UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

) YAH KAI WORLD WIDE ) ENTERPRISES, INC., et al ., ) ) Plaintiff s , ) ) v. ) Civil Action No. 11

- cv - 2174 (KBJ) ) GEOFFERY NAPPER, ) ) Defendant. ) )

FINDINGS OF FACT AND CONCLUSIONS OF LAW This law suit arises from a dispute between members of the African Hebrew Israelite community (the “Community”) and Geoffrey Napper (“Napper” or “Defendant”), one of the Community’s former member s , regarding the ownership and control of a business located in Capitol Hei ghts, Maryland ; t he business in dispute is presently named Everlasting Life Restaurant & Lounge

. “Everlasting Life” is a phrase that has special significance to the members of the Community, who claim to be descendants of biblical Israelites and who follo w a strict vegan diet

. Thus, w hen the Community undertook to open a food

- service establishment to support their members’ dietary needs , the name Everlasting Life

— which was eventually trademarked by one of the group’s leaders, Immanuel Ben Yehuda (“Prince Immanuel”)

— was selected to be the official moniker. The Community appointed Napper to manage its first Everlasting Life restaurant and grocery store, which was a cooperative in the District of Columbia, and Napper was also tapped to manage the expansive E verlasting L ife Health C omplex2 that the Community later opened in Maryland. When the Community subsequent ly deci ded to replace Nap per as manager of the Complex and to form a corporate entity named Yah Kai World Wide Enterprises (“Yah Kai”) to run that fac ility , Napper seemed to accept t hat management decision and continued his involvement with certain, limited aspects of the Complex’s business operation s

— right up until the point at which he forcibly evicted Prince Immanuel, Yah Kai, and other C ommunity mem bers from the premises, took over the facility and all of its equipment, and began operating that Everlasting Life establishment as his own. Before this Court at present is the complaint that Prince Immanuel and Yah Kai (“ Plaintiffs ”) have brought against Napper under the Lanham Act, 15 U.S.C. §§ 1051

– 1129 , and Maryland common law. ( See Compl., ECF No. 1.) 1 Last year, t h is Court conducted a three

- day bench trial , during which five witnesses testified regarding the facts underlying Plaintiffs’ various trad emark infringement and unfair business practices claims and Napper’s defenses

. T he Court subsequently received and reviewed proposed findings of fact and conclusions of law from the parties, and it has now carefully examined the myriad legal tenets that t he parties contend squarely apply to the established facts of this case . As explained in the Findings of Fact and Conclusions of
Law set forth below , th is Court has determined that P laintiff s have sustained their b urden of proof with respect to the compla int’s two Lanham Act claims (trademark

1 Community member William Young (“Young”) was also a plaintiff in this case when the complaint was filed, but his claims against Napper were dismissed with prejudice upon his death. ( See Order, ECF No. 57, at 2 ( affording Plaintiffs an opportunity to move the Court to substitute an appropriate party for Young, and noting that failure to do so within the prescribed time and manner would result in the dismissal of his claims).) Young’s deposition testimony was take n on March 6, 2014, prior to his death ( see Young Dep. , March 6, 2014 ); this testimony was admitted at trial as evidence for the Court ’s determination of liability with respect to all counts ( s ee July 16, 2015 Trial Tr. at 9:7

– 10:9 ; see also Young Dep., De f.’s Ex. 2 ).3 infringement , and unfair competition /false designation of origin ), and also two of the claims that Plaintiffs have brought under Maryland common law ( unfair competition , and conversion )

. However, t he elements of Plai ntiffs’ claim for usurpation of corporate opportunity have not be en established as a matter of law, given the lack of a ny fiduciary duty between Napper and Plaintiffs during the relevant period

. Accordingly , JUDGMENT WILL BE ENTERED IN PLAINTIFFS’ FAVOR a s to liability with respect to Counts I, II, III, and VI of the c omplaint , and JUDGMENT WILL BE ENTERED IN DEFENDANT’S FAVOR with respect to Count IV

. A separate order consistent with the Court’s findings and conclusions will follow.

I. PROCEDURAL BACKGROUND Plaintiffs filed the instant lawsuit o n December 8, 2011; the complaint has six counts, only five of which proceeded to trial. Counts I a nd II

— which were brought under S ections 32 and 43(a) of the Lanham Act , respectively

— claim that Napper’s operation of the Everlasting Life Restaurant & Lounge infringes upon Prince Immanuel’s registered trademark ( see id

. ¶¶ 32

– 39 (Count I)), and that Napper has engaged in federal unfair competition and false designation of origin ( see id . ¶¶ 40

– 45 (Count II)). Counts I II through VI allege various violations of Maryla nd common law; specifically, Plaintiffs maintain that Napper has engaged in unfair competition ( see id

. ¶¶ 46

– 49 (Count III)), has usurped Yah Kai’s corporate opportunity ( see id . ¶¶ 50

– 54 (Count IV)), has b reached a fiduciary duty of loyalty he owed to Yah Kai and the Community ( see id . ¶¶ 55

– 59 (Count V) ), and has converted Yah Kai’s tangible property ( see id . ¶¶ 60

– 64 (Count VI)).4 On November 12, 2013, this Court held a status conference with respect to th is
matter , during which it denied Napper’s first motion for summary judgment on the grounds that the evidentiary record was significantly underdeveloped due to the parties’ failure to engage in robust discovery. ( See Order, ECF No. 33 , at 1 ; see also Def. ’ s Mot. for Summ. J., ECF No. 24

. ) T he Court directed the parties to undertake an extended period of discovery and also referred the matter to mediation. ( See Order, ECF No. 33, at 1

– 2.) On July 17, 2014, after discovery was complete and mediation

was u nsuccessful, Napper filed a second motion for summary judgment

. ( S ee Def.’s 2d Mot. for Summ. J, ECF No. 43

. ) T he Court denied this motion on the grounds that genuine issues of material fact existed regarding ownership of the restaurant at issue ( see Min ute Order of Feb. 11, 2015 ) ; the parties then proceeded to prepare for trial

. T he Court held a final pre - trial conference o n this matter on July 10, 2015

. During th at conference, th e Court dismissed Plaintiffs’ breach of fiduciary duty claim ( see Compl. ¶ ¶ 55

– 59 (Count V)) as le gally unfounded under Maryland l a w and duplicative of the usurpation of corporate opportunity claim. ( See Order, ECF No. 57, at 2.) Furthermore , d uring this same pre - trial conference , the parties waived their right to a jury trial on the issue of liability with respect to the remaining counts of the complaint , but reserved their right to a jury trial on the issue of damages. ( See id

. at 1.) Accordingly, the Court bifurcated the previously scheduled jury trial and proceeded to ho l d a bench trial regarding Defendant’s liability , expressly noting that, if needed, a separate jury trial would be held thereafter to determine any damages. ( See id . at 1

– 2.)
T h e bench trial in this matter took place over three days between July 14 , 201 5, and July 16, 2015. Plaintiffs called five witnesses, including Prince Immanuel and Dr.5 Cheryl Lee Butler (“Dr. Lee”) , who is a member of the Community and a corporate designee of Yah Kai

. The Court also heard the testimony of Carol Allen (“Allen”) , th e leasing administrator for Kingdom Management, and Darrel Edwards (“Edwards”) , Yah Kai ’s accountant

. Napper was called to the stand by Plaintiffs to testif y as an adverse witness ; however, Napper’s counsel did not call any witnesses in Napper’s case - in

c hief. After the bench trial concluded , the parties submitted proposed findings of fact
in table format and in three iterations , in acc ordance with this Court’s bench

- trial practices. ( See Order, ECF No. 61 (explaining Proposed Findi ngs of Fact Table )

. )
P laintiffs went first , la ying out their proposed findings of fact with citations to the record ( see Proposed Findings of Fact, ECF No. 62 (“1st FOF Tbl. ”)) , and in the second iteration of the table , Defendant noted any dispute s regarding Plaintiffs’ listed facts and added his own proposed findings ( see Proposed Findings of Fact, ECF No. 63 (“2d F OF Tbl. ”))

. Plaintiffs responded to Defendant’s representations in the third iteration of the table

. ( See Propo sed Findings of Fact, ECF No. 64 (“3d FOF Tbl. ”)). 2 In addition, both parties submitted proposed conclusions of law. ( See Pls. ’ Proposed Concls. of Law (“Pls.’ COL”) , ECF No. 66; Def.’ s Proposed Concls. of Law (“Def.’s COL”), ECF No.
68

. )

2 The third Findings of Fact Table represents the entire corpus of the findings that the parties have propose d to the Court, and this iteration of the table is the document that is cited in the instant Memorandum Opinion. Citations to specif ic material in that table will reference the row number or numbers in which the material is located, followed by the relevant column or columns , which are designated “A” “B” and “C”. Thus, a pincite to “3d FOF Tbl. at 38

– 40 (A)” corresponds to the informa tion at lines 38 through 40 under Column A.6 II. LEGAL STANDARD

“ In an action tried on the facts without a jury .

. . the court must find the facts specially and state its conclusions of law separately.” Fed. R. Civ. P. 52(a)(1). “ In setting forth the findin gs of fact, the court need not address every factual contention and argumentative detail raised by the partie s , [n]or discuss a ll evidence presented at trial.” Moore v. Hartman , 102 F. Supp. 3d 35, 65 (D.D.C. 2015) (internal quotation marks and citations omitted). Instead , “ ‘ t he judge need only make brief, definite, pertinent findings and conclusions upon t he c ontested matters [] ’ ” in a manner that is

“ sufficient to allow the appellate court to conduct a meaningful review.” Wise v. United States , No. 12

- 01636 , 2015 WL 7274026 , at *2 (D.D.C. Nov. 17, 2015) (quoting Fed. R. Civ. P. 52(a) advisory committee’s note to 1946 amendment ) ; see also Lyles v. United States , 759 F.2d 941, 943 (D.C. Cir. 1985) (“One of [Rule 52(a)’s] chief purposes is to aid the appellate court by affording it a clear understanding of the ground or basis of the decision of the trial court.” ( internal quotation marks and citation omitted)).

III. FINDINGS OF FACT Th is Court’s findings o f fact with respect to the instant case are based on the evidence

— i.e. , the testimony and exhibits

— that the parties submitted during the bench trial , the Court’s obser vations of the demeanor and credibility of the witnesses, the parties’ stipulations, and the record as a whole. 3 Notably, because many of the basic facts regarding the formation and ownership of the Everlasting Life Health Complex are

3 The Court received the following exhibits into evidence during the bench trial: Plaintiffs’ Exhibits 1, 2, 3, 4, 5A, 5B, 6, 7, 8, 9, 10, 11, 12, 13, 14A, 14B, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 29, 31, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43; and Defendant’s Exhibits 1, 2.7 disputed, this Court has made its factual findings based largely on its e valuation of the believability of the testifying witnesses, whose general credibility th e Court necessarily assessed in its role as the finder of the fact at trial

. T he Court finds, as a general
matter, that Plaintiffs’ four affirmative witnesses

— Carol Allen, Darrel Edwards, Prince Immanuel , and Dr. Lee

— presented relevant facts of which they had first

- hand knowledge in a clear, frank , and candid manner, and that their testimony was entirely credible. By contrast, the Court fou nd Napp er to be disingenuous at times , and the
Court did not believe some of his most salient representations , as described below. A. Overview Of The Testimony Presented At Trial Allen, who is the leasing administrator for the lease ma nagement company Kingdom Management, testified about her interactions with Napper and Young regarding the anticipated expiration of the Complex’s lease , the circumstances leading
to renewal of the lease , the receipt of rent payments signed by Yah Kai, and certain facts rel ated to overpayments for utilities with respect to the property. ( See July 14, 2015 Trial Tr. at 168:6

– 197:12; July 15, 2015 Trial Tr. at 85:3

– 96:13 .) Edwards, an accountant for both Yah Kai and Napper, testified about his accounting wor k for Yah Kai during the time that Yah Kai operated the Complex , including his observation that Yah Kai undertook all of the Complex’s legal responsibilities and business expenditures from 2009 through 2011

. ( See July 14, 2015 Trial Tr. at 198:1

– 213:7; Ju ly 15, 2015 Trial Tr. at 11:15

– 30:20 .) Prince Immanuel and Dr. Lee , who are members of the Community a nd have a personal relationship with both Napper and with the Everlasting Life business es , provided pertinent background and related specifics regarding t he events underlying the instant trademark dispute. A s a leader of the Community, Prince Immanuel testified8 about the Community’s history ( its origins, structure, beliefs, culture, and foun ding ); the Community’s development and ownership of the Everlastin g Life restaurant business es ; his own registration of th e Everlasting Life service mark; Napper’s involvement in the restaurant business es on b ehalf of the Community ; Napper’s subsequent removal from management; and the events surrounding Napper’s eviction of Yah Kai and the Community from the Capitol Heights facility

. A s the corporate designee of Yah Kai, Dr. Lee testified about the Community’s history in establishing the Everlasting Life food

- service business es and its instructions to Napper with respect to starting the business es . Dr. Lee also described the Community’s decision to remove Napper as manager of Everlasting Life Health Complex, and its formation of Yah Kai as the legal entity that the Community entrusted with the responsibility of restructu ring and operating that establishment. 4 Notably, t he Court found that when Prince Immanuel and Dr. Lee test ified about the same events ( e.g ., Napper’s removal as manager) they did so in a manner that was entirely consistent , and that they recounted the re levant
events with a clear recollection of the matters described

. Napper’s overall demeanor and testimony was quite to the contrary

. The Court observed that Napper’s testimony , which was presented as part of Plaintiffs’ case

- in

-

4 T he evidence established that Dr. Lee has a financial interest in the outcome of this law suit ( see 3d FOF Tbl. at 53

– 54 (A); July 15, 2015 Trial Tr. at 190:7

– 8 (Dr. Lee stating she is t he corporate designee of Yah Kai, a Plaintiff in this case seeking monetary damages) ) ; however, Dr. Lee elaborated on her close friendship with Napper and demonstrated a great deal of care for him during her testimony , which substantially reinforced her cr edibility and cloaked her testimony with an aura of impartiality ( s ee , e.g., July 15, 2015 Trial Tr. at 175:21

– 176:3 (Dr. Lee) (“I also wanted to say that I don ’ t know where the dispute really started. But what I do know is that us sitting in that meeti ng and at that house that Mr. Napper was very important to me, and he was important to the members of that community. He not only was a leader in the community, nor was he just the manager of Everlasting Life Health Complex, he was our friend and he was ou r brother. So we wanted the best outcome for everybody.”); July 16, 2015 Trial Tr. at 3:24

– 4:4 (“Q: Dr. Lee, during your answers to questions, it seems that you have a sisterly love for [Napper]. A: I do. Q: And this case for you is not about

— it ’ s not per sonal, is it? A: It’s not.”) ).9 chief, was riddled with con tradictions and , at times, appeared manifestly inconsistent with undisputed facts in the record , which cast doubt upon his credibility and reliability as a witness. 5 In addition, Napper displayed some signs of dissembling, such as the evasive nature of hi s answers with respect to the existence of a purportedly independent and unincorporated food business that he claimed to have created by himself in his home garage prior to the Community’s formati on of its restaurant businesses ; according to Napper, this s eparate food

- service business was also called “ Everlasting Life ” and

was operat ing contemporaneously with , and in the same physical space as , the
C ommunity’s Everlasting Life businesses , unbeknownst to any other members of the Community

. 6 To be sure, Napp er did not falter in his insistence that he

— alone

— was

5 For example, when asked during his depositio n whether he had paid rent to run his juice counter inside the Complex between 2008 and 2011, Napper answered “I paid in kind” ( see Napper Dep. 58:8, March 6, 2014, Pls.’ Ex. 24 ), but when asked the same question at trial, Napper said, “ [n] o, I didn’t pay the rent in kind” ( s ee July 1 4, 2015 Trial Tr. at 96:13). Napper also appeared to be confused regarding which of the business entities at issue was legally authorized to operate the Complex at any given time

. ( Compare 3d FOF Tbl. at 57 (B) ( Napper asserts that “Yah Kai obtained new occupancy and business permits from Prince George’s County in 2008

- 2009” to run the Complex), with Napper Dep. 31:13

– 32:1 (“Q: .

. . Your testimony is that [ a legal entity the Community called the Everlasting Life Health Complex ] actually had the business license to occupy . . . Everlasting Life Restaurant in 2009? A: As far as I know, yes. Q: 2010? Yes. Q: And 2011? A: As far as I know, yes.”)

. )

6 The following exchan ge between Napper and Plaintiff s ’ counsel is indicative of the far

- fetched statements that Napper made throughout his testimony: Q: When you speak about a business in 1995, is it your testimony that you are not referring to Everlasting Li fe Community Co

- Op ? A: The business that I established in 1995 was the business that is now known as Everlasting Life. . . Q: [Is it] the same business that you operate now under the auspices of Fair and Balanced, is that your testimony? A: The business t hat I established back in 1995 has not changed since 1995. It is the business that I established. . . . Q: Your testimony is that the garage business, the food business, non

- restaurant, was never incorporated, never had a license to do business in the coun ty, never registered, never filed an EIN number, existed between 1995 and 2015. Is that your testimony? A: My testimony is that my business, which is the food business that I established in 1995, has not been incorporated into any of the business entities that we’ve discussed today. . . . Q: Have you produced a single piece of paper or documentation to verify the existence of that business? . . . A: [W]ith all of the paperwork that was submitted, I’m not sure whether that, that entity is reflected in these, in this document or these submissions that we have. (July 14, 201 5 Trial Tr. at 140:18

– 144:7 .)10 the rightful owner of the Ev erlasting Life Health Complex . But much of Napper’s logic appeared to turn on his mistaken belief that, as the Community member who helped to conceptualize th e Community’s f ood

- service business es and was tasked (at least initially) with the responsibility of bring ing that vision to fruition , he owned that business; consequently, many of his explanations were simply not believable

. 7 In short, as reflected in the specific findi ngs of fact that follow , this Court has generally resolved the parties’ myriad disputes regarding material factual matters in favor of the testimony provided by Plaintiffs’ affirmative witnesses

— whose consistent and credible testimony w as that the Communit y formed, funded , and owned the Everlasting Life business operation at issue in this case

— and against Napper, who, the Court finds, improperly appropriated that trademarked, profitable ongoing business

concern , and has continued to operate it without the C ommunity’s permission and in a manner that risks confusing the public about the nature, origins, and ownership of that business

.

7 In this regard, it appears that Napper’s entire defense in this action hinges on the erroneous conte ntion that he owned the Complex by virtue of his ‘sweat eq uity’ as the former manager , notwithstan ding the fact that the manager reported to the Community’s leadership, and the Community collectively made the financial investments that were requ ired to maintain and operate the business. Napper’s testimony regard ing entitlement to the restaurant eq uipment that was located on the premises after he evicted Yah Kai and the other Community members provides one example of this flawed reasoning

. Although Yah Kai had indisputably purchased certain equipment for the Comp lex , Napper testified that he “didn’t feel the need to reimburse Yah Kai for [equipment] that was [in the Complex] before 2008 that was still there in 2011 even though it may have been different, new or other wise.” (July 14, 2015 Trial Tr. at 106:8

– 11.) Napper applied this same analysis when asked why he did not return the substantial utilities rebate that the landlord arranged as a reimbursement for overpayments that Yah Kai previously had made : Napper testified that “[a]s long as [he] owned the business and [was] the tenant at the . . . Capitol Heights location, [he had ] paid utilities” vicariously and was thus entitled to the rebate

. ( July 15, 2015 Trial Tr. at 32:13

– 18.)11 B. The Everlasting Life Restaurant Businesses , And The Entities That Formed And Operated Them M embers of the African Hebrew Isr aelite c ommunity claim to be “descendants of the biblical Israelites from the African

- American tradition” ( July 15, 2015 Trial Tr. at 52:15

– 16 (Prince Immanuel)) , and significantly for present purposes, African Hebrew Israelites strictly “follow a natural vegan plan t

- based diet” as a means of “enhancing and sustaining” their lives ( id

. 53:1

– 6; see also 3d FOF Tbl. at 7 (A, B) ). Napper “entered the [Community] in 1988 and was a leader within the group” (3d FOF Tbl. at 4 (A, B) ) , as were Young, Dr. Lee, and Prince Immanuel ( s ee id

. at 2

– 3, 6 (A, B) ). In 1993, the Community, which generally believes in collective ownership and eschews typical notions of individual property ( see id

. at 19 (A, B) ; see also July 15, 2015 Trial
Tr. at 55:11

– 15, 106:3

– 13, 109:23

– 110:20 (Prince Immanuel)) , collectively started and operated a vegetarian restaurant called Soul Vegetarian in Washington, D.C. ( see July 15, 2015 Trial Tr. at 61:8

– 19 (Prince Immanuel)). Two years later, in or around 1995, the Community opened a second f ood

- based retail establishment: an organic vegetarian food market and restaurant in the same vicinity called the Everlasting Life Community
Co

- Op (“the Co

- Op ”). ( See id

. at 61:8

– 22.) Napper helped to establish the Co

- Op ( see July 14, 2015 Trial Tr. at 4 8:15

– 18 (Napper)) , and was selected by the Community to act as its official manager and to run its operations ( s ee July 15, 2015 Trial Tr. at 65:3

– 4 (Prince Immanuel)). In order to operate the business activities of the Co

- Op legally and in accordance wi th broader societal norms, Community members undertook to incorporate a general cooperative association

— a corporate structure that does not have indiv idual ownership interests or issued shares

— in the District of Columbia on August 22, 1996. ( See 3d12 FOF Tb l. at 11

– 17 (A, B) ; see also July 15, 2015 Trial Tr. at 154:18

– 21 (Prince Immanuel); July 14, 2015 Trial Tr. at 50:9

– 12, 54:12

– 18, 115:12

– 18 (Napper).) The Community named this corporate entity after the Co

- Op itself, calling it the “Everlasting Life Comm unity Cooperative” (hereinafter “ELCC”)

. ( See 3d FOF Tbl. at
11

– 17 (A, B) ; see also July 14, 2015 Trial Tr. at 122:4

– 7 (Napper).) Napper was one of the listed incorporators of ELCC, and according to the articles of incorporation, also served as a directo r for the first year of its corporate existence. ( See ELCC Certificate of Incorporation, Pls.’ Ex. 29.) Given the legal structure of the association, however, Napper could not have legally owned any share of ELCC in his individual capacity. ( S ee July 14 , 2015 Trial Tr. at 64:11

– 18 (Napper concedes as much).) Sometime in the year 2000, the Community expanded its food

- service operations to Capitol Heights, Maryland, where it opened the business that is at issue in this lawsuit. The Maryland facility was located in a sprawling building at 9185 Central Avenue ( see Restaurant Lease between Hampton Mall and Everlasting Life Cooperative & 2004 Amendment to Lease, Pls.’ Ex. 5 , at 4

– 51), and the Community named this business the Everlasting Life Health Complex (“the Complex ”). ( See July 14, 2015 Trial Tr. at 66:15

– 18 (Napper).) The Complex offered an array of vegan soul food goods and services , including a restaurant, bakery, juice bar, and grocery store. ( See July 15, 2015 Trial Tr. at 168:13

– 23 (Dr. Lee).) The Complex also contained administrative offices, a large banquet hall, and a health center offering massage therapy services. ( See id

. at 168: 24

– 169:9.) Importantly, the initial financial outlay for start

- up expenses for the Complex

ca me from investments and donations provided by Community members ( see 3d FOF13 Tbl. at 43 (A, B) ); specifically, the members’ collective financial input totaled “about $1.2 million” in the form of investments and charitable contributions, including donations “to help buy” building materials, such as paint brushes , lightbulbs , bricks and drywall (July 14, 2015 Trial Tr. at 166:6

– 14 (Napper) )

. Similarly, prior to the grand opening of the Complex , Community members from various parts of the country and around the world traveled to Maryland to aid “at every phase” of the project development: “from the conceptualization, [to] the structure, the design, . . . [and] the build

- out” of the Complex. (July 15, 2015 Trial Tr. at 72:1

– 6 (Prince Immanuel).) Members “sp ent four or five hours each evening preparing th[e] space” (Young Dep. 15:5

– 16:1), including offering manual labor and skills such as carpentry and plumbing ( see July 14, 2015 Trial Tr. at 165:22

– 166:5 (Napper)). The Community appointed Napper to manage the Complex, just as it had done with the Co

- Op

. ( See July 15, 2015 Trial Tr. at 64:22

– 65:11 (Prince Immanuel).) Moreover, just as with the Co

- Op , Community members established a no

- shares corporation so that the Complex could operate leg ally and in accordance with the laws of Maryland. The Complex’s operating entity was incorporated in 2001 in the state of Maryland, and this corporate entity was given the same official name as the restaurant itself: the Everlasting Life Health Complex (h ereinafter “ELHC”). ( S ee 3d FOF Tbl. at
24 (A, B) ; July 15, 2015 Trial Tr. at 165:23

– 166:15 (Dr. Lee).) Napper served as ELHC’s registered resident agent. ( See July 15, 2015 Trial Tr. at 165:23

– 166:1 5 (Dr. Lee). ) However, the original lease for the Cap itol Heights building

— where ELHC would be operating the Complex

— was entered into by ELCC as the contractual tenant , and Napper signed the original lease and all subsequent modifications and extensions in14 his capacity as an officer of ELCC. 8 Napper also ev entually negotiated a substantial settlement agreement between ELCC and the management company that oversaw the Capitol Heights building concerning the overpayment of utilities, as described below. Unfortunately for the Community , authorities in Maryland a nd the District of Columbia revoked the corporate status es of ELHC and ELCC ( in the years 2008 and 2012, respectively ) because these entities fail ed to comply with the statutory requirements for remaining in good standing . ( See 3d FOF Tbl. at 35 (A, B) ; s ee also July 15, 2015 Trial Tr. at 150:20

– 151:7 (“The Court will take judicial notice of the facts of the forfeiture [on October 3, 2008] of the entity known as Everlasting Life Health Complex, Inc.”); id. at 155:7

– 10 (Plaintiffs’ counsel ) ( “Everlasting Li fe Community Cooperative corporate status was revoked or was not in good standing effective 2012”) .) 9 However, somehow, the Complex and the Co

- Op continued to operate despite these difficulties, and with respect to the Complex, the Community decided to fo rm yet anothe r legal corporate entity

— Yah Kai Worldwide Enterprises,

8 ELCC was apparently selected as the lessee because, unlike the newly

- incorpora ted ELHC, it had a well

- established business record and credit, both of which were needed to facilitate the approval of a commercial lease. ( See July 15, 2015 Trial Tr. at 70:10

– 15 (Prince Immanuel) (“Q: And why was [ELCC] used for purposes of that lease? A: It was the enterprise which had established itself and was known in the commercial community, so we were able to leverage that reputation into establishing this new enterprise.”); July 14, 2015 Trial Tr. at 137:11

– 18 (Napper) ( responding to the same qu estion, Napper testifies that “[ELCC] was the entity that was going to be recognized on paper . . . with the business history that was going to be satisfactory for the property owner at the time”).)

9 Under Maryland law, a corporate status will be forfeite d for failure to pay taxes, unemployment insurance, or failure to file annual reports. See Md. Code, Corps. & Ass’ ns § 3

- 503 (a)

– (c) (1997) ; see also id. § 3

- 503(d) (explaining that, if corporate status is forfeited, any legal rights and powers the e ntity enjoyed automatically beco me “ inoperative, null, and void ” ); id. § 3

- 515 (explaining further that corporate directors beco me “the trustees of its assets for purposes of liquidation” and to wind up its affairs). Similarly, under D.C. law, a corporate entit y will be administratively dissolved for failure to pay fees and penalties, to deliver a biennial report, or to have a D.C. registered agent. See D.C. Code § 29

- 106.01. Thus, upon ELCC’s dissolution, its registered agent (Napper) retained some legal auth ority, but was foreclosed from “ carry [ing] on any activities or affairs ex cept as necessary to wind up [ELCC’s] activities and affairs and liquidate its assets [.]” Id

. § 29

- 106.02

.15 Inc.

— in 2009, to take on the responsibility of “restructur[ing] and reformulat[ing] Everlasting Life Health Complex to become a viable business again.” (July 15, 2015 Trial Tr. at 173:23

– 25 (Dr. Lee).) Three Community members

— Dr. Lee, Young, and Reginald Clay

— registered Yah Kai as a non

- profit corporation under the laws of the District of Columbia. ( See id

. 173:9

– 22; 3d FOF Tbl. at 52

– 53 (A, B) .) The Community then authorized Yah Kai to “t[ake] over Everlasting Life Health Complex, rearrange[] it, and pa[y] all bills and taxes.” ( See 3d FOF Tbl. at 52 (A, B) .) It is undisputed that Yah Kai managed and operated all the legal and business activities of the Everlasting Life Health Compl ex from 2009 until Napper forc ed it to relinquish the Capitol Heights facility in November of 2011 , as described infra in Part III.D . ( S ee July 15, 2015 Trial Tr. at 155:16

– 22 (Prince Immanuel); see also id. at 176:21

– 178:16 (Dr. Lee).) Specifically, in its role as manager of the Complex between 2009 and 2011, Yah Kai: (1) acquired all of the necessary licenses and permits for the Complex’s operations ( see 3d FOF Tbl. at 57 (A, B) ; Maryland Permit to Yah Kai to Operate Facility, Pls.’ Ex. 3); (2) assume d and repaid ELHC’s debts with respect to tax arrears and outstanding payments owed to suppliers and Community members ( see July 15, 2015 Trial Tr. at 177:19

– 179:5 (Dr. Lee)); (3) paid rent for use of the building at 9185 Central Avenue , where the Compl ex was housed ( see 3d FOF Tbl. at 67(A); Yah Kai’s 2009

- 2011 Rent Checks, Pls.’ Exs.
34

– 36);16 (4) paid the Complex’s bills, including utilities and food supplies ( see July 15,
2015 Trial Tr. at 178:15

– 16 , 188:1

– 10 (Dr. Lee); July 14, 2015 Trial Tr. at 209: 18

– 210:5 (Edwards) ; see also 3d FOF Tbl. at 52, 60 (A, B) ; Everlasting Life Health Complex Financial Records for 2011

- 2015 , Pls.’ Ex. 31 ( used for Yah Kai’s tax returns) ) ; (5) paid taxes related to the Complex’s business ( see 3d FOF Tbl. at 56, 60

– 61,
64

– 6 5, 68

– 69 (A, B) ; Yah Kai’s Tax Returns, Pls.’ Ex. 9); (6) paid the salaries of the Complex’s employees ( see 3d FOF Tbl. at 62

– 63, 66,
69 (A, B) ; Income Records for Yah Kai Employees, Pls.’ Ex. 10); and (7) publicly sold goods and services under the name Everlasting Life Health Complex ( see 3d FOF Tbl. at 55 (A, B) ; Yah Kai’s Certificate of Business Registration, Pls.’ Ex. 8; Yah Kai’s DCRA Basic Business L icense Application, Pls.’ Ex. 7 ). C. Napper’s Relationship To The Community The events that give rise to the claims at issue in this case center on the personal and professional relationships between Napper and members of the Community, which date back to the mid

- 1980s. Napper held a leadership position within the Community’s organizational structure, a str ucture that is best characterized as a hierarchical apportionment of authority that has representative members on an international, national, and local level. ( See Ju ly 15, 2015 Trial Tr. at 55:9

– 15, 152:6

– 23 (Prince Immanuel).) Briefly, the “anointed sp iritual leader of the African

- American Hebrew community”

— Ben Ami

— sits at the helm of the leadership hierarchy. ( Id. at 54:16

– 17.) Directly under him are the “member[s] of the Holy Council, the [Community’s] spiritual guiding bod y[,]” who receive the titl e of “Prince” ( id. at 52:9

– 12); Plaintiff Prince Immanuel is one such leader. Under the Princes are the “Ministers , ” who17 “overs ee the day

- to

- day actions in the particular areas of focus, be it agricultural, education, sports and recreation” ( id. at 152:12

– 14), and on the l owest rung of the ladder of leadership are the “Crowns , ” such as Napper and Dr. Lee, “who are also involved in the day

- to

- day oversight and coordination of the activities of the members of the commun ity, the brothers and sisters” ( id. at 152: 14

– 18). Notably, the leaders play a crucial role in the establishment and operation of the Community’s businesses, each of which is individually managed by a selected leader for the benefit of the Community. ( See id

. at 65:4

– 11.) Prince Immanuel me t Napper in 1986 or 1987, when they were both “holding classes [and] meetings, [and were] very much involved in the [C]ommunity.” ( Id. at 56:14

– 20 ( Prince Immanuel ) .) By 1992, when Dr. Lee first joined the Community, Napper was already a leader among its members ( id. at 162:1

– 10 (Dr. Lee)), and in the years to follow, Napper would come to be identified as a “champion[] [for] the cause of the Hebrew Israelite Community” ( id. at 164:21

– 24). Napper was a highly “personable” and “effective” leader, who would often “moti vate the members” to engage in C ommunity activities. ( Id. at 164:16

– 20.) Napper was also “important to the members of that [C]ommunity . . . not only [in his capacity as] a leader” and “the manager of the Everlasting Life Health Complex,” but also as their “friend and . . . brother.” ( Id. at 175:24

– 176:3.) In the mid

- 1990 s, Prince Immanuel was appointed the local leader for the African Hebrew Israelite s in the District of Columbia, and as such, he was “responsible for teaching, coordinating , [and] directing” the members and their activities. ( Id. at 63:3

– 5 (Prince Immanuel).) It was under Prince Immanuel’s supervision th at the18 Community members in the District of Columbia decided to establish the Everlasting Life Community Co

- Op in 1995 ( se e id. at 61:20

– 63:18). At the time, Napper and Prince Immanuel had an amicable and “fruitful relationship,” interacted regularly, and were both closely involved in the inception of the Co

- Op . ( Id

. at 58:8

– 9, 57:17

– 21,
61:17

– 22.) The Community and its lo cal leaders chose Napper to manage the Co

- Op and he became a promi nent contributor to its success; he undertook essential responsibilities such as securing the location’s lease, which he did under his own name. ( See id. at 65:3

– 4 (Prince Immanuel) ; July 14 , 2015 Trial Tr. at 118:4

– 10 (Napper).) Once the Co

- Op proved to be a profitable venture, the Community began to explore the possibility of expanding to a new location, and Napper played a pivotal role in the development of the new business as well. For example, it was Napper who “located a space in [Capitol Heights, Maryland] and suggested that [the Community] come together and develop that space into a restaurant and other associated facilities.” (July 15, 2015 Trial Tr. at 65:18

– 21 (Prince Immanuel). ) The leaders of the Community in the Washington Metropolitan area agreed , and after consulting with Ben Ami and other leaders around the world, decided to pursue that business opportunity. ( See id. at 65:21

– 66:2.) Napper then proceeded to become intric ately involved in the structuring, financing, and development of the project; for example, he was directly involved in the deliberations with Prince Immanuel to name the business the “Everlasting Life Health Complex” ( see id. at 66:5

– 18), and he secured t he lease for the property where the Complex would operate

— this time, he did so as an officer of ELCC and as one of the guarantors, and not in his individual capacity ( see Original Lease between Hampton Mall as Landlord and Everlasting Life Co

- Op , Pls.’ Ex. 5A). Napper19 was also selected to be the manager of the Complex’s day

- to

- day operations. ( See July 15, 2015 Trial Tr. at 170:1

– 6 (Dr. Lee).) Alongside other members of the Community, Napper contributed his “time, . . . energy and money” to the bettermen t of this collectively

- owned business ( id. at 175:8

– 10), and even if he disagreed with the Community leaders at times regarding strategic business operations, his “love” for his “brother[s] and [his] sister[s]” motivated his continued “adherence and obedie nce to the [C]ommunity” (July 14, 2015 Trial Tr. at 78:5

– 20 (Napper)). Lamentably, t he relatively harmonious relationship that developed between Napper and the Community during the creation of the Complex began deteriorating about four years after the Co mplex opened its doors to the public . By 2004, the Complex business “was in serious arrearage,” so the Community decided to reduce the size of the premises and modify the Complex’s management structure. (July 15, 2015 Trial Tr. at 72:13 (Prince Immanuel) .) 10 T he 2004 restructuring also included a decision by the Community ’s leaders t o remove Napper as the manager of the Complex and the Co

- Op ( id

. at 73:3

– 8), and to replace him, initially, with Young

— “a former military man” with meticulous skills who they believed would successfully turn the business around ( id . at 73:16

– 19). To address Napper’s concerns about his displacement and his significant debts

— most which he had acquired in order to establish the businesses

— the Community agreed to pay Napper a mont hly stipend of

10 It was the decision to reduce the size of t he Complex’s physical footpri nt (which the landlord accompl ished by erecting a wall and leasing of part of the space to another entity) that marked the beginning of the utilities overpayment problems described infra in Part III.D. In short, although the Community had relinquished con trol over part of the space that had been leased for the Complex, the landlord and power company neglected to account for this change when it billed the Community for the Complex’s use of utilities

. ( See July 15, 2015 Trial Tr. at 180:23

– 181:17 (Dr. Lee); see also id. at 86:22

– 87:8, 95:22

– 96:2 (Allen).)20 $9,000 for the next two to three years, for a total of approximately “$200,000 to $236,000.” ( See id

. at 74:21

– 75:14.) Under Young’s management, the businesses thrived and the Complex’s operations regained profitability. ( See id

. at 74:1 4

– 15 ( Prince Immanuel ) .) But three years later, in 2007, Young had to “step back” from management “due to health challenges” ( id . at 76:4

– 7), and after another Community member failed to take his place successfully, Napper was reinstituted as manage r of t he Complex ( see id. at 76:8

– 77:6). Napper remained in that position for about a year, until October of 2008, when the Community ’s leaders reconvened once more to address problems with the Complex’s operations. Like before, the Complex had begun to fail u nder Napper’s management, but this time the leadership was determined to restructure all of the Community’s business operations in the D.C. Metropolitan area. ( See id

. at 78:5

– 79:20.) In a meeting that took place at Young’s house in early October of 2008 , with Napper in attendance, the Community leaders concluded that a new “economic committee” would have to be established to revamp and reorient the Community’s businesses. ( Id

. at 81:16

– 19.) The leaders selected Young, Dr. Lee, and Reginald Clay to comp rise that committee ( see id

. at 79:8

– 14 (Prince Immanuel); see also id. at 173:9

– 25 (Dr. Lee) (explaining that these three members later formed Yah Kai)), and in that same meeting, Napper was permanently relieved of his position as manager of the Complex b y a “consensus of the leadership” ( id

. at 81:13

– 15 (Prince Immanuel) ). As a peace offering to Napper , and also to assist him in recouping his considerable investment in the Complex, Napper was given a full individual ownership interest in the
Co

- Op , whic h was at that time a profitable business. ( Id

. at 82:9

– 18.)21 Notably, although Napper had been an incorporator and/or corp orate officer of ELCC and ELHC, see supra Part III.B , he was not involved in the subsequent creation

or organization of Yah Kai, n or was he involved in the management of the Complex after October of 2008 ( see 3d FOF Tbl. at 129 (A, B) ; July 15, 2015 Trial Tr. at 81:8

– 21 (Prince Immanuel) (“Mr. Napper was offered a position on [the Complex’s restructuring scheme] along with Dr. Lee, M r. Young and Mr. Clay. He refused.”)). Thus, when Yah Kai was managing the Complex between 2009 and 2011, see supra Part III.B , Napper’s only remaining involvement with that business was his sponsorship of a health counter within the facility from which h e sold juices and other products, and which he operated without paying rent or utilities for the use of that counter area. ( See July 15, 2015 Trial Tr. at 99:16

– 25 (Prince Immanuel).)
D. Napper’s Eviction O f Yah Kai And Other Community Members As mentioned above, Napper had signed the original lease for the Complex on December 6, 2000, on behalf of ELCC as the contractual tenant. ( See Original Lease between Hampton Mall as Landlord and Everlasting Life Co

- Op , Pls.’ Ex. 5A .) Napper also acted as a guarantor for ELCC’s obligations along with Cheryl Marshall, another corporate officer of ELCC. ( See id

. ) The lease for the Complex subsequently underwent two modifications

— on June 2, 2002 and October 1, 2004

— to address ELCC’s past

- due rent payments and the Commu nity’s “desire to reconfigure and reduce the size of the” premises leased. (Second Amendment to the Lease, Pls.’ Ex. 5B.) Notably, with respect to the second amendment, Young replaced Cheryl Marshall as the second guarantor for ELCC ( see id

. ), and both h e and Napper signed a promissory note undertaking the obligation to satisfy ELCC’s debt , which amounted to a sum of $172,836.45 in arrears ( see id

. ).22 In June of 2011, approximately two and a half years after Yah Kai took over as the manager of the Comple x, Young reached out to Kingdom Management ( the management company that the landlord used with respect to the Capitol Heights building ) on behalf of Yah Kai in anticipation of the November 2011 expiration of the original lease to inquire about getting a ne w lease for the space that the Complex was using . T he Community ’s leadership reasoned that the Community could continue successfully operating the Everlasting Life Health Complex at the Capitol Heights location with Yah Kai as the leaseholder . ( See July 14, 2015 Trial Tr. at 178:13

– 180:8 (Allen).) However, b ecause ELCC was the contractual tenant under the lease and Napper was lis ted as ELCC’s registered agent , Kingdom Management considered Napper to be the current leaseholder , and it gave him “the first right of refusal” and priority with respect to extension of the existing lease , rather than immediately accepting Yah Kai’s new lease proposal. ( Id. at 189:20

– 190:6.) Napper expressed interest in extending the lease and Kingdom Management then engaged in lease

- related negotiations directly with Napper, who at that point proclaimed himself CEO of ELCC. ( See 3d FOF Tbl. at 92 (A, B) ; see also July 14, 2015 Trial Tr. at 65:19

– 22 (Napper) (“Q: So effectively you self

- designated yourself as the CEO of Everlas ting Life Community Cooperative; correct? A: In this document, yes.”).) A nd a s a result of these negotiations

— which included discussions of the newly

- discovered fact that the landlord and utilities company had been overbilling for utilities payments relat ed to the Capitol Heights location since 2004

— Napper , as ELCC’s designated representative , received a reduced

- rent extension of the original lease for one year, until September 30, 2012

. ( S ee 2011 Lease Extension and Modification, Pls.’ Ex. 6 ; 3d FOF Tbl. a t 88 (A) ; s ee23 also July 15, 2015 Trial Tr. at 8:19

– 9:25 (Napper’s counsel arguing that he does “not disput[e] that Yah Kai paid the utility bills”).) 11 Consequently, on July 13, 2011, Kingdom Management notified Yah Kai that it would not enter into a new l ease for the facility because the existing lease had been extended. ( See Kingdom Management Letter to Yah Kai, Pls.’ Ex. 39.)
On e week later, on July 20, 2011, Napper delivered to Yah Kai, Young, and the Community a ‘Notice to Vacate’ that pertained to the Complex building. ( See 1st Notice to Vacate, Pls.’ Ex. 14A; 3d FOF Tbl. at 75 (A, B) .) The notice stated that Yah Kai’s “rights of occupancy and possession” were terminated, and that all occupants had three days to take their personal effects and exi t the premises at 9185 Central Avenue, Capitol Heights, Maryland. (1st Notice to Vacate , Pls. ’ Ex. 14A .) The notice explicitly warned that no one would “be allowed to remove any of the equipment in the building or inventory” and that “no equipment large or small [would] be allowed out of the building.” ( Id. ) This surprising notification sparked a series of discussions between Napper and the Community regarding Yah Kai’s “continuing use of the space” and the possibility of “additional compensation for . . . Napper[.]” (July 15, 2015 Trial Tr. at 99:8

– 15 (Prince Immanuel).) But by October 15, 2011, attempts to resolve the dispute

11 As noted, Pepco had been systematically over

- billing for utilities in t he Capitol Heights retail space ever since 2004 , when the Complex downsized its space, d ue to a technical glitch in the generation of the utility bills. ( See July 15, 2015 Trial Tr. at 87:6

– 8 (Allen).) Pepco negotiated solely with Kingdom Management on behalf of the landlord regarding the over

- charges ( s ee July 15, 2015 Trial Tr. at 95:1

– 4 (Allen)), and Kingdom Management, in turn, onl y contracted with Napper regarding the Pepco reimbursement ( see id

. 85:23

– 86:9). These negotiations occurred as part of the discussions that Napper was having with Kingdom Management regarding the renewal of the Capitol Heights lease. ( S ee July 14, 2015 T rial Tr. at 195:15

– 20 (Allen).) In October of 2011, Kingdom Management executed a formal settlement agreement with Napper under which the tenant (ELCC) would be paid the rebated amount in the form of an offset against future rent and other payments pertain ing to the extended lease that Napper himself was negotiating. ( See July 15, 2015 Trial Tr. at 91:3

– 92:1 (Allen).)24 “amiably” had failed ( id. at 100:8), and Napper sent a second Notice to Vacate; this one was addressed to Young and Yah Kai, a nd it expressly included “all representatives, subordinates, associates and affiliates of Yah Kai[.]” (2d Notice to Vacate, Pls.’ Ex. 14B; see also 3d FOF Tbl. at 111 (A, B) .) The notice demanded that these parties vacate the premises on or before Novemb er 15, 2011, and, again, it noted that they were not allowed to remove any equipment. ( See 2d Notice to Vacate , Pls. ’ Ex. 14B ; 3d FOF Tbl. at 111 (A, B) .) On the fateful night of November 15, 2011, members of the Community and representatives of Yah Kai arrived at the Capitol Heights facility with moving trucks to remove their personal items and their own equipment and inventory from the premises. ( See July 15, 2015 Trial Tr. at 103:4

– 6 (Prince Immanuel).) Napper called the police, and when the office rs arrived, they informed Ya h Kai’s representatives that no equipment would be allowed to leave the building because Napper was the official the tenant of the space, and that any dispute with Napper would have to be resolved in
court. ( See id. at 102:21

– 10 3:6 (Prince Immanuel); see also id. 184:3

– 18 (Dr. Lee).) Napper also requested that the police physically remove Yah Kai’s representatives, along with Prince Immanuel and the other Community members who had come to assist. ( See July 14, 2015 Trial Tr. at 102:8

– 12 (Napper).) The Community members and Yah Kai representatives complied with the officers’ order to vacate the premises, leaving behind Complex

- related business records and a plethora of other items that Yah Kai had created, purchased , or built du ring its management of the Complex , including furniture , food products, and restaurant equipment. ( See 3d FOF Tbl. at 79

– 82 (A); July 15, 2015 Trial Tr. a t 103:7

– 104:9 (Prince Immanuel); id. 185:25

– 186:9, 187:17

– 188:16 (Dr.25 Lee); Young Dep. 49:18

– 52:2, 98 :12

– 99:6 ; see , e.g., July 14, 2015 Trial Tr. at 91:7

– 14 (Napper) (acknowledging that Yah Kai was not allowed to remove food supplies that it had bought).)
E. Napper’s Unauthorized Use Of The Everlasting Life Mark Since his eviction of Yah Kai and other membe rs of the Community from the facility formerly known as the Everlasting Life Health Complex in November of 2011, Napper has cont inued to operate a food

- service business in that same location in Capitol Heights, Maryland, under the name “Everlasting Life Re staurant and Lounge.” ( See 3d FOF Tbl. at 96, 103, 106, 113

– 14 (A, B) .) Napper is the sole owner and member of a limited liability company called “Fair and Balanced,” which he incorporated in the state of Maryland in November of 2011, and Fair and Balanc ed manages and operates the Everlasting Life Restaurant & Lounge. Fair and Balanced promote s Napper’s food

service business using the Everlasting Life name ( see Everlasting Life Restaurant & Lounge Store

- front, Def.’s Ex. 1; Promotional Events by Fair & B alanced for Everlasting Life, Pls.’ Ex. 22; see also 3d FOF Tbl. at 127 (A, B) ) , even though Prince Immanuel has notified Napper that, by operating a vegan food establishment under the name Everlasting Life in the same location as the prior Everlasting Life Health Complex, he i s infringing on Prince Immanuel’s registered trademark ( s ee 3d FOF Tbl.
at 132 (A, B) ; see also Def.’s Answer to Int., Pls.’ Ex. 23, ¶ 13; Trademark Infringement Notice from P rince Immanuel, Pls.’ Ex. 15 )

. With respect to the tradem ark

- infringement allegations, it is undisputed that, b ack in April of 2004 while the Complex was still under the Community’s control, Prince Immanuel filed a registration for the Everlasting Life service mark with the United States Patent & Trademark Offic e (“USPTO”). ( See USPTO Service Mark26 Registration, Pls.’ Ex. 1, ECF No. 29

- 1, at 2.) The registration became effective on November 22, 2005 ( see id

. ), once the statutorily required publication and examination requirements were satisfied, s ee §12, 15 U.S.C. § 1062 (“Upon the filing of an application for registration . . . the Director shall refer the application to the examiner in charge of the registration of marks [ and] . . . shall cause the mark to be published in the Official Gazette of the Patent an d Trademark Office.”). Pictured below, Prince Immanuel’s registered trademark consists of: (i) the words “Everlasting Life” in large

“ black ” font; (ii) the words “Community Owned Cooperative” in “ green ” font; (iii) the words “Health Complex & Organic Mark et” in “ black ” font; and (iv) a depiction of various fruits and vegetables. (USPTO Service Mark Registration, Pls.’ Ex. 2, at 2.) USPTO Registered Service Mark Ser. No. 78401740

Moreover, the registration document disclaim s any “exclusive right to use [the words] Community Owned Cooperative Health Complex & Organic Market,” but no similar disclaimer was made regarding use of the words “ Everlasting Life. ” ( Id .) The USPTO categorized the service mark’s use as “retail grocery store for natural foods.” ( Id .) According to Prince Immanuel, the Community decided that the mark should be registered in order to protect the Community’s reputation with respect to service and food standards, given that the name “Everlasting Life” has long been associated with the business operations o f the African Hebrew Israelite c ommunity. ( See July 15, 201527 Trial Tr. at 133:13

– 21, 135:24

– 136:8 (Prince Immanuel).) Ben Ami , t he founder of the Community , wrote a publication named “ Everlasting Life ” in 1994 ( see 3d FOF Tbl. at
5 (A, B) ), and that term, which is intended to refer specifically to the concept of “restoring the natural life cycles that an individual has and possesses in order to prolong their life” (July 15, 2015 Trial Tr. at 108:3

– 6 (Prince Immanuel)) , is a fundamental tenet for Community members . Even more important, the name Everlasting Life has become directly associated with the Community’s commercial enterprises and is inextricably intertwined with the Community’s particular service standards in the realm of food establishments. ( See id. at 67:9

– 12, 131:11

– 21, 133:3

– 134:7, 145:23

– 146:8 ( Prince Immanuel ) .) No other food establishment, beyond the one presently under dispute, trades under the name Everlasting Life in the D .C. metropolitan area. ( See 3d FOF Tbl. at 26 (A, B) .)
Because Prince Immanuel was the Community member who registered the Everlasting Life service mark, “no one else could authorize [its] use[.]” ( Id . at 32 (A, B) .) Prince Immanuel permitted the Community, including its legal enterprises, to

u se the registered mark ( see J uly 15, 2015 Trial Tr. at 134:12

– 15 (Prince Immanuel)) , but he did not authorize Napper’s use of the name Everlasting Life in an individual capacity or through Fair and Balanced ( see 3d FOF Tbl. at 102(C)). Furthermore, when Prince Immanuel tendered the infringement notice to Napper in November of 2011, he stated specifically that he was “revoking” any license that Napper had had to use the mark , while he was still a member of the Community. ( See Trademark Infringement Notice from Prince Immanuel , Pls. ’ Ex. 15 .) Thus, any use of the mark by Napper after he left the Community

— which was in “2008, 2009” by his own account (July 14, 201528 Trial Tr. at 46:2)

— was unauthorized. ( See Compl. ¶ 35 (“At no time since his 2008 removal as manager of the Complex did Prince Immanuel authorize Defendant Napper to use said [registered mark].”).)

IV. CONCLUSIONS OF LAW Counts I, II, and III of the c omplaint allege three separate trademark

- related claims against Napper: ( 1 ) federal trad emark infringe ment pursuant to Section 32(1) of the L anham Act, 15 U.S.C. § 1114(1) (Compl. ¶¶ 32

– 39); ( 2 ) unfair competition and false designation of or igin under Section 43(a) if the Lanham Act, 15 U.S.C. § 1125(a) ( id . ¶¶ 40

– 45) ; and ( 3 ) unfair competition in violati on of Maryland common law ( id. ¶¶ 46

– 49)

. In Counts IV through VI , Plaintiffs bring three additional claims under Maryland common law ; specifically, they contend that Napper usurp ed their corporate opportunity ( id . ¶¶ 50

– 54 (Count IV) ) ; breach ed a fiducia ry duty of loyalty ( id . ¶¶ 55

– 59 (Count V) ) ; and converted their physical property ( id . ¶¶ 60

– 64 (Count VI ). Notably, b ecause a violation of a breach of fiduciary duty of loyalty is not a stand

- alone legal claim under Maryland law, th is Court dismissed Co unt V before trial

. ( S ee Order, ECF No. 57, at 2) . T hus , the subject of the bench trial was Napper’s liability for the claims alleged in Counts I , II, III, IV , and VI of Plaintiff’s c omplaint

. As explained in detail below, this Court concludes that Plain tiffs have proven by a preponderance of the evidence that they are the valid owners of the distinctive trade name and mark “ Everlasting Life ” that Plaintiffs used in connection with a food service business in this local geographic area, and that Napper’s u nauthorized use of this name with respect to the Capitol Heights facility after he evicted Plaintiffs from the premises in 2011 is likely to confuse consumers into believing that Napper’s services and29 products are affiliated with , or sponsored by , Plaintif fs and the African Hebrew Israelite

c ommunity . This means that Napper has violat ed both the Lanham Act and Maryland ’s common law of unfair competition, as alleged in Counts I, II, and III. The Court also finds that Plaintiffs have established by a prepon derance of the evidence that Napper intentionally exerted ownership and control over Yah Kai ’s tangible property when he evicted Yah Kai’s representatives and other Community members without permitting them to remove that property ; therefore, the elements of conversion under Maryland common law ( Count VI ) are also satisfied

. However, w ith respect to Plaintiffs’ claim that Napper impermissibly usurped their corporate opportunity in violation of Maryland common law ( Count IV ) , this Court conc ludes that, alth ough Napper act ed egregiously (and perhaps even fraudulently) in renewing the lease in his own name as the “CEO” of
ELCC without the Community’s permission , he never o wed a duty of loyalty to either Plaintiff in this case as a matter of law, and thus, Plai ntiffs’ claim that he usurped their corporate opportunity must be di s missed

. A. By Using The Trade Name Everlasting Life, Napper Has Committed Trademark Infringe ment Under The Lanham Act And Has Engaged In Unfair Competition In Violation Of Maryland Common La w T he Lanham Act provide s a cause of action for “ the deceptive and misleading use of mark s” and “to protect persons engaged in . . . commerce against unfair competition.” §45, 15 U.S.C. § 1127

. The Act’s protection covers “any word, name, symbol, or d evice, or any combination thereof

. . . used by a person

. . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Id

. Furthermore, it is a mark’s “source

- distinguishing ability [,] ” EMI Catalogue P’ ship v. Hill, Holliday, Connors, Cosmopulos Inc ., 228 F.3d 56, 62 (2d Cir. 2000) ( citation30 omitted ) , that lies at the heart of Congress’s interest in protecting authentic tra ders fro m infringers

. B y permitting lawsuits to be brought against those who would seek to pass off their own goods and services as that of another, the Act’s clear purpose is “to ensure that a product’ s maker reaps the rewards of the reputation it has built and to enable consumers to recognize and repurchase goods with which they have previously been satisfied.” EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc ., 228 F.3d 56, 62 (2d Cir. 2000) (citing Qualitex Co. v. Jacobson Prods. Co ., 514 U.S. 1 59, 164 (1995)).
A claim of unfair competition under Maryland common law has the same impetus, and thus, trademark infringement under the Lanham Act and unfair competition under Maryland common law generally turn on the same question : whether
or not the defendant’s use of a mark that is substantially similar to the plaintiff ’ s is likely to confuse the average consumer regarding the source or a ffiliation of the product

. See Breaking the Chain Found., Inc. v. Capitol Educ. Support, Inc., 589 F. Supp. 2d 25, 29 (D.D.C. 2008 ); Putt

- Putt, LLC v. 416 Constant Friendship, LLC , 936 F. Supp. 2d 648 , 659 ( D. Md. 2013) (“ Under the common law of Maryland, the applicable test for unfair competition is the same likelihood of confusion test applied under the Lanham Act.” (citing Scotch Whisky Ass’n v. Ma jestic Distilling Co ., 958 F.2d 594, 597 (4th Cir. 1992)) ). Hence, “the scope of [legal protection and] exclusivity of a trademark is coextensive with the ” degree of confusion likely to result in the consumer’s mind. 3 J. Thomas McCarthy, McCarthy on Tra demarks & Unfair Competition (“McCarthy on T rademarks”) § 2:1 0 (4th ed. 2016)

. M oreover , while trademark infringement claims typically involve rival businesses actively competing in31 the same marketplace , see, e.g., Sears, Roebuck & Co. v. Sears Fin. Ne twork , 576 F. Supp. 857, 863 (D.D.C. 1983) , the consumer confusion that is the hallmark of trademark infringement and unfair competition “can result even if [the] plaintiff’s product is no longer being made” or his services are no longer being offered , Mc Carthy on Trademarks § 23:8; see also Lexmark Int'l, Inc. v. Static Control Components, Inc ., 134 S. Ct. 1377, 1391, 188 L. Ed. 2d 392 (2014) (“[A] competitor who is forced out of business by a defendant ’ s [infringing conduct] generally will be able to sue for its losses[.]”)

. Indeed , to have a potentially viable claim for trademark infringement, a plaintiff need only show that “ consumers in the relevant product market are likely to believe that defendant's products or services come from the same source o r are affiliated with plaintiff. ” Appleseed Found. Inc. v. Appleseed Inst., Inc ., 981 F. Supp. 672, 67 4

– 7 5 (D.D.C. 1997) (citing Foxtrap Inc. v. Foxtrap, Inc. , 671 F.2d 636, 639 (D.C. Cir. 1982) )

. This Court has evaluated the standard trademark

- infringeme nt and unfair competition factors in the context of the dispute between Yah Kai, Prince Immanuel, and Napper that was presented at trial. As explained below, the evidence establishes that Napper has engaged in the unauthorized use of a valid , registered service mark for the distinctive name “Everlasting Life” ( which Plaintiff Prince Immanuel owns ) in a manner that is likely to confuse and deceive consumers into believing that Plaintiffs
sponsor , or are affiliat ed with , Napper’s food

- service establishment . Thus, Plaintif fs are entitled to recover for trademark infringement under S ections 32 and 43(a) of the Lanham Act and also for unfair competition under Maryland common law

.32 1. Napper’s Unauthorized Use Of The Mark And Name Everlasting Life Violate s Sections 32 And 43(a ) Of The Lanham Act Section 32 of the Lanham Act , which is codified as section 1114 of Title 15 of the United States Code , prohibits the use of “ any reproduction, counterfeit, copy, or colorable imitation of a registered mark ” for goods or services “without the con sent of the registrant” in a manner “likely to cause confusion, . . . [or] mistake, or to deceive” the average consumer

. S ee §32, 1 5 U.S.C. § 111 4 ; see also Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 763 (1992) (explaining that a claim under Se ction 32 is designed to “secur[e] to a mark ’ s owner the goodwill of his business ” and to prevent the public perception that he is affiliated with the infringer’s business)

. 12 One who registers a trade mark in the principal register of the US PTO is entitled to sue an alleged infringer under S ection 32. S ee id

. Pursuant to section 7(b) of the Act, r egistration also entitles the registrant to several presumption s: that the mark is valid ; that he is the

owner of the mark ; and that he has the ex clusive right use to that mark

. S ee § 7(b), 15 U.S.C. § 1057(b) . Moreover, “ after five years of continuous use ” of a registered mark, Wal

- Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, 209 (2000) (cit ation omitted ) ,

12 In addition to trademarks, which apply to goods, t he Lanham Act provides for the registration of service marks, see § 3, 1 5 U.S.C. § 1053 , which it defines as “a ny word, name, symbol, or device, or any combination thereof” that a person uses or intends to use “to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown[,]” § 45, 15 U.S.C. § 1127 . For all present purposes, t he Lanham Act treats service marks and trademarks equally

. See § 3, 15 U.S.C. § 1053 (“Subject to the provisions relating to the registration of trademarks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided in this chapter in th e case of trademarks. ”); see also Dranoff

– Perlstein Assocs. v. Sklar , 967 F.2d 852, 855 (3d Cir. 1992) ( applying trademark case law to a service mark infringement claim because, “[a] lthough technically distinct, the terms are often used interchangeably, wi th no significant legal consequences ”). This Memorandum Opinion references both marks, indistinguishably, as well.33 proof of registration is conclusive evidence of ownership , validity, and the right to exclusive use , see § 33(b) 15 U.S.C. § 1115(b)

. T he established elements of a claim for trademark or service mark infringement in violation of Section 32 are ( 1) ownership of a valid mark, ( 2) the mark’s inherent distinctive ness or acquisition of a secondary meaning

— in othe r words, “ an association in the minds of the buying public between the name

. . . and the product itself or the

source [,]” Sears, Roebuck & Co. v. Sears Fin. Network , 576 F. Supp. 857, 861 (D.D.C

. 1983)

— and ( 3) the likelihood of confusion , mistake, or deception in the public created by the defendant ’s use of the mark , id

. Although registration is one means of proving the ownership element , a mark need not be registered with the US PTO in order to

rec eive protection under federal law , nor must the plaintiff who seeks to bring the infringement action be the owner of the mark in question

. This is because Section 43(a) of t he Lanham Act establishes a cause of action for infringement of an un registered mark , and the Section 43(a) option , which requires proof of elements that mirror a claim for infringement under Section 32 , is available to “ any person who believes that he or she is or is likely to be damaged by [a defendant’s] act

. ” See § 43(a), 15 U.S.C. § 1125(a) (permi tting a ny servicer or producer to sue another for the use of “any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods ” ). 13

13 The scope of protection afforded by Section 32 and Section 43(a) is nearly identical; the primary, and perhaps even the sole, distinction between Sections 32 and 43(a) is that “ the former section requires registrat ion of the mark at issue, while the latter does not

. ” Breaking the Chain Found., Inc. v. Capitol Educ. Support, Inc., 589 F. Supp. 2d 25, 29 (D.D.C. 2008) . Thus, the registrant of a registered mark can bring actions under either or both Sections 32 and 4 3(a), see, e.g ., Am. Ass ’ n for Advancement of Sci. v. Hearst Corp ., 498 F. Supp. 244, 261 (D.D.C. 1980); however, the appropriate cause of action for unregistered marks and non

- registrant users of registered marks (including licensees) is Section 43(a), s e e Partido Revolucionario Dominicano (PRD) Seccio nal Metropolitana de Washington

– DC, Maryland y Virginia v. Partido Revolucionario Dominicano, Seccional de Maryland y Virginia , 312 F. Supp. 2d34 It i s clear beyond cavil that, a s the individual registrant of the Everlasting Life service mark , Prince Immanuel is the only plaintiff with the right to recover for trademark infringement under Section 32. See Globalaw , 452 F. Supp. 2d at 25 (“[B]y its very text, a Section 32(1) claim

— unlike a Section 43 claim

— contemplates that a ‘registration’ has occurred and that a ‘registrant’ is seeking certain remedies.”). But Yah Kai is eligible to recover along with Prince Immanuel under Section 43(a) , and because th ese Plaintiffs have established the elements of a federal infringement claim under Sections 32 and 43(a) of the Lanham Act as discussed below , this Court finds that they are entitled to judgment in their favor on Counts I and II of the c omplaint.

a. Plaintiffs Prince Immanuel A nd Yah Kai Own A Valid Mark With respect to the issue of ownership of the mark and name, Plaintiffs maintain that they are the owners and first users of the term “Everla sting Life” in connection with their restaurant and food

- service business , as eviden ced by the Community’s opening of the Everlasting Life Co

- Op in 1995 , and Plaintiff Prince Immanuel’s subsequent registration of the “Everlasting Life” service mark on the federal register in
2005

. ( See 3d FOF Tbl. at 26, 28 (A).) This Court agrees. First of all, there is no dispute that, based on the ev idence presented at trial, Prince I mmanuel registered the Everlasting Life service mark on November 22, 2005

. ( S ee USPTO Service Mark Registration, Pls.’ Ex. 1, at 2 .) P roof of t his registration qualifies as prima facie evidence of Prince Immanuel’s ownership of the mark and his exclusive right to use the

1, at * 11 (D.D.C. 2004) (“Courts have concluded that [Section 43 (a)] provides a cause of action to the licensee of a trademark or tradename against a competitor for improper use of the licensed mark.”); see also Quabaug Rubber Co. v. Fabiano Shoe Co., Inc ., 567 F.2d 154 (1st Cir. 1977) ( permitting a licensee to sue under Section 43( a) to enforce trademark rights); Stanfield v. Osborne Indus. , 52 F.3d 867, 873 (10th Cir. 1995) (“[T]he plaintiff need not be the owner of a registered trademark in order to have standin g to sue” under Section 43(a)).35 mark in commerce , a nd it also means that the mark is presumptively valid

. Thus, i n and of itself, the registration goes a lon g way toward demonstrating t hat Plaintiff Prince Immanuel is the rightful owner of a valid “ Everlasting Life” service mark

. S ee, e.g., Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc. , 419 F.3d 925, 928 (9th Cir. 2005) ( “In essence, the registration discharges the plain tiff ’ s original common law burden of proving validity [and ownership] in an infringement action.” (internal quotation marks and citation omitted))

. Although Yah Kai does not enjoy the presumptions afforded by Prince Immanuel ’ s registration, it derives its ownership in terest in the mark from Prince Immanuel’s license of the mark to it , both individually and as a representative of the Community

. See Partido Revolucionario Dominicano (PRD) Seccio nal Metropolitana de Washi ngton

– DC, Maryland y Virginia v. Partido Revolucionario Dominicano , Seccional de Maryland y Virginia , 312 F. Supp . 2d 1, at * 12 (D.D.C. 2004) (hereinafter

“ PRD ” ) ( holding that plainti ff established ownership under S ection 43(a) solely based

on a non - exclusive license granted to it by registrant , whereas defendant failed to show ownership because he was not authorized to use the mark). In addition , based on the evidence presented at trial, the Court is persuaded that the Community and Prince Immanuel were the first users of the mark and nam e in commerce starting in 1995

— a fact Napper does not contest

— an d , therefore , Plaintiffs hold superior rights at common law that establish their exclusive ownership of the mark and entrust them with the legal power to prevent junior users (such as Napper) f rom infringing upon said mark

. See McCarthy on Trademarks § 16 :1.50 ( “[I]t is not registration, but only actual [first] use of a designation as a mark that creates rights and priority over others.”); see also United36 Drug Co. v. Theodore Rectanus Co ., 248 U.S. 90, 100 (1918) (explaining that “ [t] he general rule is tha t, as between conflicting claimants to the right to use the same mark, priority of approp riation determines the question ” ). Plaintiff Prince Immanuel testified that he was a Community member and leader in 1995 , and that he worked with others to direct the opening of the Community’s first Everlasting Life restaurant

. ( S ee July 15, 2015 Trial Tr. at 61:20

– 63:18

. ) A nd although Yah Kai did not exist as a separate legal entity back then, it can still be deemed a priority user based on the uncontroverted fact that the C ommunity established Yah Kai ( which is comprised solely of Community members ) for the very purpose of acting as the Community’s successor

- in

- interest with respect to using the Everlasting Life mark in conjunction with the operation of the Everlastin g Life Health Complex business , and Yah Kai’s exclusive use of the mark beginning in 2009 undoubtedly predates Napper’s formation of the Everlasting Life Restaurant & Lounge (through Fair and Balanced) in 2011. 14 Notably, t he Lanham Act provides that an alleged infr inger, such as Napper , may seek to challenge the ownership and validity of a registered mark pursuant to the statutory and equitable de fenses and defects laid out in s ection 33

. See § 33, 15 U.S.C. § 1115 ; s e e also Iowa Farmers Union v. Farmers ’ Educ. & Co

- Op . Union , 247 F.2d 809, 818 (8th Cir. 1957) (explaining that the defendant bears the burden of proof with

14 When analyzing priorit y of use in order to determine ownership rights in a mark or name at common law, a user can rely on his or her predecessor

- in

- interest’s first use to establish seniority (and superiority) of rights over a junior user. See , e.g., SCM Corp. v. Langis Foods Ltd ., 539 F.2d 196, 198 (D.C. Cir. 1976) (plaintiff was the successor to the original plaintiff, who in turn was the successor

- in

interest to the first user of the mark in the United States, and was allowed to rely on his predecessor’s first use); JDR Ind us. v. McDowell , 121 F. Supp. 3d 872, 883 (D. Neb. 2015) (priority of use was established “ through an unbroken chain of use in commerce by [plaintiff] and its predecessors

- in

inter est[‘s first use]”). Here, the Court finds that Yah Kai is the successor

- in

- interest to the Community with respect to the management of the Complex.37 respect to asserted statutory defenses to a Lanham Act infringement claim); Paleteria La Michoacana, Inc. v. Productos Lacteos Tocum bo S.A. De C.V ., 79 F. Supp. 3d 60, 73 (D.D.C. 2015) ( stating that the defendant bears burden of proving acquiescence, laches, and equitable estoppel). This Court construes Napper’s trial testimony and written submissions as an attempt to launch such a challenge : he clai ms , among other things, that he used the Everlasting Life mark prior to Prince Immanuel’s registration of it ; that equitable principles of acquiescence, estoppel, and laches bar a claim of infringement ; and that Prince Immanuel has aban doned the mark. ( Se e Def.’s COL at 8

– 12 ; 2d Am. Answer, ECF No. 21, at 6.) See also §§ 33(b)(2), (b)(5), (b)(9), 15 U.S.C. § § 1115(b)(2), (b)(5 ) , (b)(9). Th is Court acknowledges Napper’s valiant effort to rebut the presumption that the law affords to Prince Immanuel’s registration certificate, but it finds tha t Napper has fallen far short of satisfying his burden of proof with respect to establishing any of these affirmative defenses , for several reasons

. First of all, i n order t o satisfy the elements of a p rior use defense, Napper must show , at a minimum: “(1) that [he] adopted the mark without knowledge of plaintiff ’ s

. . . use; (2) that [his] use predates plaintiff ’ s registration; [and] (3) that its use in the disputed area has been continuous since that time [.] ” Foxtrap, Inc. , 671 F.2d at 640

. Napper insists that he has been using the phrase “Everlasting Life” in commerce since 1995 with respect to an unincorporated food business that he says h e owns in his personal capacity ( s ee 3d FOF Tbl. at 125 (A ), 134 (B); see also July 1 4, 2015 Trial Tr.
at 140: 17

– 148:22 (Napper)) , but t his Court deems that assertion of fact simply not credible , and regardless , th e Court finds that Napp er ’ s story fails to satisfy the elements of a prior use defense , because the record evidence clearly de monstrates that Napper38 knew that C ommunity members, including himself and Prince Immanuel, were using the mark in the operation of the Co

- Op and Complex at or around the same time as he claims to have adopted it

. Napper testified as much: he expressly stated that , wh en he allegedly adopted the name Everlasting Life for his separate individual business , he was managing t he Everlasting Community Co

- Op in the same space and at the same time

. ( See July 14, 2015 Trial Tr. at 140:17

– 148:22 (Nap per) (claiming he ran a busi ness from 1 995 until 2000, which operated in the rear of the Co

- Op and within the Complex

a s operated by the Community ) .) Thus, Napper has failed to demonstrate that he was unaware of the Community’s use of the name, as the pri or use defense requires. W hat is more , the record also reveals that Napper’s alleged personal use of the mark has not been continuous , insofar as he was removed from management of the C omplex (the purported homes base of his personal business) in February of 2008 , and he sold t he
D.C. Co

- O p in 2008 or 2009

. ( S ee id . at 74:25

– 76:9, 128:5

– 11 (Napper) ; see also supra Part III.C (explaining that Nap per was not involved in the Co

- Op and Complex from 2004 to 2007, and from 2008 to 2011 )

. ) This Court is also not persuaded that the equitable pri nciples that Napper seeks to rely upon to defend against the infringement claim s are available to him in the context of this case. T o establish acquiescence , for example, Napper must show that

“ the plaintiff actively represented [he] would not assert a ri ght or claim [,]” Angel Flight of Ga., Inc. v. Angel Flight Am., Inc ., 522 F.3d 1200, 1207 (11th Cir. 2008) (citation and quotation omitted) , and similarly, to establish laches, a defendant needs to demonstrate that “plaintiff had knowledge of defendant ’ s u se of its marks ” and

“ inexcusably delayed in taking action with respect thereto, ” McCarthy on Trademarks39 § 31:1 ( citation and quotation marks omitted )

. See generally Angel Flight of Ga

. , 522 F.3d at 1207 ( “The difference between acquiescence and laches is that laches denotes passive consent and acquiescence denotes active consent.” (internal quotation marks omitted) (quoting Coach House Rest., Inc. v. Coach & Six Restaurants, Inc. , 934 F.2d 1551, 1558 (11th Cir. 1991) ) ) . But Napper’s evidence at trial

— whi ch consisted exclusively of his own testimony

— did not establish that Prince Immanuel ever consented to Napper’s individual use of the mark in connection with his own businesses , either actively or passively; and indeed, P laintiffs ’ proved that the opposit e

was true : Prince Immanuel immediately sent Napper a cease

- and

- desist letter on the eve of the eviction when he realized that Napper intended to take over the Complex and operate it as his own ( see Trademark Infringement Notice from Prince Immanuel, Pls.’
Ex. 15 ) , and Prince Immanuel also credibly testified that he was unaware that Napper was operating an independent business and was using the Everlasting Life mark in connection with his personal (garage

- founded ) business ( see July 15, 2015 Trial Tr. at
57:1

– 14 (Prince Immanuel) )

. This Court’s conclusion that Prince Immanuel did not acquiesce to Napper’s personal use of the mark and did not even know that Napper was using it in connection with his own individual business interests (assuming that he was) is e ntirely consistent with the record facts regarding the Community’s fervent belief in collective ownership ( see, e.g., July 15, 2015 Trial Tr. at 55:25

– 56:12 , 106:3

– 11 (Prince Immanuel); id. at 162:11

– 24 (Dr. Lee)) , and it also credits Napper ’s own admissio n that he never told any member of the Community about his alleged independent business ( s ee 3d FOF Tbl. at 97 (A, B) (“Napper never disclosed to members of the [Community] that he was operating a business in his garage

. ”))

.40 It is also clear that any expre ss or implied license that could possibly have been granted to Napper when he used the mark to manage the Community’s business enterprises has been revoked

. ( S ee Trademark Infringement Notice from Prince Immanuel , Pls. ’ Ex. 15 (“ [S] ince we are no longer in partnership I am hereby revoking your license to use the Everlasting Life trademark effective immediately in any locale or medium.” )

. ) A nd given that the “gravamen” of estoppel is an “intentional ly misleading representation [] ” regarding plaintiff’s abstention from suit upon which the defendant relies to his d etriment , Petrella v. Metro

- Goldwyn

- Mayer, Inc ., 134 S. Ct. 1962, 1977 (2014) , there is no legal or evidentia ry basis for Napper’s suggestion that Prince Immanuel has abandoned the mark by licens ing it to the Community without any exercise of oversight or control , or that , by virtue of his actions, Prince Immanuel should somehow be estopped from asserting his right to exclusive use of the mark now ( see Def.’s COL at 9

