J-A06045-16


NON-PRECEDENTIAL DECISION - SEE SUPERIOR COURT I.O.P. 65.37

G. CRAIG CABA                                  IN THE SUPERIOR COURT OF
                                                     PENNSYLVANIA
                        Appellee

                   v.

MAURICE “SAM” SMALL, WESLEY SMALL,
AND THE HORSE SOLDIER LLC

                        Appellants                  No. 1263 MDA 2015


               Appeal from the Order Entered July 10, 2015
           In the Court of Common Pleas of Cumberland County
                      Civil Division at No: 2013-2638


BEFORE: LAZARUS, STABILE, and DUBOW, JJ.

MEMORANDUM BY STABILE, J.:                           FILED JUNE 16, 2016

     Appellants, Maurice “Sam” Small, Wesley Small, and The Horse Soldier

LLC, appeal from the July 10, 2015 order declaring rights in favor of

Appellee, G. Craig Caba. We vacate and remand.

     The trial court summarized the underlying facts in its Pa.R.A.P.

1925(a) opinion:

           [Appellee] is the owner of Civil War artifacts belonging to
     the ‘J. Howard Wert Gettysburg Collection’ (hereinafter ‘Wert
     Collection’), which he purchased from Mr. and Mrs. John
     Cobaugh in 1970. On February 11, 1981, a burglary occurred at
     [Appellee’s] home and several boxes of artifacts from the Wert
     Collection were stolen. [Appellee] never provided the police with
     a full inventory of the items that were taken following the
     burglary and [Appellee] never recovered any of the Wert
     Collection artifacts. [Appellee] described the artifacts that were
     stolen as ‘rusted battlefield, relic/junk kind of stuff’ and stated
     they were not items of ‘terrific notoriety.’
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            [Appellants] are located in Gettysburg, Pennsylvania, and
     are in the business of selling Civil War artifacts. Sometime in
     2007, [Appellee] became aware that [Appellants] were selling
     items purported to be from the Wert Collection. On November
     27, 2007, [Appellee], through his [] counsel, [] sent a letter to
     [Appellants] about the Wert Collection items. In this 2007 letter,
     [Appellee] did not demand the return of the items, but rather
     requested that [Appellants] stop using the Wert Collection title to
     sell the items because he claimed they were not part of the Wert
     Collection. However, in his deposition [Appellee] admitted that
     he became aware in 2007 that [Appellants] were in possession
     of artifacts he claims are his.

            Almost a year later, on October 20, 2008, [Appellee] had
     new counsel [] send a letter to [Appellants]. This letter included
     a list of items [Appellants] had for sale which [Appellee] believed
     were Wert Collection artifacts stolen from him in 1981.
     [Appellee] demanded the return of the items and also stated
     that if he did not receive the items by October 31, 2008, he
     reserved the right to pursue any legal action available to him.
     [Appellants] did not return the items by October 31, 2008.

            Instead of pursuing a civil action after October 2008,
     [Appellee] informed the Cumberland County District Attorney’s
     Office of his discovery that [Appellants] were selling stolen
     artifacts, specifically those Wert Collection artifacts stolen from
     him in 1981. The District Attorney’s Office seized the artifacts in
     question on November 23, 2010, and convened a Grand Jury to
     investigate [Appellee’s] claims. The Grand Jury did not return a
     presentment and the District Attorney’s Office was ordered to
     return the artifacts to [Appellants] on April 2, 2013.

Trial Court Opinion, 9/24/2015, at 3-4 (footnotes omitted).

     Appellee commenced this litigation on May 9, 2013, with a complaint

alleging a cause of action in conversion and replevin and seeking return of

items from the Wert Collection presently in Appellants’ possession (the




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“Disputed Items”).1        Appellants filed preliminary objections to venue in

Cumberland County, which the trial court overruled on June 27, 2013.

Appellants then filed an answer, new matter and counterclaims, which they

amended on September 20, 2013. Among Appellants’ counterclaims was a

request for a declaration of their right to use “J. Howard Wert” or “J. Howard

Wert Collection” to sell the Disputed Items. Appellants moved for judgment

on the pleadings, and the trial court denied that motion by order of February

27, 2014. The parties proceeded to discovery, after which Appellants filed a

summary judgment motion on March 6, 2015.              Appellee answered the

motion on March 25, 2015, but did not file a cross motion for summary

judgment.

       On July 10, 2015, the trial court entered an order granting in part and

denying in part Appellants’ motion for summary judgment. The trial court

granted Appellants’ motion as to Appellee’s causes of action in replevin and

conversion, concluding the applicable statute of limitations barred those

actions.   That decision is not presently at issue. The trial court’s July 10,

2015 order denied Appellants’ summary judgment motion on their request

for declaratory relief, and instead declared rights adverse to Appellants.

