Opinion
NO. 2011-CA-001830-MR
01-11-2013
THE JERUSALEM RIDGE BLUEGRASS MUSIC FOUNDATION OF KENTUCKY, INC., f/k/a THE BILL MONROE/BLUEGRASS MUSIC FOUNDATION OF KENTUCKY, INC. APPELLANT v. OHIO COUNTY INDUSTRIAL FOUNDATION, INC.; and OHIO COUNTY, KENTUCKY APPELLEES
BRIEF AND ORAL ARGUMENT FOR APPELLANT: M. Stephen Pitt Louisville, Kentucky BRIEF AND ORAL ARGUMENT FOR APPELLEES: Gregory B. Hill Hartford, Kentucky Whayne C. Priest, Jr. Bowling Green, Kentucky
NOT TO BE PUBLISHED
APPEAL FROM OHIO CIRCUIT COURT
HONORABLE RONNIE C. DORTCH, JUDGE
ACTION NO. 07-CI-00265
OPINION
REVERSING
BEFORE: MAZE, MOORE, AND TAYLOR, JUDGES. MOORE, JUDGE: William S. Monroe, also known as Bill Monroe, was born in 1911 near Rosine, Kentucky. He had a long and illustrious career as a musician until the year of his death in 1996, and is widely credited as being the "Father of Bluegrass Music." This appeal from Ohio Circuit Court concerns a dispute between two non-profit entities over the right to use his name. Below, appellant Bill Monroe/Bluegrass Music Foundation of Kentucky, Inc. (BMF), argued that it had received an assignment of that right from appellee Ohio County Industrial Foundation, Inc. (OCIF), based upon the actions of OCIF and principles of equity. Conversely, OCIF admitted that it had intended to eventually assign BMF its right to use the Bill Monroe name but asserted that it had never actually done so. Following a bench trial, the circuit court found in favor of OCIF. Upon review, we reverse.
Due to the temporary injunction described more fully below, BMF subsequently changed its corporate name, as it appears in the caption of this case, to "The Jerusalem Ridge Bluegrass Music Foundation of Kentucky, Inc." For the sake of clarity, we will nevertheless refer to the appellant as "BMF" throughout this opinion.
FACTUAL AND PROCEDURAL HISTORY
On October 29, 1999, OCIF entered into an agreement with James Monroe, the sole devisee and executor of the estate of William S. Monroe, to purchase a non-exclusive license to use the Bill Monroe name. In relevant part, their agreement provided:
2. Grant of License. Subject to the terms and conditions hereinafter contained, Monroe grants to the [OCIF], the non-exclusive license to utilize the name "Bill Monroe", together with the nickname, likeness, right of publicity and biographical sketch (collectively, the "Properties") on and in connection with the Bill Monroe Memorial (or Bluegrass) Park in Rosine, Ohio County, Kentucky (the "Park"), and on products which may be subsequently produced by the [OCIF] and/or Monroe relating to said Park pursuant to good faith negotiations and
agreement(s) between the parties (the "Licensed
Products"). . . .
. . .
9. Assignment: First Negotiation and Last Refusal. The [OCIF] may transfer and/or assign its rights under this Agreement to a permanent non-profit foundation or corporation which is responsible for and in charge of the development and operation of the Park, but otherwise may not transfer or assign this Agreement without the prior written consent of Monroe. . . .
The parties do not dispute that section "9" of this agreement gave OCIF the unqualified right to assign its rights regarding the Bill Monroe name to a permanent non-profit foundation or corporation responsible for and in charge of the development and operation of the "Park" described in section "2."
Thereafter, according to the minutes of a November 29, 2000 OCIF board of directors meeting, OCIF engaged its longstanding attorney, Frank Martin, to
prepar[e] by-laws for incorporation of a non-profit Foundation. This Foundation will have the right to use Bill Monroe's name. Monies from the county's escrow account can be used to pay an Executive Director. It is anticipated that local or nationally known bluegrass artists will be invited to serve on the board.
