Dynamic Measurement Grp., Inc. v. Univ. of Or.

• Decision Date: 04 August 2015
• Docket Number: Case No. 6:14–CV–01295–TC.
• Citation: 121 F.Supp.3d 1047
• Parties: DYNAMIC MEASUREMENT GROUP, INC., an Oregon Corporation, Plaintiff, v. UNIVERSITY OF OREGON, Mia Tuan, Edward J. Kame'Enui, Francis J. Fien IV, Brad Shelton, Hop Skip Technologies, Inc., Defendants.
• Court: U.S. District Court — District of Oregon

121 F.Supp.3d 1047

DYNAMIC MEASUREMENT GROUP, INC., an Oregon Corporation, Plaintiff,

v.UNIVERSITY OF OREGON, Mia Tuan, Edward J. Kame'Enui, Francis J. Fien IV, Brad Shelton, Hop Skip Technologies, Inc., Defendants.

Case No. 6:14–CV–01295–TC.

United States District Court, D. Oregon.

Signed Aug. 4, 2015.

Frederick A. Batson, Gleaves Swearingen Potter & Scott, L.L.P., Laura T.Z. Montgomery, Eugene, OR, William S. Strong, Kotin Crabtree & Strong, L.L.P., Boston, MA, for Plaintiff.

James D. Nelson, Pam Kohli Jacobson, Betts Patterson & Mines, Seatle, WA, for Defendants.

ORDER AND OPINION

McSHANE, District Judge.

Magistrate Judge Thomas Coffin filed a Findings and Recommendation (ECF No. 71) and the matter is now before this court. See 28 U.S.C. § 636(b)(1)(B) ; Fed.R.Civ.P. 72(b). Both Defendant, the University of Oregon, and Counterclaim–Defendant, Dynamic Measurement Group, Inc., filed objections to the Findings and Recommendation. ECF No. 76, 77. Accordingly, I have reviewed this case de novo. See 28 U.S.C. § 636(b)(1)(C) ; McDonnell Douglas Corp. v. Commodore Bus. Mach., Inc., 656 F.2d 1309, 1313 (9th Cir.1981). I find no error and adopt the Findings and Recommendations in full.

Counterclaim–Defendant Dynamic Measurement Group, Inc. (DMG) first argues that Judge Coffin should have granted its motion for summary judgment, ECF No. 48, against Defendant University of Oregon (UO) as it related to UO's trademark claims. DMG contends the UO's federal trademark claims should be dismissed because (1) the relevant statute of limitations was two years and UO should not receive the protections of O.R.S. § 12.250¹ because it was not working for the benefit of the state of Oregon, or, (2) even if UO fell under the auspices of O.R.S. § 12.250, UO delayed for 10 years and laches should bar the trademark claim because the University's delay was factually and presumptively unreasonable. I disagree. UO brought its claims under the Lanham Act, 15 U.S.C. § 1051 et seq., which does not contain a statute of limitations. Therefore, courts have generally presumed that Congress intended for them to "borrow" the state of limitations from the most closely analogous state statute. See, e.g., Reed v. United Transp. Union, 488 U.S. 319, 109 S.Ct. 621, 102 L.Ed.2d 665 (1989). As UO claims DMG obtained its trademarks through fraud, ECF No. 40, the applicable limitations period is found in O.R.S. § 12.110(1) ; it is two years. However, O.R.S. § 12.250 states that the limitation in O.R.S. § 12.110(1) does not apply to actions brought in the name of the state.

The first part of DMG's argument, that the two-year statute of limitations applies because UO should not receive the protections of O.R.S. § 12.250, fails because, as Judge Coffin correctly noted, "Prior to July 1, 2014, the University was ... expressly an instrumentality of the state." See O.R.S. § 351.011 ; ECF. No. 71. Moreover, even after July 1, 2014, UO has a governing board, and while it is not a body of local or municipal government, it may still be an instrumentality of the state if it carries out the state purpose of educating its citizenry, has certain delegated powers from the state, and is subject, at least in part, to legislative control. Clarke v. Oregon Health Scis. Univ., 343 Or. 581, 594–96, 175 P.3d 418 (Or.2007) ; O.R.S. § 352.033. As UO fits these parameters, Judge Coffin correctly found that UO is not subject to the statute of limitations in O.R.S. § 12.110(1) because O.R.S. § 12.250 protects it as an instrumentality of the state.

The second part of DMG's argument, that UO's delay was presumptively and factually unreasonable so that laches should bar the trademark claims, is similarly unpersuasive. Laches is an equitable defense that is distinct from a statute of limitations, however, a laches determination is made with reference to the applicable statute of limitations. Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir.2002). Therefore, if a plaintiff files an action before the statute of limitations has expired, there is a strong presumption that laches is inapplicable. See, e.g., Shouse v. Pierce County, 559 F.2d 1142, 1147 (9th Cir.1977). Similarly, if the plaintiff files an action after the limitations period has expired, then there is a presumption that laches is applicable. See, e.g., Brown v. Kayler, 273 F.2d 588, 592 (9th Cir.1959). In this case, as the two-year statute of limitations is inapplicable to UO, there is no presumption of laches and UO's delay was thus not presumptively unreasonable.