– 13 ). To the contrary, Prince Immanuel testified that , in hi s r ole as the local Community leader, he maintained continuous oversight o ver the Everlasting Life Health Complex’s operations and m anagement from its inception until Plaintiffs ’ eviction in 2011 ( see J uly 15, 2015 Trial Tr. at 129:8

– 130:1) , and that he authorized various C ommunity members to use the mark precisely and solely because of their assigned roles with respect to the businesses and their adherence to the Community’s service and food preparation standards ( see id

. 146:3

– 8)

. Nor did Yah Kai abandon its use of the mark at any point during its management of the Complex; rather, as the Community’s representative, Yah Kai received Prince Immanuel’s blessing to use the mark whe n that legal entity was formed in 2009 ( see July 15, 2015 Trial Tr. at 134:13

– 15 (Prince Immanuel) ; Young Dep. 57:2

– 58:13 ), and Plaintiffs brought this41 infringement suit against Napper immediately after he evicted them and other members of the Community from the premises and be gan operating the restaurant and using the

ma rk independently. ( See generally Compl.) Thus, this Court finds that Napper’s contention that Plaintiffs represented or asserted (e ither impliedly or expressly ) that they would not pursue a legal action again st him for his unauthorized use of the mark is baseless

. And not only has Napper failed to
meet his burden of proving any of the statutory defenses raised, but the presumption s of ownership, exclusive use, and validity that Prince Immanuel ’ s proof of regi stration of the term “Everlasting Life” raises are sufficient to establish that the Plaintiffs owned a valid trademark and had an exclusive right to use that mark in commerce with respect to the s ervices provided by the Complex. b. The Term Everlasting Life I s Inherently Distinctive In This Context Plaintiffs also e st a blished by a preponderance of the evidence presented at trial that the phrase “Everlasting Life” is entitled to trademark protection because it is inherently distinctive when used in re lation to a retail food

- service establishment

. See Blinded Veterans Ass’n v. Blinded American Veterans Foundation , 872 F.2d 1035 , 1039 ( D.C. Cir. 1989) ( “ T he existence and extent of trademark protection for a particular term depends on that term’s inherent distinct iveness

. ” )

. As a general matter, all word s or phrase s used as marks with respect to goods and services can be characterized as fitting into one of four categories of distinctiveness ( arbitrary or fanciful ; suggestive ; descriptive , or generic ) and , accord ingly , are deemed entitled to stronger or weaker trademark protection. See i d

. Arbitrary marks are words

or phrases that in no way describe or ha ve any “intrinsic connection” to the particular42 product/service it is meant to identify , and thus , are inhere ntly distinctive. I d

. at 1040 ;
see, e.g. , Appleseed Found. , 981 F. Supp. at 675 (finding the mark “Appleseed” arbitrary when used in connection with a non

- profit’s legal “public advocacy” services )

. Similarly , while suggestive marks do imply some characteristic or quality of the product/service to which they are attached , i f the consumer must use imagination or any type of multi

- stage reasoning to understand the mark’s signif icance, then that mark , too, is considered sufficiently distinctive to be afforded protection from infringing use. See Blinded Veterans , 872 F.2d at 1040 (citation omitted). Descriptive marks are deserving of less protection under the Lanham Act because they directly identify or describe some aspect, characteristic, or quality of the product/service to which they are affixed , in a straightforward way that requires no exercise of imagination to be understood

. See id

. at 1039

– 40 (explaining that, “ [b] ecaus e descriptive terms are thus not inherently distinctive, they acquire trademark protection only upon proof of secondary meaning

— i.e

. , upon proof that the public recognizes only one source of the product or service ” (citing Kellogg Co. v. National Biscuit C o. , 305 U.S. 111, 118 (1938))

. And t he marks that receive the least protection under the Lanham Act (none) ar e those that are deemed

“ generic ” insofar as they directly “refe r [ ] to the genus of which the pa rticular product is a species. ” Park ‘ N Fly, Inc. v. Dollar Park & Fly, Inc

. , 469 U.S. 189, 194 (1 985) ; see,
e.g. , Blinded Veterans , 872 F.2d at 1041 (mark “Blinded Veterans” was generic when used to “refers to former members of the armed forces who have lost their vision”);
Nat ’ l Conf. of Bar Exam ’ rs v. Multistate Legal Studies , 692 F.2d 478, 488 (7th Cir. 1982), cert. denied , 464 U.S. 814 (1983) (mark “Multistate Bar Examination” was generic when used to refer to “a test prepared for determining the competency of43 applicants to t he bars of the several states”)

. “ Because a generic term denotes the thing itself, it cannot be appropriated by one party from the public domain [, and] it therefore is not afforded trademark protection even if it becomes associate d with only one

source. ” Blinded Veterans , 872 F.2d at 1039. 15
It is well established that the registration of a mark is prima facie evidence of its distinctiveness, s ee Am. Ass ’ n for Advancement of Sci. v. Hearst Corp

. , 498 F. Supp. 244, 256 (D.D.C. 198 0) ; thus, by virtue of Prince Immanuel’s registration, the mark

“ Everlasting Life ” is presumptively distinctive

. This means that Napper bears the burden of rebutting this presumption by a preponderance of the evidence ; to carry this burden, he must show t hat , despite its registration, the mark was (or has become) generic , and therefore, is not entitled to protection. See Colt Def. LLC v. Bushmaster Firearms, Inc

. , 486 F.3d 701, 705 (1st Cir. 2007) ; Yellow Cab , 419 F.3d at 928

. In this regard , Napper arg ues tha t the phrase “ Everlasting Life ” is a generic term that is commonly “ u sed by religious organizations and other spiritual groups” (Def.’s COL at 13), and thus it is not entitled to trademark protection ( see id

. at 13

– 15 )

.

15 In this Circuit, “the test for genericness is whether the public perceives the term primarily as the designation of the article [

. ] ” Blinded Veterans , 872 F.2d at 1041. “For example, ‘washing machine’ is a generic term; ‘MAYTAG’ is a [protectabl e] trademark for a particular brand of washing machine.” Heroes, Inc. v. Boomer Esiason Hero's Found., Inc. , No. CIV. A. 96

- 1260, 1997 WL 335807, at *2 (D.D.C. June 6, 1997), as amended , No. CIV.A. 96

- 1260, 1997 WL 350097 (D.D.C. June 16, 1997)

. When common ly

- used words are selected to designate the source of a product or service, courts have found the “Who are you

— What are you?” test particularly instructive to distinguish generic from non

generic terms. Under this analysis, “[a] mark answers the buyer’s qu estions ‘ Who a re you? Where do you come from?’ ‘ Who vouches for you?’” McCarthy on Trademarks § 12:1 (emphasis added). By contrast, “ the [generic] name of th e product answers the question ‘ What are you?’” id. (emphasis added). So, for example, “APPLE is a generic name for the edible fruit of the apple tree, but is a trademark for computers[,]” and “BICYCLE is a generic name for the two

- wheeled vehicle, but has been a trademark since 1885 for playing cards[.]” Id

. ; see also id. (providing several other exa mples, including that “CATERPILLAR is a generic name for the larva of a butterfly, but is a trademark for earth moving equipment” and “SANDALS is a generic name for warm

- weather footwear, but is a service mark for a chai n of Caribbean resort hotels”).44 Napper’s argument misses the mark, however, because even if “everlasting life” is

c o mmon phrase in religious circles, the generic nature of a term for the purpose of the trademark

- infringement analysis must be evaluated in the context of the service or goods to which the term is being applied

. S ee McCarthy on Trademarks § 12:1 (“ [T ]o
prope rly be called an unprotectable ‘generic name’ in trademark law, the designation must be the name of the same product or service which it is alleged to identify the source of. Certainly, a term can be a generic name of one thing but be a valid trademark for some other product .” (emphasis added) ) ; s ee, e.g. , Eurotech, Inc. v. Cosmos European Travels Aktiengesellschaft , 213 F. Supp. 2d 612, 620 n.16 (E.D. Va. 2002) (rejecting as fallacious the argument t hat because t he word “Cosmos” is commonly

used to identify the universe, it cannot be a used as a non

- generic m ark for travel agency services)

. N apper does not ( and apparently cannot) contend that the term

“ Everlastin g Life ” is commonly used in the restaurant or food

- services industry , or that
t he public typically perceives that phrase as primarily designating restaurant services. And, i ndeed, it is precisely because th is Court finds that the phrase “ Everlasting Life ” is not ordinarily associated with the provision of food ( a nd is , at most , suggestive of
vegan, healthy meals) that the Court concludes that Napper has failed to rebut the presumption that the mark is inherently distinctive with respect to the products and services of a vegan restaurant or grocery store and i s therefore is entitled to trademark protection

. See Eurotech, Inc. , 213 F. Supp. 2d at 620 n.16 (noting that “s imply because a word is commonly

- used does not render it generic. Rather, many commonly

used terms receive Lan ham Act protection within a particular industry: ‘Delta’ faucets, ‘Polo’ clothing, and ‘Apple’ computers ”) ; accord Appleseed Found. , 981 F. Supp. at45 675 n.3 (“[T]hird party uses [outside plaintiff’s market]” do not “weaken[] the distinctiveness of pla intiff ’ s mark within [its] field ” of use ).

c. There Is A Strong Likelihood That Consumers Will Believe That Plaintiffs Sponsor, Or Are Affiliated With, Napper’s Goods And Services The most salient consideration with respect to the trademark in f ringement claims at issue here is whether Napper’s continued use of the “Everlasting Life” mark risks confusing the public. See Two Pesos, Inc ., 505 U.S. at 780 (Stevens, J., concurring) (“[T]he test for liability is likelihood of confusion: ‘[U]nder the Lanham Act [§ 43(a)], the ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks.’” (second and third alterations i n original) (citation omitted))

. Notably, as mentioned, there need not be direct competition between Plaintiffs and Napper in order for “source confusion” to arise; rather, this unf ortunate circumstance

occurs when ever “consumers in the relevant product market are l ikely to believe that defendant’ s products or services come from the same source or are affiliated with plaintiff. ” Appleseed Fou nd. , 981 F. Supp. at 674

– 75 (citation omitted) ; see AMP Inc. v. Foy , 540 F.2d 1181, 1184 (4th Cir. 1976) (“[T]he prot ection received by a registrant’ s trademark is not limited to cases of unfair competition, and exists between parties not in competiti on with each other.”). T he Lanham Act ’s aim is to prevent the public “from being confused as to the sponsorship of goods or services purchased [,] ” which protect s the mark’s owner from being “harmed by such popular confusion because inferior service by the in fringer might be attributed to the registrant. ” AMP , 540 F.2d at 1184; accord Burger King Corp. v. Mason , 710 F.2d 1480 , 1493 ( 11th Cir. 1983) (same)

. A nd that kind of harmful confusion is precisely what Prince Immanuel and Yah Kai say is happening here.46 Specifically, Plaintiffs contend that Napper is selling his product s and services using a copy of Plaintiffs’ distinctive mark ( see Pls.’ COL at 1 0

– 1 1) ; is operating in the “exact same facility with the exact same signage” ( id

. at 12) ; and is availing himself of Plaintiffs’ prior business, including its “ employees, its good will, its menus, its

c ustomer lists and its equipment ” ( id

. at 11 ) , all whil e intentionally concealing his ousting of the Community to freeride on Plaintiffs’ reputation ( see id

. at 11

– 12). ( See also July 15, 201 5 Trial Tr. at 131:11

– 133:21 (Prince Immanuel testifying that his mark

was intended to protect Plaintiffs’ business reputation and , among other things , ensure that its use by third

- parties is conditional upon strict adherence to the well

- known “standards an d practices” associated with their products and services).) Based on the evidence presented at trial and t he various factors that D.C. Circuit precedent establishes for evaluating the existence and degree of consumer confusion , this Court wholeheartedly ag rees. There are seven factors that the D.C. Circuit has found relevant to an ev aluation of consumer co nfusion for Lanham Act purposes: “(1) the strength of the plaintiff's mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) evidence of actu al confusion; (5) the defendant’ s purpose or reciprocal good faith in adopting its own mar k; (6) the quality of defendant’ s product; and (7) the sophistication of the bu yers. ” Globalaw , 452 F. Supp. 2d at 48 (citations omitt ed)

.

“ [N] one of [these] is individually determinative and not all

. . . must be given equal weight or be present in every case [

. ] ” Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo SA. De C.V. , 69 F. Supp. 3d 175 , 198 (D.D.C. 2014)

. Here, the Court
fin ds that mark strength , the degree of similarity between the protected mark and the47 allegedly infringing mark, and the products’ proximity are particularly relevant factors ,

a nd each compels the conclusion that Na pper’s continued use of the “Everlasting Life” mark creates a significant risk of consumer confusion, for the following reasons. First and foremost , the “Everlasting Life” mark is a strong brand that the public has long identified with the food products that the Afri can Hebrew Israelite community has introduced into the marketplace

. ( See supra Part IV.A.1.b ; see also July 15, 2015 Trial Tr. at 131:11

– 21, 133:1

– 8 (Prince Immanuel ) ( explaining that Everlasting Life “has become known to be attached to” the Community an d its “commercial enterprise [ s ] ” in the healthy

- food realm )

. ) “[T]he relative strength of a mark is determi ned by weighing two aspects of strength: (1) Conceptual Strength: the placement of the mark on the spectrum of marks; and (2) Commercial Strength: t he marketplace recognition value of the mark.” McCarthy on Trademarks § 23:40:50. T he mark Everlasting Life is conceptually strong because it is inherently distinctive in the context of a vegan food

- serve establishment, as the Court has already c oncluded. S ee supra Part IV.A.1.b

. This mark is also commercially strong, because the Court believes the uncontroverted testimony of Plaintiffs ’ witnesses regarding the public’s recognition of the Community and its healthy food standards in relation to the term and mark Everlasting Life. ( See July 15, 2015 Trial Tr. at 131:11

– 21, 133:1

– 8 (Prince Immanuel).) In addition, the similarity between the Community’s mark and Napper’s trade

name is unmistakable . T he phrase “Everlasting Life” is the key distinguishing feature of Napper’s restauran t name ( “Everlasting Life Restaurant and Lounge” ), which means that the name that Napper has selected is virtually identical to Yah Kai’s trade name48 “Everlasting Life” and Prince Immanuel’s service mark, “Everlasting Life Health Complex. ” See AutoZone, Inc. v. Tandy Corp

. , 373 F.3d 786, 795 (6th Cir. 2004) (“ The similarity of the senior and junior marks is a factor of considerable weight.” (internal quotation marks and citation omitted) )

. To be sure, the logo that Napper apparently includes on his advertising materials does not include the words “Community Owned Cooperative” or the phrase “Health Complex & Organic Market,” as appears on the composite mark that Prince Immanuel registered , and the fruits and vegetables that are part of Prince Imm anuel’s mark have been omitted . ( See Def.’s COL at 8; see also July
14 , 2015 Trial Tr. at 39:1

– 6 (Napper’s counsel arguing “my client has never used that service mark. . . . He’s using the term ‘Everlasting Life,’ different fonts, no fruits, nuts and be rries”)). B ut Napper is wrong to insist that these differences thwart a finding of consumer confusion for the purpose of the infringement analysis , because i t is well established that “ [ e ] xact similitude is not required between defendant [ ’ s ] mark and the [pl aintiff]’s registered mar ks for there to be infringement. ” U.S. Olympic Comm. v. Int'l Fed'n of Body Builders , No. 81

– 969, 1982 WL 917454, at *13 (D.D.C. Dec. 1, 1982)

. This is because , “[i]f the ‘dominant’ portion of both marks is the same, then confusio n may be likely, notwithstanding peripheral differences.” McCarthy on Trademarks § 23:44 . And in any event, “the comparison between marks is made in light of what happens with consumers in the marketplace, not by viewing the marks side

- by

- side in a vacuu m.” Paleteria La Michoacana , 69 F. Supp. 3d at 198.
W hen t his Court considers the realities of the consumer experience , i t has no doubt that all but the most discerning consumer would easily mistake Napper’s mark and restaurant for (a perhaps update d version of ) Plaintiffs’ Everlasting Life Health49 Complex

. And this is especially so given that Napper’s vegan food business is operating in the same physical space as the former Complex, and thus, is in the closest possible proximity to Plaintif fs’ prior products and services

. See Brennan ’ s, Inc. v.
Brennan ’ s Rest., L.L.C. , 360 F.3d 125, 134 (2d Cir. 2004) (“In the restaurant industry, especially where individual restaurants rather than chains are competing, physical separation [or lack thereof] seems particularly significant to the inquiry into consumer confusion.”)

