Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC

• Decision Date: 18 May 2016
• Docket Number: Docket No. 14–3456–cv.
• Citation: 823 F.3d 153
• Parties: INTERNATIONAL INFORMATION SYSTEMS SECURITY CERTIFICATION CONSORTIUM, INC., Plaintiff–Counter–Defendant–Appellant, v. SECURITY UNIVERSITY, LLC, Sondra Schneider, Defendants–Counter–Claimants–Appellees.
• Court: U.S. Court of Appeals — Second Circuit

823 F.3d 153

INTERNATIONAL INFORMATION SYSTEMS SECURITY CERTIFICATION CONSORTIUM, INC., Plaintiff–Counter–Defendant–Appellant

v.SECURITY UNIVERSITY, LLC, Sondra Schneider, Defendants–Counter–Claimants–Appellees.

Docket No. 14–3456–cv.

United States Court of Appeals, Second Circuit.

Argued: Aug. 19, 2015.

Decided: May 18, 2016.

Fatima Lahnin (Damian K. Gunningsmith, on the brief), Carmody Torrance Sandak & Hennessey LLP, New Haven, CT, for Plaintiff–Counter–Defendant–Appellant.

Wm. Tucker Griffith, McCormick, Paulding & Huber, Hartford, CT, for Defendants–Counter–Claimants–Appellees.

Sydney Foster, Attorney (Mark R. Freeman, Attorney, Benjamin C. Mizer, Principal Deputy Assistant Attorney General, on the brief), Civil Division, United States Department of Justice, Washington, DC; (Deirdre M. Daly, United States Attorney, on the brief), Office of the United States Attorney for the District of Connecticut; (Christina J. Hieber and Mary Beth Walker, Associate Solicitors, Thomas W. Krause, Acting Solicitor, on the brief), United States Patent and Trademark Office, Alexandria, VA, for Amicus Curiae United States Patent and Trademark Office.

Before: CALABRESI, STRAUB, and POOLER, Circuit Judges.

POOLER

, Circuit Judge:

Plaintiff-appellant International Information Systems Security Certification Consortium, Inc. (“ISC ²”) filed suit against defendants-appellees Security University (“SU”) and Sondra Schneider, alleging that SU's use of ISC ²'s certification mark violated the Lanham Act, 15 U.S.C. § 1051 et seq.,

and constituted infringement under 15 U.S.C. § 1114, false designation of origin and false advertising under 15 U.S.C. § 1125(a), and trademark dilution under 15 U.S.C. § 1125(c), and that SU's use of the mark constituted unfair competition under the Connecticut Unfair Trade Practices Act, Conn. Gen.Stat. § 42–110a et seq. (“CUTPA”). Following cross-motions for summary judgment, the district court granted summary judgment to defendants on all grounds, holding that defendants' use of the certification mark constituted nominative fair use under the Ninth Circuit's test, which our Court has not, to this point, adopted. Critical to its determination that defendants' use of the mark constituted nominative fair use under the Ninth Circuit's test were the district court's misperceptions that the only type of confusion relevant to an infringement claim was confusion as to source and that a certification mark could not be infringed by a duly certified individual.

Having considered other circuits' nominative fair use tests as well as our own prior treatment of claims involving nominative use, we hold that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act. We further hold that in cases involving nominative use, in addition to considering the Polaroid factors, courts are to consider (1) whether the use of the plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff's mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant's conduct or language reflects the true or accurate relationship between plaintiff's and defendant's products or services. When considering these factors, courts must be mindful of the different types of confusion relevant to infringement claims, including confusion as to sponsorship, affiliation, or connection, as well as, when considering a certification mark, the various ways such a mark can be infringed.

Because the district court failed to consider the Polaroid factors and because its consideration of the relevant nominative fair use factors was based on incorrect assumptions, we vacate the district court's grant of summary judgment on the infringement claims. Accordingly, we also vacate the grant of summary judgement on the false designation of origin and false advertising claims, which the court decided on the same grounds as the infringement claims, and the CUTPA claims, which were dismissed because they were derivative of the Lanham Act claims. We affirm the grant of summary judgment on the dilution claims, which ruling was not challenged on appeal. We remand for further proceedings consistent with this opinion.

BACKGROUND

I. The CISSP® Mark

A. ISC ²'s Mark

ISC ² is a non-profit organization that was formed in 1989 to develop standards for the information security industry. In March 1990, ISC ² developed a certification program and began using the certification mark “CISSP®” to denote a “Certified Information Systems Security Professional” who has met certain requirements and standards of competency in the information security field, including passing the CISSP® certification examination that ISC ² administers.