On January 1, 2001, OCIF then hired Dr. F. Campbell Mercer, at a base salary of $45,000 per year, to become the executive director of a second, to-be-formed non-profit entity that would be responsible for and in charge of the development and operation of the above-described park. The relevant parts of Mercer's contract with the OCIF provided:
1. Employment.
(a) Term. The [OCIF] hereby employs [Mercer] to serve as Executive Director of the Bill Monroe Bluegrass Music Foundation, a non-profit corporation to be established in cooperation with the officers of the [OCIF]. . . .
(b) Duties and Responsibilities. [Mercer] will be reporting to the Board of Directors of The Bill Monroe Bluegrass Music Foundation once established and to the [OCIF] and specifically the officers of the [OCIF] until said Bill Monroe Bluegrass Music Foundation is established. Within the limitations established by the Bylaws of the [OCIF], [Mercer] shall perform each and all of the duties and responsibilities of that position and such other or different duties on behalf of the [OCIF], or as may be assigned from time to time by the Board of Directors of the Bill Monroe Bluegrass Music Foundation once it is established. Specifically, the project that [Mercer] will be in charge of is termed The Rosine Project and its primary purpose is the preservation and promotion of Bill Monroe's musical legacy and its relation to the Rosine area of Kentucky. [Mercer's] duties include overseeing and directing the following: restoration of Bill Monroe's boyhood home and farm; restoration of Charlie Monroe's home; restoration of Uncle Pen's cabin, establishment of trails on the Monroe farms; development of Bill Monroe festivals sanctioned by the [OCIF] or the future Bill Monroe Bluegrass Music Foundation; public relations and marketing of The Rosine Project; the planning, and construction of The Bill Monroe Bluegrass Music Museum; land purchase on behalf of the Rosine Project, and day-to-day operations of The Rosine Project. In addition, [Mercer] will act as a liaison with state and local government, direct the operation of the museum once established, serve as a Bill Monroe Bluegrass Music Foundation/Rosine Project representative at such functions as the meetings of other local organizations dedicated to the preservation of Bill Monroe's legacy, and will direct fundraising efforts for The Rosine Project/Bill Monroe Bluegrass Music Foundation.
Thereafter, a non-profit entity named "The Bill Monroe/Bluegrass Music Foundation of Kentucky, Inc.," (i.e., appellant BMF) was, in the words of Mercer's employment contract with OCIF, "established in cooperation with the officers of the [OCIF]." On April 23, 2001, Frank Martin (the OCIF's attorney) acted consistently with the OCIF's November 29, 2000 board minutes by preparing and filing BMF's by-laws and articles of incorporation. BMF shared the same registered agent and attorney with OCIF (Frank Martin). In addition to Mercer, three of OCIF's directors (including OCIF's President, Hayward F. Spinks) sat on BMF's five-person board of directors. Furthermore, the purpose of BMF, as described in BMF's articles of incorporation, was the same purpose of the entity described in Mercer's employment contract:
ARTICLE II: PURPOSES
. . .
(B) . . . the particular purposes of the corporation are to promote and educate the public as to the significant and unique contribution of Bill Monroe, the Father of Bluegrass Music, as recognized in this country and throughout the world; to preserve and restore the facilities, structures, and areas located in and around Rosine, Ohio County, Kentucky which are uniquely connected with the birth, musical development, and lifetime achievements of Bill Monroe such as his old home place, Uncle Penn's [sic] cabin, burial place, and any other similar area which are connected to Bill Monroe in Ohio County, Kentucky.
Mercer became the executive director of BMF at its inception pursuant to his contract with OCIF. Later, during the bench trial of this matter, Mercer testified that he believed one of BMF's assets, as of its incorporation, was an assignment of OCIF's rights under the October 29, 1999 agreement. Spinks gave the same testimony, adding that it would have been very difficult if not impossible for BMF to have carried out its corporate purposes described in its articles of incorporation without such an assignment.
The entire OCIF board also recognized that the name "Bill Monroe" was incorporated into "The Bill Monroe/Bluegrass Music Foundation of Kentucky, Inc.," and it is undisputed that the OCIF, through its officers and agents, had full knowledge and notice of BMF's corporate purposes—corporate purposes that would necessarily bring BMF into conflict with OCIF's and James Monroe's rights to the Bill Monroe name if OCIF had not already assigned BMF its right to use that name. OCIF raised no objection to the name or corporate purposes of BMF. To the contrary, OCIF paid for BMF's incorporation expenses. OCIF claimed that it had incorporated BMF. And, on the date that BMF's articles of incorporation were filed of record, OCIF—through a resolution adopted by its board of directors —began to help BMF fulfill BMF's corporate purpose of promoting the Bill Monroe name. Specifically, OCIF advanced BMF $113,000 on April 23, 2001, to allow BMF to make a down payment on the purchase of a mandolin owned by Bill Monroe and to purchase various other articles of Bill Monroe memorabilia to use and display in the museum contemplated in Mercer's BMF executive director employment contract.
In relevant part, the minutes of a May 23, 2001 OCIF board of directors meeting recites:
Item 4. Annual Report. Hayward Spinks gave a brief report on [OCIF]'s activities for the preceding year. Namely, the acquisition of Daicel Industries in Bluegrass Crossings Business Centre, the incorporation of the Bill Monroe Foundation, and marketing of the Spec and Thomas Industries buildings.
OCIF was also aware that BMF would be contracting in its own name with James Monroe for the above-described mandolin. James Monroe would later testify that when he executed the mandolin contract and saw that BMF's name incorporated "Bill Monroe," he was led to believe that OCIF had assigned BMF its contractual right to use that name. No party to this action disputes (and the Tennessee litigation that would later follow reflects) that BMF could only have been authorized to use "Bill Monroe" in its corporate name through an assignment of OCIF's rights under the October 29, 1999 agreement, or with James Monroe's permission.
Until 2004, OCIF continued to support BMF's efforts to promote the Bill Monroe name. For example, from 2001 until approximately 2003, OCIF was aware that BMF was using Bill Monroe's name and likeness in handbills and at an annual Bluegrass festival that BMF produced in Rosine, Kentucky. Indeed, James Monroe was a featured performer at the first three of these festivals, Martin (OCIF's attorney) and Spinks (OCIF's President and member of its board of directors) both admitted to attending one or more of these festivals while wearing "Bill Monroe Foundation" T-shirts, and, in a September 10, 2002 letter to BMF from OCIF, OCIF stated that "it was clearly understood" that the festival "was under the sponsorship and direction of the Bill Monroe Foundation Board." As described by Mercer's employment contract, OCIF also sponsored a nationally- televised, weekly Bluegrass-music-themed television show hosted by Mercer, produced at Bill Monroe's home place in Rosine, Kentucky, which included segments (in the words of Mercer's above-referenced employment contract with OCIF) "dedicated to promoting The Bill Monroe Bluegrass Music Foundation and specifically the Rosine Project." According to the June 27, 2001 minutes of the OCIF board of directors, OCIF agreed to advance BMF up to $295,000 to restore the Bill Monroe home place. On April 26, 2002, and again pursuant to the resolution of its board, OCIF also advanced BMF another $50,000 toward BMF's purchase of the Bill Monroe mandolin from James Monroe.
Moreover, OCIF and BMF shared the same attorney (Martin) until early 2002, and OCIF paid for BMF's legal expenses. During that time, on February 6, 2002, Martin came to believe that the Kentucky Music Hall of Fame had violated BMF's contractual right to use the Bill Monroe name. Consequently, he drafted the following letter and sent a copy of it to Mercer, along with a request for Mercer to determine whether the letter was appropriate:
Please be advised that the Bill Monroe Bluegrass Music Foundation of Kentucky, Inc., through an Assignment of Contract Rights from the Ohio County Industrial Foundation, has acquired, at a considerable cost, license to utilize the name "Bill Monroe' [sic] nickname, likeness, write up, publicity, and biographical sketch" in connection with the development, funding, and promotion of the Bill Monroe Memorial or Bluegrass Park in Rosine, Kentucky.