Turning to DMG's argument that UO's delay was factually unreasonable and therefore its trademark claims were barred by laches, I agree with Judge Coffin and conclude that there are questions of fact regarding UO's delay that preclude summary judgment. In order for laches to be applicable, the court will first look to the length of the delay and then to its reasonableness. Jarrow Formulas, 304 F.3d at 838. In order to be successful, the party asserting laches must show that 1) the delay was unreasonable, and 2) the party asserting laches would be prejudiced if the infringement were to continue. Id. A party is permitted to delay a suit in order to balance the cost of litigation with the scope of the infringement. Danjaq LLC v. Sony Corp., 263 F.3d 942, 954 (9th Cir.2001). However, if a party delays a suit in order to capitalize on the infringing party's industry, then the delay is not justifiable. Id. In this case, there is evidence that UO knew that DMG was using what it considered to be its trademark. See, e.g., ECF No. 52–11. However, despite all the exhibits and declarations there is scant record pertaining to UO's rationale surrounding its delay in filing a trademark cancellation. Therefore, I agree with Judge Coffin and will not grant DMG's motion for summary judgment, ECF No. 48, as it relates to laches in order to more fully develop the record.

Defendant UO asserts that Judge Coffin erred in determining that DMG successfully showed that it had expressly repudiated UO's ownership interest in the work that comprised DIBELS² 6th. UO argues that there was no express repudiation of each of the component pieces of DIBELS 6th, which was split into 60 different copyrighted sections. DMG argues that DIBELS 6th is a marketed unit, and therefore, even though there was no express repudiation of each of the component parts, the law does not require such specificity. ECF No. 79, 7–8. Copyright claims that center on ownership begin to accrue when express repudiation is conveyed to the claimant. Seven Arts Filmed Entm't Ltd. v. Content Media Corp. PLC, 733 F.3d 1251, 1255–56 (9th Cir.2013). DMG mentions events in 2001, 2005, 2006, and 2007³ that communicated express repudiation to the University. Additionally, DMG openly and notoriously sold the DIBELS 6th, IDEL⁴ 7th, the 2008 version of DIBELS, DIBELS DEEP, and DIBELS Survey. This record supports Judge Coffin's determination that UO's copyright claims are timebarred under the three-year statute of limitations found in 17 USCS § 507.

In light of the foregoing, Judge Coffin's Findings and Recommendation (ECF No. 71) adopted in full.

IT IS SO ORDERED.

FINDINGS AND RECOMMENDATION

COFFIN, United States Magistrate Judge.

Plaintiff, Dynamic Measurement Group, Inc. (DMG), brings this action alleging copyright and trademark infringement primarily against the University of Oregon. Plaintiff's founders, Dr. Ruth Kaminski and Dr. Roland Good allege that since the early 1990s they have been engaged in the business of researching, developing, administering, distributing, and publishing materials known as Dynamic Indicators of Basic Early Literacy Skills (DIBELS), as well as training teachers on the use of these materials. DIBELS is designed to help teachers assess literary skills and focus remedial needs for K–6 students. Plaintiff further alleges that Kaminski and Good established DMG as a for profit company to carry on the work of developing DIBELS and training teachers in its use. DIBELS is widely used, assessing about 25 percent of U.S. students.

Plaintiff alleges that Dr. Kaminski first developed an early version of DIBELS assessment measures from 1988–92 as a doctoral candidate at the University of Oregon. After obtaining her Ph.D. in 1992, the University employed Kaminski as a part-time research associate in 92–93, and as an assistant professor in the college of education until 2003.

Dr. Kaminski's doctoral advisor was Dr. Good who worked as an assistant professor at the University of Oregon at the time. Plaintiff alleges that Good and Kaminski began to make DIBELS available to elementary schools around the country and offered fee based training. Plaintiff asserts that as early as 1994, Kaminski and Good made commercial use of the DIBELS mark.

In the Late 1990s, plaintiff alleges that Dr. Good began offering analytical support allowing schools to track individual and collective progress of their students. By 2000, plaintiff asserts, Kaminski's and Good's efforts building widespread acceptance and use of DIBELS assessments resulted in hundreds of schools adopting DIBELS as an integral part of early childhood literacy programs.

In collaboration with staff of the University's Center on Teaching and Learning, plaintiff alleges Dr. Good developed an online system allowing schools to enter their data and generate automated reports and analysis (the DIBELS Data System) housed on the University's servers in about mid 2000. Plaintiff alleges that the DIBELS data system is an ancillary service to users of DIBELS materials.

In 2001, Good and Kaminski released the 5th edition of DIBELS made available to schools upon request as part of a package price that included their teacher training services. The University's Center on Teaching and Learning posted a copy to its website for free downloads. The 5th edition bore a copyright notice and trademarks as follows: "© 2001 Good and Kaminski" and "DIBELS." This edition contained newly created...