. Furthermore , it appears that Napper actually has sought to capitalize on the customer confusion that this similarity and proximity undoubtedly creates: when the Community and Yah Kai wer e operating the Complex , the name “Everlasting Life” was prominently displayed on a sign on the outside of the Capitol Heights building; Napper retained that same sign

— unaltered

— when he took over the business in 2011, and has utilized it in advertising the Restaurant & Lounge. ( See July 15, 2015 Trial Tr.
at 141:25

– 143:5 (Prince Immanuel); see also Everlasting Life Restaurant & Lounge
Store

- front, Def.’s Ex. 1; Promotional Events by Fair & Balanced for Everlasting Life, Pls.’ Ex. 22 .) Und aunted, Napper’s counsel has struggled valiantly to convince this Court that there is nothing untoward about Napper’s continuation of a restaurant business that , in Napper ’ s view, he himself created

. ( See, e.g. , Def.’s COL at 15 (“[Napper] is providing the same go ods and services he has always provided to the public. . . . The public is purchasing the same goods, from the same business, and the same proprietor, as it always has.”); July 16, 2016 Trial Tr. at 33:23

– 34:1 (Napper’s counsel) (“There’s no evidence of de ception or any attempt to mislead the public in this case. My client has been doing the same thing for the past 20 years.”); id. at 35:13

– 14 (“My client is simply50 continuing to operate his business.”).) But f ar from exonerating Napper with respect to his audacious use of the same protected name that Plaintiffs previously had used to sell similar products , defense counsel’s arguments only served to underscore the point. For example, counsel repeatedly emphasized tha t, rather than establishing a new, compet ing enterprise , Napper is currently operating “the same business . . . [that has] been in the

same place using the same name that was being used prior to the trademark registration” (July 14, 2015 Trial Tr. at 39:17

– 22 (emphasis added) ) , which , counsel

ass erted, means that “ [t]he food originates from the same place it always h a[s] ” ( id . at 42:15

– 17). ( See also Def.’s COL at 19 (“[T]he customers are getting the same products from the same business [.] ”).) C ounsel apparently took this tack in an a ttempt to dispel any notion tha t there are food

- quality differences now that Napper is at the helm , but
t his declared sameness also amounts to an admission (and conclusive evidence) of the fact that Napper’s continued use of the name “Everlasti ng Life” creat es an untenable risk of confusi ng the public into believing that the African Hebrew Israelite community still sponsors, or is affiliated with, the goods and services being offered

. Put another
way, no matter how astute vegan consumers might be when it comes to evaluating marketed food products , fans of the Community’s former Complex have no reason to believe that the source of the food that Napper is currently selling at the Capitol Heights facility has changed

— even though it has

— and the fact that the menu and other offerings have largely remained the same , makes it more likely that consumers will be confused about who is vouching for the goods and services offered at that facility, not less

. See McCarthy on Tradem arks § 23:20:50 (“[A]s the degree of similarity of the goods of the parties increases, ‘the degree of similarity [of the marks] necessar[y] to51 support a conclusion of likely confusion declines.’” (first and second alterations in original) (quoting Fossil I nc. v. Fossil Grp ., 49 U.S.P.Q.2d 1451 (T.T.A.B. 1998)) )

. The bottom line is this: the fact that Napper is now using a virtually identical

name as the distinctive, protected service mark that Plaintiffs own and previously used in order to market virtuall y identical products and services from the exact same location where Plaintiffs once operated is a clear indication that the average consumer is likely to be confused into believing that Napper ’s Everlasting Life Restaurant and Lounge is affiliated with , or sponsored by , the Community and Plaintiffs. And because of the
Court’s near certainty that consumers will (mistakenly) think that Napper’s food

- service business is one of the enterprises that is owned and operated by the African Hebrew Israelites, th is Court finds that Napper has committed trademark infringement in violation of the Lanham Act, as Plaintiffs’ mainta in in Counts I and II of their

c omplaint

. 2. Napper’s Conduct Also Amount s To Unfair Competition Under Maryland Common Law Th e Court’s analysis of Plaintiffs’ Lanham Act claims compels the co nclu sion that Napper has also violated the unfair competition principles of Maryland common law. “ T he essential element of unfair competition is deception, ” GAI Audio of New York, Inc. v. Columbia Broad. Sys., Inc ., 340 A.2d 736, 748 ( Md. Ct. Spec. App. 1 975) , and t he cause of action extends to “all cases of unfair compe tition in the field of business ” under the principle that “no one, especially a trader, is justified in damaging or jeopard izing another ’ s business by fraud, deceit, trickery or unfair methods of any
sort [,] ” Baltimore Bedding Corp. v. Moses, 34 A.2d 338, 342 ( Md. 1943)

. Consistent52 with this view , Maryland courts have broadly construed the type of conduct that can trigger liability for the tort of unfair competition , noting that [w] hat constitutes unfair competition in a given case is governed by its own particular facts and circumstances. Each case is a law unto itself, subject, only, to the general principle that all dealings must be done on the basis of common honesty and fai rness, without taint of fraud or deception. Wherever, in any case, these elements of fair trade are found to be lacking equity will grant protecti on against the offending party. Id

. Significantly for present purposes , Maryland courts have long held that

“ persisting in the use of the corporate name [of another] without modification of any kind, when, before it started operations, it had been given reason to believe through timely protest that its continued use of the name would probably create confusion

a mo unting t o unfair competition” is an un equivocal indication of wrongful and deceitful intent , and thus , warrant s liability for unfair competition

. Id

. at 345. It is also clear beyond cavil that a claim for unfair competition under Maryland common law ul timately rests upon the same finding of “likelihood of confusion” that is required under the Lanham Act , as previously discussed

. See Putt

- Putt, LLC v. 416 Constant Friendship, LLC , 936 F. Supp. 2d 648, 659 (D. Md. 2013) (“Under the common law of Maryland , the applicable test for unfair competition is the same likelihood of confusion test applied under the Lanham Act.” (citing Scotch Whisky Ass’n v. Majestic Distilling
Co. , 958 F.2d 594, 597 (4th Cir. 1992))). This Court has no doubt that the facts and circumstances of Napper’s business practices as laid out in this Court’s findings of fact amount to unfair competition in violation of Maryland common law , and this conclusion is rooted, i n particular, in the
Court ’ s de te rmination that Plaintiffs have shown a likelihood of confusion arising from53 Napper’s unauthorized use of the protected mark and name “ Everlasting Life ” after he evicted t hem from the premises that once housed the Complex. See supra Part IV.A.1.
T hus , judgment wil l be entered in Plaintiffs’ favor with respect to Count III of the complaint

. B. Napper Converted Plaintiff Yah Kai’s Property When He Evict ed Them From The Capitol Heights Location In addition to making the trademark infringement

- related allegations discus sed above , Plaintiffs have also accuse d Napper of having convert ed their property when he evicted them and other members of the Community from the Capitol Heights facility. ( See Compl. ¶¶ 60

– 64 (Count VI) )

. For the reasons explained below , and b ased on t he evidence pr esented at trial, th is Court easily finds that (at least with respect to Yah Kai ) Plaintiffs’ conversion c ontention has been sustained.
1. Napper Intentionally Exerted Control Over Tangible Items Yah Kai Owned, And He Did So Without Yah Kai’s Consent Under Ma ryland law, t he tort of conversion consists “ of two elements [:] a physical act combined with a certain state of mind. ” Darcars Motors of Silver Spring, Inc. v. Borzym , 841 A.2d 828, 835 (Md. 2004)

. R egarding the physical act , “any distinct act of o wnership or dominion exerted by one person over the personal property of another in denial of his right or inconsistent with it ” will qualify, and such act “ can occur either by initially acquiring the property or by retaining i t longer than the rightful
po ssessor permits. ” Id

. at 835

. As for the required mental state, the intent to exercise dominion or control over the property is both necessary and sufficient

. See i d

. at 836

. Moreover, notably, “[t] he defendant may have the requisite intent even though he or she acted in good faith and lacked any consciousness of wrongdoing, as long as there was an intent to exert control over the property. ” I d.54 During the bench trial, Napper was adamant that , because he “ originally purchased ” equi pment for the Complex when he managed it prior to 2009 ( July 14,
2015 Trial Tr. at 90:12

– 19 (Napper) ) , his refusal to let Plaintiffs take anything with them when he took over the Complex in November of 2011 , and /or his failure to reimbu rse Yah Kai for the equipment they had pu rchased for the facility, did not amount to conversion

. ( S ee, e.g., i d . at 105:9

– 106:11 (when asked if he had compensated Yah Kai for the equipment t hat he made them leave in the building during the eviction, Napper said “ I didn’t feel the need to reimbur se Yah Kai for anything that was there before 2008 that was still there in 2011 even though it may have b een different, new or otherwise ” ) )

. Napper has repeatedly asserted that he was the rightful owner of all of the equipment, inventory , and food supplies that were i n the Complex in November of 2011 , despite the fact that Yah Kai had made significant property purchases during its management tenure

. ( S ee Napper Dep. 80:2

– 7 (“Q: And it says, ‘You are not to remove any equipment from the building.’ A: That’s correct. Q: And why did you put this

— A: Because when they took the business from me, the business came with equipment.” ); see also Everlasting Life Health Co mplex Financial Records for 2009

– 2015, Pls.’ Ex. 31 ( showing that Yah Kai made multiple purchases for food, office supplies, fu rniture and equipment between November 4, 2009 and August 2 , 2 011 ) .) State d generously, Napper apparently believes that he was entitled to take o ver the entire premises in 2011, along with all equipme nt, inventory, and food products therein, without compens ating Yah Kai, the Community , or the members who had purchased items between 2009 and 2011, because the same kind of uncompensated ousting had happened to him when he was removed from his position as manager of the55 Complex against his will in 2008

. ( See July 14, 2015 Trial Tr. at 104 :20

– 106:16 (Napper)

. ) However, this Court finds that, o nce again, Napper ’s vision of his rights and entitlements is in consistent with the law and is not supported by the facts that were established during trial. For example, this Court cannot begin to assess Napper’s contention that he was the rightful owner of restaurant equipment and supplies that he purchased w hen he was managing the Complex without any proof that he actually purchased any inventory or equipment , and , equally important, that he did so in his individual capacity , thereby reasonably entitl ing him to claim ownership . ( See 3d FOF Tbl. at 110 (A, B) (“ A t no time did Napper produce any documentation of ownership or purchase of the equipment [.]”).) Napper’s own testimony regarding who owned what inside the Capitol Heights facility is admittedly not based on his having taken an inventory a t the time of the eviction in order to determine what was there ( see 3d FOF Tbl. at 76 (A, B) , so it is simply not a credible basis upon which to conclude that all of the restaurant equipment and other property inside the Capitol Heights facility in the fall of 2011 belonged to Napp er . Indeed, even if Napper’s statements in this regard were deemed believable, he admits only that he physically procured items for the Complex prior to 2009 ; his
statements do not demonstrate that he purchased those items with his own money , or that he p ersonally owned the equipment that he may have ordered , and, in fact, his admissions strongly suggest the opposite

. ( See 3d FOF Tbl. at 8 2 (B) ( admitting that

“ [t] he equipment was purchased from the business revenue ” (emphasis added) ); see also id . at 8 5 (B) (Napper states that he “owned the equipment that was utilized and paid for by the business ” (emphasis supplied ) ) .)56 Similarly, Napper’s suggestion that his allegedly unwarranted demotion as manager of the Complex entitled him to exercise vigilan te justice by taking control of the facility in 20 1 1

— soup to nuts

— finds no support in law , and also fails to comport with the facts that were presented during trial. Prince Immanuel and Dr. Lee both testified that Napper was compensated handsomely for his removal as manager

— to the tune of $ 200,000 after the 2004 demotion, plus a proprietary interest in the Co

- Op after the 2008 removal, which he partly sold for $ 70,000 ( see 3d FOF Tbl. at 119

– 122 (A, B) )

— and there is nothing in the record that establishes that these payments were insufficient to reimburse Napper for the personal investments in inventory and equipment that he purportedly had made. Furthermore, and perhaps even more important, Napper offers no cases that stand for the proposition that one w ho feel s slighted with respect to a prior transaction can (legally) appropriate the offending party’s property at a later time without his consent , and this Court is aware of none. To the contrary, under clear and well

- established law, so long as Napper in tended to exert ownership or control over Yah Kai’s property without that entity’s consent, he is liable for conversion, regardless of whether he honestly believed that his actions were justified based on the Community’s prior treatment of him and thus “ acted in good faith and lacked a ny consciousness of wrongdoing[.]” Darcars , 379 Md. at 262 ; see also First Union Nat. Bank v. New York Life Ins. & Annuity Corp ., 152 F. Supp. 2d 850, 855 (D. Md. 2001) (explaining that “[a] mista ke of law or fact is n o defense [] ” to a claim of conversion (internal quotation mark and citation omitted) ). This all means that , even in Napper’s imagined quid

- pro - quo universe , Maryland common law c learly establishes the conduct that qualifies as unlawful conversion, and57 this Court has no doubt tha t such c onduct occurred when Napper evicted Yah Kai, Prince Immanuel, and the other members of the Community. Specifically, a s evidenced by the statements Napper made in the eviction notice and testified to at trial , Napper expressly and intentionally exercised dom inion and control over all of the equipme nt, inventory, and food supplies that were in side the Capitol Heights facility as of November 15, 2011

. ( See 1st Notice to Vacate, Pls.’ Ex. 14A ; 2d Notice to Vacate, Pls.’ Ex. 14B ; see also July 15, 2015 Trial Tr. at 102:4

– 103:3 (Prince Immanuel).) And the items inside that facility included tangible property that Napper could not have had any claim to because Yah Kai had purchased them for the Complex during the years it managed that business on behalf of the Com munity

. ( S ee, e.g. , Everlasting Life Health Complex Financial Records for 2011

- 2015 , Pls.’ Ex. 31

. ) S uch intentional exert ion of dominion and control over another’s tangible property is all that Maryland law requires for liability for conversion. See, e. g ., Darcars , 379 Md. at 257

– 60 (car dealership converted plaintiff’s “ $2,500 cash down

- payment,

. . . laptop and CDs that had been taken during the [lawful] repossession ” of plaintiff’s car and never returned); K & K Mgmt., Inc. v. Lee , 557 A.2d 965, 982 ( Md. 1989) (defendant directly converted plaintiff’s equipment and furniture by not allowing their removal upon defendant’s repossession of the premises on which they were located, notwithstanding defendant’s mistaken belief that he shared ownership over th e property)

. Therefore, Napper is liable for conversion, and Yah Kai is entitled to judgment in its favor on Count VI. 16

16 P laintiffs have fashioned their pl eadings and evidence to bring a claim of conversion solely based upon property owned by Yah Kai. ( See e.g. , Compl. ¶ 31 (“[Napper] has converted the equipment in the property which belongs to the Yah Kai and the Commu nity[.]” (emphasis added)); Pls.’ COL at 18 (“Napper had absolutely no rights whatsoever to Yah Kai’s equipment, customer lists, menus, employees, use of its name and business operation.”) (emphasis added).) Because conversion necessitates a threshold fin ding of ownership to warrant redress, the Court finds that Yah Kai alone has58 2. Yah Kai’s Damages For Conversion Include Not Only The Value Of The Restaurant Equipment, Food, And Other Tangible Items It Purchased F or The Complex , But Also The Pepco Rebate Amount As noted above, the parties here have consented to proceed to a jury trial on damages, so it will be up to the jury to sort out the value of the items Napper converted based on Yah Kai ’ s proof of purchas es that i t made , but it is worth pausing here to inform the parties of the law that governs the scope of Yah Kai’s recovery. Under Maryland law , when conversion occurs, a plaintiff is entitled to recover “the full value of the chattel” measured by its “market value . . . at the time and place of conversion plus interest to the date of judgment.” Staub v. Staub , 376 A.2d 1129, 1132

– 33 ( Md. Ct. Spec. App. 1977)

. Although it used to be that only tangible property was recoverable with respect to a cla im of conversion, Maryland law now also permits recovery for intangible property interests in specific circumstances, such as when a defendant converts a paper or digital document that embodies the plaintiff’s right to certain intangible property

. S ee Neu man v. Travelers Indem. Co ., 319 A.2d 522, 525 ( Md. 1974) (tangible property is property that has “physical substance” and a ll other property is intangible (citation omitted ) ) . U nder such circumstances, the defendant is liable not only for the value of th e document defendant converted, but also the intangible rights that document represents. See Lawson v. Commonwealth Land Title
Ins. Co ., 518 A.2d 174, 176 ( Md. Ct. Spec. App. 1986) (“[I] njured owner could recover not just the nominal value of the document itself that was wrongfully withheld but also the value of the right evidenced or represented by the document.”); see also Thompson

sustained its burden, and it cannot conclude that Prince Immanuel has established any entitlement to damages for conversion.59 v. UBS Fin. Servs., Inc ., 115 A.3d 125, 133 (Md. 2015) ( explaining that Maryland courts have found such recovery appropriate when a defendant converts “ a stock certificate, a promissory note , or a document that embodies the r ig ht to a life insurance policy ” (internal citations omitted) ). Consequently , with respect to the instant case, Napper will be required to reimburse Yah K ai for the tangible items he converted in November of 2011

— e.g. , the restaurant equipment and food that Plaintiffs were forced to leave behind when Napper evicted them

— and also any intangible property rights that Plaintiffs can prove Napper took , including those embodied in the records that were in the facility at the time of the November eviction. ( See Compl. ¶ 61 (alleging that “Napper has converted Plaintiff’s customer base and confidential business information and records”; see also Napper Dep. 139:3

– 9 (“Q: Did you return the documents that were [in the Complex’s file cabinets] to Yah Kai [after the November 15th eviction]? A: No, I didn’t. Q: Did you ever look in those files to examine

– do an inventory of what was in those files?
A: Sure, we did.”).) Certain “confidential business information” (Compl ¶ 61) that Yah Kai compiled while operating the Complex and existed in Yah Kai’s business records from 2008 to 2011 qualifies as a recoverable intangible property interest of Yah Kai

. S ee Carpenter v. Uni ted States , 484 U.S. 19, 26 (1987) (“ Confidential business information has long been recognized as property [.] ”)

. 17

17 To the extent that Yah Kai claims the ability to recover their interest in “customer information” included in the physical customer lists left in the Complex (Compl. ¶ 61), the Court notes that, under Maryland law, a “ compilation of customer information does not, as a matter of course, carry with it the right to exclude all others from also possessing the same information ,” and, therefore, cannot be the subj ect of a conversion claim, even when embodied in tangible documentation , Alliance for Telecommunications Indus. Sols., Inc. v. Hall , No. CCB

- 05

- 440, 2007 WL 3224589, at *14 (D. Md. Sept. 27, 2007) ; see also Thompson , 115 A.3d at 134 (“ It is at present the prevailing view that there can be no conversion of

. . . such intangible [property] rights as the goodwill of a business or the names of customers. ”). However, if Yah Kai can establish that other types of confidential business information60 Also recoverable under the circumstances presented here is the intangible utilities rebate amount that was revealed for the first time duri ng trial , because this

r e bate was “a debt ” that Yah Kai was “ entitled to collect [,] ” as reflected in the PEPCO invoices that Yah Kai stored in the file cabinets that Napper converted at the time of the eviction. Texas v. New Jersey , et al ., 379 U.S. 674, 677 (1965) (stating that “a debt which a person is entitled to collect is intangible property), supplemented sub nom

. Texas v. New Jersey , 380 U.S. 518 (1965) ; Medi

- Cen Corp. v. Birschbach , 720 A.2d
966 , 972 ( Md. Ct. Spec. App. 1998) ( holding that a balan ce due from debtor can be subject to conversion through physical documents , such as a general accounting ledger, that evidenced those debts). T he evidence at trial established that it was Yah Kai

— not Napper

— that had overpaid f or the utilities that the Complex used between 2009 until
20 1 1

. ( S ee 3d FOF Tbl. at 88 (A), 78 (A, B) ; July 15, 2015 Trial Tr. at 181:16 (Dr. Lee) (“ Yah Kai continued to pay that electric bill [from 2009 to 2011]”); see also id

. at 34:14

– 23 (Napper ) (admitting he wa s not paying utilities but that he knew that someone else in the Community, likely Yah Kai, was instead making the payments)

. ) Y et, when the management company sought to provide the $ 125,000 rebate from PEPCO, it was Napper who negotiated the rebate credit for his own personal benefit. S ee supra Part
III.D and note 11

. Moreover , a ccording to Carol Allen , Napper demonstrated his purported entitlement to the rebate by tendering documentation regard ing t he prior overpayments in the form of utility invoices for the years of 2008 through 2011

. ( S ee July 15, 2015 Trial Tr. 87:15

– 88:20

. ) Based on the record evidence, th i s Court finds

was in the records it left behind, it may seek to recover those intangible property interests during future proceedings on damages.61 that t hose invoices belonged to Yah Kai and were stored in the b usiness files that Napper exerted dominion and control over when he evicted Yah Kai and the Community . F urthermore, because t h o se invoices were the only documen ts requested (and presented) to substantiate (and support) a right to the rebate payment in the a mount of $ 125,000 ( s ee id. at 87:15

– 88:20 (Allen)) , the tangible invoices that Napper converted

— and then presented to Allen

— encompassed Yah Kai’s intangible property interest in the PEPCO rebate as a matter of law. S ee First Union Nat. Bank , 152 F. Supp. 2d at 855 ( D. Md. 2001) ( explaining that, in order to recover for conversion, a plaintiff has to show that he is “ entitled to possession of any document evidencing the [intangible property interest] or that any such document[] [is] necessary to the protection and enforcement of the intangible rights ”)

. 18 In short, Plaintiffs have established that document s exist that e stablish and
encompass their right to a $ 125,000 rebate (the PEPCO invoices) , and also that Napper converted and used those docum ent s to secure the rebate for himself

. Consequently , Napper must pay damages under a theory of conversion for the intangible property rights of Yah Kai that were embodied in the records that Napper converted , as well as

18 Notably, in this set of circumstances, the fact that the rebate payment never took the form of actual currency

— i.e. , that K ingdom Management did not tender cash or a check to Napper, but instead credited his future rent payments

— does not thwart Yah Kai’s conversion claim; if anything, one might argue that the form of the rebate here makes Yah Kai’ s claim for damages even stronger. That is because, “[a ]s a general rule, money, i.e., currency, is not subject to a claim of conversion” under Maryland law, Darcars , 379 Md. at 258 n.3; see also Tillery v. Borden , No. CBD

- 07

- 1092, 2010 WL 3517015, at *8 (D. Md. Sept. 3, 2010) (defendant cannot exert ownership or control over money that was applied to satisfy obligations and debts), but the rebate at issue here was , and has always remained , an intangible property interest in the future satisfaction of a debt, and as such, Maryland law permits its recovery . Cf. , Diane Sales, Inc. v. Am. Express Centurion Bank , No. GLR

- 14

- 1063, 2014 WL 11429026, at *2

– 3 (D. Md. July 14, 2014) (“[Because] monies deposited in a bank account are not the personal property of the account holder, but rather they “consist[ ] of nothing more or less than a [bank’s] promise to pay,” plaintiff had intangible property rights in those funds which must be embodied in a tangible document to be converted. (second alteration in original) (internal quotation marks and citation omitted) ).62 any other tangible and intangible property interests of Yah Kai that were taken when Napper evicted them from the Complex

. C. Napper Did Not Owe A Fiduciary Duty To Plaintiffs , And Therefore, Did Not Usurp Their Corporate Opportunity Finally, after careful consideration of the evidence and la w, this Court has reached the conclusion that Napper cannot be held liable for usurpation of corporate opportunity under Maryland law, as Count VI contends. As “an offshoot of the general duty of loyalty owed by corporate officers, directors and upper

- lev el management employees [,] ” Maryland Metals, Inc. v. Metzner , 382 A.2d 564, 572 (Md. 1978) (footnote omitted) , the doctrine of usurpation of corporate opportunity is quite narrow : it precludes “corporate personnel”

— i.e. , individuals who have a fiduciary duty of loyalty to the corporation

— “from diverting unto themselves opportunities which in fairness ought to belong to the corporation.” Id . at 572 n.5. The core principle of a duty of loyalty is the existence of a fiduciary r elationship between the parties ; w here such a relationship exists, the party has a legal duty to act for the benefit of the other party in matters within the scope of their relationship. See Lasater v. Guttmann , 5 A.3d 79, 93 (Md. 2010) (citation omitted); see also Sterling v. Ourisman Ch evrolet of Bowie
Inc ., 943 F. Supp. 2d 577, 599 (D. Md. 2013) (“Examples of fiduciary relationships include trustee and beneficiary, guardian and ward, agent and principal, attorney and client, partners in a partnership, corporate directors and their corpo ration.” (internal quotation marks and citation omitted) ). Notably, a fiduciary relationship is not synonymous with a “ confidential ” relationship

— the former gives rise to a legal duty and is based on the nature of the relationship as a matter of law, while , t o have the latter , a party need only have “gained the confidence of the other and purport[ s ] to act63 or advi se with the other’s interest in mind. ” Lasater , 5 A.3d at 93 (internal quotation marks and citation omitted)

. Try as it might, this Court can find no evidence that Napper had a fiduciary relationship

— as that term is defined by law

— to Yah Kai, Prince Immanu el , or, for that matter, the Community

. Indeed , in the fall of 2011, when Napper surreptitiously renewed the lease for the Capitol Heights location and evicted Yah Kai ( which, as far as this Court can tell, are the acts that comprise the alleged usurpation ) Napper was no longer the manager of the Complex

. ( S ee July 15, 2015 Trial Tr. at 81:8

– 19 (Prince Immanuel ) (explaining that Napper was permanently removed fro m the Complex’s management by the Community leaders at the October 2008 meeting ) .) Perhaps even

more important, the reco rd clearly reflects that he was essentially estranged from the Community leadership at the time

. ( S ee July 14, 2015 Trial Tr. at 45:21

– 46:2 (Napper ) ( attesting that he no longer associated with the Community’s leadership after 2008 or 2009)

. ) It is possible that , even so, Na pper might have had a fiduciary relationship with ELCC when he renewed the lease in 2011, because he was purporting to serve as that entity’s agent with respect to the execution of contracts and other legal documents . But ELCC is not joined as a plaintiff in this law suit, a nd to the extent that Napper’s conduct in renewing the lease in his own name c learly constituted a taki ng of a corporate opportunity from named

- Plaintiff Yah Kai (which was seeking to take over the lease at that same time), the record establishes that Napper was never an agent of Yah Kai an d thus did not owe Yah Kai a legal duty to refrain from undertaking the challenged renewal

. ( S ee July 15, 2015 Trial Tr. at 81:20

– 21 (Prince Immanuel) (“Mr. Napper was64 offered a position on [the Complex’s restructuring scheme and in the creation of Yah Kai ] along with Dr. Lee, Mr. Yo ung and Mr. Clay. He refused.”)

. )
Th is Court truly understands the thrust of Plaintiffs’ contention that Napper betrayed the m , and their feelings of betrayal a re certainly borne out by the unfortunate fact s and circumstances presented during the trial

. Dr. Lee put it best when she characterized the Complex a s a business that the Community had lovingly created and that the Community owned “as a collective body [.] ” ( I d

. at 205:2

– 5 (Dr. Lee).) Everyone had invested in the project and had worked together to ensure its success, but “[s]omewhere along the line there was a dispute ” ( id. at 205:6), and “ i n the blink of an eye[,]” without any warning or explanation, Napper “ha d negotiated a lease on his own” ( id . at 205:25, 206:7

– 8), and “ Yah Kai [didn ’ t] have access to the facility, [didn ’ t] have access to the business Everlasting Life Health Complex any longer” ( i d. at 205: 12

– 15 )

. This Court has no doubt that the swift and p ai nful eviction that Napper coldly executed crushed the dreams and financial stability of a giving group of people whom he had previously “loved” and had shared his life with as “brother [s] and . . . sister[s

. ] ” (July 14, 2015 Trial Tr. at 85:18

– 19 (Napper) .) But a moral obligation to do the right thing when a business opportunity arises is not the same a legal one. And Plaintiffs have failed to demonstrate that Napper owed them a fiduciary duty of loyalty, as Maryland law r equires . Consequently , with respect to Count IV of the complaint , this Court must
enter judgment for Defendant

.65 V. CONCLUSION For the reasons explained above , and based on the evidence presented at trial, this Court concludes that Plaintiffs have satisfied their burden of proof wi th respect to several legal claims . As a result, this Court finds that Defendant is liable for federal trademark infringement and unfair competition under the Lanham Act ( Count s I and II ) , Maryland common law unfair competition ( Count III ) , and Maryland common law conversion ( Count VI ) , but that Defendant is not liable for Maryland common law usurpation of a corporate opportunity under Count IV. As set forth in the accompanying order, t he parties will now be directed to submit a joint proposed schedule for further proceedings in this matter, including dates for a jury trial with respect to damages for Counts I, II, III, and VI of the complaint.

DATE: July 3, 2016 

## Ketanji Brown Jackson KETANJI B ROWN JACKSON United States District Judg e