Specifically, the trial court concluded Appellants could not use “J. Howard

Wert” or “J. Howard Wert Collection” to describe the Disputed Items. The
____________________________________________


1
  The parties apparently agree that the Disputed Items are part of the Wert
Collection.



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J-A06045-16


trial court’s order did not grant summary judgment on Appellants’

counterclaims for tortious and intentional interference with prospective

contractual relations, and malicious prosecution, and those claims remain

pending.2

       Appellants argue the trial court erred in issuing a declaration of rights

adverse to them. “Our standard of review in a declaratory judgment action

is limited to determining whether the trial court clearly abused its discretion

or committed an error of law. We may not substitute our judgment for that

of the trial court if the court’s determination is supported by the evidence.”

Erie Ins. Grp. v. Catania, 95 A.3d 320, 322, appeal denied, 104 A.3d 4

(Pa. 2014). “[W]e will review the decision of the lower court as we would a

decree in equity and set aside the factual conclusions of that court only

where they are not supported by adequate evidence. The application of the

law, however, is always subject to our review.” Id.3



____________________________________________


2
  The trial court’s final decision on Appellants’ declaratory judgment claim is
appealable pursuant to 42 Pa.C.S.A. § 7532.
3
    Appellants argue we should treat the trial court’s order as an entry of
summary judgment against Appellant and apply the summary judgment
standard of review as if Appellee had been the moving party. We decline to
do so because the trial court did not enter summary judgment as to all
causes of action pending between the parties. We have jurisdiction over the
trial court’s declaration of rights because § 7532 of the Judicial Code defines
declaratory relief as a final appealable order. We therefore apply the
standard governing entry of declaratory relief.



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J-A06045-16


       In this case, we conclude the trial court committed errors of law and

issued findings of fact not supported by the record.        First, the question it

decided—a declaration of rights against Appellants—was not properly before

it, given the procedural posture of this case. As explained above, Appellants

moved for summary judgment on their declaratory judgment claim.

Appellee did not file an opposing motion for summary judgment on that

cause of action.      Thus, the trial court’s choices were to grant Appellants’

motion and enter summary judgment in their favor, or deny the motion and

conduct further proceedings to resolve issues of material fact. 4         As our

Supreme Court has written:           “In this case there was only one motion for

summary judgment filed, that of appellant. Despite the fact that [appellee]

did not file a motion for summary judgment, [the trial court] sought to

finally dispose of the matter in [appellee’s] favor.           This he was not


____________________________________________


4
    Summary judgment is appropriate:

       (1) whenever there is no genuine issue of any material fact as to
       a necessary element of the cause of action or defense which
       could be established by additional discovery or expert report, or

       (2) if, after the completion of discovery relevant to the motion,
       including the production of expert reports, an adverse party who
       will bear the burden of proof at trial has failed to produce
       evidence of facts essential to the cause of action or defense
       which in a jury trial would require the issues to be submitted to a
       jury.

Pa.R.C.P. No. 1035.2



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empowered to do.”       Sidkoff, Pincus, Greenberg & Green, P.C. v.

Pennsylvania Nat. Mut. Cas. Ins. Co., 555 A.2d 1284, 1287 (Pa. 1989).

      Furthermore, the record fails to support the trial court’s decision

because Appellee has not asserted trademark infringement.             Appellee’s

complaint alleged that “[b]eginning in 1863, Professor J. Howard Wert, a

renowned Civil War veteran and historian, collected thousands of historical

pieces of memorabilia, specifically relating to American history.” Appellee’s

Complaint, 5/9/2013, at ¶ 5.        Wert’s collection includes memorabilia from

the Revolutionary and Civil Wars, among other things.         Id. at ¶ 6.   The

collection was sold to John and Vanita Cobaugh in 1957. Id. at ¶ 7. Both

parties to this appeal trace their collection to the Cobaughs.          Appellee

alleges, however, that Wert’s collection of memorabilia “was never to be

broken up, and would always continue to be known as the ‘J. Howard Wert

Gettysburg Collection.’”     Id. at 10.       On August 25, 2009, Appellee

trademarked the name “J. Howard Wert Gettysburg Collection.” The official

purpose of that trademark, as reflected in the records of the United States

Patent and Trademark Office, is:

             Conducting educational exhibitions featuring art and
      artifacts on the subject of American history; educational
      services, name, lectures and seminars on American History and
      the preservation of artifacts[.]

Appellants’   Amended      Answer     with   New   Matter   and   Counterclaims,

9/19/2013, at Exhibit A.      According to Appellee, the Wert Collection is

nationally known. Appellee’s Complaint, 5/9/2013, at ¶¶ 11-13. Appellee,

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J-A06045-16


through his complaint in replevin, sought the return of stolen items that are

part of the Wert Collection.

