Oneida" name. See, e.g., Dkt. No. 23-2 at ¶¶ 191-93 (alleging Plaintiff had no bona fide intent to
use the "Oneida" mark); ¶¶ 207-08 (alleging Plaintiff abandoned the "Oneida" mark); ¶¶ 211-13
(alleging Plaintiff never used the "Oneida" mark). Since these arguments for cancellation are
unrelated to the OTIW's rights to "Oneida Nation," the Court concludes that the outcome of this
case will not materially effect their resolution in the TTAB proceeding.
The outcome of this case will also not affect the OTIW's second group of arguments for
cancellation, that the OTIW had preexisting marks that resembled Plaintiff's in 2006. These
claims are based on filings from 2006, nearly a decade before the actions currently at issue. See
Dkt. No. 23-2 at ¶¶ 187-88, 214-15. Because the Department's challenged actions occurred in
2015-16, the outcome of this case is not pertinent to showing whether the OTIW had any marks
that resembled Plaintiff's marks in 2006.
Finally, the outcome of this case will not help the OTIW establish that Plaintiff knowingly
filed fraudulent statements regarding the OTIW's use of "Oneida" to the Trademark Board. The
material issue in resolving these trademark fraud claims will be determining whether Plaintiff
made a "false statement with the intent to deceive the [United States Patent and Trademark
Office] into issuing or maintaining that registration." Dkt. No. 23-1 at 6 (citing In re Bose Corp.,
580 F.3d 1240 (Fed. Cir. 2009). Under this standard, "a trademark is obtained fraudulently under
11
the Lanham Act only if the applicant or registrant knowingly makes a false, material
representation with the intent to deceive the PTO." In re Bose Corp., 580 F.3d at 1245.
Here, the Department's decision to approve the OTIW's constitutional amendment to
change its name has no bearing on whether Plaintiff was aware of the OTIW's use of "Oneida
Nation." As Plaintiff acknowledged, the Department did not notify Plaintiff of its deliberation to
approve the amendment. Even if Plaintiff was aware of the proceedings, the actual approval itself
is not material in determining fraud, as the central question is whether Plaintiff was aware of the
OTIW's use of "Oneida," not whether that use was sanctioned by the Department.
Similarly, whether the Department correctly recognized the OTIW as "Oneida Nation"
when it published its list of federally recognized tribal entities is also irrelevant to adjudicating
the fraud claims. The last allegedly fraudulent filing occurred on August 10, 2015, several
months before the Department published the list in the Federal Register. Because these filings
occurred well before the Department listed the OTIW as "Oneida Nation" in the list of federally
recognized tribal entities, the publication is not relevant for determining whether Plaintiff filed
fraudulent documents in order to protect its trademarks.
Having reviewed the OTIW's cancellation petition before the TTAB, the Court concludes
that even if the Court were to reverse the Department's decisions, this reversal would not alter the
outcome of the TTAB proceeding. Thus, it is clear that even if the ongoing trademark action is an
injury in fact, it is not redressable by this action and cannot be used to establish standing.
2. Confusion
Plaintiff also argues that the Department's decision to approve the name change and listing
the new name in the Federal Register has caused or will cause confusion between the two entities.
Included in the Complaint is an allegation that the OTIW named a golf tournament the "Oneida
12
LPGA Classic." Plaintiff also points to its recent submission as proof that actual confusion has
occurred between Plaintiff and the OTIW. The Court, however, disagrees that this injury
establishes standing because Plaintiff has failed to show that any alleged potential or actual
confusion is directly or indirectly traceable to the Department's actions and that the actual
confusion alleged in Plaintiff's supplemental submission are neither injuries in fact nor traceable
to the Department's actions at issue in this case.
In order to satisfy the traceability requirement, the alleged injury in fact must be "fairly
traceable to the actions of the defendant." Bennett v. Spear, 520 U.S. 154, 162 (1997) (citation
and internal quotation marks omitted). This "ensures that there is a genuine nexus between a
plaintiff's injury and a defendant's alleged . . . conduct." Friends of the Earth, Inc. v. Gaston
Copper Recycling Corp., 204 F.3d 149, 161 (4th Cir. 2000). Importantly, this requirement "is in
large part designed to ensure that the injury complained of is 'not the result of the independent
action of some third party not before the court.'" Id. at 162 (quoting Lujan, 504 U.S. at 560).