The use [sic] Bill Monroe name or music as reported in the article published in Courier Journal on February 6, 2002, "Hall Of Fame To Be A Musical Melody" appears
to be in conflict with, violation of, the Foundation's license with James Monroe, as the sole Devisee and the Executor of the Estate of William S. "Bill" Monroe, dated October 29, 1999.
I am sending a copy of this letter to James Monroe as I feel certain that he will have some concerns of his own about the use of this Bill Monroe name, music and replicas connected with the Bill Monroe legend and Bluegrass Music that even more questionable, perhaps serious, conflict with the legal rights that James controls as the sole Devisee and Executor of his Father's Estate.
Mercer reviewed this letter, informed Martin that it was contrary to BMF's goals to file suit against the Kentucky Music Hall of Fame, and instructed Martin not to send the letter or take any other action on behalf of BMF. Martin responded by emailing Mercer on February 7, 2002, stating: "The letter which I forwarded to you which I had drafted to send to [the Kentucky Music Hall of Fame] was for your review and approval before submission. The letter was not sent, and I will not pursue the matter any further until or unless there's some direction from the foundation board to do so."
In approximately April 2002, BMF hired another attorney to replace Martin as counsel.
Two years later, on or about May 14, 2004, OCIF received a letter from James Monroe's attorney demanding to know whether OCIF had assigned BMF its right to the Bill Monroe name. Martin, who remained OCIF's attorney of record, responded on May 26, 2004, by stating in relevant part:
You have asked me to investigate whether the Ohio County Industrial Foundation, Inc., has transferred the
right to the use of the Bill Monroe name as acquired by the Foundation in an "Agreement" dated October 29, 1999, to any other non-profit corporation or other organization. In review of the records and minutes of the Ohio County Industrial Foundation Board and from my own personal knowledge as attorney for the Board, I can state that the right to use the Bill Monroe name, likeness and image as acquired by the Ohio County Industrial Foundation, Inc., under the October, 1999, "Agreement", has not been assigned or otherwise transferred to any other non-profit corporation or to any other organization.
In an August 20, 2004 follow-up letter to James Monroe's attorney, Martin reemphasized his belief that OCIF had never assigned BMF its rights under the October 29, 1999 agreement. On September 22, 2004, OCIF, through its board, then passed a formal resolution asserting that it had never assigned any other entity its contractual right to use the Bill Monroe name. On October 13, 2004, James Monroe filed suit against BMF in Sumner Circuit Court, Tennessee, to enjoin BMF from utilizing the Bill Monroe name and any intangible rights associated with it. And, on or about October 14, 2005, the Sumner Circuit Court issued a preliminary injunction against BMF, requiring BMF to change its corporate name and prohibiting BMF from utilizing the Bill Monroe name and associated intangible rights until further notice. The preliminary injunction was based upon James Monroe's allegation that OCIF had not assigned BMF its rights under the October 29, 1999 agreement; it was also based upon affidavits from two OCIF officials to the same effect.
OCIF was not a party to James Monroe's Tennessee action, nothing in the record indicates that James Monroe's Tennessee action ever culminated in a final judgment and, in any event, no party to this appeal contends that James Monroe's Tennessee action and preliminary injunction precluded the Ohio Circuit Court from adjudicating this matter.
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The instant matter was filed in Ohio Circuit Court against OCIF on July 19, 2007, by two separate entities: 1) BMF, claiming that it had received an assignment of the Bill Monroe name and associated rights from OCIF upon its incorporation; and 2) Ohio County, Kentucky, which according to its initial pleadings had given OCIF the $250,000 that OCIF had used to pay James Monroe under the October 29, 1999 agreement with the expectation that OCIF would assign its rights under that contract to BMF. On or about October 20, 2010, OCIF purported to quitclaim its rights under the October 29, 1999 agreement to Ohio County, which then caused Ohio County to become a nominal defendant and left BMF as the sole plaintiff. Thereafter, the issue became whether OCIF had irrevocably assigned its contractual rights to the Bill Monroe name and related intangible rights to BMF prior to when OCIF had purported to quitclaim those rights to Ohio County. Specifically, BMF argued that OCIF had either expressly or equitably assigned it those rights on the date that BMF's articles of incorporation were filed.
Following a bench trial on this issue, the circuit court entered an order stating that "the informal actions and comments of the OCIF indicated that the OCIF would eventually assign the Monroe Name Agreement to the [BMF]," and acknowledging that OCIF's officials "oversaw the incorporation of [BMF] in Bill Monroe's name." The circuit court's order further acknowledged that "Under Mercer's leadership, the [BMF] began 'the development and operation of the (Bill Monroe Memorial) Park' as contemplated in paragraph 9 of the Monroe Name Agreement and completed the 'restoration of Bill Monroe's boyhood home' as required of him under paragraph 1.(b) of his Employment Agreement with OCIF." Nevertheless, after reviewing all of the evidence discussed above the circuit court found in favor of OCIF, holding that "no proof" demonstrated that OCIF had ever made an enforceable written, oral or implied assignment of the Bill Monroe name and associated rights to BMF. BMF now appeals.
STANDARD OF REVIEW
Since this case was tried before the court without a jury, its factual findings shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge the credibility of the witnesses. A factual finding is not clearly erroneous if it is supported by substantial evidence. However, a reviewing court is not bound by the trial court's decision on questions of law. An appellate court reviews the application of the law to the facts and the appropriate legal standard de novo.Carroll v. Meredith, 59 S.W.3d 484, 489 (Ky. App. 2001) (internal citations and quotations omitted).
ANALYSIS
Before reviewing the substance of this appeal, we will address a procedural issue raised by appellee, OCIF. OCIF argues that the circuit court's judgment must be affirmed because, as OCIF asserts, the circuit court's judgment does not make several essential findings of fact and BMF failed to move the circuit court, per Kentucky Rule of Civil Procedure (CR) 52.04, to make those findings.
The Supreme Court of Kentucky recently clarified the force and effect of CR 52.04 on the appellate process in Anderson v. Johnson, 350 S.W.3d 453 (Ky. 2011):
CR 52.04 requires a litigant to make a written request of the court or file a motion requesting a finding of fact essential to the judgment when the court has omitted it. Read as a whole, the rule clearly states that requests for findings are not necessary unless the court fails to include an essential fact that would make a judgment complete. In that limited instance, it is reasonable to require a litigant to request that finding if he wishes to have an appeal of that judgment, because the judgment is not whole without it. CR 52 embodies a burden on both the court (CR 52.01) and the litigant (CR 52.04). It is further reasonable that the broader burden be on the court whose express duty is to make necessary findings of fact and conclusions of law.Id. at 458.
And such a reading is in keeping with the intent of CR 52: a judge must make findings of fact and not address the matter in a perfunctory manner, but if he misses only some key fact in his findings, the litigant must assist the court in its good faith efforts to comply with the rule by requesting that specific finding.
. . . .
. . . CR 52.04 only bars reversal or remand "because of the failure of the trial court to make a finding of fact on an issue essential to the judgment" when a litigant fails to bring it to the court's attention by a written request for a finding.
Whether the circuit court omitted a finding involving a matter essential to its judgment is a question of law. McKinney v. McKinney, 257 S.W.3d 130, 134 (Ky. App. 2008). Here, OCIF does nothing more than point out that BMF failed to ask the circuit court to review the evidence of record more extensively and cite more cases in support of its holding.
Judges sitting without juries are not required to provide a detailed analysis of the facts and the law. Big Sandy Community Action Program v. Chaffins, 502 S.W.2d 526, 531 (Ky. 1973). Rather, they are only required to set forth sufficient facts to support the conclusions that are reached and to permit a meaningful appellate review. See, e.g., Shields v. Pittsburg and Midway Coal Mining Co., 634 S.W.2d 440, 444 (Ky. App. 1982). Here, the only issue before the circuit court relevant to this appeal was whether OCIF expressly or implicitly assigned BMF its rights under the October 29, 1999 agreement. And, from our review of the order in question, the circuit court considered all of the relevant factors associated with the law of assignments in Kentucky, adequately explained its reasons for determining that no assignment had occurred, cited what it believed was evidence in support, and, in stating that "no proof" supported an assignment, apparently discounted anything in the record to the contrary. The circuit court's findings were sufficient for purposes of review, and we find no merit to OCIF's argument regarding CR 52.04.
We will now address the more substantive issue of whether the evidence and the law support the result that the circuit court reached, i.e., that an assignment did not occur. The facts discussed above are not in dispute and, as previously stated, we review the circuit court's application of law to those facts de novo. Meredith, 59 S.W.3d at 489. With this in mind, the law of assignments in Kentucky was recently discussed in Davis v. Scott, 320 S.W.3d 87, 90-91 (Ky. 2010):
"An assignment is made when the assignor intends to assign a present right, identifies the subject matter assigned, and divests itself of control over the subject matter assigned." 6 Am. Jur. 2d Assignments § 82 (2010). . . .
"The creation and existence of an assignment is to be determined according to the intention of the parties, which is to be discerned not only from the instruments executed by them, if any, but from the surrounding circumstances." 6A C. J. S. Assignments § 57 (2010). Courts will look to substance, not form, to determine whether an assignment has occurred. 6 Am. Jur.2d Assignments § 83 (2010). See also Power Grocery Co. v. Hinton, 187 Ky. 171, 218 S.W. 1013, 1018 (1920). "No particular form is necessary to constitute an assignment . . . ." Napier v. Duff, 281 Ky. 779, 136 S.W.2d 1083, 1085 (1939). See also Patterson v. Miracle, 253 Ky. 347, 69 S.W.2d 708, 710 (1934).
A business's name qualifies as a corporate asset because "good will" is a corporate asset, Revenue Cabinet, Com. of Ky. v. Wyatt, 963 S.W.2d 635, 637 (Ky. App. 1998), and "[a] business name is one of several elements comprising good will." In re Kelsey, 9 B.R. 154, 158 (Bankr. W.D. Ky. 1981). OCIF's officials caused the incorporation of BMF. They chose to include "Bill Monroe" in BMF's corporate name. They stated in BMF's articles of incorporation that "[t]he assets of [BMF] are irrevocably and permanently dedicated to those purposes set forth in Article II hereof" (see above). On BMF's first day of legal existence, OCIF's board of directors not only recognized BMF, but resolved to advance BMF over a hundred thousand dollars to assist it in promoting the Bill Monroe name (e.g. , to purchase Bill Monroe memorabilia for display in the planned Bill Monroe museum). Thereafter, OCIF raised no objection to BMF's use and promotion of the Bill Monroe name, and supported BMF's use and promotion of the Bill Monroe name at least until 2004. The record demonstrates that, at least until 2004, even OCIF's President and attorney believed that OCIF had assigned BMF its rights to the Bill Monroe name. The record does not demonstrate that OCIF engaged in any efforts of its own to promote the Bill Monroe name outside of supporting and financing the efforts of BMF. OCIF makes no contention, and the circuit court made no finding, that when BMF acted to promote the Bill Monroe name it did so as OCIF's agent.
In short, the circuit court's finding that "no proof demonstrated OCIF had ever made an enforceable written, oral or implied assignment of the Bill Monroe name and associated rights to BMF is manifestly incorrect. Rather, the evidence discussed above—evidence that was also discussed at length by the circuit court in its own order—so conclusively demonstrates an assignment that it compels a finding in favor of BMF as a matter of law. See Morrison v. Trailmobile Trailers, Inc., 526 S.W.2d 822, 824 (Ky. 1975). OCIF identified and demonstrated its intent to irrevocably assign its unique right to the Bill Monroe name to BMF when it caused the incorporation of, or substantially assisted in creating, BMF ("The Bill Monroe/Bluegrass Music Foundation of Kentucky, Inc.") on April 23, 2001. For the next three years, BMF acted as though it had acquired this right; doing nothing to dissuade BMF, OCIF acted as though it had divested itself of that right; and, BMF relied upon OCIF's actions to its detriment (i.e., it assumed that it was not exposing itself to legal action) when it continued, with OCIF's full knowledge, to operate under and promote the Bill Monroe name. Based upon the instruments and surrounding circumstances described above, OCIF clearly, unequivocally, and irrevocably assigned its contractual right to the Bill Monroe name to BMF. Based upon the circumstances of this case and BMF's reliance, this would also be true even if, as the circuit court's order in this matter also recites, OCIF received no benefit from that assignment. See, e.g., Restatement (Second) of Contracts § 332(4) (1981).
