No.

10-_______
================================================================

In The
Supreme Court of the United States
---------------------------------♦---------------------------------

WALTER MCGILL, PETITIONER,

v.

GENERAL CONFERENCE CORPORATION OF

SEVENTH-DAY ADVENTISTS AND THE GENERAL
CONFERENCE OF SEVENTH-DAY ADVENTISTS,
AN UNINCORPORATED ASSOCIATION.

---------------------------------♦---------------------------------

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT

---------------------------------♦---------------------------------

PETITION FOR A WRIT OF CERTIORARI

---------------------------------♦---------------------------------

CHARLES L. HOLLIDAY SETH M. GALANTER

SPRAGINS, BARNETT & Counsel of Record
COBB, PLC BRIAN R. MATSUI
312 East Lafayette MORRISON & FOERSTER LLP
Jackson, TN 38301 2000 Pennsylvania Ave., NW
Washington, DC 20006
(202) 887-6947
[email protected]
BENJAMIN R. CARLISLE
MORRISON & FOERSTER LLP
1290 Avenue of the Americas
New York, NY 10104
NOVEMBER 8, 2010

================================================================
COCKLE LAW BRIEF PRINTING CO. (800) 225-6964
OR CALL COLLECT (402) 342-2831
 QUESTION PRESENTED

The Religious Freedom Restoration Act provides

that the “government” may not “substantially burden
a person’s exercise of religion even if the burden
results from a rule of general applicability” unless the
government demonstrates that the application of the
burden to the person is “the least restrictive means
of furthering” a “compelling governmental interest.”
42 U.S.C. § 2000bb-1.
The Act defines the term “government” to include
“a branch, department, agency, instrumentality, and
official (or other person acting under color of law) of
the United States.” Id. § 2000bb-2(1). Further, the Act
provides that it “applies to all Federal law, and the
implementation of that law, whether statutory or
otherwise.” Id. § 2000bb-3(a).
The question presented is:
Whether the Religious Freedom Restoration Act
applies to a private civil action under a federal stat-
ute in federal court, even when the United States is
not a party to the action.
 ii

PARTIES TO THE PROCEEDING

The parties are as stated in the caption.

 iii

TABLE OF CONTENTS
Page
QUESTION PRESENTED................................... i
PARTIES TO THE PROCEEDING ..................... ii
TABLE OF AUTHORITIES ................................. v
PETITION FOR A WRIT OF CERTIORARI ....... 1
OPINIONS BELOW............................................. 1
JURISDICTION ................................................... 1
CONSTITUTIONAL, STATUTORY, AND REG-
ULATORY PROVISIONS INVOLVED ............. 1
INTRODUCTION ................................................ 1
STATEMENT OF THE CASE .............................. 2
A. Statutory Framework ................................ 2
B. Factual Background .................................. 5
REASONS FOR GRANTING THE PETITION .... 10
REVIEW IS NECESSARY BECAUSE SIX
COURTS OF APPEALS ARE EVENLY DI-
VIDED AS TO WHETHER ALL PRIVATE
LITIGATION APPLYING FEDERAL LAW
IN FEDERAL COURTS IS EXCLUDED
FROM RFRA’S SCOPE .................................... 10
A. The Ruling Below Joins One Side Of A
Circuit Split Regarding RFRA’s Appli-
cation That Will Not Be Resolved Absent
This Court’s Review ................................... 10
B. The Decision Below Contravenes RFRA’s
Text And The History Of Its 2000
Amendments .............................................. 15
 iv

TABLE OF CONTENTS—Continued
Page
1. RFRA’s broad text demonstrates its
applicability to all private civil ac-
tions in federal court ........................... 15
2. The ruling below is contrary to RFRA
and its amendment’s legislative his-
tory....................................................... 20
C. The Sixth Circuit’s Holding Addresses An
Issue Of Continuing Importance And
This Case Presents The Issue In An Ideal
Posture ....................................................... 23
CONCLUSION..................................................... 26

Appendix A: Opinion of United States Court

of Appeals for the Sixth Circuit, dated Au-
gust 10, 2010 ...........................................................1a
Appendix B: Opinion of the United States
District Court for the Western District of
Tennessee, dated January 6, 2010 .......................33a
Appendix C: Relevant statutes ..............................37a
 v

TABLE OF AUTHORITIES
Page
CASES:
Barr v. City of Sinton, 295 S.W.3d 287 (Tex.
2009) ........................................................................24
Board of Directors of Rotary International v.
Rotary Club of Duarte, 481 U.S. 537 (1987) ..........19
Boggan v. Mississippi Conference of the United
Methodist Church, 433 F. Supp. 2d 762 (S.D.
Miss. 2006), aff ’d, 222 Fed. App’x 352 (5th
Cir.), cert. denied, 552 U.S. 813 (2007) ..................13
Boy Scouts of America v. Dale, 530 U.S. 640
(2000) .......................................................................19
Christians v. Crystal Evangelical Free Church
(In re Young), 82 F.3d 1407 (8th Cir. 1996),
vacated, 521 U.S. 1114 (1997), reinstated,
141 F.3d 854 (8th Cir.), cert. denied, 525 U.S.
811 (1998) ..........................................................12, 16
Christians v. Crystal Evangelical Free Church
(In re Young), 141 F.3d 854 (8th Cir.), cert.
denied, 525 U.S. 811 (1998) .......................... 4, 13, 15
City of Boerne v. Flores, 521 U.S. 507 (1997) .... 4, 18, 24
Combs v. Homer-Center School District, 540
F.3d 231 (3d Cir. 2008) ............................................24
Cutter v. Wilkinson, 544 U.S. 709 (2005) .....................4
Diggs v. Snyder, 775 N.E.2d 40 (Ill. App. Ct.
2002) ........................................................................24
Edmonson v. Leesville Concrete Co., 500 U.S.
614 (1991) ................................................................16
 vi

TABLE OF AUTHORITIES—Continued
Page
EEOC v. Catholic University of America, 83
F.3d 455 (D.C. Cir. 1996)...................................13, 15
Employment Division, Department of Human
Resources v. Smith, 494 U.S. 872 (1990) ........2, 3, 17
Guinan v. Roman Catholic Archdiocese of
Indianapolis, 42 F. Supp. 2d 849 (S.D. Ind.
1998) ........................................................................24
Hankins v. Lyght, 441 F.3d 96 (2d Cir.
2006) .................................................... 8, 9, 11, 12, 13
Hunt v. Hunt, 648 A.2d 843 (Vt. 1994) ......................22
In re Multi-Circuit Episcopal Church Property
Litigation, 76 Va. Cir. 873 (2008) ...........................24
Intermountain Fair Housing Council v. Boise
Rescue Mission, No. CV-08-205, 2010 WL
1913379 (D. Idaho May 12, 2010)...........................24
Jones v. Wolf, 443 U.S. 595 (1979) .............................17
Lugar v. Edmondson Oil Co., 457 U.S. 922
(1982) .......................................................................17
New York Times Co. v. Sullivan, 376 U.S. 254
(1964) .......................................................................17
Palmore v. Sidoti, 466 U.S. 429 (1984) ......................19
Powell v. Stafford, 859 F. Supp. 1343 (D. Colo.
1994) ........................................................................24
Presbyterian Church in the United States v.
Mary Elizabeth Blue Hull Memorial Presby-
terian Church, 393 U.S. 440 (1969) ........................17
 vii

TABLE OF AUTHORITIES—Continued
Page
Redhead v. Conference of Seventh-day Advent-
ists, 440 F. Supp. 2d 211 (E.D.N.Y. 2006) ...............24
Rweyemamu v. Cote, 520 F.3d 198 (2d Cir.
2008) ..................................................................12, 15
Sutton v. Providence St. Joseph Medical Center,
192 F.3d 826 (9th Cir. 1999) ...................................14
Tomic v. Catholic Diocese of Peoria¸ 442 F.3d
1036 (7th Cir.), cert. denied, 549 U.S. 881
(2006) .......................................................................13
Tort Claimants Committee v. Roman Catholic
Archbishop of Portland (In re Roman Catho-
lic Archbishop of Portland), 335 B.R. 842
(Bankr. D. Or. 2005) ................................................23
United States v. Wilkerson, 361 F.3d 717 (2d
Cir.), cert. denied, 543 U.S. 908 (2004) ..................12
Urantia Found. v. Maaherra, 895 F. Supp. 1335
(D. Ariz. 1995) .........................................................23
Watson v. Boyajian, 309 B.R. 652 (B.A.P. 1st
Cir. 2004) .................................................................23
Worldwide Church of God v. Philadelphia
Church of God, Inc., 227 F.3d 1110 (9th Cir.
2000), cert. denied, 532 U.S. 958 (2001) .... 14, 15, 23

U.S. CONSTITUTION AND STATUTES:

U.S. Const. amend. I ............................................17, 19
U.S. Const. amend. XIV ...............................................4
 viii

TABLE OF AUTHORITIES—Continued
Page
Lanham Act, 15 U.S.C.
§ 1114 .........................................................................6
§ 1125(a) ....................................................................6
§ 1125(c) .....................................................................6
§ 1125(d)(1) ................................................................6
Religious Freedom Restoration Act, 42 U.S.C.
§ 2000bb(a)(2) ............................................................3
§ 2000bb(a)(4) ............................................................3
§ 2000bb(b)(1) ......................................................3, 17
§ 2000bb(b)(2) ............................................................3
§ 2000bb-1 ...............................................................15
§ 2000bb-1(a) .............................................................3
§ 2000bb-1(b) ...........................................................18
§ 2000bb-1(b)(2) .........................................................3
§ 2000bb-1(c) .............................................................3
§ 2000bb-2 .................................................................4
§ 2000bb-2(1) .....................................................15, 18
§ 2000bb-2(4) .............................................................5
§ 2000bb-3(a) ....................................................... 5, 11
Religious Land Use and Institutionalized
Persons Act, 42 U.S.C.
§ 2000cc .....................................................................4
§ 2000cc-5(7) ..............................................................5
 ix

TABLE OF AUTHORITIES—Continued
Page
Religious Freedom Restoration Act of 1993
(RFRA), Pub. L. No. 103-141, 107 Stat.
1488 ................................................................. passim
Religious Land Use and Institutionalized
Persons Act (RLUIPA), Pub. L. No. 106-274,
114 Stat. 803 (codified at 42 U.S.C. § 2000cc
et seq.) ....................................................... 4, 5, 22, 24

LEGISLATIVE MATERIALS:
David Ackerman, Congressional Research
Serv., Library of Congress, The Religious
Freedom Restoration Act and the Religious
Freedom Act: A Legal Analysis (1992) ....................20
Religious Freedom Restoration Act of 1991:
Hearings on H.R. 2797 Before the Subcomm.
on Civil & Const. Rights of the H. Comm. on
the Judiciary, 102d Cong. (1992)............................21
The Religious Freedom Restoration Act: Hear-
ing on S. 2969 Before the Senate Comm. on
Judiciary, 102d Cong. (1992)..................................21
Religious Liberty: Hearing Before the S. Judi-
ciary Comm., 106th Cong. (1999) .....................19, 22
H.R. Rep. No. 106-219 (1999) ...............................20, 22
145 Cong. Rec. H5588 (daily ed. July 15, 1999) ........22
145 Cong. Rec. H5590 (daily ed. July 15, 1999) ........19
145 Cong. Rec. H5591 (daily ed. July 15, 1999) ........22
 x

