College Network, Inc. v. Moore Educational Publishers, Inc.

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College Network, Inc. v. Moore Educational Publishers, Inc.

College Network, Inc. v. Moore Educational Publishers, Inc.
CourtUnited States Court of Appeals for the Fifth Circuit
Full case nameCollege Network, Inc., Plaintiff-Appellant v. Moore Educational Publishers, Inc. doing business as iStudySmart, Defendant-Appellee, Debra k. Moore, Intervenor Plaintiff-Apellee
DecidedMay 12, 2010
Citation(s)No. 09-50596, 2010 WL 1923763 (5th Cir. May 12, 2010)
Case history
Appealed fromUnited States District Court for the Western District of Texas
Court membership
Judges sittingCarolyn Dineen King, Jacques L. Wiener, Jr., James L. Dennis
Case opinions
Court vacated the tortious interference relief awarded to Moore Educational, but otherwise affirmed the district court ruling.
Decision byPer curiam
Keywords
Defamation, Trademark infringement

College Network, Inc. v. Moore Educational Publishers, Inc., No. 09-50596 (5th Cir. 2010) was an unpublished appellate level case in the Fifth Circuit that upheld a district court jury decision to dismiss the purchase of trademarked keywords as infringing. The original suit was brought on a claim of trademark infringement in the purchase of certain advertising keywords that the defendant countered with claims of defamation and tortious interference. However, the main issue addressed in the appeal was the counterclaims of the defendant. The court upheld the lower court's ruling, but vacated the award for tortious interference.[1]

Background

The College Network, founded in 1995 and based in Indianapolis, and Moore Educational Publishers, founded in Nashville in 1986 by Debra k. Moore, both published and sold study guides to nursing students nationwide. [1][2] Both companies participated in sponsored-link advertising on the Internet, purchasing their respective competitor's name as a keyword in which their link would appear.[1]

Business Statements

The College Network hosted a regional sales meeting in July 2006 to train that region's sales staff on closing sales on study guides by responding to potential customers' objections. The regional director informed the sales staff that their competitor, iStudySmart (the name under which Moore Educational Publishers does business), was "out of business" or "going out of business." In addition, the regional manager also directed the sales staff to say pass these statements onto potential customers. Moore Educational Publishers learned of these statements during their own sales meeting in May 2007. In the trial, these statements were referred to as "Business Statements."[1]

Moore Statements

A salesperson at The College Network, Shara Wright, resigned October 2006. She was later hired to work for Moore Educational Publishers. After her resignation, almost all her family members who worked at The College Network were fired. Only Glenn Cason, a high ranking College Network employee and Wright's cousin, remained. One of the terminated family members, Joel Cromer, testified that Cason explained that they were let go because of Shara's new job with Moore Educational Publishers and Debra Moore. He went on to say that Moore was a thief and dishonest and would appropriate The College Network's secrets. Moore Educational Publishers and Debra Moore discovered these statements the day before Cromer's deposition for the case sometime in December 2007. The case called these statements, the "Moore Statements."[1]

District Court Case

On July 29, 2007, The College Network sued Moore Educational Publishers in a Texan court for trademark infringement, citing Section 43 of the Lanham Act. [1] It claimed that by purchasing the keyword phrase "The College Network" to which Moore Educational Publishing would display their advertisement, Moore Educational Publishers was using The College Network's "trademark in commerce that was likely to cause confusion, in violation of the Lanham Act." [1] Moore Educational Publishers acquiesced to purchasing the phrase, but argued it was only in response to discovering that The College Network was engaging in the same practice. Debra Moore entered into the lawsuit on May 20, 2008, submitting counterclaims of defamation for the statements above. Moore Educational Publishers also submitted counterclaims of defamation and tortious interference due to the "Business Statements."[1]

The case was called to trial on January 13, 2009 with a panel of eight jurors.[3] The College Network presented expert witness, Otto Wheeler, determined that Moore Educational Publishers "use of “The College Network” as an internet search term created a likelihood of confusion under the Lanham Act"[1] and pointed out "purported shortcomings"[1] in the defendants' defamation damages model.[1] Moore Educational Publishers gave evidence of damages from the alleged defamation, citing a correlation between the declaration of the "Business Statements" with a drop in sales, while Moore's reputation suffered from the "Moore Statements."[1] At the end of each side's case regarding evidence on their respective claims on January 15,[3] both the plaintiff and the defendants submitted motions for judgment as a matter of law, all of which were denied on January 16.[3] The trial was submitted to the jury on January 20, and a verdict returned on January 21, 2009.[1][2][3]

Jury Verdict

The jury found "The College Trademark" to be a valid trademark, but did not find Moore Educational Publishers infringing on that trademark. On the part of the defendants' claims, the jury acknowledged the defamatory nature of the statements and awarded damages to Moore Educational Publishers and Debra Moore[4] which the district court capped to the total of $137,421 in actual damages and $225,438 in exemplary damages to Moore Educational Publishers, and $150,000 actual damages and $200,000 in exemplary damages to Moore, among other sums.[1][3]

Following the verdict, The College Network filed again for a motion for judgment as a matter of law and, alternatively, for a new trial. Denied by the district court, the plaintiff appealed.[1]

Court Analysis

Ruling

Trademark Infringement

While affirming the trademark of The College Network, the Court did not reevaluate the district court's decision regarding use in commerce as there was no likelihood of comparison determined under the Fifth Circuit's eight-factor test. The Court also denied to use the Ninth Circuit's 'Internet Trinity,'[5] and so upheld the district court judgment that determined no trademark infringement occurred on the part of Moore Educational Publishers.[1][2][6]

Judgment in favor of Defendant-Apellees

See Also

References

  1. ^ a b c d e f g h i j k l m n o p College Network, Inc. v. Moore Educational Publishers, Inc., No. 09-50596 (3rd Cir. 2003).
  2. ^ a b c Internet Trademark Case Summaries: College Network, Inc. v. Moore Educ. Publishers, Inc. Finnegan. Retrieved 2012-10-18
  3. ^ a b c d e College Network v. Moore Educational Publishers Final Judgment (W.D. Tex., June 1, 2009)
  4. ^ College Network v. Moore Educational Publishers Verdict Form(W.D. Tex., Jan 21, 2009)
  5. ^ Emanuel, Quinn (January 2012), "Trademark and Copyright Litigation Update" Retrieved 2012-10-18
  6. ^ Significant Developments in U.S. Trademark Law 2010 Covington & Burling LLP

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