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

• Decision Date: 07 August 2014
• Docket Number: No. 3:10-cv-01238 (MPS),3:10-cv-01238 (MPS)
• Court: U.S. District Court — District of Connecticut
• Parties: INTERNATIONAL INFORMATION SYSTEMS SECURITY CERTIFICATION CONSORTIUM, INC., Plaintiff, v. SECURITY UNIVERSITY, LLC, and SONDRA SCHNEIDER, Defendants.

INTERNATIONAL INFORMATION SYSTEMS SECURITY CERTIFICATION CONSORTIUM, INC., Plaintiff, v. SECURITY UNIVERSITY, LLC, and SONDRA SCHNEIDER, Defendants.

No. 3:10-cv-01238 (MPS)

UNITED STATES DISTRICT COURT DISTRICT OF CONNECTICUT

August 7, 2014

RULING ON MOTIONS FOR SUMMARY JUDGMENT AND MOTIONS TO SEAL

Plaintiff International Information Systems Security Certification Consortium, Inc. ("(ISC)²") has sued Defendants Security University, LLC ("SU") and Sondra Schneider for alleged violations of the Lanham Act, 15 U.S.C. §§ 1051-1141, including trademark infringement, false designation of origin, and trademark dilution, and for alleged violations of the Connecticut Unfair Trade Practices Act, Conn. Gen. Stat. § 42-110a et seq. ("CUTPA"). The parties have filed cross-motions for summary judgment. (Dkt. ## 66, 68.) Because I find that Defendants' use of the trademark at issue was permissible under the doctrine of "nominative fair use," and that Plaintiff's mark is not famous for the purposes of trademark dilution, Defendants' Motion for Summary Judgment is GRANTED and Plaintiff's Motion for Summary Judgment is DENIED. For the reasons explained below, the parties' Motions to Seal are GRANTED IN PART, and DENIED IN PART.

I. Relevant Background

Plaintiff is a non-profit organization formed in 1989 to develop standards for the information security industry. (Defs. L.R. 56(a)(2), ¶ 1.) In March 1990, Plaintiff began using the mark "CISSP^®," which denotes a Certified Information Systems Security Professional who has met certain requirements and standards of competency in the information security field,including passing the examination for CISSP^® certification, which Plaintiff administers. (Id., ¶¶ 12-13, 25.) CISSP^® is a special type of trademark known as a "certification mark." The Lanham Act defines a "certification mark" as:

any word, name, symbol, or device, or any combination thereof (1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services . . . .

15 U.S.C. § 1127 (emphasis added). As the language italicized above makes clear, a certification mark, unlike other trademarks, is specifically designed to be used by those other than its owner. Unlike trademarks, certification marks may not be discriminately refused to anyone who meets the standards set forth by the certifier. See 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19.96 ("[A] certifier cannot refuse to license the mark to anyone on any ground other than the standards it has set."); 15 U.S.C. § 1064(5)(D) (certification mark may be cancelled if registrant discriminately refuses to certify). One who sees a certification mark "is entitled to assume that that product or service in fact meets whatever standards of safety or quality have been set up and advertised by the certifier." See 3 J. THOMAS MCCARTHY, supra, § 19.91 (4th ed. 2011). In addition, a certification mark promotes "free and open competition among producers and distributors of the certified product." Idaho Potato Comm'n v. M & M Produce Farm & Sales, 335 F.3d 130, 138 (2d Cir. 2003).

On March 18, 1997, the United States Patent and Trademark Office issued to Plaintiff a trademark registration for the CISSP^® certification mark. (Defs. L.R. 56(a)(2), ¶ 14; Pl. Summ. J. Mem., Ex. I.)

Upon meeting Plaintiff's certification standards, an individual may use the CISSP^® mark in accordance with the "(ISC)^2® Regulations Governing Use of Certification/Collective Marks."(Pl. Summ. J. Mem., Ex. N.) The Regulations provide that, in using the mark, certified individuals "may not combine the Logo with any other object, including, but not limited to, other logos, icons, words, graphics, photos, [or] slogans . . . . (i.e., Mixing another Logo with the CISSP^[®] Logo to create a variation.)"¹ (Id.) Another rule requires that "[t]he Logo may not be used in any manner that expresses or might imply (ISC)²'s affiliation, sponsorship, endorsement, certification, or approval, other than as set forth by the (ISC)² Application Agreement." (Id.)