TABLE OF AUTHORITIES—Continued
Page
OTHER AUTHORITIES:
Availability of Money Damages under the
Religious Freedom Restoration Act, 18 Op.
O.L.C. 180 (1994) ....................................................18
BLACK’S LAW DICTIONARY (8th ed., 1st reprint
2004) ........................................................................16
Brief of United States as Intervenor, In re
Young, 82 F.3d 1407 (8th Cir. 1996) (No. 93-
2267) ........................................................................16
Drew S. Days, III, When the President Says
‘No’: A Few Thoughts on Executive Power and
the Tradition of Solicitor General Independ-
ence, 3 J. APP. PRAC. & PROCESS 509 (2001) ...........16
 PETITION FOR A WRIT OF CERTIORARI
Walter McGill respectfully petitions for a writ of
certiorari to review the judgment of the United States
Court of Appeals for the Sixth Circuit.
OPINIONS BELOW
The opinion of the Sixth Circuit (App., infra, 1a-
32a) is reported at 617 F.3d 402. An earlier decision
of the district court is reported at 624 F. Supp. 2d
883. The opinion of the district court entering a
finding of contempt (App., infra, 33a-36a) is not
reported but is available at 2010 WL 99404.
JURISDICTION
The United States Court of Appeals for the Sixth
Circuit issued its opinion on August 10, 2010.
This Court’s jurisdiction is invoked under 28
U.S.C. § 1254(1).
CONSTITUTIONAL, STATUTORY, AND
REGULATORY PROVISIONS INVOLVED
The Religious Freedom Restoration Act is set
forth at App., infra, 37a-40a.
INTRODUCTION
The court of appeals weighed in on a circuit split
regarding the proper interpretation of the Religious
Freedom Restoration Act (RFRA). The recurring
question that has now evenly divided six circuits is
whether RFRA has any application to civil actions
between private parties in federal court applying
 2

federal law. The issue arises in varied circumstances,

including intellectual property disputes, employment
discrimination claims, and bankruptcy proceedings.
The better view is that RFRA offers a defense to
all federal laws, including federal laws that are
enforced by private parties in civil actions in federal
court. That is so because the burden on the individual’s
exercise of religion is no less caused by the govern-
ment because it results from a private federal cause
of action resolved by a federal court than through
direct government enforcement. That is the view
followed by the Second, Eighth, and D.C. Circuits.
And that view is supported by the text and history of
RFRA.
The court below, by contrast, incorrectly held
that RFRA had no application to this civil suit regard-
ing whether federal law and federal courts could
prohibit petitioner from using the term “Seventh-day
Adventist” in the name of his church. The failure to
apply RFRA’s statutorily-mandated strict scrutiny
was error that warrants this Court’s review.
STATEMENT OF THE CASE
A. Statutory Framework
1. The Religious Freedom Restoration Act of
1993 (RFRA), Pub. L. No. 103-141, 107 Stat. 1488,
was a response to this Court’s decision in Employ-
ment Division, Department of Human Resources v.
Smith, 494 U.S. 872 (1990). Congress explained, in
the express statutory findings accompanying RFRA,
 3

that Smith “virtually eliminated the requirement

that the government justify burdens on religious
exercise imposed by laws neutral toward religion.” 42
U.S.C. § 2000bb(a)(4). Congress found, however, that
“laws ‘neutral’ toward religion may burden religious
exercise as surely as laws intended to interfere with
religious exercise.” Id. § 2000bb(a)(2).
Congress thus articulated two purposes in en-
acting RFRA. First, “to guarantee” the application
of the “compelling interest test” in “all cases where
free exercise of religion is substantially burdened.”
Id. § 2000bb(b)(1). And second, “to provide a claim or
defense to persons whose religious exercise is substan-
tially burdened by government.” Id. § 2000bb(b)(2).
To fulfill these purposes, Congress provided that
“[g]overnment shall not substantially burden a per-
son’s exercise of religion even if the burden results
from a rule of general applicability” unless the gov-
ernment demonstrates that the application of the
burden to the person is “the least restrictive means of
furthering” a “compelling governmental interest.”
42 U.S.C. § 2000bb-1(a) & (b)(2). A person may assert
a violation of RFRA “as a claim or defense in a judi-
cial proceeding” and may “obtain relief against a
government.” Id. § 2000bb-1(c).
As originally enacted, RFRA defined “government”
to include “a branch, department, agency, instrumen-
tality, and official (or other person acting under color
of law) of the United States, a State, or a subdivision
of a State.” It provided that RFRA applied “to all
 4

Federal and State law, and the implementation of that

law, whether statutory or otherwise, and whether
adopted before or after the enactment of this Act.”
2. This Court held in City of Boerne v. Flores,
521 U.S. 507 (1997), that RFRA was not constitution-
al as applied to State and local governments because
it exceeded Congress’s enumerated powers under the
Fourteenth Amendment. The lower courts subse-
quently held that RFRA was still valid as applied to
the federal government and federal territories and
possessions. See, e.g., Christians v. Crystal Evangeli-
cal Free Church (In re Young), 141 F.3d 854 (8th Cir.),
cert. denied, 525 U.S. 811 (1998).
In 2000, Congress enacted the Religious Land
Use and Institutionalized Persons Act (RLUIPA),
Pub. L. No. 106-274, 114 Stat. 803 (codified at 42
U.S.C. § 2000cc et seq.). Unlike RFRA’s broad appli-
cation to “all” state law, RLUIPA targeted specific
state and local practices that Congress believed were
particularly burdensome to religious exercise. Cutter
v. Wilkinson, 544 U.S. 709, 712 (2005). Congress did
so under its authority under the Spending and
Commerce Clauses and the Fourteenth Amendment.
Id. at 715.
In addition, RLUIPA amended RFRA in three
ways. First, it amended the definition of “govern-
ment” in Section 2000bb-2 of RFRA to remove refer-
ence to States and their subdivisions, and to add
references to the District of Columbia, Puerto Rico
and federal territories. Second, RLUIPA removed the
 5

reference to “State law” in Section 2000bb-3(a) of

RFRA. And third, RLUIPA amended the definition of
“exercise of religion” in Section 2000bb-2(4) of RFRA
to incorporate a new, more expansive definition of the
term adopted in Section 2000cc-5(7) of RLUIPA.
B. Factual Background
1. Petitioner was the founder and pastor of a
church in Guys, Tennessee, that he named “A Crea-
tion Seventh Day & Adventist Church,” and which is
part of a worldwide body he named “The Creation
Seventh Day & Adventist Church.” Petitioner named
the church based on a divine revelation. App., infra,
5a-6a; Dt. Ct. Dkt. 30, Exh. A at 2.
Petitioner has also created internet domain
names, including “creation-7th-dayadventist-church.org,”
“creationseventhday-adventistchurch.org,” “creations
da.org,” and “csda.us.” App., infra, 6a.
Respondent General Conference of Seventh-day
Adventists was formed in 1863. Since the official
formation of the church, the names “Seventh-day
Adventist” and “SDA” have been used by the Seventh-
day Adventist Church. Respondent General Confer-
ence Corporation of Seventh-day Adventists holds
title to all of the church’s assets. It has registered the
marks “Seventh-day Adventist,” “Adventist,” and
“General Conference of Seventh-day Adventists,” with
the United States Patent and Trademark Office.
Respondents have not granted petitioner any licenses
to use their marks. App., infra, 5a-6a.
 6

2. Respondents filed a complaint against peti-

tioner in federal district court alleging trademark
infringement, unfair competition, and dilution of
marks under the federal Lanham Act, 15 U.S.C.
§§ 1114, 1125(a), 1125(c); cybersquatting under 15
U.S.C. § 1125(d)(1); as well as parallel Tennessee
state law claims. App., infra, 6a-7a.
Respondents asked the district court to enter an
injunction prohibiting petitioner from using the
marks, delivering to the Clerk of the Court all in-
fringing materials for destruction, and transferring
all petitioner’s internet domain names to respondents.
Dt. Ct. Dkt. 1 at 18-19. In addition, respondents asked
the district court to award actual and statutory dam-
ages as well as attorneys’ fees and costs. Id. at 19.
Petitioner moved to dismiss the claims on the
ground that, inter alia, RFRA barred application of
federal law in a way that substantially burdened his
exercise of religion. The district court denied this
portion of petitioner’s motion to dismiss on the
ground that petitioner had waived the RFRA defense
by failing to raise it in his answer. App., infra, 7a.
The district court subsequently granted respon-
dents’ summary judgment on their infringement
claims with respect to “Seventh-day Adventist,” but
denied summary judgment with respect to “Advent-
ist” and “SDA.” App., infra, 7a-8a.
Prior to any further proceedings on the merits,
the district court referred the case to a magistrate
judge for purposes of mediation after counsel had
 7

agreed to mediate. Petitioner then filed a motion to

amend the pretrial order to remove the mediation
requirement because his “religious convictions will
not allow him to compromise his faith.” App., infra,
8a. The district court denied petitioner’s motion to
amend. App., infra, 8a-9a.
After petitioner refused to participate in media-
tion, the district court granted respondents’ motion
for a default judgment. App., infra, 9a. It entered an
injunction that prohibited petitioner from “using the
mark SEVENTH-DAY ADVENTIST, including the
use of the words SEVENTH-DAY or ADVENTIST, or
the acronym SDA, either together, apart, or as part
of, or in combination with any other words, phrases,
acronyms or designs * * * in the sale, offering for sale,
distribution, promotion, provision or advertising of
any products and services, and including on the
Internet.” Dt. Ct. Dkt. 98 at 12 n.9. The injunction
required petitioner to deliver any infringing “labels,
signs, prints, packages, wrappers, receptacles, and
advertisements” to respondents or permanently
dispose of them himself. Id. at 13 n.9.
The injunction stated that “[s]ubject to the fore-
going,” petitioner could “use these terms in a non-
trademark sense.” Ibid. The injunction gave exam-
ples of such permitted uses: “oral or written use of the
marks to refer to the [respondents]” or “oral or writ-
ten use of certain terms in a non-trademark descrip-
tive sense, such as ‘this Church honors the Sabbath
on the “seventh day,” ’ or ‘the members of this church
believe in the “advent” of Christ.’ ” Ibid.
 8

3. The court of appeals affirmed. App., infra, 1a-

32a. The court addressed the applicability of RFRA
because it determined that the default judgment did
not preclude review of whether the motion to dismiss
should have been granted. App., infra, 10a.
The court of appeals held that “RFRA would
appear to trigger strict scrutiny in this case.” App.,
infra, 16a. It explained that to trigger strict scrutiny,
a party must show a governmental action that
“(1) substantially burden[s], (2) a religious belief
rather than a philosophy or way of life, (3) which
belief is sincerely held.” App., infra, 16a. The court
noted that “no one has questioned the sincerity of
[petitioner’s] belief that God requires him to continue
his infringing use of the plaintiffs’ marks.” The court
also acknowledged that “[b]eing compelled to stop
could substantially burden his religious practice.”
App., infra, 16a.
The court of appeals held, nonetheless, that
petitioner “cannot claim the benefit of RFRA” because
“the defense does not apply in suits between private
parties.” App., infra, 17a. The court relied almost
exclusively on the dissenting opinion by then-Judge
Sotomayor in Hankins v. Lyght, 441 F.3d 96 (2d Cir.
2006). App., infra, 17a-19a.
The court of appeals expressly refused to “follow
the Hankins majority” that “found RFRA’s language
broad enough to apply ‘to an action by a private party
seeking relief under a federal statute against another
private party who claims that the federal statute
 9

substantially burdens his or her exercise of religion.’ ”

App., infra, 19a (quoting Hankins, 441 F.3d at 103).
Because the court of appeals ruled against peti-
tioner’s RFRA claim on that threshold ground, it did
not decide whether the district court erred in finding
that RFRA was an affirmative defense that had to be
raised in his answer to the complaint. App., infra,
17a n.3.
The court of appeals then held that, absent
RFRA’s application, summary judgment was properly
entered for respondents under the Lanham Act with
regard to the “Seventh-day Adventist” mark. App.,
infra, 27a-32a.
4. While the case was on appeal, respondents
sought to enforce the injunction against petitioner.
The district court found that petitioner had willfully
failed to abide by the injunction by, inter alia, using
signs and promotional materials that used respon-
dents’ marks. App., infra, 34a.
The district court thus authorized respondents
and their agents “to remove and permanently dispose
of [petitioner’s] signs and promotional materials that
violate the Injunction Order.” App., infra, 36a. Re-
spondents’ agents removed the church signs and
other infringing materials from petitioner’s church on
 10

February 16, 2010, Dt. Ct. Dkt. 136 at 6, and again

on October 6, 2010, Dt. Ct. Dkt. 148 at 4.1
Respondents believe they possess the “ongoing
authority to remove and permanently dispose of
[petitioner’s] signs and promotional materials that
violate the Injunction Order” based on the “standing
authority of the prior Orders of the Court.” Dt. Ct.
Dkt. 148 at 4 n.1.
REASONS FOR GRANTING THE PETITION
REVIEW IS NECESSARY BECAUSE SIX
COURTS OF APPEALS ARE EVENLY DIVIDED
AS TO WHETHER ALL PRIVATE LITIGATION
APPLYING FEDERAL LAW IN FEDERAL
COURTS IS EXCLUDED FROM RFRA’S
SCOPE
A. The Ruling Below Joins One Side Of A
Circuit Split Regarding RFRA’s Appli-
cation That Will Not Be Resolved Absent
This Court’s Review
There is now a 3-to-3 circuit split on the question
presented. Contrary to the decision below, the
Second, Eighth, and D.C. Circuits have held that
RFRA creates a defense in private civil litigation

1
Currently pending before the district court is a report and
recommendation by a magistrate judge that petitioner be found
in contempt for encouraging another person to restore the signs
to the church, as well as for failing to comply with discovery
requests. Dt. Ct. Dkt. 136 at 6, 8. Petitioner himself is currently
in Africa doing mission work. Id. at 3.
 11

involving federal law. The Sixth Circuit acknowl-

edged that this was an issue that had divided the
courts of appeals (App., infra, 19a), and joined the
views of the Fifth and Seventh Circuits. The Ninth
Circuit has expressed doubts about RFRA’s appli-
cability to private civil actions, but twice avoided
resolving the issue. This Court’s review is necessary
so that RFRA’s broad protections are uniformly
available nationwide.
1. In Hankins v. Lyght, 441 F.3d 96 (2d Cir.
2006), the Second Circuit held (over a dissent from
then-Judge Sotomayor) that RFRA applied in a
private suit brought by a minister who sued his
church regarding his compulsory retirement under
the federal Age Discrimination in Employment Act
(ADEA).
The majority in Hankins explained that RFRA’s
statutory text provides that it applies to “all federal
law, and the implementation of that law” and permits
a defendant to assert a violation of RFRA “as a
defense in a judicial proceeding.” Id. at 103 (quoting
42 U.S.C. §§ 2000bb-3(a), 2000bb-1(c)). This broad
language “easily covered” the case before the court,
the majority held. Ibid. The court held that the “only
conceivably narrowing language”—which prescribed
that a litigant could “obtain appropriate relief against
a government”—was best read as broadening the
remedies of the statute. Ibid. The majority held that
RFRA applied to all litigation in which federal law
substantially burdened the exercise of religion, not
 12

merely that litigation in which the government was a

party. Ibid.2
The Eighth Circuit also has held that RFRA
applies in a case in which the United States was not a
party. See Christians v. Crystal Evangelical Free
Church (In re Young), 82 F.3d 1407, 1416-1417 (8th
Cir. 1996), vacated, 521 U.S. 1114 (1997), reinstated,
141 F.3d 854 (8th Cir.), cert. denied, 525 U.S. 811
(1998). The court explained that “[t]he bankruptcy
code is federal law, the federal courts are a branch of
the United States, and [the court’s] decision would
involve the implementation of federal bankruptcy
law.” Id. at 1417. It thus held that a federal court’s
implementation of federal law falls within the ambit
of “government” as defined by RFRA, rendering the
statute applicable. Ibid. More broadly, the Eighth
Circuit held that RFRA must be interpreted as
amending all federal law, “engraft[ing] [an] additional
clause to [the Bankruptcy Code] that a recovery that
places a substantial burden on a debtor’s exercise of
religion will not be allowed” unless it satisfies the

2
Hankins remains the law in the Second Circuit. The Sixth
Circuit noted (App., infra, 20a) that in a subsequent case a
different panel of the Second Circuit expressed a preference for
the views of the dissent in Hankins. See Rweyemamu v. Cote,
520 F.3d 198, 204 (2d Cir. 2008). But that decision did not and
could not have overturned Hankins. See United States v.
Wilkerson, 361 F.3d 717, 732 (2d Cir.) (panel bound by prior
panel decision unless overruled en banc or by Supreme Court),
cert. denied, 543 U.S. 908 (2004).
 13

exception provided by RFRA. In re Young, 141 F.3d at

861.
The D.C. Circuit also applied RFRA to bar a
private plaintiff ’s federal action in EEOC v. Catholic
University of America, 83 F.3d 455, 467-470 (D.C. Cir.
1996). That appeal arose from two actions—one
brought by a private plaintiff and one brought by the
EEOC. By applying RFRA to bar the private plain-
tiff ’s claims as well as the EEOC’s, the D.C. Circuit
effectively held that RFRA applies to private parties.
2. The Seventh Circuit, by contrast, has held
that RFRA does not apply to suits between purely
private parties and rejected the Hankins decision.
See Tomic v. Catholic Diocese of Peoria, 442 F.3d 1036
(7th Cir.), cert. denied, 549 U.S. 881 (2006). Citing
the use of the word “government” in RFRA, Judge
Posner summarily concluded: “The decision [Hankins]
is unsound. RFRA is applicable only to suits to which
the government is a party.” Id. at 1042.
Likewise, the Fifth Circuit, in an unpublished
opinion, affirmed a published district court decision
holding that RFRA does not apply to private parties.
Boggan v. Mississippi Conference of the United Meth-
odist Church, 433 F. Supp. 2d 762 (S.D. Miss. 2006),
aff ’d, 222 Fed. App’x 352 (5th Cir.), cert. denied, 552
U.S. 813 (2007).
3. Finally, in this case, the Sixth Circuit relied
on two Ninth Circuit cases that further demonstrate
the need for this Court’s review. App., infra, 20a.
 14

In Sutton v. Providence St. Joseph Medical Center,

192 F.3d 826, 837-838 (9th Cir. 1999), the Ninth
Circuit merely held that the defendant hospital was
not acting under “color of law” when it refused to hire
a plaintiff who would not provide his social security
number to the hospital as federal law required.
Subsequently, the Ninth Circuit declined to
resolve the “knotty question” whether RFRA applied
to private litigation. It simply assumed it did and
held that the defendant had not demonstrated a
substantial burden on its exercise of religion. The
court noted, however, that “[i]t seems unlikely that
the government action Congress envisioned in adopt-
ing RFRA included the protection of intellectual
property rights against unauthorized appropriation.”
Worldwide Church of God v. Philadelphia Church of
God, Inc., 227 F.3d 1110, 1121 (9th Cir. 2000), cert.
denied, 532 U.S. 958 (2001).
The division in the courts of appeals is mature,
recurring and widespread. No appellate court that
has decided the question presented has switched
sides, and there are reasoned rulings on both sides of
the conflict. There is no reason to believe that this
conflict can be resolved absent this Court’s review.
On that basis alone, certiorari should be granted.
 15

B. The Decision Below Contravenes RFRA’s

Text And The History Of Its 2000 Amend-
ments
The Court also should grant review because the
ruling below cannot be reconciled with RFRA’s text
and history.
1. RFRA’s broad text demonstrates its ap-
plicability to all private civil actions in
federal court
a. By its plain language, RFRA applies to “all
Federal law.” 42 U.S.C. § 2000bb-1. By using such
expansive text, RFRA is best understood as an
amendment to the “entire United States Code” to pro-
hibit unwarranted substantial burdens on the exer-
cise of religion. Rweyemamu v. Cote, 520 F.3d 198,
202 (2d Cir. 2008) (emphasis added); see also In re
Young, 141 F.3d at 856; Worldwide Church of God,
227 F.3d at 1120; Catholic Univ. of Am., 83 F.3d at
468. RFRA therefore amended every federal statute
creating private causes of action, including the Lan-
ham Act, to limit their applicability in cases where a
significant burden is placed on the exercise of reli-
gion. Had Congress intended to cabin RFRA like the
ruling below, it would have drafted the statute to
apply only to “all Federal law in cases where the
United States is a party.”
b. RFRA’s definition of “government” as in-
cluding a “branch” of the United States, 42 U.S.C.
§ 2000bb-2(1), further demonstrates that RFRA
applies to private civil actions brought in federal
 16

court. The term “branch” of the United States un-

ambiguously includes the federal courts. BLACK’S LAW
DICTIONARY 864 (8th ed., 1st reprint 2004) (defining
“judiciary” as that “branch of government responsible
for interpreting the laws and administering justice”).
Indeed, the United States has urged the same read-
ing of RFRA. It argued that “a ruling by this Court
itself concerning applicability of [the bankruptcy
provision] would constitute ‘implementation’ of that
law [by a government], since RFRA applies to all
branches and units of federal, state, and local gov-
ernment.” U.S. Brief as Intervenor at 29, In re
Young, 82 F.3d 1407 (8th Cir. 1996) (No. 93-2267).
The Eighth Circuit reached the same conclusion on
3
this point. In re Young, 82 F.3d at 1416-1417.
RFRA’s definition of “government” as including a
“person acting under color of law” likewise demon-
strates RFRA’s application to civil litigation. A fed-
eral judge is plainly acting under color of law. See
Edmonson v. Leesville Concrete Co., 500 U.S. 614, 624
(1991) (judge “beyond all question is a state actor”).
And, at many stages of a civil action, a private liti-
gant may also act “under color of law.” See, e.g., id. at

3
The United States ultimately withdrew its appellate brief
in that case (which urged that RFRA applied but that the
religious claimant should lose) because the President did not
believe it was supportive enough of the religious claimant. In re
Young, 82 F.3d at 1413; Drew S. Days, III, When the President
Says ‘No’: A Few Thoughts on Executive Power and the Tradition
of Solicitor General Independence, 3 J. APP. PRAC. & PROCESS
509, 517-518 (2001).
 17

623-628 (jury selection); Lugar v. Edmondson Oil Co.,

457 U.S. 922, 942 (1982) (“invoking the aid of state
officials to take advantage of state-created attach-
ment procedures”).4
c. Moreover, Congress intended RFRA to mimic
the scope of the Free Exercise Clause, which applies
in civil litigation where the government is not a party
because courts are part of the government. See, e.g.,
Jones v. Wolf, 443 U.S. 595 (1979); Presbyterian
Church in the United States v. Mary Elizabeth Blue
Hull Memorial Presbyterian Church, 393 U.S. 440
(1969); see also New York Times Co. v. Sullivan, 376
U.S. 254, 265 (1964) (First Amendment applies to
state law governing private tort actions).
RFRA’s preambulatory findings and statement of
purpose made clear that Congress intended to sup-
plement the Free Exercise Clause (as interpreted by
this Court in Smith) by applying the “compelling
interest test” in “all cases where free exercise of
religion is substantially burdened.” 42 U.S.C.
§ 2000bb(b)(1) (emphasis added). Indeed, in holding
RFRA unconstitutional as applied to state and local
governments, this Court explained:

4
In this case, for example, respondents claim that the
district court gave them the “ongoing authority” to enter peti-
tioner’s church “to remove and permanently dispose of [petition-
er’s] signs and promotional materials that violate the Injunction
Order.” Dt. Ct. Dkt. 148 at 4 n.1.
 18

Sweeping coverage ensures its intrusion at

every level of government, displacing laws
and prohibiting official actions of almost eve-
ry description and regardless of subject mat-
ter. * * * Any law is subject to challenge at
any time by any individual who alleges a
substantial burden on his or her free exercise
of religion.
City of Boerne v. Flores, 521 U.S. 507, 532 (1997).
d. Nor does the fact that Section 2000bb-1(b)
imposes the obligation on the “government [to]
demonstrate * * * that the application of the burden”
is the least restrictive means of furthering a compelling
governmental interest counsel against the application
of RFRA to this case. App., infra, 18a-19a.
There is nothing unusual about a private party
being required to prove that a statute satisfies
heightened scrutiny. For example, RFRA authorizes
individuals to bring RFRA claims seeking appropriate
relief from “official[s]” and “other person[s] acting
under color of law.” 42 U.S.C. § 2000bb-2(1). That
authorization encompasses suits against federal
officials in their individual capacities for money
damages. See Availability of Money Damages under
the Religious Freedom Restoration Act, 18 Op. O.L.C.
180, 182-183 (1994). In those suits, the federal
government is not a necessary party and the Depart-
ment of Justice may not represent the named individ-
ual. In such instances, a private individual must
demonstrate that the substantial burden on religion
 19

was justified by a compelling interest and was nar-

rowly tailored to that interest.
Indeed, private parties often have been called on
to demonstrate that a statute is narrowly tailored
and furthers a compelling government interest. See,
e.g., Boy Scouts of America v. Dale, 530 U.S. 640
(2000) (in private suit under state law that involved
burden on First Amendment right to associate, Court
addressed State’s compelling interest even in absence
of State as party); Board of Directors of Rotary Int’l v.
Rotary Club of Duarte, 481 U.S. 537 (1987) (same);
Palmore v. Sidoti, 466 U.S. 429 (1984) (in custody suit
between private parties in which state court considered
race, Court applied strict scrutiny even in the absence
of State as a party).5

5
That was, moreover, precisely what Congress expected
would happen. See 145 Cong. Rec. H5590 (daily ed. July 15,
1999) (statement of Rep. Conyers) (federal law “would require
individuals proceeding under such State and local antidiscrimi-
nation law to prove that the law they wish to utilize is a least
restrictive means of furthering a compelling governmental
interest”); see also Religious Liberty: Hearing Before the S.
Judiciary Comm., 106th Cong. 155, 163 (1999) (in response to
questions on this point, Gene C. Schaerr and Chai Feldblum
both noted that the burden would initially fall on private
plaintiffs but that relevant government agencies and interest
groups could intervene to defend the law if needed).
 20

2. The ruling below is contrary to RFRA

and its amendment’s legislative history
Review is also warranted because the ruling
below cannot be reconciled with RFRA’s legislative
history.
RFRA was enacted against the backdrop of
private litigation burdening the exercise of religious
freedom. Many of the problems Congress heard
about prior to enacting RFRA involved civil litigation
between private parties. In enacting the original
statute, Congress relied on a Congressional Research
Service report that cited a number of examples,
including a private wrongful death suit in which a
Jehovah’s Witness’s decision to refuse blood trans-
fusions was relied on to avoid liability; a private
discrimination suit against the Boy Scouts under a
public accommodations law; a private suit to enforce
the Age Discrimination in Employment Act; a private
suit by an associate pastor against a church for wrong-
ful termination; and a private suit by Planned Par-
enthood against an anti-abortion activist. See David
Ackerman, Congressional Research Serv., Library of
Congress, The Religious Freedom Restoration Act and
 21

the Religious Freedom Act: A Legal Analysis 14-17

(1992).6
Moreover, after this Court held in City of Boerne
that RFRA was unconstitutional as applied to state
and local governments, Congress again considered
whether the compelling interest standard should
apply to States and localities in a proposed act called
the Religious Liberty Protection Act (RLPA), which
would have also amended RFRA.
Opposition arose on the ground that the compel-
ling interest standard would be used to challenge the
application of anti-discrimination laws in employment,
housing, and public accommodation—all of which were
enforceable through private civil actions. Because
RLPA would, like RFRA, “authorize[ ] individuals to
raise a religious liberty affirmative defense in any
judicial proceeding,” the defense “could be asserted
against federal civil rights plaintiffs in cases concern-
ing disability, sexual orientation, familial status and
pregnancy.” H.R. Rep. No. 106-219, at 38 (1999)
(dissenting views). And opponents to RLPA noted
that RFRA had previously been applied to private
6
Extensive hearing testimony provided further examples
before Congress. See, e.g., Religious Freedom Restoration Act of
1991: Hearings on H.R. 2797 Before the Subcomm. on Civil &
Const. Rights of the H. Comm. on the Judiciary, 102d Cong. 363-
369 (1992) (testimony regarding private civil litigation where
Free Exercise claim was raised and where RFRA would apply a
different test); The Religious Freedom Restoration Act: Hearing
on S. 2969 Before the Senate Comm. on Judiciary, 102d Cong.
52-55, 65, 158-159 (1992) (same).
 22

civil actions. See Religious Liberty: Hearing Before

the Senate Judiciary Comm., 106th Cong. 68 (1999)
(statement of Sen. Leahy) (discussing court’s reliance
on RFRA in child support dispute in Hunt v. Hunt,
648 A.2d 843 (Vt. 1994)); 145 Cong. Rec. H5591 (daily
ed. July 15, 1999) (statement of Rep. Conyers) (warn-
ing that passage of RLPA would permit reliance on
statutory religious liberty defense in private actions
for child support, wrongful death, and civil discovery
requests).
Supporters likewise understood that RLPA would
extend to private civil actions. The House Report
gave the examples of private “litigants attempting to
discover sacred confessional information for use in
civil lawsuits” as “instances where government action
thwarts the fulfillment of religious sacraments.” H.R.
Rep. No. 106-219, at 9; see also 145 Cong. Rec. H5588
(daily ed. July 15, 1999) (statement of Rep. Canady)
(“While RFRA was on the books, successful claimants
included * * * the Catholic University of America,
which was sued for gender discrimination by a canon-
law professor denied tenure.”).
In the end, Congress did not enact RLPA but
enacted RLUIPA, which targeted state and local land
use and treatment of prisoners. But at the same
time, Congress did not reduce RFRA’s breadth as
applied to the federal government. Instead, Congress
amended RFRA to remove its references to States in
order to “clarif [y] that RFRA applies to federal law,
policies, property, and employees.” H.R. Rep. No. 106-
219, at 13 n.48. It did nothing to restrict the RFRA’s
 23

scope, which had, to that point, consistently been

applied broadly to encompass private civil actions.
C. The Sixth Circuit’s Holding Addresses An
Issue Of Continuing Importance And This
Case Presents The Issue In An Ideal Pos-
ture
1. The Court should review and reverse the
Sixth Circuit’s decision because it affects a broad
swath of law.
The question presented arises in numerous
contexts on a regular basis in federal court where the
government plays limited, if any, enforcement role in
civil litigation. As in the present case, it can arise in
cases involving intellectual property. See Worldwide
Church of God, 227 F.3d at 1121 (copyright); Urantia
Found. v. Maaherra, 895 F. Supp. 1335 (D. Ariz. 1995)
(copyright and trademark).
It also comes up in the bankruptcy context,
where efforts by creditors to recover funds the debtor
gave a religious entity or to force the debtor to sell
religious property to pay debts substantially burdens
the debtors’ exercise of religion. See, e.g., Tort Claim-
ants Comm. v. Roman Catholic Archbishop of Port-
land (In re Roman Catholic Archbishop of Portland),
335 B.R. 842 (Bankr. D. Or. 2005); Watson v. Boyajian,
309 B.R. 652 (B.A.P. 1st Cir. 2004).
And private suits for employment discrimination
against religious employers also arise on a regular
 24

basis. See Redhead v. Conference of Seventh-day

Adventists, 440 F. Supp. 2d 211 (E.D.N.Y. 2006)
(pregnancy discrimination); Guinan v. Roman Catho-
lic Archdiocese of Indianapolis, 42 F. Supp. 2d 849
(S.D. Ind. 1998) (age discrimination); Powell v. Staf-
ford, 859 F. Supp. 1343 (D. Colo. 1994) (age discrimi-
nation); see also Intermountain Fair Housing Council
v. Boise Rescue Mission, No. CV-08-205, 2010 WL
1913379 (D. Idaho May 12, 2010) (claim of sex dis-
crimination by religious organization under Fair
Housing Act).
The interpretation of RFRA also has consequenc-
es for state law. Since Boerne, thirteen States have
enacted provisions virtually identical to RFRA to
govern their own laws and practices. See Combs v.
Homer-Center Sch. Dist., 540 F.3d 231, 261 n.47 (3d
Cir. 2008) (collecting laws). State courts, in turn,
have looked to the federal courts’ interpretation of the
federal RFRA in giving content to these state laws.
See, e.g., Barr v. City of Sinton, 295 S.W.3d 287, 296
(Tex. 2009) (“Because TRFRA, RFRA, and RLUIPA
were all enacted in response to Smith and were
animated in their common history, language, and
purpose by the same spirit of protection of religious
freedom, we will consider decisions applying the
federal statutes germane in applying the Texas
statute.”); Diggs v. Snyder, 775 N.E.2d 40, 44 (Ill.
App. Ct. 2002) (“[w]e may therefore turn to federal
cases for guidance”); In re Multi-Circuit Episcopal
Church Prop. Litig., 76 Va. Cir. 873, 879 (2008)
 25

(looking to the federal RFRA as persuasive). These

decisions further demonstrate the importance of
definitively resolving RFRA’s applicability to private
litigation.
2. This case presents the ideal vehicle to ad-
dress an issue that has divided the courts. As the
court of appeals recognized, petitioner plainly has
sincerely-held religious beliefs. App., infra, 16a.
Further, the issue is properly preserved, having been
both pressed by petitioner at every stage and passed
on below.
Finally, the issue is purely one of statutory
construction regarding the scope of RFRA’s coverage.
If the Sixth Circuit is reversed on that threshold
question, the case will have to be remanded for
further proceedings on whether petitioner has estab-
lished a prima facie case under RFRA and, if so,
whether the application of the Lanham Act to peti-
tioner comports with strict scrutiny.
 26

CONCLUSION
For the reasons set forth above, the petition for a
writ of certiorari should be granted.
Respectfully submitted,
CHARLES L. HOLLIDAY SETH M. GALANTER
SPRAGINS, BARNETT & Counsel of Record
COBB, PLC BRIAN R. MATSUI
312 East Lafayette MORRISON & FOERSTER LLP
Jackson, TN 38301 2000 Pennsylvania Ave., NW
Washington, DC 20006
(202) 887-6947
[email protected]
BENJAMIN R. CARLISLE
MORRISON & FOERSTER LLP
1290 Avenue of the Americas
New York, NY 10104
NOVEMBER 8, 2010
 1a

APPENDIX A
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
-----------------------------------------------------------------------

GENERAL CONFERENCE CORPORATION

OFSEVENTH-DAY ADVENTISTS
and GENERAL CONFERENCE OF
SEVENTH-DAY ADVENTISTS, an
Unincorporated Association,
Plaintiffs-Appellees, No. 09-5723
v.
WALTER MCGILL, d/b/a CREATION
7TH DAY ADVENTIST CHURCH et al.,
Defendant-Appellant.

Appeal from the United States District Court

for the Western District of Tennessee at Jackson.
No. 06-01207 – J. Daniel Breen, District Judge.
Argued: March 11, 2010
Decided and Filed: August 10, 2010
Before: KENNEDY, MOORE, and
SUTTON, Circuit Judges.
-----------------------------------------------------------------------

COUNSEL
ARGUED: Charles L. Holliday, SPRAGINS,
BARNETT & COBB, PLC, Jackson, Tennessee, for
 2a

Appellant. Joel T. Galanter, ADAMS AND REESE

LLP, Nashville, Tennessee, for Appellees. ON BRIEF:
Charles L. Holliday, SPRAGINS, BARNETT &
COBB, PLC, Jackson, Tennessee, for Appellant. Joel
T. Galanter, ADAMS AND REESE LLP, Nashville,
Tennessee, Emily C. Taube, ADAMS AND REESE
LLP, Memphis, Tennessee, for Appellees.
-----------------------------------------------------------------------

OPINION
-----------------------------------------------------------------------

KAREN NELSON MOORE, Circuit Judge. Plain-

tiffs General Conference Corporation of Seventh-day
Adventists (“General Conference Corporation”) and
General Conference of Seventh-day Adventists (“Gen-
eral Conference”) sued Walter McGill for trademark
infringement based on McGill’s use of their protected
marks in advertising and promoting his breakaway
church. McGill brought a motion to dismiss based on
the Free Exercise Clause and the Religious Freedom
Restoration Act (“RFRA”), which the district court
denied. The district court later granted partial sum-
mary judgment for the plaintiffs. After McGill’s
repeated refusal to appear for a court-ordered media-
tion to which he had initially consented, the district
court entered default judgment against him. He
now appeals. For the reasons discussed below, we
AFFIRM.
 3a

I. BACKGROUND
The district court discussed the relevant back-
ground of the litigation:
General Conference Corporation of
Seventh-day Adventists . . . is a corporation
whose principal place of business is located
in Maryland. ([Docket Entry (“D.E.”)] No. 37,
Pls.’ Statement of Undisputed Facts ¶ 9.)
The other Plaintiff, General Conference of
Seventh-day Adventists . . . is an unincor-
porated association that represents the in-
terests of the Seventh-day Adventist Church.
(Id. ¶ 10.) The General Conference was
formed in 1863, marking the official organi-
zation of the Seventh-day Adventist Church.
(D.E. No. 21, George W. Reid ThD’s Expert
Report ¶ 13.) The church grew out of several
congregations that believed that Christ’s
Second Advent was imminent and that the
Sabbath should be observed on the seventh
day of the week. (Id. ¶ 1.) The Plaintiffs’
expert, George Reid ThD, asserts that none
of these early churches called themselves
“Seventh-day Adventist” and that it was not
until the congregations came together to cre-
ate a formal church structure that the name
“Seventh-day Adventist” was chosen. (Id.
¶¶ 8-10.) Since the official formation of the
church, the names “Seventh-day Adventist”
and “SDA” have been used by the Seventh-
day Adventist Church as the church’s name,
and as its trade name in advertising and
publishing. (D.E. No. 37, Pls.’ Statement of
Undisputed Facts ¶ 40.) The church today
 4a

has approximately 968,604 members in the

United States, as well as 3,529 ministers and
5,316 congregations. (Id. ¶ 44.) Worldwide, it
has over fourteen million members, 16,892
ministers, and 121,625 congregations. (Id.)
The Corporation holds title to all of the
church’s assets. (D.E. No. 37, Pls.’ Statement
of Undisputed Facts ¶ 11.) It has registered
the marks “Seventh-day Adventist,” “Advent-
ist,” and “General Conference of Seventh-day
Adventists,” with the United States Patent
and Trademark Office. (Id. ¶¶ 17-23.) Regis-
tration number 1,177,185 protects the use of
the “Seventh-day Adventist” mark on reli-
gious books, magazines, pamphlets, newslet-
ters, brochures, encyclopedias, dictionaries,
commentaries, fliers, bulletins, yearbooks,
booklets, and bibles. (Id. ¶ 25.) It also pro-
tects its use for the establishment and ad-
ministration of employee health care and
benefit programs and medical insurance pro-
grams, as well as educational instruction
services at the grade school, high school, and
college level, and for film production and dis-
tribution services, health care services, and
religious observances and missionary ser-
vices. (Id.) Registration numbers 1,176,153
and 1,218,657 protect[ ] the “Advent[ist]” mark
for the same purposes. (Id. ¶¶ 26-27.) Regis-
tration number 1,171,760 protects the “Gen-
eral Conference of Seventh-day Adventists”
 5a

mark for church services. (Id. ¶ 28.)[1] “SDA”

is an acronym for “Seventh-day Adventist”
that has not been registered. (Id. ¶ 36.) The
Plaintiffs assert that they are “legally equiv-
alent terms,” however, and that “SDA” has
been used by the General Conference from
1863 onwards “as part of the corporate name,
the trade name, in advertising, in publishing
and publications, and in the performance of
services.” (Id. ¶¶ 40-41.)
The Defendant is the pastor of a church
he currently calls “A Creation Seventh Day
& Adventist Church,” (D.E. No. 37 Ex. 2 to
Pls.’ Statement of Undisputed Facts, Dep. of
Walter McGill, at 5), although in his Answer
to the Complaint he referred to it as the
“Creation Seventh Day Adventist Church,”
(D.E. No. 4, Answer, at 1). His church has
three members. (D.E. No. 37 Ex. 2 to Pls.’
Statement of Undisputed Facts, Dep. of Walter
McGill, at 7.) There is a second three-member
church associated with his, which has
the same name and is located in British
Columbia, Canada. (Id. at 8-9.) In addition,
there are other congregations that the De-
fendant “raised up” in the United States,
which have been apostatized, or diverted
from the faith. (Id. at 9.)
McGill was originally baptized in a Sev-
enth Day Adventist church affiliated with

1
The plaintiffs do not allege that McGill infringed the
trademark for “General Conference of Seventh-day Adventists.”
 6a

the Plaintiffs. (Id. at 16.) After several years,

however, the Defendant decided to separate
from the church because of a theological dis-
pute. (Id. at 18.) In 1990, McGill formed his
current church, taking its name from a di-
vine revelation. (Id. at 34, 37.) While the De-
fendant was aware that the Plaintiffs had
trademarked the name “Seventh Day Ad-
ventist,” he used it anyway, because he
believed that he was divinely mandated to
do so. (Id. at 40.) McGill has also created
the following internet domain names, among
others: “7th-day-adventist.org,” “creation-7th-day
adventist-church.org,” “creationseventhday-
adventistchurch.org,” “creationsda.org,” and
“csda.us.” (D.E. No. 37, Pls.’ Statement of
Undisputed Facts ¶¶ 13-14.) The Plaintiffs
have not granted him any licenses to use
their marks. (Id. ¶ 33.)
Gen. Conference Corp. of Seventh-day Adventists v.
McGill, 624 F. Supp. 2d 883, 888-90 (W.D. Tenn.
2008).
On September 22, 2006, the plaintiffs filed a com-
plaint in federal district court alleging trademark in-
fringement, unfair competition, and dilution of marks
under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a),
1125(c); cybersquatting under 15 U.S.C. § 1125(d)(1);
unfair and deceptive trade practices under the Ten-
nessee Consumer Protection Act, Tenn. Code Ann.
§ 47-18-101; common law trademark infringement
and unfair competition; and injury to business repu-
tation and dilution of marks under Tenn. Code Ann.
 7a

§ 47-25-513. McGill filed an answer on October 17,

2006, raising as affirmative defenses the First
Amendment, the Commerce Clause, laches, fair use,
failure to state a claim, the fact that the trademarked
terms are generic and that his use of similar terms do
not cause confusion, and the assertion that the plain-
tiffs had lost their right to trademark protection “by
deviation of doctrine from the religion of Seventh Day
Adventism as it was originally formed.” Answer
¶¶ 71-78 (Dist. Ct. Dkt. Doc. 4).
On September 26, 2007, McGill filed a motion to
dismiss. Therein, he argued that the court lacked
subject matter jurisdiction because it could not decide
the intellectual-property issue without resolving an
underlying dispute over religious doctrine. He also
argued that the plaintiffs had failed to state a claim
because RFRA renders trademark law inapplicable to
him and because “Seventh-Day Adventism” is a
religion and thus inherently generic and incapable of
being trademarked. The district court denied the
motion in full on May 5, 2008. It held that trademark
law was applicable despite the Free Exercise Clause,
that McGill had waived the RFRA defense by failing
to raise it in his answer, and that whether the trade-
marked terms are generic is a factual issue that could
not be resolved on a motion to dismiss.
On October 31, 2007, the plaintiffs moved for
summary judgment. On June 11, 2008, the district
court granted the motion in part and denied it in
part. The court determined that the trademarks for
“Seventh-day Adventist” and “Adventist” had become
 8a

“incontestable” under 15 U.S.C. § 1065, meaning that

they are presumptively valid and that McGill had the
burden of showing otherwise. The court concluded
that McGill could not overcome the presumption as to
“Seventh-day Adventist,” but that there was a genu-
ine issue of material fact as to the genericness of
“Adventist.” The court further found that the plain-
tiffs bore the burden of establishing the validity of
their “SDA” mark but were not entitled to summary
judgment on this point. The court then found that the
plaintiffs had established that McGill’s use of their
marks was likely to cause confusion among the rele-
vant audience. Finally, the district court rejected all
the defenses that McGill raised in his answer. In sum,
the district court granted the plaintiffs summary
judgment on their infringement claims with respect
to “Seventh-day Adventist” but denied it with respect
to “Adventist” and “SDA.”
During a May 30, 2008 telephone status confer-
ence, the parties agreed to mediate. The district judge
referred the case to a magistrate judge, who on June
3, 2008 (a week before the summary-judgment order
issued) scheduled the mediation for July 15, 2008.
Shortly before that date, McGill’s lawyer indicated
that McGill would not attend the mediation. On July
24, 2008, McGill’s lawyer filed a motion to amend the
pretrial order to remove the mediation requirement
because McGill’s “religious convictions will not allow
him to compromise his faith.” Mot. to Amend at 2
(Doc. 71). That same day, McGill’s lawyer moved to
withdraw. The district court granted the motion to
 9a

withdraw and denied McGill’s motion to amend,

ordering the parties to reset the mediation and warn-
ing that failure to attend could result in dismissal or
default judgment. The parties conferred with the
magistrate judge’s office. New counsel for McGill
indicated that McGill would not attend or allow
counsel to attend. The plaintiffs requested a status
conference, which was held on August 26, 2008. The
district court again ordered the parties to schedule
mediation and to certify to the court that they would
attend. The parties scheduled the mediation for
October 2, 2008. On September 4, 2008, the plaintiffs
filed a certification expressing their intent to attend
the conference, and defense counsel filed a certifica-
tion indicating that McGill would not attend. The
magistrate judge cancelled the mediation, and the
plaintiffs moved for default judgment due to McGill’s
repeated violation of the court’s order. On May 28,
2009, the district judge granted the motion. Gen.
Conference Corp. of Seventh-Day Adventists v. McGill,
No. 06-cv-1207, 2009 WL 1505738 (W.D. Tenn. May
28, 2009).
McGill then filed a notice of appeal and a motion
to stay the district court’s injunction against his
continued use of the marks in his promotional mate-
rials. The district court denied McGill’s motion to stay
and entered judgment.
 10a

II. ANALYSIS
McGill appeals the denial of his motion to dis-
miss, the grant of partial summary judgment to the
plaintiffs, and the entry of default judgment against
him. As the plaintiffs point out, although McGill
appealed the default-judgment order, he did not
present argument regarding that order in his brief
and has thus waived any argument that the order
should not have been entered. See Radvansky v. City
of Olmsted Falls, 395 F.3d 291, 311 (6th Cir. 2005).
The failure to challenge the default-judgment order,
however, does not end our inquiry. A default judgment
does not preclude review of whether the allegations in
the complaint, if taken as true, “were sufficient to
state a claim and support a judgment of liability.”
United States v. Conces, 507 F.3d 1028, 1038-39 (6th
Cir. 2007); see also Bank One of Cleveland, N.A. v.
Abbe, 916 F.2d 1067, 1079-80 (6th Cir. 1990). Fur-
thermore, it is not clear that the default-judgment
order superseded the summary-judgment order. Thus,
we review the district court’s denial of McGill’s mo-
tion to dismiss and its partial grant of the plaintiffs’
motion for summary judgment. In both cases, our
review is de novo. Autozone, Inc. v. Tandy Corp., 373
F.3d 786, 792 (6th Cir. 2004); Bird v. Parsons, 289
F.3d 865, 871 (6th Cir. 2002).
In challenging those orders, McGill makes four
arguments: (1) the district court lacked subject-
matter jurisdiction; (2) the district court should have
dismissed the case or denied summary judgment
under RFRA; (3) Seventh-day Adventism is a religion
 11a

and thus not eligible for trademark protection as a

matter of law; and (4) there were genuine issues of
material fact regarding whether the marks were
generic and concerning the likelihood of confusion
caused by McGill’s use of the marks.

A. Subject-Matter Jurisdiction
McGill argues that the First Amendment pre-
cluded the district court from exercising jurisdiction
because the district court could not apply neutral
principles of trademark law without resolving an
underlying doctrinal dispute: to wit, who are the
“true” Seventh-day Adventists. He argues in the
alternative that we should create a prudential excep-
tion of sorts to relinquish jurisdiction in cases like the
one at bar.
As this case involves the enforceability of
intellectual-property rights, it makes sense to con-
sider the Supreme Court’s precedents in the area
of church property disputes. See Maktab Tarighe
Oveyssi Shah Maghsoudi, Inc. v. Kianfar, 179 F.3d
1244, 1246-48 (9th Cir. 1999). The Supreme Court
has recognized that “First Amendment values are
plainly jeopardized when church property litigation is
made to turn on the resolution by civil courts of
controversies over religious doctrine and practice.”
Presbyterian Church v. Mary Elizabeth Blue Hull
Mem’l Presbyterian Church, 393 U.S. 440, 449 (1960).
But the Court has also held that courts may apply
“neutral principles of law” to resolve church property
 12a

disputes. Jones v. Wolf, 443 U.S. 595, 604 (1979); Md.

& Va. Eldership of the Churches of God v. Church of
God at Sharpsburg, Inc., 396 U.S. 367, 367-68 (1970).
Unlike in Presbyterian Church, in which property
rights turned on whether a church had abandoned
the tenets of the faith, this case does not require us to
decide any issue of church doctrine. Both the plain-
tiffs and McGill believe that the second coming of
Christ is imminent and that the Sabbath should
be celebrated on Saturday. Their dispute concerns
whether McGill can use the plaintiffs’ marks to pro-
mote his church’s services and materials. Plainly, the
case can be resolved using the neutral principles of
trademark law.
The Ninth Circuit case Maktab is instructive.
That case concerned a Sufi order in which property
rights, including the right to use certain trademarked
names and symbols, were passed from one spiritual
leader, known as the Teacher, to the next. The order
had splintered, and the two resulting sects disputed
which was the true successor to the last Teacher. The
district court held that it had no jurisdiction to re-
solve a trademark-infringement claim brought by one
sect against the other, as that would require it to
decide the doctrinal issue of proper succession. The
Ninth Circuit reversed, holding that “the district
court can apply the regular factors that courts employ
to determine infringement” and that “[t]he defen-
dants can raise neutral defenses, such as prior use of
the marks.” Maktab, 179 F.3d at 1249. Like Maktab,
the instant case can be resolved based on trademark
 13a

law, without addressing any doctrinal issues. Trade-

mark law will not turn on whether the plaintiffs’
members or McGill and his congregants are the true
believers.2
Anticipating the neutral-principles approach,
McGill asks us to create an exception to jurisdiction
for situations in which “there is (1) religious use of
(2) intellectual religious property and the application
of neutral principles could, in effect, (3) decide a
doctrinal dispute and (4) deprive one party the right
to the free exercise of its religion.” Appellant Br. at
13. In support of his proposed rule, McGill cites a set
of cases involving the so-called ministerial exception
to employment-discrimination statutes. The ministe-
rial exception “precludes subject matter jurisdiction
over claims involving the employment relationship
between a religious institution and its ministerial
employees, based on the institution’s constitutional
right to be free from judicial interference in the
selection of those employees.” Hollins v. Methodist
Healthcare, Inc., 474 F.3d 223, 225 (6th Cir. 2007). In
essence, McGill asks the panel to create an analog to
the ministerial exception under trademark law for
litigants in his position.

2
It is relevant, however, whether “Seventh-day Adventist”
describes a church or organization or, instead, a religion. If it
describes a religion, then the term would not be subject to
trademark protection. This is not a jurisdictional issue, but
rather an issue about the validity of the trademarks. We address
it below in Part C.
 14a

We decline the invitation. The ministerial excep-

tion is a highly circumscribed doctrine. It grew out of
the special considerations raised by the employment
claims of clergy, which “concern[ ] internal church
discipline, faith, and organization, all of which are
governed by ecclesiastical rule, custom, and law.”
Hutchison v. Thomas, 789 F.2d 392, 396 (6th Cir.
1986). In fact, in blessing the ministerial exception,
the Hutchison panel distinguished its facts from
church property cases. The panel acknowledged that
the neutral-principles approach governed in church
property cases, but emphasized that that approach
had never been applied to the realm of clergy em-
ployment and discipline. Id. It would be a perversion
of the case law, and contrary to the Jones line of
cases, now to carve out an exception to the neutral-
principles approach in property cases.
To sum up, the district court properly exercised
subject-matter jurisdiction over this case, and we do
so now, as well.

B. RFRA
McGill claimed below that the enforcement of the
plaintiffs’ trademarks would violate his Free Exercise
Clause rights because his religion mandates him to
call his church “Creation Seventh Day Adventist.” He
argues, in essence, that his religious beliefs require
him to violate the law and that the enforcement of the
law against him is therefore unconstitutional.
 15a

In Employment Division, Department of Human

Resources of Oregon v. Smith, 494 U.S. 872 (1990),
the Supreme Court held that “the right of free exer-
cise does not relieve an individual of the obligation
to comply with a ‘valid and neutral law of general
applicability on the ground that the law proscribes (or
prescribes) conduct that his religion prescribes (or
proscribes).” Id. at 879 (internal quotation marks
omitted) (holding that state could deny unemploy-
ment benefits to drug users, including Native Ameri-
cans who had ingested peyote for sacramental
purposes). Under Smith, McGill would have no free-
exercise defense to trademark law, which is neutral
and generally applicable. In 1993, however, Congress
enacted RFRA to restore the strict-scrutiny test of
Sherbert v. Verner, 374 U.S. 398 (1963), and Wisconsin
v. Yoder, 406 U.S. 205 (1972), that Smith had over-
ruled:
(a) In general
Government shall not substantially burden a
person’s exercise of religion even if the bur-
den results from a rule of general applica-
bility, except as provided in subsection (b) of
this section.
(b) Exception
Government may substantially burden a per-
son’s exercise of religion only if it demon-
strates that application of the burden to the
person –
 16a

(1) is in furtherance of a compelling

governmental interest; and
(2) is the least restrictive means of fur-
thering that compelling governmen-
tal interest.
42 U.S.C. § 2000bb-1. In City of Boerne v. Flores,
521 U.S. 507, 532-36 (1997), the Supreme Court
held that the enactment of RFRA, as applied to the
states, exceeded Congress’s remedial powers under
§ 5 of the Fourteenth Amendment. The Court has
since vindicated the application of RFRA against the
federal government. Gonzales v. O Centro Espirita
Beneficente Uniao Do Vegetal, 546 U.S. 418, 436
(2006) (upholding the grant of a preliminary injunc-
tion to potential targets of federal drug prosecution
under RFRA).
RFRA would appear to trigger strict scrutiny in
this case. For a party to assert RFRA as a claim or a
defense, “governmental action must (1) substantially
burden, (2) a religious belief rather than a philosophy
or way of life, (3) which belief is sincerely held.”
United States v. Meyers, 95 F.3d 1475, 1482 (10th Cir.
1996). So far, no one has questioned the sincerity of
McGill’s belief that God requires him to continue his
infringing use of the plaintiffs’ marks. Being com-
pelled to stop could substantially burden his religious
practice. See O Centro Espirita, 546 U.S. at 426
(government conceded that application of Controlled
Substances Act to plaintiffs, who received communion
through a sacramental tea containing a Schedule I
drug, would substantially burden a sincere exercise of
 17a

religion). McGill cannot claim the benefit of RFRA,

however, because as we explain, the defense does not
apply in suits between private parties.3
This case presents an issue of first impression in
this circuit: whether RFRA applies only in suits
against the government or also in suits by private
parties seeking to enforce federal law against other
private parties. The text of the statute makes quite
clear that Congress intended RFRA to apply only to
suits in which the government is a party. Then-Judge
Sotomayor discussed the relevant provisions in a
dissent in the Second Circuit:
Two provisions of the statute implicitly
limit its application to disputes in which the
government is a party. Section 2000bb-1(c)
states that “[a] person whose religious ex-
ercise has been burdened in violation of
this section may assert that violation as a
claim or defense in a judicial proceeding and
obtain appropriate relief against a govern-
ment” (emphasis added). . . . When read in
conjunction with the rest of the statute, . . .
it becomes clear that this section reflects
Congress’s understanding that RFRA claims
and defenses would be raised only against
the government. For instance, section

3
Because we hold that RFRA does not apply to suits be-
tween private parties, we do not reach the issues of whether
McGill waived the defense by failing to raise it in his answer
and whether the district court properly denied leave to amend
his answer.
 18a

2000bb-1(b) of RFRA provides that where a

law imposes a substantial burden on reli-
gion, the “government” must “demonstrate[ ]
. . . that application of the burden” is the
least restrictive means of furthering a com-
pelling governmental interest (emphasis
added). The statute defines “demonstrate” as
“meet[ing] the burdens of going forward with
the evidence and of persuasion.” 42 U.S.C.
§ 2000bb-2(3). Where, as here, the govern-
ment is not a party, it cannot “go[ ] forward”
with any evidence. In my view, this provision
strongly suggests that Congress did not in-
tend RFRA to apply in suits between private
parties.
I recognize that according to RFRA’s
“applicability” section, the statute applies “to
all Federal law.” 42 U.S.C. § 2000bb-3. This
provision, however, is not inconsistent with a
finding that the statute does not apply to
suits between private parties. Read in con-
junction with the rest of the statute, the pro-
vision simply requires courts to apply RFRA
“to all Federal law” in any lawsuit to which
the government is a party.
Hankins v. Lyght, 441 F.3d 96, 114-15 (2d Cir. 2006)
(Sotomayor, J., dissenting) (footnotes omitted). We
note further that Congress repeatedly referred to
government action in the findings and purposes
sections of RFRA. Congress found that “governments
should not substantially burden religious exercise
without compelling justification,” that the pre-Smith
regime had required that “the government justify
 19a

burdens on religious exercise,” and that strict scrutiny

was necessary for “striking sensible balances between
religious liberty and competing prior governmental
interests.” 42 U.S.C. § 2000bb(a) (emphases added).
Congress described RFRA’s purpose as “to provide a
claim or defense to persons whose religious exercise is
substantially burdened by government.” § 2000bb(b)
(emphasis added).
RFRA’s legislative history supports our view that
Congress did not intend the statute to apply against
private parties. “All of the examples cited in the
Senate and House Reports on RFRA involve actual or
hypothetical lawsuits in which the government is a
party. See S. Rep. No. 103-111 (1993); H.R. Rep. 103-
88 (1993).” Hankins, 441 F.3d at 115 n.9 (Sotomayor,
J., dissenting).
The majority in Hankins, however, saw things
differently. It found RFRA’s language broad enough to
apply “to an action by a private party seeking relief
under a federal statute against another private party
who claims that the federal statute substantially
burdens his or her exercise of religion.” Id. at 103. For
three reasons, we do not follow the Hankins majority.
First, as discussed above, RFRA’s text does not sup-
port the Hankins majority’s interpretation. Second,
the Hankins majority limited its holding to the appli-
cation of RFRA vis-a-vis federal laws that can be
enforced by private parties and the government. That
case concerned an action under the ADEA by a
clergyman who had been forced into retirement. The
ADEA claim could have been brought by the EEOC,
 20a

and the majority sought to avoid disparate applica-

tion of the statute based on who brings discrimination
charges. Id. There is no EEOC-like agency that
can bring trademark-enforcement actions. Third, a
different panel of the Second Circuit already has
expressed “doubts about Hankins’s determination
that RFRA applies to actions between private par-
ties.” Rweyemamu v. Cote, 520 F.3d 198, 203 (2d Cir.
2008). That panel stated that “we think the text of
RFRA is plain,” credited Judge Sotomayor’s dissent,
and concluded that RFRA should not apply to purely
private disputes “regardless of whether the govern-
ment is capable of enforcing the statute at issue.” Id.
at 203 n.2.
Meanwhile, the other two circuits to have
reached the issue have held that RFRA does not
apply to suits between private parties. See Tomic v.
Catholic Diocese of Peoria, 442 F.3d 1036, 1042 (7th
Cir. 2006) (calling the Hankins decision “unsound”
and explaining that “RFRA is applicable only to suits
to which the government is a party”); Worldwide
Church of God v. Phila. Church of God, Inc., 227 F.3d
1110, 1121 (9th Cir. 2000) (“It seems unlikely that the
government action Congress envisioned in adopting
RFRA included the protection of intellectual property
rights against unauthorized appropriation.”); Sutton
v. Providence St. Joseph Med. Ctr., 192 F.3d 826, 834,
837-43 (9th Cir. 1999) (noting that Congress did not
specify that RFRA applies to nongovernmental actors,
as it typically does when intending to regulate private
parties, and holding that private parties could not be
 21a

considered state actors under RFRA unless they acted

jointly with government officials to violate free-
exercise rights). We now join their ranks.

