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Life After Hate, Inc. v. Free Radicals Project, Inc.

United States District Court, N.D. Illinois, Eastern Division

September 30, 2019

LIFE AFTER HATE, INC., a/k/a EXIT USA, Plaintiff/Counter-Defendant,
v.
FREE RADICALS PROJECT, INC., and CHRISTIAN PICCIOLINI, Defendants/Counter-Plaintiffs. CHRISTIAN PICCIOLINI, Third-Party Plaintiff,
v.
TONY MCALEER, SAMMY RANGEL, ANGELA KING and FRANK MEEINK, Third-Party Defendants.

          MEMORANDUM OPINION AND ORDER

          Virginia M. Kendall United States District Judge

         At a time when people-particularly young people-are being radicalized online with alarming frequency, [1] nonprofit organizations like Life After Hate and Free Radicals Project provide critical outreach services to help individuals disengage from violence-based extremism. Unfortunately, these two organizations now find themselves in an ugly trademark dispute that can only distract them from the important work they perform.

         Life After Hate brought this suit against Christian Picciolini and Free Radicals Project alleging trademark infringement and cybersquatting in violation of the Lanham Act, 15 U.S.C. § 1051 et seq., as well as violations of Illinois and common law. (Dkt. 1, 23.) Picciolini and Free Radicals Project answered, asserted affirmative defenses, counterclaimed against Life After Hate, and brought third-party claims against four individuals associated with Life After Hate. (Dkt. 35.) The Court dismissed some of Picciolini and Free Radicals Project's claims, and Picciolini and Free Radicals Project recently filed amended counterclaims and third-party claims. (Dkt. 121, 128.) Now before the Court is Life After Hate's motion for a preliminary injunction. (Dkt. 7.) The parties conducted discovery, submitted briefs (Dkt. 8, 62, 71), participated in a 3-day preliminary injunction hearing (Dkt. 88, 89, 90), submitted post-hearing briefs (Dkt. 104, 105), and participated in oral argument (Dkt. 110).

         Having considered all these materials, and for the reasons stated here, Life After Hate's motion for a preliminary injunction [Dkt. 7] is granted. This opinion constitutes the Court's findings of fact and conclusions of law under Federal Rule of Civil Procedure 52(a)(2).

         STATEMENT OF FACTS[2]

         I. The Parties

         Plaintiff Life After Hate, Inc. (“LAH”) is an Illinois nonprofit based in Chicago that follows the model of “exit” programs developed in Europe in the 1990's to help individuals exit hate groups through education, interventions, academic research, and outreach. (Dkt. 23 ¶ 7.) LAH provides direct “deradicalization” and “disengagement” services. (Preliminary Injunction Hearing Transcript (“Hr'g Tr.”) at 393:5-6.) LAH also consults with communities, governmental organizations, NGOs, universities, and researchers. (Id. 38:22-39:3.) LAH has been featured in many national media outlets and platforms, including CNN, NBC, CNBC, ABC, PBS, Chicago-, west coast-, and New York-based newspapers, The Huffington Post, documentaries, podcasts, and radio interviews. (Id. 39:14-23; Angela King Deposition Transcript (“King Tr.”) at 97:4-9.) LAH has various social media accounts, including Facebook, YouTube and Twitter, which it uses to engage in discussion with individuals. (Hr'g Tr. 33:25-33:9, 71:5-9, 92:5-10.)

         Defendant Christian Picciolini is a former white supremacist and former member of a self-described “skinhead group.” (Id. 283:13-22, 284:3-14.) Picciolini was recruited to join a white-supremacist gang in Chicago when he was 14-years-old and remained in the group for eight years. (Id.) When he was 22, he managed to break away from the group and he has since dedicated his efforts to helping others leave violent extremist groups. (Id. 283:23-287:18.) Picciolini helped found LAH in 2009 and left the organization in 2017. In 2018, Picciolini founded Free Radicals Project, Inc., which is also a Defendant in this action. Free Radicals Project is a peace advocacy consulting group, where Picciolini works as a peace advocacy consultant and extremist interventionist. (Dkt. 35 ¶ 11.) Picciolini has helped over 300 people disengage from various extremist groups. (Hr'g Tr. 285:16-17.)