On March 18, 1997, the United States Patent and Trademark Office registered ISC ²'s CISSP® certification mark. The registration stated: “The [CISSP®] certification mark is used by persons authorized by the certifier [ISC ²] to certify completion of appropriate work experience and/or successfully passing examinations as established by the certifier in the field of security of information systems.” App'x at 30.

B. SU's Alleged Infringement

SU is a for-profit company that was formed in 1999 by defendant-appellee Sondra Schneider, a CISSP®-certified individual, to provide information security training. SU offers various classes, including a class to prepare individuals for ISC ²'s CISSP® certification examination. SU has used the CISSP® mark in connection with certification-specific training courses since 2001. It is undisputed that SU is allowed to use the CISSP® certification mark to indicate that its services are directed at preparing students for the CISSP® certification examination. Furthermore, given the nature of ISC ²'s certification mark, SU instructors may accurately identify themselves as being CISSP®-certified, so long as they follow ISC ²'s regulations governing the use of the mark.¹

However, ISC ² objects to some of SU's advertisements, run between 2010 and 2012, which, ISC ² argues, misleadingly suggested that SU's instructor, Clement Dupuis, had attained some higher level of certification as a “Master CISSP” or “CISSP Master.” These advertisements include the following statements:

• “MASTER THE 10 CISSP DOMAINS with the Master CISSP® Clement Dupuis.” App'x at 71.

• “REGISTER NOW to Master the CISSP® Certification with Master CISSP® Instructor Clement Dupuis of www.ccure.org!” App'x at 71.

• “Register for CISSP® Prep class with Master CISSP Clement Dupuis today!” App'x at 76.

• “You are taught by CISSP Master Clement Dupuis, the father of www.ccure.org website.” App'x at 76, 83.

• “Security University's CISSP® Prep Class[.] Register for CISSP® Prep class with Master CISSP Clement Dupuis today!” App'x at 78, 83.

• “Attend the BEST CISSP® Prep Class in Europe[.] Master CISSP June 27–30 AMERSTERDAM with MASTER CISSP® Instructor Clement Dupuis[.]” App'x at 88–89.

SU began using the term “Master” in May 2010. On June 9, 2010, ISC ²'s counsel wrote to Schneider asking that she cease using the phrase “Master CISSP” in SU's advertisements. On June 13, 2010, Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on ISC ²'s behalf, stating that “SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary.” Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC [hereinafter IISSCC ], No. 3:10–CV–01238 (MPS), 2014 WL 3891287, at *2 (D.Conn. Aug. 7, 2014)

(alteration in original). On July 15, 2010, ISC ²'s counsel “again wrote to Ms. Schneider requesting that she and SU cease and desist their improper advertising.” Id. Although ISC ²'s exhibits reveal that SU continued using this terminology at least through February of 2012, SU submitted declarations in support of its motion for summary judgment stating that it no longer uses these terms in its advertising materials.

II. Proceedings Below

A. ISC ²' Claims

On August 3, 2010, ISC ² filed a complaint against SU, alleging that SU's willful actions in refusing to cease its improper use of ISC ²'s CISSP® mark constituted infringement under 15 U.S.C. § 1114

, false designation of origin and false advertising under 15 U.S.C. § 1125(a), trademark dilution under 15 U.S.C. § 1125(c), and unfair competition under CUTPA. Specifically, ISC ² alleged that SU's advertisements: (1) “have the likelihood of deceiving or confusing the public,” in violation of 15 U.S.C. § 1114, by suggesting that ISC ²'s mark is somehow capable of being “mastered”; (2) constitute a false designation of origin or false advertising by deceiving the public into believing that “Security University's training courses originate with or are sponsored or otherwise approved by the Plaintiff,” in violation of 15 U.S.C. § 1125(a) ; and (3) dilute the CISSP® mark, in violation of 15 U.S.C. § 1125(c). App'x at 19–24. SU filed counterclaims denying each of these allegations and alleging antitrust violations due to ISC ²'s alleged misuse of its certification mark.

B. Summary Judgment Motions

In December 2013, the parties cross-moved for summary judgment. On August 7, 2014, the district court granted summary judgment to SU on all counts. In sum, the district court found that ISC ²'s claims of infringement and false designation of origin failed under the doctrine of nominative fair use because SU's alleged misuse of ISC ²'s certification mark could not give rise to confusion as to the source of SU's services. In conducting its analysis, the district court did not assess likelihood of confusion from Defendants' use of ISC 2's mark based on our Court's test,...