Defendant SU, a for-profit company, was formed in 1999 by Defendant Sondra Schneider, a CISSP^® certified individual, to provide information security training. (Defs. L.R. 56(a)(2), ¶¶ 5-8; Schneider Decl., ¶¶ 1-2.) SU offers classes to individuals preparing for the CISSP^® certification examination, as well as for other certifications offered by SU. (Schneider Decl., ¶¶ 3, 5.) The company advertises its certification-specific training courses on its website, www.securityuniversity.net, and through "conference event or brochure specific advertising materials." (Id. ¶ 16.) It has used the CISSP^® mark in connection with certification-specific training courses since 2001. (Id. ¶ 17.) It is undisputed that SU is allowed to use the CISSP^® certification mark in its advertising. (Pl. Opp. to Defs. Summ. J. Mem. at 4 ("Plaintiff does not dispute, nor has it ever disputed, Defendants' right to identify that their services are directed towards preparing for the CISSP^[®] certification examination.").)

In some advertisements, however, Defendants stated that the CISSP^® examination preparation course would be taught by "Master CISSP^® Instructor Clement Dupuis," "Master CISSP^® Clement Dupuis," and/or "CISSP^® Master Clement Dupuis." (See Pl. Summ. J. Mem., Exs. M, P-T.) SU began using the term "Master" in May 2010; it no longer uses this term in its advertising materials. (Schneider Decl., ¶¶ 19, 22.) On June 9, 2010, Plaintiff's counsel wrote toDefendant Schneider asking that she cease using the phrase "Master CISSP" in SU's advertisements. (Compl., Ex. D.) On June 13, 2010, Defendant Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on Plaintiff's behalf, 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." (Pl. Summ. J. Mem., Ex. O; Defs. L.R. 56(a)(2), ¶ 32.) On July 15, 2010, Plaintiff's counsel "again wrote to Ms. Schneider requesting that she and SU cease and desist their improper advertising." (Defs. L.R. 56(a)(2), ¶ 34.)

On August 3, 2010, Plaintiff commenced this action, alleging violations of the Lanham Act and CUTPA. Notably, Plaintiff does not allege any claims for breach of contract or violation of the "(ISC)^2® Regulations Governing Use of Certification/Collective Marks." (See Pl. Summ. J. Mem., Ex. N.)

II. Discussion

A. Standard

Under Fed. R. Civ. P. 56(a), a "court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." "When viewing the evidence [on a motion for summary judgment], the court must assess the record in the light most favorable to the non-movant and draw all reasonable inferences in the non-movant's favor." Weinstock v. Columbia Univ., 224 F.3d 33, 41 (2d Cir. 2000). "The mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which the jury could reasonably find for the plaintiff." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).

B. First and Second Counts: Claims for Trademark Infringement

The First and Second Counts allege that Defendants infringed the CISSP^® mark in violation of 15 U.S.C. § 1114 by using the mark in a way "likely to cause confusion, or to cause mistake, or to deceive." The gravamen of Plaintiff's First and Second Counts is that Defendants' "improper use of the CISSP^[®] mark is likely to cause confusion, to cause mistake, or to deceive members of the public into believing that Plaintiff's mark is somehow capable of being 'mastered' and that such mastery is only available from [Defendants]." (Compl., ¶¶ 22, 42.)

"A claim of trademark infringement is analyzed under a familiar two-prong test. The test looks first to whether the plaintiff's mark is entitled to protection, and second to whether the defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods." Savin Corp. v. Savin Grp., 391 F.3d 439, 456 (2d Cir. 2004). "To evaluate the likelihood of consumer confusion, [courts] apply the multi-factor test set forth by Judge Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)."² Brennan's, Inc. v. Brennan's Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004). Claims for certification mark infringement are also evaluated under the multi-factor Polaroid test. See Levy v. Kosher Overseers Ass'n of Am., Inc., 104 F.3d 38, 42-43 (2d Cir. 1997).

Defendants counter Plaintiff's claims for trademark infringement by asserting that "any use of the CISSP^[®] mark . . . is in a legitimate, descriptive manner with respect to the services offered by SU, and is protected by the doctrine of nominative fair use." (Countercl., ¶ 44.)³ Asdiscussed below, when a defendant asserts the application of nominative fair use, the nominative fair use analysis supplants the likelihood of confusion inquiry. Audi AG v. Shokan Coachworks, Inc., 592 F. Supp. 2d 246, 269-70 (N.D.N.Y. 2008). Because I find that the nominative fair use doctrine resolves the trademark infringement claims in this case, I turn directly to the analysis of nominative fair use.

Courts "distinguish two types of fair use: 'classic fair use,' in which the defendant has used the plaintiff's mark to describe the defendant's own product, and 'nominative fair use,' in which the defendant has used the plaintiff's mark to describe the plaintiff's product for the purpose of, for example, comparison to the defendant's product." Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (...