Sheila Lyons & Homecoming Farm, Inc. v. Am. Coll. of Veterinary Sports Med.

• Decision Date: 19 February 2014
• Docket Number: Civil Action No. 11–12192–WGY.
• Citation: 997 F.Supp.2d 92
• Court: U.S. District Court — District of Massachusetts
• Parties: Sheila LYONS and Homecoming Farm, Inc., Plaintiffs, v. AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION, INC. and American Veterinary Medical Association, Defendants.

997 F.Supp.2d 92

Sheila LYONS and Homecoming Farm, Inc., Plaintiffs,

v.AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION, INC. and American Veterinary Medical Association, Defendants.

Civil Action No. 11–12192–WGY.

United States District Court, D. Massachusetts.

Feb. 19, 2014.

Camille F. Sarrouf, Sarrouf Law, LLP, Boston, MA, for Plaintiffs.

John Mark Dickison, Lawson & Weitzen, LLP, Julia Huston, David A. Kluft, Daniel L. McFadden, Foley Hoag LLP, Joshua M.D. Segal, Lawson & Weitzen, Boston, MA, for Defendants.

FINDINGS, RULINGS & ORDER

YOUNG, District Judge.

I. INTRODUCTION

Sheila Lyons, DVM, (“Lyons”) sought to form the American Coll. of Veterinary Sports Medicine and Rehabilitation (the “College”), an organization that educates and certifies veterinarians as specialists in the field of sports medicine and rehabilitation. To accomplish this goal, she joined other veterinarians in creating a committee to petition the American Veterinary Medical Association (the “Association”) to recognize the College as an accredited specialty organization. The Association, a nonprofit with a membership of thousands of veterinarians, has crafted rules and policies that specialty organizations must follow to attain its approval.

In 2004, other veterinarians in the College asked Lyons to recuse herself from the committee seeking the Association's approval. After Lyons's relationship with the College ended, both the College and Lyons continued to use the “American Coll. of Veterinary Sports Medicine and Rehabilitation” mark. Consequently, this trademark infringement suit arises from the disputed ownership of that mark. Lyons has also accused the College of copying her work.

A. Procedural Posture

Lyons and Homecoming Farms, Inc. initiated this action on December 12, 2011. Civil Compl. Damages & Equitable Relief & Demand Trial by Jury (“Compl.”), ECF No. 1. The Association, the College, and the College's individual directors moved to dismiss various claims in the complaint. Def. American Veterinary Med. Ass'n's Mot. Dismiss, ECF No. 8; Partial Mot. Dismiss American Coll. Veterinary Sports Med. & Rehabilitation & Its Individual Directors, ECF No. 10. This Court dismissed all of the claims alleged against the College's individual directors, as well as some of the claims brought against the College and Association. Lyons v. Gillette, 882 F.Supp.2d 217, 236 (D.Mass.2012). After the Court's winnowing, this suit primarily involves claims of trademark and copyright infringement.¹See id.; Elec. Clerk's Notes, Apr. 10, 2012.

Thereafter, the parties filed cross-motions for summary judgment on Lyons's trademark and copyright infringement claims. See Mot. Summ. J. American Coll. Veterinary Sports Med. & Rehabilitation, ECF No. 68; Mem. Supp. Mot. Summ. J. American Coll. Veterinary Sports Med. & Rehabilitation (“College Mem. Summ. J.”), ECF No. 69; Pls.' Mot. Partial Summ. J. Against Def. American Coll. Veterinary Sports Med. & Rehabilitation, Inc., ECF No. 75; Mem. Law Supp. Pls.' Mot. Partial Summ. J. Against Def., American Coll. Veterinary Sports Med. & Rehabilitation, Inc. (“Summ. J. Mem. Against College”), ECF. No 80; American Veterinary Med. Ass'n's Mot. Summ. J., ECF No. 72; Mem. Reasons Supp. American Veterinary Medical Ass'n's Mot. Summ. J., ECF No. 73; Pls.' Mot. Partial Summ. J. Against Def., American Veterinary Med. Ass'n, ECF No. 76; Mem. Law Supp. Pls.' Mot. Partial Summ. J. Against Def., American Veterinary Med. Ass'n, Inc., ECF No. 83. At oral argument upon these motions, the parties agreed to treat the case as a case stated based on the record evidence. See Elec. Clerk's Notes, May 10, 2013, ECF No. 108; Elec. Clerk's Notes, May 13, 2013, ECF No. 110. “In a case stated, the parties waive trial and present the case to the court on the undisputed facts in the pre-trial record. The court is then entitled to engage in a certain amount of factfinding, including the drawing of inferences.” TLT Constr. Corp. v. RI, Inc., 484 F.3d 130, 135 n. 6 (1st Cir.2007) (quoting United Paperworkers Int'l Union, Local 14 v. International Paper Co., 64 F.3d 28, 31 (1st Cir.1995)) (internal quotation marks omitted); see DiGregorio v. Hartford Comprehensive Emp. Benefit Serv. Co., 423 F.3d 6, 12 (1st Cir.2005) (observing that converting summary judgment motions to case stated allows court to find facts rather than “grant[ ] inferences to each non-movant in turn”).

