Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist.
Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist.
Opinion of the Court
Pending before the Court are Houston Independent School District's Motion for Summary Judgment and Plaintiff Springboards to Education, Inc.'s Motion for Summary Judgment. Having considered the motions, submissions, and applicable law, the Court determines Houston Independent School District's motion for summary judgment should be granted and Springboards to Education Inc.'s motion for summary judgment should be denied.
I. BACKGROUND
This is a trademark infringement case. Plaintiff Springboards to Education Inc. ("Springboard") is a Texas corporation that designs, markets, and sells reading and other education-related products and programs. Springboard owns multiple federally registered trademarks related to its products and programs ("Springboard's Marks"). Defendant Houston Independent School District ("HISD") is a Texas independent school district. From 2008 to 2013, HISD offered a free summer reading program to HISD students called the Houston ISD Millionaire Club (the "Millionaire Club"). Springboard alleges HISD used multiple products and services in connection with the Millionaire Club that infringed on Springboard's Marks.
Based on the foregoing, on August 29, 2016, Springboard filed this lawsuit against HISD
II. STANDARD OF REVIEW
Summary judgment is proper when "there is no genuine dispute as to any material fact and the movant is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(a). The court must view the evidence in a light most favorable to the nonmovant. Coleman v. Hous. Indep. Sch. Dist. ,
But the nonmoving party's bare allegations, standing alone, are insufficient to create a material dispute of fact and defeat a motion for summary judgment. Anderson v. Liberty Lobby, Inc. ,
III. LAW & ANALYSIS
Springboard brings federal Lanham Act claims and state and federal constitutional takings claims against HISD. HISD and Springboard cross-move for summary judgment on Springboard's federal Lanham Act claims. HISD additionally moves for summary judgment on Springboard's state and federal constitutional takings claims. The Court first addresses Springboard's federal Lanham Act claims and then turns to Springboard's constitutional takings claims.
A. Federal Lanham Act Claims
Springboard brings claims against HISD under the federal Lanham Act for (1) trademark counterfeiting; (2) trademark infringement; (3) false designations; and (4) trademark dilution. HISD and Springboard *993cross-move for summary judgment on Springboard's federal Lanham Act claims. HISD contends summary judgment is proper on Springboard's federal Lanham Act claims because Springboard cannot prove HISD engaged in commercial use of Springboard's Marks. Springboard contends it can show HISD engaged in commercial use of Springboard's Marks.
As to Springboard's trademark dilution claim, the Lanham Act specifically excludes "[a]ny noncommercial use of a mark."
The commercial use requirement is rooted in Congress's ability to regulate commercial speech. Therefore, the United States Supreme Court's commercial speech doctrine and the purpose of the Lanham Act are relevant to the Court's inquiry as to what constitutes commercial use. See Procter & Gamble Co. v. Amway Corp. ,
Springboard contends it can show HISD engaged in commercial use of Springboard's Marks because: (1) HISD sold and distributed products containing Springboard's Marks; (2) HISD's print shop made a profit by printing flyers and reading logs containing Springboard's Marks; and (3) HISD used Springboard's Marks to promote its reputation and attract more students to HISD. The Court addresses each of Springboard's contentions in turn.
1. Sale and Distribution of Products
Springboard alleges HISD created, sold, and distributed thousands of products bearing Springboard's Marks, such as t-shirts, reading logs, brochures, and bumper stickers, in connection with the Millionaire Club. HISD contends: (1) there is no evidence that HISD sold or offered for sale any items containing Springboard's Marks; and (2) that distributing items free of cost to students in HISD does not constitute commercial use.
As to Springboard's allegation that HISD sold infringing products, it is undisputed that HISD sold t-shirts in connection with its "Name That Book" contest, a separate and independent program from the Millionaire Club. It is further undisputed that the t-shirts in connection with the "Name That Book" contest did not contain Springboard's Marks. The Court *994finds that the summary judgment record cited by both parties supports HISD's allegations that: (1) the products in connection with the Millionaire Club, such as reading logs, flyers, and bracelets, were distributed free of charge to students as an incentive to participate in the Millionaire Club; and (2) HISD did not sell or offer for sale any items in connection with the Millionaire Club or containing Springboard's Marks. As to Springboard's allegation that HISD created and distributed items bearing Springboard's Marks, the Court finds that creating and distributing items free of charge to students as an incentive to participate in a free local public education reading program is not commercial use of Springboard's Marks. The Court therefore finds that Springboard's allegation that HISD created, sold, and distributed products containing Springboard's Marks is insufficient to satisfy the commercial use requirement for Springboard's federal Lanham Act claims. See Burlington N. Santa Fe Corp. v. Purdy , No. 98-11485,
2. Print Shop
Springboard contends HISD engaged in commercial use of Springboard's Marks because HISD's print shop ("Print Shop") profited from the sale of flyers and reading logs to HISD. HISD contends Print Shop is not an entity separate from HISD and because all printing services were provided to HISD, HISD did not engage in commercial use of Springboard's Marks. It is undisputed that Print Shop charged HISD's Department of Library Services ("Library") for printing reading logs and flyers in connection with the Millionaire Club. It is further undisputed that Print Shop and Library are departments within the same entity-HISD. The Court finds that HISD's internal transaction between Print Shop and Library regarding printing flyers and reading logs for the Millionaire Club does not satisfy the commercial use requirement for Springboard's federal Lanham Act claims. See In re Canadian Pacific Ltd. ,
3. Promotion of HISD's Reputation
Springboard contends HISD engaged in commercial use of Springboard's Marks because HISD used Springboard's Marks in connection with advertising and promoting HISD's reputation. It is undisputed that Springboard posted pictures on the internet and received sports ticket donations for HISD students in connection with the Millionaire Club. Springboard contends HISD's postings on the internet and community publicity gained from receiving sports ticket donations for students enrolled in the Millionaire Club constitutes commercial use because the activities were done with economic incentive to increase the appeal of HISD to students which in turn would lead to increased state funding. HISD contends that (1) Springboard's citations to articles and webpages are not relevant and should thus be disregarded; and (2) there is no evidence that HISD used Springboard's Marks with an economic incentive to promote itself.