The circuit court's judgment to the contrary stands for the proposition that OCIF designed, oversaw the incorporation of, and spent large sums of money to support an entity (i.e., BMF) that existed solely for the purpose of undermining OCIF's rights and the rights of James Monroe. Nevertheless, OCIF urges that the circuit court's judgment is not clearly erroneous because it is supported by substantial evidence. We disagree.
First, the circuit court relied upon the fact that on several occasions during and after 2004, OCIF represented that it had never assigned its right to the Bill Monroe name to any other entity. In particular, the circuit court's order cites the May and August 2004 letters OCIF's attorney, Martin, sent to James Monroe; OCIF's September 22, 2004 resolution to the same effect; and OCIF's October 20, 2010 quitclaim of the Bill Monroe name rights to Ohio County, Kentucky. To the extent that OCIF's self-serving representations are any form of evidence, however, they would only be evidence of OCIF's intent as of 2004 and thereafter. Because the overwhelming evidence of record clearly demonstrates that OCIF had already irrevocably assigned its right to the Bill Monroe name prior to 2004, these representations are irrelevant.
Next, the circuit court noted that the record contained no bylaw or resolution from OCIF's board authorizing any of its officers, agents, or attorneys to assign BMF any of OCIF's rights, title or interest under the October 29, 1999 agreement. Likewise, the circuit court noted that the record contained no evidence that any formal action, oral or written, was proposed by the OCIF board to approve an assignment of the agreement to BMF.
However, in the context of this case, Kentucky Revised Statute (KRS) 273.173 precluded OCIF from asserting that its bylaws prohibited its board of directors from making an assignment of its rights to BMF without first memorializing it with some kind of formal resolution. And, as the circuit court itself acknowledged in its order of judgment, a corporation's actions are sufficient to effect an assignment of rights. Here, OCIF's board of directors was otherwise authorized to make such an assignment. OCIF's board of directors was aware of BMF's name and articles of incorporation. And, the overwhelming evidence discussed above demonstrates that OCIF's board of directors acquiesced in and supported BMF's use and promotion of the Bill Monroe name.
Finally, the circuit court determined that BMF must have understood in October, 2004, that it had never received an assignment of OCIF's right to use the Bill Monroe name. This, it reasoned, was due to the fact that BMF never formally requested an assignment of the Bill Monroe name rights from OCIF until after James Monroe filed suit in Tennessee to enjoin BMF from using the Bill Monroe name. At best, however, this determination is founded upon speculation and conjecture. As reflected in Mercer's and Spinks' testimony, BMF believed that it had received an assignment of those rights upon its inception by virtue of its articles of incorporation and OCIF's conduct thereafter, rather than by virtue of a formal instrument of assignment. As reflected by the record, BMF opposed James Monroe's suit, arguing that it had received an assignment from OCIF even after OCIF refused to give BMF a formal instrument of assignment. Thus, it appears equally likely, if not more so, that BMF was simply asking OCIF to execute a formal document to memorialize what it believed OCIF had already done in an effort to avoid an unanticipated lawsuit.
CONCLUSION
For these reasons, the order and judgment of the Ohio Circuit Court is REVERSED.
MAZE, JUDGE, CONCURS.
TAYLOR, JUDGE, DISSENTS. BRIEF AND ORAL ARGUMENT
FOR APPELLANT:
M. Stephen Pitt
Louisville, Kentucky
BRIEF AND ORAL ARGUMENT
FOR APPELLEES:
Gregory B. Hill
Hartford, Kentucky
Whayne C. Priest, Jr.
Bowling Green, Kentucky