C. Whether “Seventh-day Adventism” Can Be

Trademarked
“The existence and extent of trademark protec-
tion for a particular term depends on that term’s
inherent distinctiveness. Courts have identified four
general categories of terms: (1) generic, (2) descrip-
tive, (3) suggestive, and (4) arbitrary or fanciful.”
Bath & Body Works, Inc. v. Luzier Personalized
Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir. 1996) (in-
ternal quotation marks omitted). “If a mark’s primary
significance is to describe a type of product rather
than the producer, it is generic. . . .” Nartron Corp. v.
STMicroelectronics, Inc., 305 F.3d 397, 404 (6th Cir.
2002). A generic mark cannot be protected as a
trademark. Leelanau Wine Cellars, Ltd. v. Black &
Red, Inc., 502 F.3d 504, 513 (6th Cir. 2007). McGill
argues that “Seventh-day Adventism” refers to a
religion, is therefore a generic term, and thus cannot
be trademarked.4

4
As the district court explained, the plaintiffs’ marks have
become “incontestable” under the Lanham Act. See 15 U.S.C.
§ 1065 (explaining that a mark can attain this status if it is
registered for five years and no adverse decision as to its
ownership or validity has been rendered). In Sovereign Order of
Saint John of Jerusalem, Inc. v. Grady, 119 F.3d 1236 (6th Cir.
1997), a panel of this court held that because the name of the
(Continued on following page)
 22a

McGill’s argument is certainly logical: well-

known terms that society understands to refer to a
particular faith in general are generic, and no single
party can prevent others from using them. See, e.g.,
Christian Science Bd. of Dirs. of the First Church of
Christ, Scientist v. Evans, 520 A.2d 1347, 1352-53
(N.J. 1987) (“Christian Science” is a religion and
therefore a generic name not entitled to trademark);
McDaniel v. Mirza Ahmad Sohrab, 27 N.Y.S. 2d 525,
527 (N.Y. Sup. Ct. 1941) (holding that Baha’ism is a
religion and that the use of word “Baha’i” could not be
enjoined because “members of the same religion[ ]
have an equal right to use the name of the religion”);
New Thought Church v. Chapin, 159 A.D. 723, 724-25
(N.Y. App. Div. 1913) (denying injunction because
plaintiffs claimed that “New Thought” referred to a
religion and they could not “claim a monopoly of
teaching this form of religious faith”); cf. TE-TA-MA

plaintiffs’ religious organization had become incontestable, it

could not be challenged on the ground that it was the generic
name of a religion. Id. at 1240-41 (holding that incontestable
marks are “subject only to the eight defenses specified in
§ 1115(b)”). This holding is directly contradicted by the text of
the incontestability provision, which states that “no incontest-
able right shall be acquired in a mark which is the generic name
for the goods or services or a portion thereof, for which it is
registered.” § 1065(4). The later case Nartron correctly articu-
lated the law in stating that a “mark’s incontestable status . . .
does not protect it from a challenge . . . premised on a claim that
it has become generic.” Nartron, 305 F.3d at 405; see also Park
‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 195 (1985)
(“An incontestable mark that becomes generic may be canceled
at any time pursuant to [15 U.S.C. § 1064].”).
 23a

Truth Found.-Family of URI, Inc. v. World Church of

the Creator, 297 F.3d 662, 666 (7th Cir. 2002)
(“Church of the Creator” describes a Christian de-
nomination, not a religion, and is not generic); Nat’l
Spiritual Assembly of the Baha’is Under the Heredi-
tary Guardianship, Inc. v. Nat’l Spiritual Assembly of
the Baha’is, Inc., 150 U.S.P.Q. 346, 354 (N.D. Ill.
1966) (enjoining defendants’ use of “Baha’i” because
“the public has come to recognize the designation[ ]
‘Baha’i’ . . . as identifying the [plaintiff organization]
and the Baha’i Faith as administered by [it]”).
This circuit has held that “[w]hether a name is
generic is a question of fact.” Bath & Body Works, 76
F.3d at 748. “The appropriate test for genericness is
whether the public perceives the term primarily as
the designation of the article.” Id. (internal quotation
marks omitted). It would be inappropriate to conclude
as a matter of law, regardless of the evidence that
could be adduced (and that was presented at sum-
mary judgment in this case), that the public considers
“Seventh-day Adventist” to refer generically to a
religion.5 See Gen. Conference Corp. of Seventh-day
Adventists v. Seventh-day Adventist Congregational
Church, 887 F.2d 228, 230-31 (9th Cir. 1989) (judg-
ment on the pleadings was improper because defen-
dants argued that Seventh-day Adventism was a

5
In their reply to McGill’s response to their summary-
judgment motion below, the plaintiffs stated that their organiza-
tion’s “members are followers of the Christian faith.” SJ Reply at
2 (Doc. 59).
 24a

religion and thus generic); Gen. Conference Corp. of

Seventh-day Adventists v. Perez, 97 F. Supp. 2d 1154,
1162 (S.D. Fla. 2000) (court, sitting as factfinder after
a bench trial, found that “Seventh-day Adventist”
referred to the plaintiffs’ church, not a religion, in the
eyes of the public); Stocker v. Gen. Conference Corp. of
Seventh-day Adventists, 39 U.S.P.Q. 2d 1385, 1996
WL 427638, at *11-17 (Trademark Tr. & App. Bd.
1996) (reviewing testimony, reference materials, and
survey evidence and concluding that petitioners had
not met burden of establishing genericness for cancel-
lation of trademark). But see Gen. Conference Corp. of
Seventh-day Adventists v. Seventh-day Adventist
Kinship, Int’l, Inc., No. CV 87-8113, 1991 WL
11000345, at *6-7 (C.D. Cal. Oct. 7, 1991) (holding,
apparently as a matter of law, that “Seventh-day
Adventist” has a dual meaning, referring to the
church and to adherents of the religion, and that a
support group for gay and lesbian followers could use
the term; but also noting that the result might be
different if the defendants had used “Seventh-day
Adventist” as part of a church’s name).
McGill makes one last effort to secure a legal
ruling of genericness. He argues that the plaintiffs
here should be collaterally estopped from denying
that “Seventh-day Adventist” refers to a religion
because that issue was decided in Benn v. Seventh-
day Adventist Church, 304 F. Supp. 2d 716 (D. Md.
2004). In Benn, a student in Trinidad injured himself
on a weekend retreat sponsored by an organization
affiliated with the General Conference’s church, and
 25a

he sued the “Seventh-Day Adventist Church” in tort.

The district court found that “there is no legal entity
known as the ‘Seventh-Day Adventist Church’ ” and
further remarked that “the Seventh-Day Adventist
Church is a religion, not a cognizable legal entity.” Id.
at 721. Inferring that the student intended to sue the
General Conference (one of the plaintiffs in the in-
stant case), the court noted that it could substitute
that entity as the defendant. But because the General
Conference is an unincorporated corporation, the
district court had to consider the citizenship of its
constituent unions and missions for diversity purpos-
es. Some of those constituent parts were aliens, like
the student himself, destroying diversity. Id. at 721-
22. The case therefore turned on the fact that the
student had sued a nonentity and that the substitu-
tion of the entity he had intended to sue removed
subject-matter jurisdiction. Thus, collateral estoppel
does not apply because the issue of whether Seventh-
day Adventism is a religion, even if it were actually
decided, was not necessary to the outcome in Benn.
See Schreiber v. Philips Display Components Co., 580
F.3d 355, 367 (6th Cir. 2009).
McGill has a stronger claim for judicial estoppel
based on arguments made by the General Conference
Corporation in a memorandum in Benn, which McGill
included in the record in the district court. The
plaintiff-student in Benn added the General Con-
ference Corporation as a defendant in his amended
complaint. In opposing the student’s motion to file a
second amended complaint, the General Conference
 26a

Corporation contended that dismissal was required

and argued the following: “By naming the ‘Seventh-
day Adventist Church’ as a defendant, Plaintiff
attempts to sue a religion rather than a religious
institution. . . . [T]he Seventh-day Adventist Church
is a religion that may be treated as an ‘unincorpo-
rated association’ only by resorting to an unconstitu-
tional fiction.” Benn, No. 03-330, Opp’n to Pl.’s Mot.
for Leave to File Second Am. Compl. (filed as attach-
ment to McGill’s Brief in Support of Motion to Dis-
miss, Doc. 30-11). We have previously discussed the
contours of judicial estoppel:
The doctrine of judicial estoppel bars a party
from (1) asserting a position that is contrary
to one that the party has asserted under oath
in a prior proceeding, where (2) the prior
court adopted the contrary position either as
a preliminary matter or as part of a final
disposition. A court should also consider
whether the party has gained an unfair
advantage from the court’s adoption of its
earlier inconsistent statement. Although
there is no set formula for assessing when
judicial estoppel should apply, it is well-
established that at a minimum, a party’s
later position must be clearly inconsistent
with its earlier position for judicial estoppel
to apply. Moreover, the doctrine of judicial
estoppel is applied with caution to avoid im-
pinging on the truth-seeking function of the
court because the doctrine precludes a con-
tradictory position without examining the
truth of either statement.
 27a

Lorillard Tobacco Co. v. Chester, Willcox & Saxbe,

LLP, 546 F.3d 752, 757 (6th Cir. 2008) (citations and
internal quotation marks omitted). It is clear that the
General Conference Corporation gained no unfair
advantage in Benn from that court’s crediting its
argument that “Seventh-day Adventist Church” refers
to a religion. The dispositive points in that case were
that “Seventh-day Adventist Church” was not a jural
entity and that the intended defendant, the unincor-
porated General Conference, was not diverse from the
plaintiff. Accordingly, judicial estoppel does not apply.

D. Summary Judgment
Finally, McGill challenges the district court’s
grant of summary judgment to the plaintiffs on trade-
mark infringement of the mark “Seventh-day Advent-
ist.” The plaintiffs claim that the default-judgment
order moots this issue because that order resolved the
entire case – that is, it provided an independent basis
for granting relief as to the “Seventh-day Adventist”
mark. McGill replies that the default-judgment order
pertained only to those claims that were not resolved
at summary judgment.
Both parties find support for their positions in
the district court’s own language. As McGill points
out, the district court concluded the default-judgment
order by stating that “default judgment will be
awarded to the Plaintiffs on their remaining claims.”
McGill, 2009 WL 1505738, at *7 (emphasis added).
On the other hand, other language in the order
 28a

suggests that the order encompassed all claims. After

declining the plaintiffs’ request to extend the grant of
partial summary judgment to cover the other marks
based on the safe-distance rule,6 the district court
noted that “default judgment as a sanction provides
an alternative and independent ground upon which
this Court may grant the Plaintiffs’ request for a per-
manent injunction.” Id. at *6. The same order pro-
vided the language of the preliminary injunction,
which included a prohibition on McGill’s use of
“Seventh-day Adventist.” Id. at *6 n.9. Furthermore,
in denying McGill’s motion to stay the injunction
pending appeal, the court remarked that “this case
was not decided on the merits of the claims.” Order
Denying Mot. to Stay at 3 (Doc. 103). It explained
that the case had been resolved on default judgment
based on “the Defendant’s willful refusal to comply
with this Court’s pretrial orders.” Id. That order,
however, came down after McGill had filed his notice
of appeal, and we cannot say with confidence either
that it merely clarified or that it sought to modify the
default-judgment order. Under these circumstances,
and given that McGill fully and properly litigated the
summary-judgment stage, we take the summary-
judgment order as properly before us.