         II. The History of Life After Hate and ExitUSA

         In 2009, Picciolini and Arno Michaelis, another former white supremacist and longtime friend of Picciolini's, started an online journal at the domain www.LifeAfterHate.org to discuss social issues and tell their stories about leaving extremist hate groups. (Id. 26:23-27:13, 36:20-37:8, 175:16-176:6; 293:18-294:4.) At that time, Michaelis had also written a book about his life that he later self-published titled “My Life After Hate.” (Id. 158:22-23; 186:2-5, 290:16-24.) Other individuals contributed literary content to the online journal, but Michaelis was the leader of the project. (Id. 33:24-34:23, 175:18-176:6, 489:11-16.) The online journal went live at the domain www.LifeAfterHate.org on January 15, 2010. (Id. 174:17-21; 480:2-6.)

         In February 2010, Michaelis and two others, Robert T. Hasselkus and Jeff Pearcy, formed a Wisconsin nonstock corporation called Life After Hate, Inc. (the “Wisconsin Corporation”). (Id. 179:25-180:15.) Michaelis, Hasselkus, and Pearcy are listed as the Wisconsin Corporation's directors on the articles of incorporation. (Id.; see also LAH Ex. 14, Dkt. 115-3 at 23-26.) The Wisconsin Corporation operated the online journal under the name “Life After Hate.” (Hr'g Tr. 107:12-24.) Around this time, Picciolini also began providing “exit, ” “intervention, ” and “disengagement” services through the Wisconsin Corporation under the name “Life After Hate.” (Id. 293:7-294:8.) In June 2010, Michaelis met Sammy Rangel, a former member of the Maniac Latin Disciples who left the gang and became a counselor and mental health professional. (Id. 23:16-21, 25:1-9, 22-25.) Rangel introduced Michaelis to his contacts at local schools and the two began speaking to students about their experiences. (Id. 27:14-28:10.) They named their school-based speaking program “Kindness, Not Weakness” and operated it as part of the Wisconsin Corporation. (Id.)

         In the summer of 2011, Picciolini, Michaelis, and Rangel attended a conference in Dublin, Ireland called The Summit Against Violent Extremism. (Id. 30:22-23, 31:15-16.) The purpose of the conference was to bring together former members of extremist hate groups (known as “formers” in industry parlance), victims of extremist attacks, and other interested parties to brainstorm ways to counter violent extremism. (Id. 31:2-9.) At the conference, Picciolini, Michaelis, and Rangel met with other formers-namely Tony McAleer, Frank Meeink, and Angela King-and the group decided to start a nonprofit organization to provide support and guidance to individuals looking to leave extremist groups. (Id. 28:24-29:12, 31:11-16; see also King Tr. 11:2- 12:14.) The group decided to call the nonprofit organization “Life After Hate.” (Hr'g Tr. 29:10-12.)

         Shortly after returning home from the Dublin conference, the group formed an Illinois nonprofit called “Life After Hate, ” which is the plaintiff in this action (“LAH”). (Id. 31:18-32:11.) Picciolini, McAleer, Meeink, and Mike Abramson are listed as the “initial 4 (four) Board of Directors” on LAH's Articles of Incorporation. (LAH Ex. 15.) The Wisconsin Corporation's assets-including its members and volunteers, the www.LifeAfterHate.org website, and the “Kindness, Not Weakness” program-became a part of the new Illinois nonprofit LAH. (Hr'g Tr. 29:24-30:15, 116:25-117:17, 120:16-20.)

         In November 2012, Michaelis left LAH. After Michaelis left, Picciolini informed Michaelis that “the assets of LAH and KNW belong to the organization, ” including “the Youtube and your arno@lifeafterhate.org email address.” (LAH Ex. 1.) Picciolini told Michaelis “[w]e'll need the youtube account back, as well as the KNW twitter credentials.” (Id.) Picciolini reiterated that LAH needed the YouTube account because “the domain is the organization's and belongs to us, ” and Michaelis keeping the account for himself “will be confusing.” (Id.) Picciolini asked Michaelis to turn over access to “all LAH and KNW associated domains” to Picciolini's GoDaddy account. (Id.)