*995On a motion for summary judgment, a non-moving party must provide evidence that meets the admissibility standards at trial. Bellard v. Gautreaux ,
The Articles do not discuss HISD or pertain to HISD's alleged infringing conduct-using Springboard's Marks with an economic incentive to attract more students to HISD and thus increase state funding to HISD. The Court therefore finds the Articles do not have a tendency to make HISD's alleged economic incentive in connection with the Millionaire Club more or less probable. Thus, the Court finds the Articles are not relevant and therefore not admissible to support Springboard's contention that HISD had an economic incentive to use Springboard's Marks. Absent the Articles, there is no other competent summary judgment evidence to support Springboard's contention that HISD used Springboard's Marks with an economic incentive to attract students to HISD.
B. Springboard's Takings Claims
Springboard brings state and federal takings claims against HISD. HISD contends summary judgment is proper on Springboard's state and federal takings *996claims because Springboard's federal Lanham Act claims are ripe for adjudication.
Section 17 of the Texas Constitution states that "[n]o person's property shall be taken damaged, or destroyed for or applied to public use without adequate compensation." Tex. Const. art. I, § 17 (a). Similarly, the Fifth Amendment of the United States Constitution states that no "private property be taken for public use, without just compensation." U.S. Const. amend. V. The state and federal constitutional takings provisions protect individuals from governmental takings of private property without just compensation. A trademark is a constitutionally protectable property interest. Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd. ,
Springboard bases its state and federal takings claims on HISD's alleged infringement of Springboard's trademarks. Although the Court held HISD has governmental immunity as to Springboard's state law claims,
As to Springboard's state takings claim, when federal claims that serve as the basis of a court's subject matter jurisdiction are dismissed, a district court has broad discretion in declining to exercise supplemental jurisdiction over the remaining state law claims.
IV. CONCLUSION
Based on the foregoing, the Court hereby
ORDERS that Houston Independent School District's Motion for Summary Judgment is GRANTED .
ORDERS that Plaintiff Springboards to Education, Inc.'s Motion for Summary *997Judgment is DENIED .
The court will issue a separate final judgment.
Springboard initially pleaded claims against three other defendants. However, aside from HISD, all other defendants have been dismissed from this case. Plaintiff Springboards to Education, Inc.'s Notice of Voluntary Dismissal Pursuant to FRCP 41(a)(1)(A)(i) ; Order of Dismissal with prejudice as to Tarheel Promotions, Inc.; Order Granting Joint Motion to Dismiss Certain Claims and Parties .
Springboard relies in part on its complaint to support its contention that HISD used Springboard's Marks with an economic incentive. HISD contends Springboard's complaint should be disregarded because it is not proper summary judgment evidence. The Court construes HISD's contention as an objection to Springboard's complaint as improper summary judgment evidence. Pleadings, including a complaint, are improper summary judgment evidence. Wallace v. Tex. Tech Univ. ,
Springboard also cites "Guerra Decl. ¶ 13" in support of its contention that HISD used Springboard's Marks to promote its reputation in the community. Plaintiff Springboards To Education, Inc.'s Motion for Summary Judgment . The Court notes however that a declaration by Guerra was not attached to Springboard's motion and the Court could not otherwise locate such a declaration.
HISD also contends summary judgment is proper because Springboard's claims are barred by the statute of limitations and laches and because Springboard cannot show: (1) an impact on interstate commerce; (2) likelihood of confusion; (3) that HISD's products or services were identical to or substantially indistinguishable from Springboard's Marks; (4) that HISD used Springboard's Marks intentionally; (5) a false or misleading statement by HISD that deceived a substantial segment of potential consumers in support of Springboard's false designation claim; and (6) that Springboard's marks are famous and distinctive in support of its trademark dilution claim. However, in light of the Court's holding, the Court need not address these contentions.
The September 20, 2017 Order .
The Court further finds the parties are not citizens of different states and thus the Court also does not have diversity jurisdiction.
Also pending before the Court are Houston Independent School District's Opposed Motion to Strike Plaintiff's Expert Report, Opposed Motion to Exclude Expert Testimony, Houston Independent School District's Objections and Motion to Strike Springboards to Education, Inc.'s Summary Judgment Evidence, Houston Independent School District's Motion to Disqualify Ruben DeLeon as Trial Counsel for Plaintiff, Houston Independent School District's Motion in Limine, Springboards to Education, Inc.'s Motion in Limine to Exclude the Deposition Testimony of Johnny Lopez, Springboards to Education, Inc.'s Motion in Limine to Exclude the Deposition Testimony of Maria Ester Espericueta, Springboards to Education, Inc.'s Motion in Limine to Exclude the Deposition Testimony of Dr. James Kim, Springboards to Education, Inc.'s Motion in Limine to Exclude the Deposition Testimony of Dona Rintelman, and Springboards to Education, Inc.'s Motion in Limine to Exclude the Deposition Testimony of Ruben DeLeon, Counsel for Springboards to Education, Inc. (the "Remaining Pending Motions"). In light of the Court's holding, the Court orders that the Remaining Pending Motions are denied as moot.
Reference
- Full Case Name
- SPRINGBOARDS TO EDUCATION, INC. v. HOUSTON INDEPENDENT SCHOOL DISTRICT
- Cited By
- 3 cases
- Status
- Published