After converting the parties' motions to a case stated, the Court heard their arguments on liability, taking the matter under advisement. Elec. Clerk's Notes, May 13, 2013, ECF No. 110. The parties submitted briefs and requested findings of fact following the hearing. See Pls.' Requested Findings Fact & Rulings Law (“Lyons Proposed Facts”), ECF No. 111; Def. ACVSMR's Post–Hr'g Br. (“College Post–Hr'g Br.”), ECF No. 112; American Veterinary Med. Ass'n's Post–Hr'g Br. & Reply Pls.' Oral Argument & Requested Findings Fact & Rulings Law (“Ass'n Post–Hr'g Br.”), ECF No. 113; Pls.' Reply Mem. to Defs.' Post Hr'g Submissions (“Lyons Post–Hr'g Br.”), ECF No. 114.

B. Federal Jurisdiction

This Court has jurisdiction over this action under 28 U.S.C. sections 1331, 1338, and 1367.

II. FINDINGS OF FACT AND RULINGS OF LAW²A. Background

Lyons is a veterinarian with experience in equine sports medicine and rehabilitation. See ACVSMR's Resp. Pls.' Statement Undisputed Material Fact Supp. Its Mot. Summ. J. & Statement Add'l Material Facts by ACVSMR (“College Resp. Lyons Facts”) ¶ 85, ECF No. 91. In 1992, she established Homecoming Farm, Inc. (“Homecoming Farm”), a nonprofit corporation. Second Decl. Sheila Lyons, DVM Opp'n Def.'s Mots. Summ. J. (“Lyons Aff.”) ¶ 2, ECF No. 95–1. In the mid–1990s, Lyons first used the phrase “The American Coll. of Veterinary Sports Medicine and Rehabilitation,” which is the subject of the parties' trademark dispute, to describe a Homecoming Farm educational project. See id.; College Resp. Lyons Facts ¶ 35.

In 1999, Lyons met Robert Gillette (“Gillette”), also a veterinarian, at a symposium focused on rehabilitation and physical therapy in veterinary medicine. College Resp. Lyons Facts ¶¶ 82, 84. They decided to collaborate to create a veterinary specialty organization called “The American Coll. of Veterinary Sports Medicine and Rehabilitation,” which is now a defendant in this suit. See id. ¶¶ 84–88. Veterinarians working in a specific field create specialty organizations to educate and certify specialists in that area. Pls.' Resp. Def., American Veterinary Med. Ass'n, Inc.'s Statement Undisputed Material Facts (“Resp. Ass'n. Facts”) ¶ 6, ECF No. 94.

The Association, a not-for-profit organization consisting of approximately 83,000 veterinarians nationwide, has set forth policies and procedures for specialty organizations seeking its recognition. See id. ¶¶ 1–2, 7–8. The Association forbids its members from implying that they are specialists unless they are certified by a specialty organization that has its official approval. See American Veterinary Med. Ass'n's Resp. Pls.' Statement Undisputed Material Fact Supp. Their Mot. Summ. J. & Statement Add'l Material Facts (“Ass'n Resp. Lyons Facts”) ¶ 69, ECF No. 98. Lyons had first contacted the Association for the purpose of creating a specialty organization in veterinary sports medicine and rehabilitation in 1997, which was prior to her meeting Gillette. See College Resp. Lyons Facts ¶ 56.

To acquire the Association's approval, specialist veterinarians must form an “organizing committee” and submit a letter of intent to the Association followed by a formal petition. Resp. Ass'n Facts ¶ 8. Lyons, Gillette, and other veterinarians formed such a committee, see College Resp. Lyons Facts ¶¶ 100–101, and in 2003 the committee submitted a letter of intent to the Association seeking approval as a specialty organization, id. ¶ 214. In January 2004, Lyons contacted the Association to receive guidance on drafting the articles of incorporation and bylaws for the College's petition to the Association. See Pls.' Resp. Def., American Coll. Veterinary Sports Med. & Rehabilitation, Inc.'s Statement Undisputed Material Facts (“Resp. College Facts”) ¶ 15, ECF No. 96. Lyons presented her draft of these bylaws, as one of her copyrighted works, to the College's organizing committee. See id. ¶ 16. This draft was based in part on guidance from the Association. Id.

Lyons's relationship with the College soured in July 2004 after she was involuntarily removed from the College's organizing committee. College Resp. Lyons Facts ¶ 112. The parties dispute the reason for Lyons's removal and, as resolving this dispute will have no bearing on the outcome of this litigation, the Court passes on.

Since Lyons's removal, the College continued to call itself “The American Coll. of Veterinary Sports Medicine and Rehabilitation,” while Lyons also pursued activities and offered educational services under that name. See Resp. Ass'n Facts ¶¶ 38–39, 47. In November 2008, the College submitted a formal petition to the Association, and subsequently the Association granted the College provisional recognition as a specialty organization in May 2010. College Resp. Lyons Facts ¶¶ 225, 228. In June 2011, the College was incorporated as a non-profit organization in Colorado. Id. ¶ 229. The College's primary purpose is to certify new specialists, and the College administered its first certification exam in 2012. Id. ¶¶ 231–32.

This suit arises out of Lyons's and the College's simultaneous use of The American Coll. of Veterinary Sports Medicine and Rehabilitation (“ACVSMR”) mark. Specifically, Lyons claims that the College and Association violated her exclusive right to use the ACVSMR trademark. See Lyons, 882 F.Supp.2d at 228. Furthermore, Lyons claims that the College copied her work in its petition to the Association, thereby infringing her copyright. See id. at 232.

B. Trademark Infringement³

To prove trademark infringement, Lyons must show that...