         In February 2014, McAleer traveled to Europe to meet with a group called “Exit Sweden” and attend a conference where other anti-extremism “Exit”-branded groups would be present. (Hr'g Tr. 356:21-357:2.) “Exit”-branded organizations, including Exit Sweden, Exit Germany, Exit Norway, Exit U.K., and Exit Slovakia, provide similar disengagement and deradicalization services in their respective countries. (Id. 305:3-306:4, 393:2-16; 435:6-23.) During the trip, McAleer learned that anti-extremist groups in Europe were not familiar with LAH or its work, but that similar European organizations with “Exit”-branding were getting “instant recognition” in the industry. (Id. 393:2-19.) McAleer decided that LAH should start calling itself “ExitUSA” to more accurately convey the outreach services it was offering and improve its recognition among peer organizations in Europe. (Id. 357:3-14; 393:2-19.) Other members of LAH agreed, and the group filed paperwork soon after to start doing business as “ExitUSA.” (Id. 357:15-358:2.) In May 2014, LAH submitted a grant proposal to the Research Triangle Institute which specifically referenced both “Life After Hate” and “ExitUSA.” (Id.) “ExitUSA” became a “program” of LAH. (Id. 207:6-16.)

         In late 2014, a Chicago-based consulting and creative agency, Gravitytank, selected LAH to receive pro bono advertising and branding services. (Id. 208:13-209:11; 360:3-22.) Gravitytank and LAH worked together to create a logo for ExitUSA, a new logo for LAH, and the tagline “No Judgment. Just Help.” (Id.; 360:25-361:16.) The logos were based on previous designs that Picciolini had created. (Id. 210:4-18, 212:19-213:2.)

         In January 2015, Picciolini conducted research and identified the owner of the domain www.ExitUSA.org, an individual named Richard Cote. (Id. 191:4-192:4; LAH Ex. 24.) Picciolini contacted Cote and asked him to sell the domain, and Picciolini eventually negotiated a $500 purchase price and purchased the domain. (Id., 196:4-10.) Picciolini testified that he paid $500 for the domain with his personal funds and was later reimbursed by LAH. (Id. 193:4-6, 196:23-197:8.) Counsel for LAH showed Picciolini a Chase Bank withdrawal slip from LAH's bank account dated February 23, 2015 in the amount of $500. (Id. 198:24-199:25, LAH Ex. 2.) The customer name is listed as “Life After Hate.” (Id.) The slip also reads, “If Purchasing a Cashier's Check Please Provide Payee Name, ” and the name “Richard N. Cote” is written just below that line. (Id.) Picciolini testified that the withdrawal slip was not a receipt for a cashier's check to Cote and was instead a receipt for the $500 withdrawal LAH made to reimburse Picciolini for purchasing the domain, and that Picciolini wrote Cote's name on the withdrawal slip to reference what the payment was for. (Hr'g Tr. 199:8-25.) The domain was eventually transferred to LAH's GoDaddy account, which lists Picciolini as the administrator. (Id. 359:11-14.) LAH began using the ExitUSA.org domain. (Id. 372:7-9.) Picciolini also created an “ExitUSA” YouTube channel. (Id. 420:6-15.)

         Later in 2015, McAleer submitted a proposal on LAH's behalf to the Institute for Strategic Dialogue (“ISD”), a London-based think-tank. ISD was soliciting organizations to apply for funding to create “counter-narrative campaign” videos to be used to target individuals online who were leaning toward violent extremism. (Id. 416:9-25.) LAH was one of three organizations chosen by ISD to receive funding to create and promote the videos. (Id. 364:7-18.) Picciolini led the effort to create the videos, since he had previous experience on television and was the most “tech savvy.” (Id. 364:19-22.) Angela King offered input on the video scripts and kept track of production expenses. (King Tr. 60:2-11, 64:20-65:2.) Four videos were created as part of the campaign, titled “No Judgment. Just Help., ” “There is Life After Hate, ” “Oak Creek, ” and “The Formers.” (Hr'g Tr. 418:8-18.) The videos were uploaded to ExitUSA's YouTube channel. (Id. 71:10-22, 420:13-22.)