Where an "alleged injury flows not directly from the challenged agency action, but rather
from independent actions of third parties," the plaintiff must show "that the agency action is at
least a substantial factor motivating the third parties' actions." Tozzi v. U.S. Dep't of Health &
Human Servs., 271 F.3d 301, 308 (D.C. Cir. 2001) (quotation omitted). "[M]ere unadorned
speculation as to the existence of a relationship between the challenged government action and
the third-party conduct will not suffice to invoke the federal judicial power." Nat'l Wrestling
Coaches Ass'n v. Dep't of Educ., 366 F.3d 930, 938 (D.C. Cir. 2004) (quotation omitted).
Here, Plaintiff has not established that any confusion is traceable to the Department's
decision to approve the OTIW's constitutional amendment or to identify the OTIW as "Oneida
Nation" on the list of federally recognized tribal entities. The Department's approval of the
13
OTIW's constitutional amendment to change its name would not, on its own, cause any confusion
given that the action only amounted to approving a change to an internal tribal governance
document. Further, the publication of the OTIW as "Oneida Nation" as a federally recognized
tribal entity could not cause any confusion between Plaintiff and the OTIW because the
Department notes that "Oneida Nation" was previously listed as the "Oneida Tribe of Indians of
Wisconsin" on the list of federally recognized tribal entities in the Federal Register. See 83 Fed.
Reg. 34863, 34865 (July 23, 2018).
Plaintiff's examples of confusion do not constitute evidence of confusion traceable to the
Department's actions being challenged. First, "not all confusion counts: evidence of actual
confusion must show more than a fleeting mix-up of names." Streamline Production Systems,
Inc. v. Streamline Manufacturing, Inc., 851 F.3d 440, 457 (5th Cir. 2017). "[S]ecretarial
carelessness caused by a failure to check business addresses" are not the sorts of confusion that
the law recognizes as an injury. U.S. Blind Stitch Mach. Corp. v. Union Special Mach. Co., 276
F. Supp. 468, 471 (S.D.N.Y. 1968). The two examples submitted by Plaintiff appear to be little
more than "secretarial confusion." In both cases, the third party knew which tribal entity it was
supposed to be communicating with, as they both had preexisting relationships with the OTIW.
Although for some reason, these two communiques were accidentally sent to Plaintiff, these
mistakes are of the sort that could be quickly and easily remedied. As such, these two examples
provided by Plaintiff are not the sort of confusion that would rise to a sufficient injury in fact
necessary to establish standing in the first place. See Spokeo, 136 S. Ct. at 1548 (noting an injury
"must be 'de facto'; that is, it must actually exist").
However, even if these examples were injuries in fact, they are not traceable to the
Department's actions that are currently at issue. Purpora Engineering's misaddressed invoice
14
identified the correct recipient, the OTIW, and used the correct physical address. The only
mistake appears to be that Purpora Engineering somehow found and used Plaintiff's email address
instead of the OTIW's. Given that neither challenged action involved the publication of Plaintiff
or the OTIW's contact information, the Court does not see how this error could be traced back to
the matters currently before the Court.
Similarly, the Court cannot see how the Department's challenged actions could have
caused the Indian Health Service to inadvertently send the Request for Corrective Action Plan to
Plaintiff instead of the OTIW. The Indian Health Service's letter was a response to an audit
submitted by the OTIW. See Dkt. No. 31-1 at 2. Thus, the Indian Health Service was clearly
aware of which entity it was dealing with when it mistakenly sent the Request for Corrective
Action Plan to Plaintiff. Given that the Indian Health Services knew which entity it intended to
deal with, the Court finds it implausible that this mistake could be traced back to the Department's
actions at issue. For the reasons previously discussed, the approval of the name-change
amendment would not cause this sort of confusion as it only approved a change to an internal
governing document. It is not the sort of public change that could have caused this mistake.
Further, the list of federally recognized tribal entities only serves to verify that a tribal entity has
been federally recognized. The mistake in the correspondence occurred well past the stage where
the Indian Health Services would have needed to confirm the OTIW's status as a federally
recognized tribal entity. As such, the Department's actions have not directly caused this
confusion.
Plaintiff has also failed to show that the Department's actions could be a substantial factor
in causing the OTIW to engage in any misleading or confusing use of "Oneida Nation."
Authorizing an entity to use a name does not "license the commission of what would otherwise be
15
a tortious act." Hulburt Oil & Grease Co. v. Hubert Oil & Grease Co. 371 F.2d 251 254 (7th Cir.