      In support of their declaratory judgment action, Appellants alleged:

             103. [Appellants] have good cause to believe that
      [Appellee] will attempt to restrict and prevent [Appellants] from
      identifying any artifacts it will soon put up for sale as being from
      the collection previously owned by J. Howard Wert, based upon
      [Appellee’s] registration of the Mark.

            104. As evidenced by the averments of his Complaint, it
      appears that [Appellee] believes that he has a monopoly over all
      things associated with J. Howard Wert and the exclusive right to
      use the proper name J. Howard Wert in any matter.

Appellants’   Amended    Answer    with    New   Matter   and   Counterclaims,

9/19/2013, at ¶¶ 103-04.

      Appellee responded as follows:

            103. The averment contained in Paragraph 103 is a
      conclusion of law to which no response is required. To the
      extent said averment are [sic] deemed averments of fact, it [sic]
      is denied. It is further stated that [Appellants] have no right
      to place the J. Howard Wert CollectionTM items in their
      possession for sale as they are not the rightful owners of
      the property; [Appellee] is the rightful owner.

            104. Denied. Plaintiff has in no way attempted to
      “monopolize” the name J. Howard Wert, but merely has
      made every attempt to recover items which are the
      rightful ownership of [Appellee] from [Appellants], and
      prevent [Appellants] from using the J. Howard Wert name in
      order to inflate the sale price for items which they have no
      right to sell.

Appellee’s Answer to Appellants’ New Matter and Counterclaims, 8/14/2013,

at ¶¶ 103-04 (emphasis added).       In other words, Appellee’s goal in this

litigation was to establish his right to possess the Disputed Items.         In


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J-A06045-16


paragraph   104,   above,   Appellee   expressly   disavowed   any   desire   to

“monopolize” the name J. Howard Wert. He did not allege any trademark

infringement or seek to enjoin potential infringement. Rather, Appellee did

not want Appellants to use the name “J. Howard Wert” to describe items

they had no right to sell. Appellee has thus far failed to establish a lawful

right of possession in the Disputed Items, and a grand jury did not charge

Appellants with any criminal wrongdoing based on their possession of the

Disputed Items.     For these reasons, Appellants moved for summary

judgment on their declaratory judgment claim.       The trial court disagreed,

and instead declared that Appellee has the right to prevent Appellants from

using “J. Howard Wert” or “J. Howard Wert Collection” to describe the

Disputed Items when Appellants offer those items for sale.

      In summary, the trial court concluded:          (1) that Appellee had

trademark protection in “J. Howard Wert” and “J. Howard Wert Collection’’;

(2) that Appellants’ use of those names to describe the Disputed Items for

sale would not constitute fair use of Appellee’s registered mark; (3) that “J.

Howard Wert” was sufficiently distinct and had sufficient secondary meaning

associated with Appellee’s business to justify trademark protection in a

proper name. Trial Court Opinion, 9/24/2015, at 7-11.




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J-A06045-16


       We consider these three findings in turn.     With regard to Appellee’s

trademark protections,5 the record establishes that Appellee has a registered

trademark in the name “J. Howard Wert Gettysburg Collection.”           Appellee

registered that mark for use in educational exhibitions, lectures, and

seminars. Appellee has not registered “J. Howard Wert” or “J. Howard Wert

Collection.”     The declaratory judgment pleadings contain the following

relevant averments and admissions (in addition those already quoted

above):

             99. [Appellee’s] exclusive right to use [“J. Howard Wert
       Gettysburg Collection”], if any, is limited solely to the “Goods
       and Services” specified in the Certificate of Registration for the
       mark.

             100. Plaintiff cannot establish common law trademark
       rights in the name J. Howard Wert.

____________________________________________


5
    We observe:

            The tests for trademark infringement and unfair
       competition under the Lanham Act [15 U.S.C.A. § 1114] are
       essentially the same. Thus, to prevail on either claim, a plaintiff
       must demonstrate that: (1) it has a valid and legally protectable
       mark; (2) it owns the mark; and (3) the defendant’s use of the
       mark causes a likelihood of confusion. Moreover, to establish a
       trademark infringement claim, the plaintiff bears the additional
       burden of showing that the defendant’s use of the offensive
       mark is unauthorized.

Brown & Brown, Inc. v. Cola, 745 F.Supp.2d 588, 610-11 (E.D. Pa. 2010)
(citations omitted). We need not offer a detailed analysis of trademark law.
Our decision rests on the procedural impropriety of the trial court’s action
and a record that either fails to support or flatly contradicts the trial court’s
factual findings.



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J-A06045-16


Appellants’    Amended    Answer   with   New   Matter   and   Counterclaims,

9/19/2013, at ¶¶ 99-100. Appellee responded:

              99.   Admitted.

            100. Admitted. It is further noted that [Appellee] has not
      attempted to alienate or corner the name “J. Howard Wert”
      solely to reference [Appellee], as J. Howard Wert was a world-
      renowned and well-recognized civil war historian whose
      credibility and recognition are without question.

Appellee’s Answer to Appellants’ New Matter and Counterclaims, 8/14/2013,

at ¶¶ 99-100.

      In other words, the record does not support a conclusion that

Appellee’s protection in the mark “J. Howard Wert Gettysburg Collection”

extends to the buying and selling of artifacts.     Appellee admittedly has

protected that mark solely for use in educational exhibitions, lectures, and

such. Further, Appellants have not sought a declaration of their right to use

“J. Howard Wert Gettysburg Collection.” Appellants want to use “J. Howard

Wert” and/or “J. Howard Wert Collection,” and Appellee has registered

neither of those. Indeed, Appellee admits that he cannot register the name

J. Howard Wert. In summary, nothing in the record supports the trial court’s

conclusion that Appellee has trademark protection in “J. Howard Wert”

and/or “J. Howard Wert Collection.” Appellee asserted no such protection,

and the trial court lacked any legal or factual basis for declaring rights in

Appellee’s favor.




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J-A06045-16


       Next, the trial court concluded Appellants’ proposed use of Appellee’s

trademark would not constitute “fair use.”6 This was error because Appellee

is not asserting trademark infringement and Appellants do not seek to use

Appellee’s registered mark.           Fair use is a defense to an assertion of

trademark infringement. See Century 21, 425 F.3d at 214. As Appellee

has not asserted infringement, Appellants had no occasion to create a record

in support of fair use.

       Finally, the trial court found that Appellee could trademark the proper

name J. Howard Wert because the name is sufficiently distinctive and has

secondary meaning associated with Appellee’s business.7          The trial court’s

finding flatly contradicts the parties’ pleadings:

____________________________________________


6
    The Third Circuit has described fair use as follows:

              “Nominative” fair use is said to occur when the alleged
       infringer uses the [trademark holder’s] product, even if the
       alleged infringer's ultimate goal is to describe his own product.
       Nominative fair use also occurs if the only practical way to refer
       to something is to use the trademarked term.

Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 214
(3d Cir. 2005) (emphasis in original).
7
    We turn once again to the Eastern District’s Opinion in Brown:

              Personal names can serve as a trademark, but they are
       considered descriptive, not inherently distinctive marks, so they
       are treated as protectable marks only upon showing of
       distinctiveness and secondary meaning. An identifying mark is
       distinctive either if: (1) it is inherently distinctive, or (2) it has
       acquired distinctiveness through secondary meaning. A personal
(Footnote Continued Next Page)


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J-A06045-16


            97. The Mark and personal name, J. Howard Wert, has
      not acquired secondary meaning and is not distinctive.

           98. The proper name J. Howard Wert has no secondary
      meaning associated with [Appellee].

Appellants’    Amended        Answer      with   New   Matter   and   Counterclaims,

9/19/2013, at ¶¶ 97-98. Appellee responded:

              97.      Admitted.

              98.      Admitted.

Appellee’s Answer to Appellants’ New Matter and Counterclaims, 8/14/2013,

at ¶¶ 97-98. We need not address this issue further.

      For all of the foregoing reasons, we conclude the trial court erred in

entering judgment in favor of Appellee on Appellants’ declaratory judgment

cause of action.         That decision was procedurally improper in response

Appellants’ motion for summary judgment.               Further, the record fails to

                       _______________________
(Footnote Continued)

      name acquires secondary meaning when the name and the
      business it is associated with become synonymous in the public
      mind and the secondary meaning submerges the primary
      meaning of the name as a word identifying a person, in favor of
      its meaning as a word identifying that business. Accordingly, the
      claimant must not only show that it used the personal name as a
      trademark, but that a substantial portion of the consuming
      public associates [the name] specifically with [its] business. If
      the mark is primarily a personal name, then the senior user
      must prove the existence of secondary meaning in its mark at
      the time and place that the junior user first began use of that
      mark.

Brown, 745 F.Supp.2d at 611 (internal citations and quotation marks
omitted).




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J-A06045-16


support the trial court’s factual conclusions. We vacate the trial court’s July

10, 2015 order insofar as it declared rights in favor of Appellee 8 and remand

for further proceedings in accord with this memorandum.

       Order vacated. Case remanded. Jurisdiction relinquished.

Judgment Entered.




Joseph D. Seletyn, Esq.
Prothonotary



Date: 6/16/2016




____________________________________________


8
    As explained above, our jurisdiction is limited to that issue.



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