         III. Picciolini's Termination and Free Radicals Project

         Picciolini held many different titles and positions at LAH from 2011 to 2017, including Executive Director, Executive Board Chair, Program Director of ExitUSA, and Board member. (Id. 279:20-280:17.) Beginning in 2016, Picciolini and his LAH colleagues engaged in a series of escalating disagreements and conflicts, which are largely irrelevant to LAH's preliminary injunction motion. In November 2016, Picciolini proposed to McAleer and King that LAH “spin off” ExitUSA to be run as a separate nonprofit led by Picciolini. (Id. 216:8-20; LAH Ex. 7.) LAH's Board members rejected Picciolini's proposal. (Id.) In April 2017, Picciolini resigned from LAH's Board and was named Program Director of ExitUSA and was tasked with running the ExitUSA program. (Id. 49:7-50:10.)

         On August 23, 2017, LAH's Board terminated Picciolini from LAH. (Id. 60:5-17.) After learning that he was being terminated, Picciolini again proposed that LAH “spin off” ExitUSA to him to be run as a separate entity as a way to “make it seem like an amiable split” and to avoid “confus[ing] people and rais[ing] questions.” (LAH Ex. 8., Dkt. 115-3 at 14.) Picciolini also suggested that LAH give him $50, 000 “in seed money for ExitUSA” and the title Chairman Emeritus of LAH (“an honorary title, no power or voting”), and that LAH release a public statement that Picciolini's departure was “a strategic decision on both of our parts, so that each business could focus on what they do best in a way that doesn't dilute or compromise the other.” (Id.) LAH declined Picciolini's proposal, in part because ExitUSA was such a “significant part” of LAH and was “associated with [LAH's] identity.” (Hr'g Tr. 66:4-12.)

         Shortly after Picciolini's termination, LAH's members learned that they could not control or access the ExitUSA.org domain. (Id. 69:8-23.) Soon after that, they learned that the ExitUSA.org domain was automatically redirecting users to a different webpage- ChristianPicciolini.com/ExitUSA, which featured ExitUSA logos and slogans, along with Picciolini's photo and posts about his books. (Id. 69:24-70:23.) Picciolini was responsible for redirecting the ExitUSA.org domain to his personal website. (Id. 245:6-8.) Around this time, LAH also learned that it could not access the Twitter account @ExitUSATeam, which it had been previously using, nor could it access the ExitUSA Youtube channel, which was “attached to [Picciolini's] email.” (Id. 372:1-24.) Around the same time, Picciolini registered the domain “Exit.us.” (Id. 245:9-11.)

         In September 2017, McAleer was attending an industry conference and spoke to Brette Steele, who worked in the Community Partnerships unit of the United States Department of Homeland Security and was part of a DHS team that evaluated a grant application by LAH. (Id. 382:5-16, 383:2-8.) Steele asked McAleer “what was happening with Life After Hate.” (Id.) Erin Wilson, who also worked on countering violent extremism for DHS, asked McAleer “what was happening with . . . [Exit]USA.” (Id. 383:9-384:2.)

         In January 2018, Picciolini started an Illinois nonprofit called Free Radicals Project. (Id. 264:7-11.) Free Radicals Project has a website and social media accounts on Facebook and Twitter. (Id. 263:10-21.) At some point in time, the Free Radicals Project website featured the phrases “No Judgment. Just Help.” and “Free Radicals: There is life after hate.” (Id. 272:15-273:14, LAH Ex. 39.) The four videos created as part of LAH's grant from ISD and posted on the ExitUSA YouTube channel were also posted on the Free Radicals Project website at some point in time. (Id. 425:9-17.) Free Radicals Project offers services similar to those offered by LAH. (Id. 77:3-78:8.) Picciolini began promoting Free Radicals Project in podcast interviews and on Facebook. (Id. 266:18-269:4; LAH Ex. 39.)