1966). Agencies like the Federal Communications Commission allow businesses to register
names for lawful use. In Re Wsm, Inc., 225 U.S.P.Q. 883, 1985 WL 72024, *2 (T.T.A.B. Feb. 25,
1985). The mere fact that a regulatory body authorizes an entity to use a name does not mean that
the name is licensed in a trademark sense. See id. Such authorizations do not supercede
trademark law unless Congress delegated the agency authority to reject names and the agency has
promulgated procedures that consider potential confusion when determining whether to permit an
entity to use a name. See State of North Dakota v. Merchants Nat. Bank & Tr. Co., Fargo, N.D.,
634 F.2d 368, 382 (8th Cir. 1980) (finding a decision by the Comptroller of the Currency
authorizing a bank's name change preempted state trademark law); see also Pathfinder Commc'ns
Corp. v. Midwest Commc'ns Co., 593 F. Supp. 281, 283 (N.D. Ind. 1984) (noting that the FCC
relinquished its role as tradename arbiter after it removed possible confusion as a consideration
when issuing call signs).
According to Plaintiff, the Department's stated policy is to automatically adopt any name
chosen by a tribe. Further, the section of the Code of Federal Regulations pertinent to the federal
recognition and publication of tribal entities does not include any rules allowing the Department
to deny federal recognition or refuse to publish said recognition based on a tribal entity's chosen
name. See 25 C.F.R. § 83.6. Given that the Department does not have rules or procedures in
place to reject a tribal entity's proposed name, the Court concludes that the Department's actions
did not grant the OTIW any particular rights to the "Oneida Nation" name that could be used
against Plaintiff.
The Department cannot be held responsible for the OTIW engaging in conduct in which it
was already entitled to engage. The Department did not suddenly grant the OTIW permission to
16
use "Oneida" in a previously forbidden manner, so any lawful use of "Oneida" was always
permissible. Similarly any unlawful use of "Oneida" was always unlawful and would leave the
OTIW liable to Plaintiff. Such a reckless course of action by the OTIW would clearly be
independent conduct and not traceable to the Department's actions currently at issue. Thus, the
Court finds that any confusing or misleading use of "Oneida" by the OTIW would not be
traceable to the Department's approval of the OTIW's constitutional amendment to change its
name or identification of the OTIW as "Oneida Nation" in the list of federally recognized tribal
entities in the Federal Register.
Even Plaintiff's single concrete example of an action take by the OTIW that might cause
confusion—the OTIW's attempt to name a golf tournament the "Oneida LPGA Classic"—cannot
be causally traced to the Department.1 First, the name of the tournament was announced before
the OTIW's name change was published in the Federal Register, making it impossible that the
List's identification of the OTIW as "Oneida Nation" caused the OTIW to name the tournament
the "Oneida LPGA Classic." Second, the OTIW's name always contained "Oneida," so the fact
that the OTIW named the tournament the "Oneida LPGA Classic" is not traceable to the
Department's approval of the OTIW's constitutional amendment. The "Oneida LPGA Classic"
would be an equally fitting title for a tournament hosted by the Oneida Tribe of Indians of
Wisconsin as it would be for a tournament hosted by the Oneida Nation, so there is no reason to
believe that the OTIW would have selected a different name for the golf tournament had the
Department rejected the amendment. As such, Plaintiff has failed to demonstrate that any
confusion could be traced to the Department.
The Court notes that it is unclear whether the OTIW even used the name "Oneida LPGA
Classic" given that the OTIW renamed the tournament to the "Thornbury Creek LPGA Classic"
after Plaintiff sent a cease and desist letter. See Dkt. No. 1-4 at ¶¶ 27-28.
1
17
IV. CONCLUSION
After carefully reviewing the entire record in this matter, the parties' submissions and the
applicable law, and for the above-stated reasons, the Court hereby
ORDERS that Defendant's motion to dismiss for lack of subject matter jurisdiction (Dkt.
No. 14) is GRANTED; and the Court further
ORDERS that the Clerk of the Court shall enter judgment in Defendant's favor and close
this case; and the Court further
ORDERS that the Clerk of the Court shall serve a copy of this Memorandum-Decision
and Order on the parties in accordance with the Local Rules.
IT IS SO ORDERED.
Dated: August 24, 2018
Albany, New York
18
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