6
Under this rule, advanced in Broderick & Bascom Rope
Co. v. Manoff, 41 F.2d 353 (6th Cir. 1930), a party can “be re-
quired to keep a safe distance away” from using terms that re-
semble the validly trademarked terms, even though the former
are not themselves protected. Id. at 354.
 29a

Summary judgment is appropriate when there

are no genuine issues of material fact and when the
moving party is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(c). This court’s focus must be on
“whether the evidence presents a sufficient disagree-
ment to require submission to a jury or whether it is
so one-sided that one party must prevail as a matter
of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
251-52 (1986). In conducting that inquiry, we draw all
reasonable inferences in favor of the nonmoving
party. DiCarlo v. Potter, 358 F.3d 408, 414 (6th Cir.
2004).
To prevail on their claim that McGill infringed
their “Seventh-day Adventist” mark, the plaintiffs
had to prove that their trademark was valid and that
McGill’s use of the mark was likely to cause confusion
among the relevant consumers of the parties’ services
and materials. See Daddy’s Junky Music Stores, Inc.
v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280
(6th Cir. 1997).
On validity, we agree with the district court
first, that the mark is presumptively nongeneric and
that McGill bore the burden of proving otherwise
(because the marks had become “incontestable,”
which McGill did not challenge), and second, that he
could not carry that burden. As noted above, the test
for whether a term is generic and therefore ineligible
for trademark protection is “whether the public
perceives the term primarily as the designation of the
article.” Bath & Body Works, 76 F.3d at 748 (internal
quotation marks omitted). McGill’s argument for
 30a

genericness is that “Seventh-day Adventist” describes

a religion, but he offers scant evidence that the public
perceives the term as referring to a particular set of
beliefs rather than to the plaintiffs’ church. McGill
works to show that the plaintiffs’ evidence – previous
judicial rulings, survey evidence, expert testimony –
does not establish nongenericness by a preponderance
of the evidence, but this approach gets the burden of
persuasion backwards. His own evidence consists of
(1) his personal testimony and that of a theology
graduate student, (2) a dictionary definition, (3) a
Wikipedia entry, (4) the fact that the plaintiffs use
“Seventh-day Adventist” as a noun rather than an
adjective, and (5) the fact that two breakaway
churches use the term in their names. McGill’s testi-
mony does not provide an objective appraisal of the
public’s view, and the graduate student’s opinion does
not appear to be based on any study of popular per-
ceptions. The dictionary and Wikipedia entries, mean-
while, concern the term “Adventist,” not “Seventh-day
Adventist.” And the noun/adjective distinction goes
not to genericness but to descriptiveness, which is no
shield against a mark that has become incontestable.
Park ‘N Fly, Inc., 469 U.S. at 196. Finally, the exis-
tence of the breakaway churches does little to help
McGill. As the district court wrote, “[i]f anything, the
fact that the Defendant can point to only two other
splinter groups founded in the last century that bear
the name supports the conclusion that members of
the relevant public would generally associate the
term with the churches affiliated with the General
Conference.” McGill, 624 F. Supp. 2d at 894.
 31a

Even taking the relevant public as “Christians

and, more specifically, Adventist Christians (that is,
those who believe in the nearness of the second
coming of Christ),” Stocker, 1996 WL 427638, at *11,
17, McGill has adduced insufficient evidence to show
that this group would understand “Seventh-day
Adventist” as referring to certain religious beliefs
rather than to the plaintiffs’ church.
We likewise agree with the district court that no
reasonable jury could find other than that McGill’s
use of the mark is likely to cause confusion among the
public. The plaintiffs retain the burden of persuasion
on this element. Interactive Prods. Corp. v. A2Z
Mobile Office Solutions, Inc., 326 F.3d 687, 694
(6th Cir. 2003). The following factors should be con-
sidered in determining likelihood of confusion: “1) the
strength of the senior mark; 2) relatedness of the
goods and services; 3) the similarity of the marks;
4) evidence of actual confusion; 5) the marketing
channels used; 6) likely degree of purchaser care;
7) the intent of the defendant in selecting the mark;
and 8) the likelihood of expansion of the product
lines.” Id. The district court considered these factors
and found that “[a]lmost every single factor weighs
in the Plaintiffs’ favor; those that do not are less
worthy of consideration when they favor an alleged
infringer.” McGill, 624 F. Supp. 2d at 900.
We will not review each factor here; suffice it to
say that we concur with the district court’s thoughtful
and thorough review of the evidence. Instead, we
address McGill’s main challenge to the district court’s
 32a

analysis, that it misjudged the factors in light of the

identity of the relevant public. McGill argues that the
relevant public – those who believe in the imminence
of Christ’s return and that the Sabbath should be
observed on Saturday – are so discerning that there is
a genuine issue of material fact about the likelihood
that they would confuse McGill’s church for the plain-
tiffs’ church. But while it may indeed be hard to en-
vision a person mistakenly joining the wrong church,
it is not at all difficult to imagine a person consuming
McGill’s published materials and ascribing his teach-
ings to the General Conference, especially in light of
the relatedness of the parties’ services and similarity
of the marks. Accordingly, we agree that the plaintiffs
were entitled to summary judgment on the likelihood
of confusion, and we uphold the district court’s judg-
ment as to the mark “Seventh-day Adventist.”7

III. CONCLUSION
For the reasons discussed above, we AFFIRM
the district court’s denial of McGill’s motion to dis-
miss, its grant of partial summary judgment to the
plaintiffs, and its default judgment against McGill.

7
McGill raised a number of defenses in his answer, but he
did not argue them at summary judgment and he does not do so
on appeal.
 33a

APPENDIX B
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
EASTERN DIVISION

GENERAL CONFERENCE
CORPORATION OF SEVENTH-
DAY ADVENTISTS and
GENERAL CONFERENCE OF
SEVENTH-DAY ADVENTISTS,
an Unincorporated Association,
Plaintiffs, No. 06-1207
v.
WALTER MCGILL, d/b/a
CREATION SEVENTH DAY
ADVENTIST CHURCH, et al.,
Defendants.

ORDER ADOPTING REPORT

AND RECOMMENDATION

(Filed Jan. 6, 2010)

Before the Court is the Report and Recommenda-
tion on Contempt and Sanctions issued by United
States Magistrate Judge Edward G. Bryant on De-
cember 14, 2009, pursuant to an order of reference, in
which Judge Bryant recommended, inter alia, that
Defendant, Walter McGill, be held in civil contempt.
(Docket Entry (“D.E.”) No. 111.) The report sets forth
a thorough and accurate assessment of the applicable
law, which need not be repeated here, and recounts
 34a

numerous efforts on the part of both the Court and

the Plaintiffs to inveigle the Defendant’s cooperation
with procedural rules and court orders – all to no
avail, despite repeated warnings that Defendant’s
continued recalcitrance could result in a finding of
contempt for his violation of this Court’s May 28,
2009 Injunction Order (the “Injunction Order”). (D.E.
No. 98.)
The magistrate judge’s recommendation that
Defendant be held in contempt was based on the
Defendant’s failure to comply with the Injunction
Order – specifically, through the continued use of
proscribed domain names and websites, as well as
signs and promotional materials that violate the
injunction. This Court scheduled a hearing for
November 5, 2009 on Plaintiffs’ Renewed Motion and
Memorandum for an Order to Show Cause (D.E. No.
105), but the Defendant neither responded to the
motion nor appeared at the hearing. Further, the
Plaintiff has failed to file an objection to the report
and recommendation, and the time for doing so has
elapsed.
Therefore, the magistrate judge’s report and
recommendation is hereby ADOPTED in full. The
Court holds the Defendant in contempt for his willful
failure to abide by this Court’s orders. Pursuant to
the magistrate judge’s recommendation, the Court
finds that limited discovery is appropriate for the
purpose of permitting Plaintiffs to ascertain the
identities of those who may have acted in concert
with Defendant in this matter. Defendant is hereby
 35a

ORDERED to cooperate fully with Plaintiffs in such

limited discovery. The Court further finds that the
following domain names and the websites located at
such domain names violate the Injunction Order, and
that all persons acting in concert with Defendant –
including any website hosting companies and domain
name registrars – are hereby ENJOINED from using
or enabling the use of such domain names and web-
sites:
www.creationseventhdayadventistchurch.ca
www.csdadventistchurch.co.cc
www.csdachurch.co.cc/
www.csdachurch.0adz.com
www.creationsdadventistrelief.to
www.csda-adventistchurch.to
www.creationsdadventistrelief.to
www.adventistry.org
www.creationseventhdayadventist.org.rw
www.creationsdarelief.0adz.com
www.seventhdayadventistsda-v-creation7thday
adventistcsda-uslawsuit.net
www.seventhdayadventism.org
www.7thdayadventism.org/
www.whypastorwaltermcgillisnotaffiliatedwithgcsda
adventistchurch.net
www.csdachurch.wordpress.com
www.csda-korea.org
www.creationseventhdayadventistreliefprojectsint.ltd.ug
www.seventhdayadventistchurchfoundwanting.us
www.home.comcast.net/~7thdayadventist
www.home.comcast.net/~csdachurch
www.home.comcast.net/~creationsda
www.home.comcast.net/~creation-adventist
www.binaryangel.net
 36a

www.thefourthangel.net
www.home.comcast.net/~creation-sabbath
www.home.comcast.net/~barbara_lim
www.home.comcast.net/~crmin
The Court further holds that Plaintiffs or their
agents should be and are permitted to remove and
permanently dispose of Defendant’s signs and promo-
tional materials that violate the Injunction Order,
with the costs of such removal and disposal to be
taxed to Defendant. Defendant’s counsel should
accompany Plaintiffs or their agent(s) during the
removal of any infringing materials, and prior to the
removal of any such signs or materials, Plaintiffs’
counsel shall notify Defendant and any building
managers, property owners, or landlords who may be
affected. Finally, the Court ORDERS the Defendant
to pay attorneys’ fees and costs to the Plaintiffs in the
amount of $35,567.00.
IT IS SO ORDERED this, the 6th day of Janu-
ary, 2010.
s/ J. DANIEL BREEN
UNITED STATES
DISTRICT JUDGE
 37a

APPENDIX C
§ 2000bb. Congressional findings and declara-
tion of purposes
(a) Findings
The Congress finds that –
(1) the framers of the Constitution, recog-
nizing free exercise of religion as an unalien-
able right, secured its protection in the First
Amendment to the Constitution;
(2) laws “neutral” toward religion may bur-
den religious exercise as surely as laws in-
tended to interfere with religious exercise;
(3) governments should not substantially
burden religious exercise without compelling
justification;
(4) in Employment Division v. Smith, 494
U.S. 872 (1990) the Supreme Court virtually
eliminated the requirement that the gov-
ernment justify burdens on religious exercise
imposed by laws neutral toward religion; and
(5) the compelling interest test as set forth
in prior Federal court rulings is a workable
test for striking sensible balances between
religious liberty and competing prior gov-
ernmental interests.
(b) Purposes
The purposes of this chapter are –
(1) to restore the compelling interest test as
set forth in Sherbert v. Verner, 374 U.S. 398
 38a

(1963) and Wisconsin v. Yoder, 406 U.S. 205

(1972) and to guarantee its application in all
cases where free exercise of religion is sub-
stantially burdened; and
(2) to provide a claim or defense to persons
whose religious exercise is substantially bur-
dened by government.

§ 2000bb-1. Free exercise of religion protected

(a) In general
Government shall not substantially burden a
person’s exercise of religion even if the burden results
from a rule of general applicability, except as provid-
ed in subsection (b) of this section.
(b) Exception
Government may substantially burden a person’s
exercise of religion only if it demonstrates that appli-
cation of the burden to the person –
(1) is in furtherance of a compelling gov-
ernmental interest; and
(2) is the least restrictive means of further-
ing that compelling governmental interest.
(c) Judicial relief
A person whose religious exercise has been
burdened in violation of this section may assert that
violation as a claim or defense in a judicial proceeding
and obtain appropriate relief against a government.
 39a

Standing to assert a claim or defense under this

section shall be governed by the general rules of
standing under article III of the Constitution.

§ 2000bb-2. Definitions
As used in this chapter –
(1) the term “government” includes a
branch, department, agency, instrumentality,
and official (or other person acting under
color of law) of the United States, or of a
covered entity;
(2) the term “covered entity” means the
District of Columbia, the Commonwealth of
Puerto Rico, and each territory and posses-
sion of the United States;
(3) the term “demonstrates” means meets
the burdens of going forward with the evi-
dence and of persuasion; and
(4) the term “exercise of religion” means
religious exercise, as defined in section
2000cc-5 of this title.

§ 2000bb-3. Applicability
(a) In general
This chapter applies to all Federal law, and the
implementation of that law, whether statutory or
otherwise, and whether adopted before or after No-
vember 16, 1993.
 40a

(b) Rule of construction

Federal statutory law adopted after November
16, 1993 is subject to this chapter unless such law
explicitly excludes such application by reference to
this chapter.
(c) Religious belief unaffected
Nothing in this chapter shall be construed to
authorize any government to burden any religious
belief.

§ 2000bb-4. Establishment clause unaffected

Nothing in this chapter shall be construed to
affect, interpret, or in any way address that portion of
the First Amendment prohibiting laws respecting the
establishment of religion (referred to in this section
as the “Establishment Clause”). Granting govern-
ment funding, benefits, or exemptions, to the extent
permissible under the Establishment Clause, shall
not constitute a violation of this chapter. As used in
this section, the term “granting”, used with respect to
government funding, benefits, or exemptions, does
not include the denial of government funding, bene-
fits, or exemptions.