         At some point in 2018, the domain ExitUSA.org began automatically redirecting users to a website for Free Radicals Project. (Id. 79:5-12.) As a result of the redirection, LAH lost the ability for individuals to contact them through the ExitUSA.org website and lost web traffic. (Id. 401:14-402:1.) Around the same time, the description of the @ExitUSATeam Twitter handle was changed to “ExitUSA (now @FreeRadicalsOrg), ” inviting users to visit the @FreeRadicalsOrg Twitter page. (Id. 80:7-14, 403:8-14, LAH Ex. 58.) After that, a member of one of LAH's support groups asked Rangel “what was happening with ExitUSA, ” whether LAH was keeping ExitUSA or giving it away, whether there were two ExitUSA programs, whether ExitUSA “belonged to” LAH or to Free Radicals Project, and whether LAH was still working with Picciolini. (Id. 83:1-25.) In August 2018, a journalist named Keiko Kawabe emailed Rangel and asked if LAH controlled ExitUSA or if Picciolini did, or if LAH and Picciolini controlled it as partners. (Id. 84:11-14, 87:17-90:4.)

         LAH suffered reputational harm as a result of Picciolini and Free Radicals Project's use of the marks and the ensuing confusion, particularly because LAH relies on establishing trust, credibility, and integrity with the individuals it tries to assist. (Id. 90:23-93:17.)

         IV. LAH's Enforcement Efforts and Post-Suit Developments

         After LAH discovered that it no longer had control over the ExitUSA.org domain, it retained legal counsel. (Id. 375:15-18.) On September 20, 2017, LAH filed applications for “EXITUSA” and “LIFE AFTER HATE” with the U.S. Patent and Trademark Office (“USPTO”), with Floyd A. Mandell listed as LAH's attorney of record. (EXITUSA, Registration No. 87615677; LIFE AFTER HATE, Registration No. 87615450.) On November 13, 2017, LAH's attorney, James Sipchen, sent Picciolini's attorney a cease-and-desist letter, which asserted that LAH owned the “ExitUSA” and “Life After Hate” marks and demanded that Picciolini stop using them. (Hr'g Tr. 376:12-377:16, LAH Ex. 38.) The letter also stated that LAH applied for registration of “Life After Hate” and “ExitUSA” with the USPTO. (LAH Ex. 38.) The same day, November 13, 2017, Picciolini filed a trademark application for “EXITUSA” with the USPTO. (Id. 245:14-17; LAH Ex. 10.) Picciolini's application was eventually abandoned. (LAH Ex. 10.)

         Picciolini's attorney responded to the cease-and-desist letter and disagreed with LAH's characterization of the ownership of the marks and the alleged infringement, and suggested that the parties “discuss the division of assets.” (Hr'g Tr. 377:17-23; Def. Ex. 9, Dkt. 115-2 at 9.) LAH did not think it made sense to do so. (Id.) From December 2017 through the spring of 2018, LAH's officers tried to reclaim the ExitUSA.org domain through GoDaddy and Google. (Id. 375:24-376:2.) On May 29, 2018, LAH registered the EXITUSA and LIFE AFTER HATE marks on the USPTO's Principal Register. (EXITUSA, Registration No. 87615677; LIFE AFTER HATE, Registration No. 87615450; see also LAH Exs. 35-36.)

         At some point after the marks were registered, LAH applied to an organization that connects non-profit groups with law firms providing pro bono legal assistance. (Hr'g Tr. 380:7-14.) After waiting five to six weeks for a response, LAH learned that it was not selected to receive pro bono services. (Id.) By this time, it was summer and LAH contacted its previous counsel, Floyd Mandel, who told LAH that it could not afford his firm's fees. (Id. 380:14-381:7.) Mandel referred LAH to its current counsel, Saper Law Offices, LLC. (Id.) LAH first ...


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